Scott Carpenter et al.

Patent Trials and Appeals Board

Jul 22, 2019

13801173 - (D) (P.T.A.B. Jul. 22, 2019)

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.
13/801,173 03/13/2013 Scott Carpenter 6318-351.CIP 1505
29335 7590 07/22/2019
ROSENBAUM IP
1480 TECHNY ROAD
NORTHBROOK, IL 60062
EXAMINER
HOLLY, LEE A
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
07/22/2019 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):
patents@rosenbaumip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte SCOTT CARPENTER, MICHAEL POOR, and JULIO C.
PALMAZ
__________

Appeal 2019-003520
Application 13/801,173
Technology Center 3700
__________

Before MICHAEL J. FITZPATRICK, JEREMY M. PLENZLER, and
MICHAEL L. WOODS, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1, 2, and 13–29. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 Vactronix Scientific, LLC, is identified as the assignee and sole real party
in interest. Appeal Br. 3.
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Application 13/801,173

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STATEMENT OF THE CASE
The Appealed Rejection
The following rejection is before us for review: claims 1, 2, and 13–
29 under 35 U.S.C. § 103(a) (pre-AIA) as unpatentable over Walker2 and
Brennan.3 Final Act. 4.
The Specification
The disclosure is directed to “methods and apparatus for
manufacturing medical devices, wherein the medical device has a surface
treated to promote the migration of cells onto the surface of the medical
device.” Spec. ¶4.
The Rejected Claims
Claims 1, 2, and 13–29 are rejected. Final Act. 1. Claims 3–12 are
canceled, and no other claims are pending. Appeal Br. 17; Final Act. 1.
Appellant argues the patentability of all claims together. See Appeal
Br. 7–16; see also 37 C.F.R. § 41.37(c)(1)(iv) (requiring that “any claim(s)
argued separately or as a subgroup shall be argued under a separate
subheading that identifies the claim(s) by number”).4 Accordingly, we
select claim 1 as representative. See id. (“When multiple claims subject to
the same ground of rejection are argued as a group or subgroup by appellant,
the Board may select a single claim from the group or subgroup and may
decide the appeal as to the ground of rejection with respect to the group or

