Ex Parte Greenan

Patent Trial and Appeal Board

Apr 25, 2017

11277976 (P.T.A.B. Apr. 25, 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.
11/277,976 03/30/2006 Trevor Greenan P23250 5654
77218 7590 04/27/2017
MeHtrnnio Vasionlar - APV Division
EXAMINER
c/o IP Legal Department
3576 Unocal Place
LOUIS, RICHARD G
Santa Rosa, CA 95403 ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
04/27/2017 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 TREVOR GREENAN
Appeal 2015-007669
Application 11/277,976
Technology Center 3700
Before JOHN C. KERINS, WILLIAM A. CAPP, and
BRANDON J. WARNER, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Trevor Greenan (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1—7, 9-11, and 36-46. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2015-007669
Application 11/277,976
THE INVENTION
Appellant’s claimed invention is directed to a tubular prosthesis for
deployment in a human body passageway. Claim 1, reproduced below, is
illustrative:
1. Tubular prosthesis for deployment in a human body
passageway comprising:
a tubular member adapted for placement in a passageway
in a human body, said tubular member having an expanded
state, a tubular wall with an inner wall surface, first and second
end openings, and a side opening formed in said tubular wall
between said first and second end openings;
a tube having a first end portion and a second end
portion, said first end portion being disposed in said tubular
member and extending toward said side opening, wherein the
first end portion comprises a distal end opening that faces the
first end opening of the tubular member; and
a securing mechanism, said tube being secured to said
tubular member inner wall surface through said securing
mechanism when said tubular member is in said expanded state,
said tube being secured to said tubular member inner wall
surface such that it does not pass through said side opening,
whereby an elongated element can be passed through said tube
and out from said side opening in said tubular wall and said
tube can be detached from said tubular member so that it can be
moved relative to and withdrawn over the elongated element.
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Appeal 2015-007669
Application 11/277,976
THE REJECTIONS
The Examiner rejects:
(i) claims 1—3, 9-11, 36—39, and 41—46 under 35 U.S.C. § 103(a) as
being unpatentable over Fawzi (US 2004/0243221 Al, published Dec. 2,
2004); and
(ii) claims 4—7 and 40 under 35 U.S.C. § 103(a) as being unpatentable
over Fawzi in view of Chuter (US 6,814,752 Bl, issued Nov. 9, 2004).
ANALYSIS
Claims 1—3, 9—11, 36—39, and 41—46—Unpatentability over Fawzi
Claims 1—3, 9—11, 36—39, and 41—45
The Examiner finds that Fawzi discloses the tubular prosthesis of
claim 1, with the exception of a distal end opening of a first end portion of a
tube (graft sleeve 100 in Fawzi) facing a first end opening of a tubular
member. Final Act. 4. Invoking a statement appearing in paragraph 42 of
Fawzi, namely that “[t]he bifurcated graft sleeve 100 is affixed inside the
graft bifurcation or crotch 102 though the sleeve 100 can be placed
anywhere on a graft or other medical device,” the Examiner concludes that
it would have been obvious to modify the explicitly illustrated embodiment
of Fawzi such that the distal end opening faces not a side opening in the
graft, but rather a first end (main) opening of the graft. Id.', Fawzi, para. 42
(emphasis added). The stated reason for making this modification is so that
the elongate positioning mechanism can be routed to a position facing the
first end of the opening. Id.
Appellant argues that repositioning sleeve 100 such that the distal end
opening faces the first main opening of the graft essentially renders the
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Appeal 2015-007669
Application 11/277,976
sleeve unsuitable for its intended purpose of providing a constricted path for
guide wire 46 to travel from ipsilateral tubular member 32 across a crotch
region, and into contralateral tubular member 46, to aid in positioning
contralateral member within contralateral iliac artery 148. Appeal Br. 9—11.
The Examiner responds that persons of ordinary skill in the art recognize
that bifurcated vessels in the body may extend in many different directions,
and that the proposed modification to Fawzi would operate “to route a guide
wire through a contralateral member [that] extend[s] [in] the same direction
as the first end opening of the graft.” Ans. 3.
We agree with Appellant that the statement in Fawzi to the effect that
sleeve 100 may be placed anywhere on a graft or other medical device must
be interpreted taking into account the reason why such a sleeve is provided
at the outset. Reply Br. 2. As noted by Appellant, the basic purpose is to
provide a constricted path for a guidewire, such as guidewire 48, within a
graft or other medical device, and in particular to ensure that “a physician
may manipulate the guide wire 48” into a particular desired position or
location. Fawzi, para. 42. The Examiner appears to agree, stating that “the
purpose of the guide tube (100) is to route the elongate positioning
mechanism (guide wire) through the prosthesis into a bifurcation.” Ans. 2,
citing Fawzi, para. 42.
Claim 1 requires that a first end portion of a tube have a distal end that
“faces the first end opening of the tubular member.” Appeal Br, Claims
App ’x. The Examiner’s position that it would have been obvious to modify
Fawzi such that the sleeve disclosed therein would be positioned to route a
guide wire through a contralateral member extending in the same direction
as the first end opening would appear to result in the sleeve facing into the
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Appeal 2015-007669
Application 11/277,976
contralateral member, and not facing the first end opening of the main
tubular member. Stated differently, if the intent of the sleeve is to route a
guide wire through a prosthesis into a bifurcation, the sleeve would extend
into the bifurcation, just as in Figure 1 of Fawzi, in order to ensure an
accurate routing of the guide wire.
In the same vein, the Examiner’s characterization of a so-called
contralateral member “extending in the same direction as the first end
opening of the graft” (Ans. 3) is a misnomer, in that the bifurcated
contralateral member cannot extend in the same direction as the opening of
the graft. The Examiner appears to be using the term “in the same direction”
unduly broadly as referring to, for example, in Figure 1 of Fawzi, the
contralateral member as extending generally upwardly rather than
downwardly as illustrated. The Examiner has not established that a sleeve
extending into an upwardly-facing contralateral member would be facing the
first end opening of the main tubular member, as set forth in claim 1.
Accordingly, the rejection of claim 1 is not sustained. Independent
claim 36 includes substantially the same limitation addressed above, and the
rejection of that claim is also not sustained. Claims 2, 3, 9—11, 37—39 and
41—45 depend from either claim 1 or claim 36, and the rejection of these
claims as being unpatentable over Fawzi is also not sustained.
Claim 46
Independent claim 46 includes limitations requiring a guide tube axis
to extend through a tubular member between first and second end openings
thereof, and a guide tube aligned with the guide tube axis from the first end
opening of the tubular member to a distal end of the guide tube. Appeal Br.,
Claims App’x. The Examiner best explains how these elements are asserted
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Appeal 2015-007669
Application 11/277,976
to be met by Fawzi in an annotated version of Figure 1 of Fawzi appearing at
page 4 of the Answer. The Examiner states that “guide tube (100) clearly
has a central longitudinal axis throughout its length.” Ans. 4. Given that
guide tube 100 is illustrated as being bent over and secured to two legs of a
tubular member at a crotch region, the Examiner’s statement that the guide
tube has a single longitudinal axis throughout its length is not supported by a
preponderance of the evidence. Further, as urged by Appellant, the
Examiner has failed to establish how the guide tube or sleeve in Fawzi is
aligned with such guide tube axis from extends from a first end opening of
the tubular member to a distal end of the guide tube or sleeve.
Accordingly, the rejection of claim 46 as being unpatentable over
Fawzi is not sustained.
Claims 4—7 and 40—Unpatentability over Fawzi and Chuter
The Examiner does not rely on Chuter in any manner that would
remedy the deficiencies noted above with respect to the Fawzi reference.
The rejection of claims 4—7 and 40 is thus not sustained.
DECISION
The Examiner’s rejections of claims 1—7, 9—11, and 36-46 are
reversed.
REVERSED
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