Appeal 2007-1998
Application 09/997,829
Nevertheless, the Examiner concludes that
it would have been obvious to one of ordinary skill in the art to
use the coating of a bioerodible polymer with a therapeutic
agent as taught by Choi . . . on the surface of the stent of Myers
. . . such that a drug can be administered to the implantation site
where trauma occurred such as an anti-inflammatory.
(id.)
What is missing from the combination of Myers and Choi, however, is
any teaching to suggest that Choi’s polymer can be used to coat a stent (Br.
6), let alone coat a stent with Choi’s drug carrying polymer and then wrap
the coated stent with PTFE tape. As set forth in KSR Int’l Co. v. Teleflex
Inc., 127 S.Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007).
[A] patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was,
independently, known in the prior art. Although common sense
directs one to look with care at a patent application that claims
as innovation the combination of two known devices according
to their established functions, it can be important to identify a
reason that would have prompted a person of ordinary skill in
the relevant field to combine the elements in the way the
claimed new invention does.
While the Examiner asserts that a person of ordinary skill in the art would
have found it obvious to coat Myers’ stent with a polymer containing an
anti-inflammatory (Answer 5), the Examiner fails to establish a factual basis
to suggest that a person of ordinary skill in the art would recognize that a
stent can be coated with Choi’s drug carrying polymer and then wrapped
with PTFE tape. Prima facie obviousness requires a teaching that all
elements of the claimed invention are found in the prior art and a reason that
would have prompted a person of ordinary skill in the relevant field to
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