Ex parte Wolff et al.

Board of Patent Appeals and Interferences

Sep 11, 1998

08429966 (B.P.A.I. Sep. 11, 1998)

Application for patent filed April 27, 1995. According1
to appellants, this application is a divisional of Application
08/171,361, filed December 21, 1993; which is a continuation-
in-part of Application 07/815,560, filed December 27, 1991,
now abandoned; which is a continuation of Application
07/486,580, filed February 28, 1990, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RODNEY G. WOLFF and VINCENT W. HULL

_____________
Appeal No. 97-4258
Application No. 08/429,9661
______________
ON BRIEF
_______________
Before McCANDLISH, Senior Administrative Patent Judge, ABRAMS
and STAAB, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 97-4258
Application No. 08/429,966
2
This is an appeal from the decision of the examiner finally
rejecting claims 14-18, 35 and 36. Claim 19 has been allowed,
claims 1-13 and 20-34 have been canceled, and claims 37-45
have been withdrawn as being directed to a nonelected
invention.
The appellants’ invention is directed to a device for
local intraluminal administration of drugs. The subject
matter before us on appeal is illustrated by reference to
claim 14, which has been reproduced in an appendix to the
Appeal Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Pinchuk 5,019,090 May 28,
1991
Palmaz 5,102,417 Apr. 7,
1992
THE REJECTIONS
Claims 14-16, 18, 35 and 36 stand rejected under 35
Appeal No. 97-4258
Application No. 08/429,966
3
U.S.C.
§ 102(e) as being anticipated by Pinchuk.
Claims 14-16, 18, 35 and 36 alternatively stand rejected
under 35 U.S.C. § 103 as being unpatentable over Pinchuk.
Claim 17 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Pinchuk in view of Palmaz.
The rejections are explained in the Examiner's Answer.
The arguments of the appellants are set forth in the
Brief.
OPINION
The Rejection Under 35 U.S.C. § 102(e)
Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of the claimed invention.
See RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d
1440, 1444, 221 USPQ 385, 388 (Fed. Cir.),cert. dismissed sub
Appeal No. 97-4258
Application No. 08/429,966
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nom., Hazeltine Corp. v. RCA Corp., 468 U.S. 1228 (1984). A
reference anticipates a claim if it discloses the claimed
invention such that a skilled artisan could take its teachings
in combination with his own knowledge of the particular art
and be in possession of the invention. In re Graves, 69 F.3d
1147, 1152, 36 USPQ2d 1697, 1701 (Fed. Cir. 1995), cert.
denied, 116 S.Ct. 1362 (1996), quoting from In re LeGrice, 301
F.2d 929, 936, 133 USPQ 365, 372 (CCPA 1962).
The appellants’ invention is directed to a prosthesis for
delivering drugs, such as those used to treat restenosis. As
manifested in independent claim 14, the invention comprises a
tubular body made up of a plurality of helical support
elements wound in a helix configuration in opposing
directions, “a flexible, polymeric filament attached to the
support elements” so that at least a portion is exposed at an
exterior surface of the body, and “a drug compounded into the
polymeric filament such that the drug is delivered to the body
lumen when the tubular body is radially expanded into contact
Appeal No. 97-4258
Application No. 08/429,966
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with the portion of the body lumen to be treated.”
It is the examiner’s position that all of this structure
is disclosed or taught by Pinchuk, and thus is anticipated by
this reference. Specifically, the examiner finds the helix
stent construction to be disclosed in lines 2-4 of column 7,
and the drug location in lines 22-24 of that same column. The
appellants dispute these findings.
Claim 14 requires that there be “a drug compounded into
the polymeric filament” (emphasis added). In view of the
explanation of the invention presented in the specification,
we understand this to mean not that the drug is coated upon
the exterior surface of the filament, but that it is
impregnated in the polymeric material from which the filament
is made (pages 12-15). No such teaching is present in
Pinchuk. While this reference includes polymers in the list
of materials from which the stent can be made, with regard to
the incorporation of drugs therein its teaching is limited to
coating (column 7, line 18) and the statement that “[t]he
stents can be treated so that drugs can be eluted therefrom”
(column 7, lines 22-23, emphasis added). No amplification of
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Application No. 08/429,966
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the term “treated” explicitly is provided, and we can find
nothing in the reference from which to conclude that it
encompasses compounding a drug “into” the filament.
It therefore is our conclusion that Pinchuk fails to
disclose or teach all of the subject matter recited in claim
14, and thus cannot be considered to be anticipatory thereof.
The Section 102 rejection of independent claim 14, and of
dependent claims 15, 16, 18, 35 and 36 therefore is not
sustained.
The Section 103 Rejection
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness (see In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993)), which is established when the
teachings of the prior art itself would appear to have
suggested the claimed subject matter to one of ordinary skill
in the art. See In re Bell, 991 F.2d 781, 783, 26 USPQ2d
1529, 1531 (Fed. Cir. 1993)).
As we explained above, Pinchuk provides no explicit
Appeal No. 97-4258
Application No. 08/429,966
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disclosure or teaching of compounding a drug into the
filaments that form the structure of a helical stent.
Considering the reference in the light of Section 103 does not
alter this fact. While “treating” a filament with a drug
might be considered after the fact to be broad enough to
encompass compounding a drug into it, the reference
nevertheless would not have suggested doing so to one of
ordinary skill in the art. From our perspective, the only
motivation for such is found in the hindsight afforded one who
first viewed the appellants’ disclosure. This, or course, is
not permissible. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d
1780, 1784 (Fed. Cir. 1992).
The rejection of claims 14-16, 18, 35 and 36 therefore
cannot be sustained.
Nor is the rejection of claim 17 sustained, for the
teachings of Palmaz, the secondary reference, fail to cure the
deficiency in Pinchuk.
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Application No. 08/429,966
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SUMMARY
The Section 102 rejection is not sustained.
Neither of the Section 103 rejections is sustained.
The decision of the examiner is reversed.
REVERSED
)
HARRISON E. McCANDLISH,Senior )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 97-4258
Application No. 08/429,966
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Daniel W. Latham
Medtronic Inc
7000 Central Avenue NE
Minneapolis, MN 55432