Vesper Medical, Inc.

Patent Trials and Appeals Board

Dec 1, 2021

2021003702 (P.T.A.B. Dec. 1, 2021)

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.
15/897,673 02/15/2018 Michael A. Longo 10807-007US1 9238
96039 7590 12/01/2021
Meunier Carlin & Curfman LLC
999 Peachtree Street NE
Suite 1300
Atlanta, GA 30309
EXAMINER
WOZNICKI, JACQUELINE
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
12/01/2021 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):
docketing@mcciplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL A. LONGO, BRUCE J. SHOOK, and
WILLIAM JAMES HARRISON

Appeal 2021-003702
Application 15/897,673
Technology Center 3700
____________

Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1–12 and 29–35. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Vesper Medical, Inc. Appeal Br. 3.
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Application 15/897,673

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STATEMENT OF THE CASE
Claimed Subject Matter
Claim 1, the sole independent claim, is representative of the subject
matter on appeal and is reproduced below.
1. A device comprising:
an elongate tubular wall structure defining a lumen extending
therethrough and having a first free end and a second free
end opposite the first free end, the elongate tubular wall
structure having a firm region adjacent the first free end
and extending in an axial direction, a transition region
extending in the axial, and a flexible region adjacent the
second free end and extending in the axial direction,
wherein the transition region extends between the firm
and flexible regions;
wherein the firm region has a cylindrical profile about the
lumen, the transition region has a cylindrical profile
about the lumen and the flexible region has a cylindrical
profile about the lumen;
wherein the firm region has a constant first wall thickness, the
transition region has a constant second wall thickness and
the flexible region has a constant third wall thickness;
wherein the constant first wall thickness is greater than the
constant third wall thickness and contributes to a crush
resistance of the firm region being greater than a crush
resistance of the flexible region.
References
The prior art relied upon by the Examiner is:
Name Reference Date
St. Germain US 5,836,966 Nov. 17, 1998
Von Oepen US 6,264,690 B1 July 24, 2001
Kula et al. (“Kula”) US 6,325,825 B1 Dec. 4, 2001
Hendriksen et al.
(“Hendriksen”)
US 2011/0152994 A1 June 23, 2011

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Rejections
Claims 1–9 and 29–35 are rejected under 35 U.S.C. § 103 as
unpatentable over Kula and Von Oepen.
Claims 10 and 11 are rejected under 35 U.S.C. § 103 as unpatentable
over Kula, Von Oepen, and St. Germain.
Claim 12 is rejected under 35 U.S.C. § 103 as unpatentable over Kula,
Von Oepen, and Hendriksen.

