Ex Parte Tatalovich et al

Patent Trial and Appeal Board

Oct 19, 2017

13364772 (P.T.A.B. Oct. 19, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/364,772 02/02/2012 Joe Tatalovich H-KN-02191 5766
77218 7590 10/23/2017
MeHtrnnio Vasionlar - APV Division
EXAMINER
c/o IP Legal Department
3576 Unocal Place
SZPIRA, JULIE ANN
Santa Rosa, CA 95403 ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
10/23/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
rs. docketingap v @ medtronic .com
medtronic_apv_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOE TATALOVICH, SARA THORSON,
MEGAN MIEZWA, STEVE ZAVER, RICH KUSLEIKA, and
PAUL NOFFKE
Appeal 2016-000928
Application 13/364,772
Technology Center 3700
Before KEN B. BARRETT, LEE L. STEPINA, and SEAN P. O’HANLON,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—3, 9, 16, and 18—25. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2016-000928
Application 13/364,772
CLAIMED SUBJECT MATTER
The claims are directed to a system for delivering an implant to a site
in a body lumen. Spec. 11. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A stent delivery system comprising:
an expandable stent having proximal and distal ends, and
a first interlock structure;
an elongated inner member defining a longitudinal axis;
a floating retaining ring disposed on the inner member and
having a second interlock structure for engaging the first
interlock structure of the stent, the floating retaining ring adapted
for longitudinal movement relative to the inner member, the
floating retaining ring being discontinuous and defining free
ends extending along an entire length of the floating retaining
ring; and
a sheath mounted on the inner member, the sheath being
positionable in a transport position in which the sheath covers the
stent and a deployed position in which the stent is at least
partially exposed.
Appeal Br. 20 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Thompson
Bidinger
Russo
US 2002/0120322 A1 Aug. 29, 2002
US 2008/0065000 A1 Mar. 13, 2008
US 2013/0073026 A1 Mar. 21, 2013
(filed Sept. 20, 2011)
REJECTION
Claims 1—3, 9, 16, and 18—25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Thompson, Russo, and Bidinger.
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Appeal 2016-000928
Application 13/364,772
OPINION
Claims 1—3, 9, and 20—22
The Examiner finds that Thompson discloses most of the elements
required by claim 1, including a ring1 mounted to an inner member, “but
fails to disclose relative movement between the ring and the inner member
and the ring being discontinuous.” Final Act. 3. The Examiner relies on
Russo (specifically, retainer 210) to teach a floating ring as recited, except
for the requirement that the ring be discontinuous. Id. To teach this feature,
the Examiner relies on Bidinger. Id. at 3—A. The Examiner reasons that it
would have been obvious to make the ring in Thompson a floating ring “to
allow for movement of the ring along inner member in order to more
efficiently deploy the stent.” Id. at 3. The Examiner also determines, “[t]he
combination of the retaining ring disclosed by Thompson ... in view of the
floating ring of Russo . . . would allow for the stent to be better positioned
relative to the inner member.” Advisory Act. 2 (dated Jan. 23, 2015). As
for the teachings of Bidinger, the Examiner reasons that it would have been
obvious to make the ring in Thompson discontinuous because this “would
allow for the ring to better expand and contract when retaining a stent, and
therefore allow for enhanced delivery and retention of the stent.” Final Act.
4.
1 The Examiner uses the words “floating ring” to describe marker 27
disclosed by Thompson, but the rejection of claim 1 modifies Thompson to
make marker 27, which is ring-shaped, a “floating” ring. Final Act. 3.
Accordingly, we understand the Examiner’s use of the word “floating”
before “ring” on page 3 of the Final Action to be a misstatement. See Ans. 2
(stating, “the [EJxaminer freely admits that the use of the floating ring is not
taught by Thompson, thus the need for the secondary reference of Russo is
used to teach the floating element of the ring.”).
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Appeal 2016-000928
Application 13/364,772
Appellants contend that marker 27 of Thompson is intended to
prevent axial movement of stent 12 and “one of ordinary skill in the art
would have consciously avoided modifying marker 27 of Thompson with
the Russo’s disclosure of a ‘free-floating ring 210’ due to the Thompson
teachings.” Appeal Br. 7 (footnote omitted). Appellants also assert, “[t]he
Examiner has failed to explain why a general motivation to better position
the stent relative to the inner member would have persuaded one of ordinary
skill in the art to go against the teaching of Thompson.” Id. at 8. In this
regard, Appellants contend that the Examiner does not explain any
connection between providing a floating ring (modifying marker 27 to make
it float relative to inner member 14) and better positioning and deployment
of stent 12. Id.
In response, the Examiner states:
Russo teaches a similar stent retaining ring, or collar, placed
around the inner member to allow for the stent to be retained on
the device and deployed from the device. The teaching of Russo
provides the expected result of a ring that hold[s] a stent during
delivery and allow[s] for deployment of the stent once the device
has reached the desired location within the body.
Ans. 2—3.
In reply, Appellants contend that the Examiner’s response does not
address the argument that Thompson uses marker 27 to prevent axial
movement of stent 12. Reply Br. 2—A.
Appellants have the better position on this point. Thompson discloses
that marker 27 is attached to inner tubular member 14 via adhesive, heat
fusion, interference fit, or other techniques. Thompson 140. Further,
Thompson indicates that marker 27 “forms a collar including a geometry
that interlocks with the stent 12 to prevent axial movement of the stent 12
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Appeal 2016-000928
Application 13/364,772
relative to the inner tubular member during transport and deployment of the
stent 12.” Id. (bolding omitted). The Examiner does not explain adequately
why a person of ordinary skill in the art would have found it obvious to
negate this intended effect in Thompson by making marker 27 float relative
to inner member 14. Nor does the Examiner explain adequately how
providing this floating characteristic would have more efficiently deployed
stent 12 or better positioned it relative to the inner member. Accordingly,
we reverse the rejection of claim 1 and claims 2, 3, 9, and 20-22 depending
therefrom as unpatentable over Thompson, Russo, and Bidinger.
Claim 16, 18, 19, 23—25
Independent claim 16 recites, in part, “a generally annular retainer
mounted to the inner member . . . the retainer dimensioned for longitudinal
movement along the inner member, the retainer defining a discontinuous
ring.” Appeal Br. 21 (Claims App.). In similar fashion to the rejection of
claim 1, the Examiner relies on Thompson to teach most of the elements of
claim 16 and on Russo (specifically, retainer 210) to teach the annular
retainer required by claim 16. Final Act. 4—5. For the same reasons
discussed above regarding the rejection of claim 1, we reverse the rejection
of claim 16, as well as of claims 18, 19, and 23—25 depending therefrom, as
unpatentable over Thompson, Russo, and Bidinger.
DECISION
The Examiner’s rejection of claims 1—3, 9, 16, and 18—25 is reversed.
REVERSED
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