Ex Parte Schaeffer

Patent Trial and Appeal Board

Nov 20, 2014

10984416 (P.T.A.B. Nov. 20, 2014)

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.
10/984,416 11/08/2004 Darin G. Schaeffer 12730-25 (PA-5447-RF5) 3477
48003 7590 11/21/2014
BGL/Cook - Chicago
PO BOX 10395
CHICAGO, IL 60610
EXAMINER
LOUIS, RICHARD G
ART UNIT PAPER NUMBER
3734
MAIL DATE DELIVERY MODE
11/21/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte DARIN G. SCHAEFFER
_________

Appeal 2012-009282
Application 10/984,416
Technology Center 3700
__________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

PAULRAJ, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a stent
graft system. The Examiner rejected the claims for obviousness. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

STATEMENT OF THE CASE
Background
The Specification “relates to a branch vessel stent for use in
connection with a fenestrated stent graft device for placement in a vessel of a
body” (Spec. ¶ 16). The Specification describes the use of “[p]ositional
indicators 43, such as radiopaque markers, [that] may be attached to or

1 Appellant identifies the Real Party in Interest as Cook Incorporated (see
App. Br. 1).
Appeal 2012-009282
Application 10/984,416

2
integral with the stent and/or graft material, and may be placed at positions
on the branch vessel prosthesis 11 to indicate the proximal end 30, the
flaring portion 36 and/or the distal end 32” (id., ¶ 75). “Preferably, a
positional marker 43 is placed so as to indicate that portion of the branch
vessel prosthesis 11 that generally aligns with the fenestration 7” (id.).
The Claims
Claims 1–4, 6, 7, 10, 11, 13, 15–21, 24, and 25 are under appeal.
Independent claim 1 is representative, and reads as follows:
1. A stent graft system for intraluminal deployment in an
aorta and a branch vessel comprising:
an aorta stent graft with a fenestration configured to
be aligned with a branch vessel;
a branch vessel prosthesis having proximal and distal
ends, and further having a flaring portion and a tubular
portion, wherein, when deployed, the flaring portion is
retained within the aorta stent graft, and the tubular portion
is configured to extend through the fenestration and into the
branch vessel; and
a first positional indicator positioned between the
tubular portion and the flaring portion of the branch vessel
prosthesis that aligns with the fenestration during
deployment,
wherein the branch vessel prosthesis comprises an
undeployed state prior to flaring of the flaring portion, and
further comprises a deployed state in which the flaring
portion is flared outward relative to the tubular portion,
wherein the first positional indicator indicates a
bending portion of the branch vessel prosthesis that
comprises one of a "V" shaped-segment, a "W" shaped-
segment, and an "S" shaped-segment in at least the
undeployed state.

Appeal 2012-009282
Application 10/984,416

3
The Issues

The Examiner rejected the claims as follows:
I. Claim 25 under 35 U.S.C. § 112, ¶ 1 for failing to comply with
the written description requirement.
II. Claim 25 under 35 U.S.C. § 112, ¶ 1 for failing to comply with
the enablement requirement.
III. Claims 1–4, 6, 7, 21, and 24 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Vardi ʼ429,2 Thompson,3
and Frantzen.4
IV. Claims 10 and 11 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Vardi ʼ429, Thompson,
Frantzen, and Burney.5
V. Claims 13 and 15–20 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Vardi ʼ429, Thompson,
Frantzen, and Vardi ʼ483.6
Appellant does not present any arguments for the rejections of claim
25 under § 112, ¶ 1. We therefore summarily affirm those rejections and
will not discuss them further.

2 Vardi et al., US 6,210,429 B1, issued Apr. 3, 2001.
3 Thompson et al., US 2004/0254627 A1, published Dec. 16, 2004.
4 Frantzen, US 6,293,966 B1, issued Sep. 25, 2001. The Examiner entered a
new ground of rejection for claim 21 based on the same combination of
Vardi ʼ429, Thompson, and Frantzen (Ans. 4). In accordance with 37 C.F.R.
§ 41.39(b)(2), Appellant has chosen to maintain the appeal as to that
rejection by addressing it in the Reply Brief (Reply Br. 6).
5 Burney et al., US 6,056,700, issued May 2, 2000.
6 Vardi et al., US 6,692,483 B2, issued Feb. 17, 2004.
Appeal 2012-009282
Application 10/984,416

4
ANALYSIS
With respect to the obviousness rejections, the Examiner finds that

Vardi '429 discloses positional indicators located at a variety
of locations including at the proximal and distal ends and
surrounding the fenestration on the aorta stent 12, and at the
proximal and distal ends of the tubular portion of the branch
vessel as well as on the flaring portion 18. (See Col. 6 Line
61-Col. 7 Line 4, Col. 7, Lines 28-38, and Col. 8, Lines 48-
54).

(Ans. 6). The Examiner also relies upon Figure 5 of Vardi ʼ429 as “showing
two rows of positional indicators 56 seemingly adjacent to one another,” and
asserts that “it appears from the disclosure one of these two rows of
indicators 56 is disposed on the proximal end of the tubular member while
the other is disposed on the flared portion” (id. at 7). The Examiner
acknowledges that “Vardi '429 fails to disclose positional indicators
disposed between the tubular portion and the flaring portion of the branch
vessel prosthesis that align with the fenestration during deployment,” but
relies upon Thompson’s teaching of

a related prosthesis comprising positional indicators 40
disposed between a tubular portion 22 and a flaring portion
24 of a prosthesis wherein the indicators 40 align with a
fenestration during deployment. The flaring portion 24 is
considered to comprise the outer portion of the cantilever
member 32 since this is the portion that flares outwardly
away from the stent body. Said indicators 40 allow a
physician to precisely determine the position of the portion

Appeal 2012-009282
Application 10/984,416

5
of the prosthesis where the tubular portion 22 and the flared
portion 24 meet.

(id.). Based on this teaching, the Examiner finds that it would have been
obvious to modify the Vardi ʼ429 apparatus “by providing positional
indicators at the junction of the tubular portion and the flared portion
indicating a bending portion of the prosthesis” (id.).
We have considered the cited teachings of the prior art and the
Examiner’s position, but determine that a prima facie showing of
obviousness has not been made.
Appellant argues that “Thompson’s positional indicator is on the
flaring/cantilevered portion itself, not positioned between the tubular portion
and the flaring portion of a branch vessel prosthesis that aligns with the
fenestration during deployment,” and “[t]his distinction is very clinically
important” because it would not allow a physician to properly align the
branch vessel (App. Br. 15 (emphasis omitted)). We agree. Thompson only
teaches that the enlargements 40 and inserts 42 (relied upon by the Examiner
as the claimed positional indicators) are located on “an end 24 adopted to be
flared relative to the main body 22” (Thompson, ¶ 25). The Examiner
provides no basis to conclude that any portion proximal to the enlargement
40/insert 42 in Figure 2 of Thompson, including either the tip 24 or the
portion between the cantilever strut 32 and the tip of enlargement 38
identified by the Examiner (Ans. 11), would be considered by a skilled
artisan to be a “flaring portion” in the manner claimed. To the contrary,
Thompson identifies the entire length of end 24 as being “flared relative to
the main body 22” (Thompson, ¶ 25). Thompson further teaches that
“[p]redefined bend locations such as notches 26 are located between the
Appeal 2012-009282
Application 10/984,416

6
main body and the end 24” (id.). In view of this disclosure, we find that the
Examiner has not made a prima facie showing that Thompson teaches or
suggests a first positional indicator that is positioned between the tubular
portion and the flaring portion of the branch vessel prosthesis that aligns
with the fenestration during deployment as required by the claims.
The Examiner does not cite to any other prior art teaching to make up
for this deficiency. We therefore reverse the obviousness rejection of claims
1–4, 6, 7, 21, and 24 over the combination of Vardi ʼ429, Thompson, and
Frantzen. We also reverse the obviousness rejections of claims 10 and 11
based on the further teachings of Burney and claims 13 and 15–20 based on
the further teachings of Vardi ʼ483.
SUMMARY
We summarily affirm the rejection of claim 25 under 35 U.S.C. § 112,
¶ 1 for failing to satisfy the written description requirement.
We summarily affirm the rejection of claim 25 under 35 U.S.C. § 112,
¶ 1 for failing to satisfy the enablement requirement.
We reverse the rejection of claims 1–4, 6, 7, 21, and 24 under 35
U.S.C. § 103(a) as being unpatentable over the combination of Vardi ʼ429,
Thompson, and Frantzen.
We reverse the rejection of claims 10 and 11 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Vardi ʼ429, Thompson,
Frantzen, and Burney.
We reverse the rejection of claims 13 and 15–20 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Vardi ʼ429,
Thompson, Frantzen, and Vardi ʼ483.

Appeal 2012-009282
Application 10/984,416

7

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

AFFIRMED-IN-PART

tc