ANALYSIS
Claim 1 calls for an elongate tubular wall structure having a firm
region, a transition region, and a flexible region, in which each region has a
constant wall thickness and the constant wall thickness of the firm region is
greater than the constant wall thickness of the flexible region. See supra.
The Examiner finds Kula teaches a stent, having substantially all of
the subject matter of claim 1, including an elongate tubular wall structure,
with a firm region, a transition region, and a flexible region. Non-Final
Act. 3–4, 5 (annotating Kula, Fig. 12). The Examiner finds that Kula fails to
teach that each region has a constant wall thickness. See id. at 4. To remedy
this deficiency the Examiner relies on the teachings of Von Oepen. Id. at 4,
6 (annotating Von Oepen, Fig. 2). Thereafter, the Examiner determines:
It would have been obvious to one of ordinary skill in the art
. . . to modify the stent of Kula by having the stent have three
sections of constant wall thickness, separated from one another
via frustoconical wall segments such as is taught by
Von Oepen, as an obvious alternative to having smoothly
transitioning and constantly changing wall thicknesses, which is
known in the art for transitioning between different diameters in
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different areas of a stent: [Manual of Patent Examining
Procedure (MPEP) §] 2143 (I)(B).
Non-Final Act. 4–5.
The Appellant argues that the Examiner’s rejection of claim 1 is based
on an improper combination. See Appeal Br. 13–14. In the Appellant’s
view, the rejection picks and chooses features from the teachings of Kula
and Von Oepen, and reassembles them to achieve the claimed invention
without having an adequately supported reason for doing so. See id. The
Appellant’s argument is persuasive.
The Examiner’s reasoning is based on a finding that Von Oepen’s
stent is an “obvious alternative” of Kula’s stent. Non-Final Act. 4–5.
Specifically, the obvious alternative is particular to Von Oepen’s teaching of
a “stent hav[ing] three sections of constant wall thickness, separated from
one another via frustoconical wall segments.” Id. at 5. These structural
features of Von Oepen’s stent are particular to the stent’s entire structure.
See id. at 6 (annotating Von Oepen, Fig. 2). Additionally, we note that the
Examiner’s citation to MPEP § 2143(I)(B) refers to an exemplary rationale;
namely, a “[s]imple substitution of one known element for another to obtain
predictable results.” Accordingly, we understand the Examiner’s reference
to an “obvious alternative” to correlate to a “simple substitution” rationale.
Under this rationale, one of ordinary skill in the art would have understood
that the entire structure of Von Oepen’s stent as an alternative or substitute
for the entire structure of Kula’s stent. This reasoning/rationale, however,
would not have resulted in the claimed invention. As pointed out by the
Appellant, Von Oepen’s stent has first and third regions, which correlate to
Kula’s firm and flexible regions, do not have different wall thicknesses. See
Appeal Br. 12–13. Therefore, under an obvious alternative (i.e., simple
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substitution) rationale the result of the combination is does not correspond to
the subject matter of claim 1, which requires the constant wall thickness of
the firm (“first”) region to be greater than the constant wall thickness of the
flexible (“third”) region.
We note that the Examiner seeks to bolster the obvious alternative
reasoning/rationale by citing to the Specification at paragraph 82 and case
law concerning changes in shape being obvious. Non-Final Act. 5.
Specifically, the Examiner adds:
The Examiner notes Applicant acknowledges this is a known
alternative, with neither having a distinct benefit over the other,
in their own specification [0082]. (It has been held by the
courts that a change in shape or configuration, without any
criticality in operation of the device, is nothing more than one
of numerous shapes that one of ordinary skill in the art will find
obvious to provide based on the suitability for the intended final
application. See In re Dailey, 149 USPQ 47 (CCPA 1976).)
Id. The reference to paragraph 82 of the Specification is particular to the
disclosure of the Appellant’s invention, which is distinct from what is
“known” in the prior art as an “alternative.” Also, the Examiner’s citation to
Dailey –– for the notion that changes in shape are obvious (see Ans. 22) ––
appears to be offered to support the obvious alternative reasoning/rationale.
Similar to our discussion above, this reasoning/rationale would not have
resulted in the claimed invention, which requires the constant wall thickness
of the firm region to be greater than the constant wall thickness of the
flexible region.
In the Answer, the Examiner responds to the Appellant’s argument by
indicating that the argument attacks the references individually, instead of
acknowledging that the rejection is based on a combination of reference
teachings. See id. at 14, 15–16, 18, 19. In this regard, we understand that
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the Examiner’s rejection may have sought to only rely on one structural
feature of the wall structure of Von Oepen’s “first” region without relying
on another structural feature of the “first” region. See, e.g., Ans. 19–20.
The obvious alternative (i.e., simple substitution) reasoning/rationale that the
Examiner’s rejection sets forth, however, is an inadequate basis for
substituting one structural feature (i.e., a constant thickness) of the wall
structure of Von Oepen’s “first region” and not another coextensive
structural feature (i.e., magnitude of thickness) of the wall structure of
Von Oepen’s “first region.” In this regard, we determine that the
Examiner’s rejection of independent claim 1 lacks articulated reasoning with
rational underpinning to support a conclusion of obviousness.
Thus, we do not sustain the Examiner’s rejection of independent
claim 1 and dependent claims 2–9 and 29–35 under 35 U.S.C. § 103 as
unpatentable over Kula and Von Oepen. Further, the Examiner fails to rely
on the teachings of St. Germain or Hendriksen in any manner that would
remedy the deficiency in the Examiner’s rejection of claim 1. Thus, we
likewise do not sustain the rejections under 35 U.S.C. § 103 of: dependent
claims 10 and 11 as unpatentable over Kula, Von Oepen, and St. Germain;
and dependent claim 12 as unpatentable over Kula, Von Oepen, and
Hendriksen.

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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–9, 29–35 103 Kula, Von Oepen

1–9, 29–35
10, 11 103 Kula, Von Oepen,
St. Germain
10, 11
12 103 Kula, Von Oepen,
Hendriksen
12
Overall
Outcome
1–12,
29–35

REVERSED