Ex Parte Schaeffer et al

Board of Patent Appeals and Interferences

Mar 20, 2012

10984520 (B.P.A.I. Mar. 20, 2012)

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.
10/984,520 11/08/2004 Darin G. Schaeffer 12730-70 (PA-5447-RF4) 3208
48003 7590 03/20/2012
BRINKS HOFER GILSON & LIONE/CHICAGO/COOK
PO BOX 10395
CHICAGO, IL 60610
EXAMINER
SEVERSON, RYAN J
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
03/20/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DARIN G. SCHAEFFER and MICHAEL C. HOFFA
__________

Appeal 2011-000513
Application 10/984,520
Technology Center 3700
__________

Before FRANCISCO C. PRATS, STEPHEN WALSH, and
ERICA A. FRANKLIN, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a branch vessel prosthesis. The Patent Examiner rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
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Application 10/984,520

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STATEMENT OF THE CASE
Claims 24-37 are on appeal. Independent claims 24, 31, and 35 are
representative. Claim 24 reads as follows:
24. A branch vessel prosthesis for use with an aorta stent graft defining a
lumen and having a fenestration aligned with a branch vessel, comprising:
a stent comprising a tubular portion, a flareable portion, and at least
one bending portion located between the tubular and the flareable portions,
where the bending portion is configured to have greater flexibility
than at least one of the tubular portion or flareable portion,
where the flareable portion comprises a distal end having a point of
attachment with the tubular portion, and further comprises a proximal end
having at least one unattached peak that is flared radially outward relative to
the distal end by bending of the bending portion,
where the greater flexibility of the bending portion facilitates flaring
of the flareable portion, and
where the bending portion comprises a metal strut having a
substantially uniform thickness and at least one apex.

Claim 31 differs from claim 24 only at the last clause, which reads instead:
where the material of the stent at the bending portion is more bendable
than the material of the tubular portion or flaring portion.

Claim 35 differs from claim 24 only at the last clause, which reads instead:
where the stent comprises metal struts and wherein at least some of
the metal struts are mechanically worked so as to facilitate bending at the
bending portion.

The Examiner rejected the claims as follows:
 claims 24-27, 29-32, and 34 under 35 U.S.C. § 103(a) as unpatentable
over Myler1 and Thompson;2
 claims 28 and 33 under 35 U.S.C. § 103(a) as unpatentable over
Myler, Thompson, and Goicoechea;3

1 Richard K. Myler, US 5,632,762, issued May 27, 1997.
2 Paul J. Thompson et al., US 2004/0254627 A1, published Dec. 16, 2004.
Appeal 2011-000513
Application 10/984,520

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 claims 35 and 37 under 35 U.S.C. § 103(a) as unpatentable over
Myler, Thompson, and Wolff;4 and
 claim 36 under 35 U.S.C. § 103(a) as unpatentable over Myler,
Thompson, Wolff, and Goicoechea.

DISCUSSION
The Examiner’s position is that Myler described a branch vessel
prosthesis having the features defined in claim 24 but for the bending
portion configured to have greater flexibility than the tubular portion or the
flareable portion. (Ans. 3.) The Examiner also found that Thompson
described a similar prosthesis with a corresponding reduced diameter portion
(26) that increases the flexibility of a bending portion. (Id.)
The Examiner concluded that claim 24 would have been obvious
because it would have been obvious “to have included a reduced diameter
bending portion between the flareable and tubular portions of Myler in the
manner taught by Thompson et al. to make it easier to expand the flareable
portion. It is the Examiner's position that the bending portion (26) can be
considered a strut and has a substantially uniform thickness.” (Id. at 4.) The
rejection did not provide a specific analysis of claim 31. The Examiner
concluded that claim 35 would have been obvious over the disclosure of an
additional reference, Wolff, which described a coil positioned in a stent to
make the stent more flexible. (Id. at 5.)
Appellants contend that “none of the cited references, alone or in
combination, discloses, teaches, or suggests the invention recited in claims

3 George Goicoechea, US 6,010,530, issued Jan. 4, 2000.
4 Rodney G. Wolff, US 5,104,404, issued April 14, 1992.
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24, 31 and 35. In addition, one of ordinary skill in the art would not have
been motivated to combine the cited references, as suggested by the
Examiner.” (App. Br. 13.) In particular, Appellants argue that neither
Myler nor Thompson, alone or in combination, discloses or suggests (1) a
bending portion comprising a metal strut having a substantially uniform
thickness and at least one apex as recited in claim 24 (id. at 13-16); or
(2) that the material of the stent at the bending portion is more bendable than
the material of the tubular portion or flaring portion as recited in claim 31
(id. at 16). Further, Appellants argue that the combined teachings of Myler,
Thompson, and Wolff do not suggest a branch vessel prosthesis bending
portion that is mechanically worked as recited in claim 35 (id. at 16-17).
The Examiner responds to the argument about claim 24 as follows:
“The portion 26 of Thompson et al. is considered the entire bending portion.
This entire portion 26 has a substantially uniform thickness.” (Ans. 6.) The
Examiner responds to the argument about claim 31 by contending that “the
bending portion as outlined above inherently and quite clearly is a material
(if it were not a material, it would not exist), and that structure is more
bendable than the tubular and flaring portions because it has a smaller
thickness. Therefore, the claim limitations are met. The claims do not
require any material property of a specific material to provide increased
bendability.” (Id.) The Examiner responds to the argument about claim 35
as follows: “Because the flared end of Myler defines a closed loop about its
circumference (and not a cantilever arm as in Thompson et al.), the flareable
portion would expand in the same manner when coils replace the cutouts.
Further the balloon of Myler forces the entire stent to take on a specific
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shape upon expansion due to the shape of the balloon (as in figures 7 and 8
of Myler), and therefore no unpredictability would be (sic) exist.” (Id. at 7.)
Appellants reply that (1) the rejection still does not account for the
apex structure recited in claim 24 (Reply Br. 3-4); (2) the Examiner’s
inherency theory for claim 31 is not supported by the evidence available (id.
at 4-5); and (3) a person of ordinary skill in the art would not have combined
the three references as the rejection them applied to claim 35 (id. at 5-6).
First, we agree with Appellants that Thompson’s notch 26, a simple
cut-out portion of Thompson’s overall device, is not reasonably understood
as a strut with a uniform thickness and at least one apex (see, e.g.,
Thompson, Figures 3-5). The rejection of claim 24 is therefore reversed.
Second, we agree with Appellants that the Examiner’s interpretation
of “material” would not be shared by a person of ordinary skill in the art,
and therefore reverse the rejection of claim 31.
Third, the rejection of claim 35 presents a closer question. We agree
with the Examiner that a person of ordinary skill in the art would have
thought flexibility to be a desirable attribute for the flareable portion of a
branch vessel prosthesis. We also agree with the Examiner that Myler’s
balloon would have enabled the proper positioning of a prosthesis fitted with
coils at the flaring portion, and the balloon would have shaped the prosthesis
for a proper placement, at least initially. However, Wolff explains that the
coil retains its flexible attributes after placement, such that it may conform to
the walls of the vessel in which it has been placed. Thus, if Myler’s branch
vessel prosthesis were made with coils and installed using Myler’s balloon,
after initial placement and balloon removal the coil would be free to shift the
flareable portion into new positions. In Wolff’s application that flexibility
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would not have been a problem, because the stent was placed in a vessel,
surrounded by the wall of the vessel which limited its movement. In
Myler’s application, the flareable portion is not surrounded by a shaping
body like the walls of the vessel. Instead, a flareable portion with the
flexibility provided by Wolff’s coils would be free to move, e.g., away from
the vessel wall into the aortic lumen. A person of ordinary skill in the art
would have recognized that freedom of movement as an undesirable aspect
of the rejection’s proposal. While Appellants’ arguments about ensuring a
seal about the fenestration and leakage do not relate directly to claim
limitations, we understand Appellants to be concerned about excess
flexibility. We conclude that Appellants have the better position and
therefore reverse the rejection of claim 35.

SUMMARY
We reverse the rejection of claims 24-27, 29-32, and 34 under
35 U.S.C. § 103(a) as unpatentable over Myler and Thompson.
We reverse the rejection of claims 28 and 33 under 35 U.S.C. § 103(a)
as unpatentable over Myler, Thompson, and Goicoechea.
We reverse the rejection of claims 35 and 37 under 35 U.S.C. § 103(a)
as unpatentable over Myler, Thompson, and Wolff.
We reverse the rejection of claim 36 under 35 U.S.C. § 103(a) as
unpatentable over Myler, Thompson, Wolff, and Goicoechea.

REVERSED
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