10643527 (P.T.A.B. Mar. 7, 2013)

Ex Parte Smith et al

Patent Trial and Appeal BoardMar 7, 2013

10643527 (P.T.A.B. Mar. 7, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte SCOTT SMITH and CHRISTOPHER BRIAN BRODEUR ____________________ Appeal 2010-006552 Application 10/643,527 Technology Center 3700 ____________________ Before: PHILLIP J. KAUFFMAN, EDWARD A. BROWN, and NEIL A. SMITH, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-006552 Application 10/643,527 2 STATEMENT OF CASE Appellants seek review of the Examiner’s rejection of claims 15, 16, and 18-23 under 35 U.S.C. § 103(a) as unpatentable over Golds (US 6,001,125; iss. Dec. 14, 1999) and Banas (US 6,264,684 B1; iss. Jul. 24, 2001). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The Invention Appellants’ claimed invention “relates generally to a tubular implantable prosthesis formed of porous expanded polytetrafluoroethylene. More particularly, the present invention relates to a composite, multi-layered endoprosthesis having increased axial and radial compliance.” Spec. 1:3-6. Claims 15, 19, and 20 are the independent claims on appeal. Claim 15, reproduced below, is illustrative of the claimed subject matter: 15. A method of providing axial and circumferential compliance to an intraluminal prosthesis stent/graft composite, comprising: (a) combining a polytetrafluoroethylene tape strip and a distensible support structure to form an assembly strip; and (b) combining said assembly strip with a substantially continuous inner tubular body support by wrapping said assembly strip about said inner tubular body support in a non- overlapping pattern, such that the distensible support structure is placed in direct contact with said tubular inner body and said tape strip completely overlies the distensible support structure forming a non-continuous outer tubular body of polytetrafluoro ethylene components. Appeal 2010-006552 Application 10/643,527 3 OPINION The Examiner concluded that the subject matter of independent claim 151 would have been obvious in view of Golds and Banas. Ans. 3-5. Specifically, the Examiner concluded that it would have been obvious to modify Golds’s outer tubular member (outer tube 22) and distensible support structure2 (stent 36) to be configured as an assembly strip, such as disclosed by Banas (i.e., cladding 11 and support member 14), “because the use of the strip allows the user to control the location of the placement of the distensible structure on the inner tubular body, allowing the user more latitude in controlling the amount of flexibility in the graft device (column 10, line 56 to column 11, line 18).” Ans. 4 (citation to Banas). Appellants make two contentions in support of the argument that the distensible support structure of the proposed combination does not directly contact the inner tubular body as called for in claim 15, and for that reason, the Examiner has not presented a prima facie case of obviousness. App. Br. 11-15; Reply Br. 1-8. We analyze Appellants’ contentions in turn. First, Appellants contend that because Banas’s distensible support structure (support member 14) is covered by polymeric cladding 11, it is not in direct contact with the inner tubular member as called for in claim 15. App. Br. 13-14; Reply Br. 4-5. Appellants correctly assert that claim 15 1 Appellants present a single argument based upon a common limitation of the independent claims (15, 19, 20) without distinguishing between the subject matter of those claims, and argue patentability for dependent claims 16, 18, and 21-23 based upon their dependence from independent claim 15. App. Br. 11-15; Reply Br. 1-8. We select claim 15 as representative, and consequently, our analysis of independent claim 15 applies to all of the claims on appeal. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). 2 A stent that may be expanded and contracted radially. Spec. 8:17-18. Appeal 2010-006552 Application 10/643,527 4 calls for the distensible support structure to directly contact the inner tubular body. App. Br., Clms. App’x, 17. However, for the reasons that follow, Appellants’ contention is unconvincing. Appellants’ characterization of Banas is inaccurate in that it is incomplete. Considering the reference as a whole, as we must do, Banas discloses that the distensible support structure (support member 14) is “preferably at least partially covered by a polymeric cladding 11.” Banas, col. 5, ll. 56-58. Therefore, Banas discloses that support member 14 may be completely clad, partially clad, or unclad.3 Without cladding 11, Banas’s distensible support structure (support member 14) would then directly contact the inner tubular member (tubular member 12). See Banas, col. 8, ll. 59-61; fig. 4B. Perhaps more importantly, the Examiner's proposed combination does not rely upon Banas’s support member 14 as the distensible support structure. Rather, the rejection relies upon Golds’s distensible support structure (stent 36) and outer tube 22 altered to be in the form of an assembly strip, as taught by Banas. Ans. 3-5. For that reason, Appellants’ contention does not address the rejection as articulated by the Examiner. Appellants’ second contention is that Golds did not contemplate an intraluminal vascular prosthesis without the use of two concentrically disposed tubular members and therefore a person of ordinary skill in the art would not have been led to discard the outer tube 22. App Br. 13-15. This 3 See In re Lamberti, 545 F.2d 747, 750 (CCPA 1976) (citing In re Simon, 461 F.2d 1387 (CCPA 1972) and In re Mills, 470 F.2d 649 (CCPA 1972)) (the question for obviousness is what the reference would have suggested to one of ordinary skill in the art at the time the invention was made, and all disclosures of the prior art, including non-preferred embodiments, must be considered). Appeal 2010-006552 Application 10/643,527 5 argument is unpersuasive because it is premised on a mischaracterization of the proposed combination. The Examiner does not propose to discard Golds’s outer tube 22. Instead, the Examiner proposes that outer tube 22 and stent 36 are formed as an assembly strip, such as disclosed by Banas, and that assembly strip is placed around the inner tubular body. See Ans. 3- 5. Therefore, Golds’s outer tube 22 is not discarded in the combination as Appellants contend; rather, it is formed in a different manner (i.e., from an assembly strip). Appellants have failed to demonstrate error in the rejection by the Examiner. Consequently, we affirm the rejection of claims 15, 16, and 18- 23. DECISION We affirm the Examiner’s decision to reject claims 15, 16, and 18-23. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED hh