2 US 2011/0276125 A1, published Nov. 10, 2011 (“Walker”).
3 US 7,650,848 B2, issued Jan. 26, 2010 (“Brennan”).
4 In its Reply Brief, Appellant separately argues the “Apparatus claims” and
the “Method claims” using separate headings. Reply Br. 11, 14. However,
37 C.F.R. § 41.37(c) speaks to the “Contents of [an] appeal brief,” not of a
reply brief.
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subgroup on the basis of the selected claim alone.”). Representative claim 1
is reproduced below.
1. A stent comprising:
a luminal surface adapted to face the lumen of vascular
tissue;
a pattern of chemically and/or physiochemically active
geometric physiologically functional features on the luminal
surface of the stent and defined by a plurality of at least three
topographical surface features, a first topographical surface
feature comprising a plurality of first substantially parallel
linear features extending along a longitudinal axis of the stent, a
second topographical surface feature comprising a plurality of
second substantially parallel linear features having a first helical
orientation about the longitudinal axis of the stent, and a third
topographical feature comprising a plurality of third
substantially parallel linear feature having a second helical
orientation about the longitudinal axis of the stent and different
than the first helical orientation of the second topographical
feature,
whereby the plurality of physiologically functional
features are configured to promote endothelial migration in the
direction of the blood flow.
Appeal Br. 17.
DISCUSSION
Walker discloses “geometric patterns or surface topographies . . . on
the surface of both the inner and outer diameters (e.g., on both the inner and
outer surfaces) of stents or other cylindrical, tubular or curved-surface
medical devices.” Walker ¶21 (cited at Final Act. 4). The
patterns/topographies “(i) promote reductions in blood flow interference,
inflammation, and restenosis; (ii) promote favorable cell migration and
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adhesion; and/or (iii) generally improve the performance of the stent after it
is deployed in the vessel.” Id. ¶70 (cited at Final Act. 4).
The Examiner relied on Walker for disclosing substantially the same
subject matter as claim 1, save the specifically recited pattern of chemically
and/or physiochemically active geometric physiologically functional
features. Final Act. 4; see also Appeal Br. 9 (“Applicant acknowledges that
Walker teaches a stent having a pattern of geometric features on a luminal or
inner surface of the stent.”).
As recited in claim 1, those features are:
defined by a plurality of at least three topographical surface
features, a first topographical surface feature comprising a
plurality of first substantially parallel linear features extending
along a longitudinal axis of the stent, a second topographical
surface feature comprising a plurality of second substantially
parallel linear features having a first helical orientation about the
longitudinal axis of the stent, and a third topographical feature
comprising a plurality of third substantially parallel linear feature
having a second helical orientation about the longitudinal axis of
the stent and different than the first helical orientation of the
second topographical feature.
Appeal Br. 17 (claim 1). These topographical surface features are illustrated
in the Specification as grooves or channels between the sides of multiple
triangles arranged adjacent to one another. See Spec. Figs. 5A, 5B, 6B, and
7B; see also Appeal Br. 3 (“Claim 1 is best understood with reference to
Figures 5A, 5B, 6B, and 7B.”).
Brennan discloses “a surface topography for resisting bioadhesion of
organisms” for various articles, including implantable devices and materials
“such as a breast implant, a catheter, or a heart valve.” Brennan 2:36–37,
3:30–32. The Examiner found that Brennan’s Figure 2d—which shows a
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surface topography consisting of multiple triangles arranged similarly as in
Appellant’s Figures 5A, 5B, 6B, and 7B—discloses the particular
topographical surface features recited in claim 1. Final Act. 4–5; see also
Appeal Br. 9 (Appellant acknowledging Brennan discloses “the pattern of
chemically and/or physiochemically active geometric physiologically
functional features”).
The Examiner concluded:
It would have been obvious to one with ordinary skill, in the art
at the time of the invention, to improve the surface topology of
the Walker stent by providing a pattern of chemically and/or
physiochemically active geometric physiologically functional
features as taught by Brennan in order to predict the degree of
freedom of movement of blood flow (cells) in the Walker stent
([Brennan] Col. 13, Lines 28–37). See MPEP §2143 C which
describes the prima facie obviousness of the use of known
technique to improve similar devices (methods, or products) in
the same way.
Final Act. 5.
Appellant first argues that “there is no suggestion or motivation to
make the proposed modification as proposed by the Examiner.” Appeal
Br. 9. That argument is erroneous, as the Examiner’s reasoning was
provided (see Final Act. 5) and is quoted above.
Appellant next argues—and, in doing so, contradicts its first
argument—that the Examiner’s reason to combine is deficient because “the
device of Brennan and the stent of Walker are not ‘similar devices’ nor do
the references use known techniques in the same way.” Appeal Br. 9. This
argument is not persuasive for multiple reasons. First, as a matter of law, the
argument is deficient because, as the Examiner points out (see Ans. 10), it is
a comparison of each prior art reference to the claimed invention, not to
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other prior art references, that matters. See In re Oetiker, 977 F.2d 1443,
1447 (Fed. Cir. 1992) (“In order to rely on a reference as a basis for rejection
of the applicant’s invention, the reference must either be in the field of the
applicant’s endeavor or, if not, then be reasonably pertinent to the particular
problem with which the inventor was concerned.” (emphasis added)).
Second, the device of Brennan, which may be “an implantable device or
material” (see Brennan 3:30–31), indeed is similar to that of Walker (i.e., a
stent, which is an implantable device).
Appellant also argues that the Examiner’s proposed combination of
Walker and Brennan does not satisfy the last recitation of claim 1, namely:
“whereby the plurality of physiologically functional features are configured
to promote endothelial migration in the direction of the blood flow.” Appeal
Br. 9–10. Appellant notes that Walker’s stated objective to “promote
favorable cell migration” (Walker ¶70) does not mention the direction
thereof. Appeal Br. 9–10. Appellant argues that “in examining the patterns
of geometric features depicted in Figures 5–9 of Walker, one skilled in the
art would understand that the geometric features are oriented transverse to
the axis of blood flow through the lumen of the stent.” Id. at 10. But
transverse is a broader term than perpendicular. Indeed, Walker shows
geometric features that appear to be oriented about 45 degrees (or 135
degrees) with respect to the axis of blood flow. See, e.g., Walker Fig. 8.
Thus, we understand Appellant to argue that, in Walker, cell migration along
such features is not “in the direction of the blood flow” because it is also in
other directions. This argument is not persuasive because Appellant has not
proposed, let alone supported, such a narrow construction of the phrase “in
the direction of the blood flow.”
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Further, the Examiner properly interprets the longer phrase “whereby
the plurality of physiologically functional features are configured to promote
endothelial migration in the direction of the blood flow” as an intended use
of the claimed stent. Ans. 6. In applying that interpretation, the Examiner
determined that, because the prior art teaches all structural limitations of
claim 1, there can be no patentable distinction of claim 1 over the prior art
based on what that structure is intended to achieve. Id. at 6–7. We find no
error in that determination, as Appellant does not identify any structure
missing from the prior art.
Appellant also argues that Brennan teaches away from the claimed
invention because “Brennan’s sole purpose of its surface topography
configuration is for resisting bioadhesion of organisms on a particular
surface.” Appeal Br. 12 (emphasis added). This argument is unpersuasive
because it is based on an erroneous characterization of Brennan. As the
Examiner points out, Brennan’s teachings are not limited to resisting
bioadhesion of organisms but are also directed to encouraging bioadhesion.
Ans. 13 (citing Brennan 7:63–67). Indeed, Brennan states:
Although generally described for deterring bioadhesion, the
invention can also be used to encourage bioadhesion, such as for
bone growth. Feature dimensions of at least equal to about the
size of the larger dimension of bioorganism or cells to be
attached have been found to be effective for this purpose.
Brennan 7:63–67.
For the foregoing reasons, we affirm the rejection, under 35 U.S.C.
§ 103(a), of claim 1 as unpatentable over Walker and Brennan, as well as
claims 2 and 13–29, which fall therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
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DECISION
The Examiner’s rejection of claims 1, 2, and 13–29 is affirmed.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED