Ex Parte Venturelli

Board of Patent Appeals and Interferences

Jan 12, 2012

10538913 (B.P.A.I. Jan. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ANDREA VENTURELLI
__________

Appeal 2010-007594
Application 10/538,913
Technology Center 3700
__________

Before ERIC GRIMES, LORA M. GREEN, and JEFFREY N. FREDMAN,
Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-49 and 51-56. We have jurisdiction under
35 U.S.C. § 6(b).
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Application 10/538,913

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STATEMENT OF THE CASE
Claim 1 is the only independent claim on appeal, and reads as follows
(element lettering in [ ] added):
1. An expandable endolumenal prosthesis comprising, in the non-
expanded configuration,
[a] a tubular body extending along a longitudinal axis and having a
distal end and a proximal end;
[b] the tubular body having a porous wall defined by a plurality of
interlaced circumferential lines forming a pathway motif or pattern wherein
at least one line is closed onto itself;
[c] each of the lines extends along an axis;
[d] each of the lines comprises at least one plurality of modules;
[e] each module comprises three lobes, that is, two outer lobes and
one inner lobe disposed between the two outer lobes in the pathway of the
pattern;
[f] each lobe comprising one or more curved sections having
concavities facing in the same direction, defining an apex of the lobe;
[g] the lobes opening alternately on opposite sides of the pathway of
the pattern along the extent of the line;
[h] both of the outer lobes of the three lobes being extended by
straight outer arms;
[i] the at least one plurality of modules being arranged consecutively
so as to have successive outer arms which extend from the outer lobes in
substantially opposite directions relative to the pathway of the pattern for
two successive modules; and wherein,
[j] for each module, the distance between the apex of one of the outer
lobes and the apex of the inner lobe of the same module is less than the
distance between the apex of the same outer lobe and the apex of any outer
lobe of an adjoining module;
[k] for each line, there is at least one adjacent line which has a motif
that is a mirror image of the said line with respect to an axis parallel to the
axis of the line;
[l] at least one connecting element or bridge is provided between two
adjacent lines; and
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[m] each said bridge directly connects two opposed outer lobes of two
adjacent lines, and each said bridge extends along a longitudinal axis parallel
to the longitudinal axis of the tubular body;
[n] one bridge is provided per module, said bridge extending towards
an adjacent line on the opposite side to the outer arms of the module; and
[o] each said bridge is provided between two adjacent lines, for every
five complete lobes of a line, three outer lobes and two inner lobes.

The following grounds of rejection are before us for review:
I. Claims 1-17, 19-21, 23-31, 34, 40, 41, 43-46, and 51-53 stand
rejected under 35 U.S.C. § 103(a) as being rendered obvious by the
combination of Dang
1
and Fischell.
2

II. Claims 18, 22, 32, 33, 35-39, 47-49, and 54 stand rejected under 35
U.S.C. § 103(a) as being rendered obvious by the combination of
Dang and Fischell, as further combined with Callol.
3

III. Claim 42 stands rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Dang and Fischell, as
further combined with Moore.
4

IV. Claims 55 and 56 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Dang and Fischell, as
further combined with Ragheb.
5

We affirm.

1
Dang, US 5,935,162, issued Aug. 10, 1999.
2
Fischell et al., US 6,540,775 B1, issued Apr. 1, 2003.
3
Callol et al., US 2002/0183763 A1, issued Dec. 5, 2002.
4
Moore, US 2002/0065547 A1, issued May 30, 2002.
5
Ragheb et al., US 6,299,604 B1, issued Oct. 9, 2001.
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ISSUE
Does the preponderance of evidence of record support the Examiner’s
conclusion that the combination of Dang and Fischell renders the
endolumenal prosthesis of claim 1 obvious?

FINDINGS OF FACT
FF1. The present invention is drawn to an expandable endolumenal
prosthesis (Spec. 1).
FF2. Figure 1 of the Specification is reproduced below:
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Figure 1 is a two-dimensional view of a pathway motif for the endolumenal
prosthesis, in the non-expanded configuration (id. at 5).
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FF3. As to Rejection I, as Appellant does not argue the claims separately,
we focus our analysis on claim 1, and claims 2-17, 19-21, 23-31, 34, 40, 41,
43-46, and 51-53 stand or fall with that claim. 37 C.F.R. § 41.37(c)(1)(vii).
FF4. The Examiner finds that Dang discloses elements [a] through [l] of
claim 1 (Ans. 3-4 (referencing Figure 2 of Dang)).
FF5. Figure 2 of Dang is reproduced below.
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Figure 2 is a plan view of the stent of Dang after unrolling it from its tubular
shape (Dang, col. 3, ll. 64-65).
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FF6. The Examiner notes that “Dang does not disclose the bridges directly
connect opposed outer lobes of adjacent lines wherein each bridge is
provided between two adjacent lines, for every five complete lobes of a line,
three outer lobes and two inner lobes” (Ans. 5).
FF7. The Examiner cites Fischell for teaching “using bridges to attach one
outer lobe of opposing w-shaped modules for increased flexibility while
allowing for the stent to have a reduced diameter upon crimping onto a
balloon, as well as reduced flaring of the outer lobes” (id.).
FF8. The Examiner further finds that Fischell “essentially teach[es] that
providing bridges on every other outer lobe prevents the bridges from
interfering with eachother [sic] when the stent is crimped to a small
diameter” (id.).
FF9. Figure 1 of Fischell is reproduced below:
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Figure 1 is a layout view of the stent of Fischell in its pre-deployed state
(Fischell, col. 3, ll. 54-56).
FF10. The Examiner characterizes Figure 1 of Fischell as showing:
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Thus, as annotated by the Examiner, the above figure highlights a W-shaped
element, as well as pointing out what the Examiner considers to be the outer
lobes (Ans. 5).
FF11. Figure 5 of Fischell is reproduced below:
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Figure 5 shows a layout of an alternative stent of Fischell wherein the
“alternate adjacent curved sections are connected by straight longitudinal
connecting links” (Fischell, col. 4, ll. 1-3).
FF12. The Examiner concludes:
[I]t would have been obvious to a person having ordinary skill
in the art at the time the invention was made to modify Dang’s
stent to include Fischell et al.’s bridges. Such a modification
allows for improved flexibility, minimum crimpable diameter
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and reduced outer lobe flaring. Furthermore, since Dang
discloses that the bridge (tie members) should connect modules
(“w-shaped”elements) that open up towards eachother [sic]
(Abstract; Figure 2), it would have been obvious to one of
ordinary skill in the art to attach outer lobes (in view of Fischell
et al.) only to modules that open up towards eachother [sic] (in
view of Dang). This would result in the structure shown below
(of course with Fischell et al.’s extended bridge shape) which
meets the limitations of Appellant’s claim 1.

(Ans. 6.)

ANALYSIS
Appellant argues that the combination is based on impermissible
hindsight (App. Br.
6
4-6). We do not agree. Both Dang and Fischell are
drawn to endolumenal prostheses, and the geometries of both are based on a
W-shaped motif. In determining whether obviousness is established by

6
As Appellant did not number the pages in the Appeal Brief, we designate
the title page of the brief as page 1, and number the pages consecutively
therefrom.
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combining the teachings of the prior art, “the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). In addition, a
reference disclosure is not limited only to its preferred embodiments, but is
available for all that it discloses and suggests to one of ordinary skill in the
art. In re Lamberti, 545 F.2d 747, 750 (CCPA 1976). Thus, we agree with
the Examiner, that the ordinary artisan of ordinary skill in this art would
have been motivated to combine the references to arrive at the endolumenal
prosthesis of claim 1. See also KSR Int' l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (noting that the analysis under 35 U.S.C. § 103 “need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.”).
Appellant argues that both Dang and Fischell lack features (m) and (o)
(Reply Br.
7
5). Appellant argues that Fischell teaches bridges on every long
lobe and on every two lobes, and that Fischell’s certificate of correction
“indicates that the essential feature of this patent is the 50% ratio between
the unlinked lobes and the linked lobes” (id. at 3). Moreover, Appellant
asserts that as shown in Figure 1 of Fischell, the bridge does not connect the
apex of the lobe, nor does it connect the lobes, but “does project from or
connect a line that extends between the arm and the lobe” (id. at 4).
Appellant asserts that the modules of Fischell and Dang are completely

7
As Appellant did not number the pages in the Reply Brief, we designate the
title page of the brief as page 1, and number the pages consecutively
therefrom.
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different, and thus there would be no reason to modify Dang’s stent to
include Fischell’s bridges (id. at 7).
Appellant argues further that even if one were to use the alternate
layout as shown in Figure 5 of Fischell, one would obtain the following
geometry:

(id. at 8). Appellant asserts that the structure obtained by the Examiner “is
obtained by connecting only certain curved sections of the module in a
completely arbitrary (or inventive) way,” and is not taught or suggested by
Dang or Fischell (id.).
We have carefully considered Appellant’s arguments, but do not find
them convincing. As noted by the Examiner, Fischell teaches using bridges
to attach one outer lobe of opposing W-shaped molecules. While the motifs
of Dang and Fischell are not the same, they are both comprised of W-shaped
modules. Thus, substituting the bridge of Fischell, which is attached to one
of two outer lobes of opposing W modules, for the bridge of Dang which
connects two apexes of opposing W modules, would lead to the geometry as
set forth by the Examiner (see FF12), which Appellant does not dispute
meets the limitations of claim 1.
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As to Appellant’s argument that Fischell’s certificate of correction
indicates that the essential feature of Fischell is the 50% ratio between the
linked and the unlinked lobes, Appellant appears to be arguing that Fischell
teaches away from the combination.
“Under the proper legal standard, a reference will teach away when it
suggests that the developments flowing from its disclosures are unlikely to
produce the objective of the applicant’s invention. A statement that a
particular combination is not a preferred embodiment does not teach away
absent clear discouragement of that combination.” Syntex (USA) LLC v.
Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (citations deleted). In
this case, although Fischell teaches a 50% ratio between the linked and the
unlinked lobes, as demonstrated by Dang, other bridging methods and ratios
are known in the art. But both Dang and Fischell teach different ways to
bridge lines in an expandable endolumenal prosthesis containing a W-shaped
motif, and thus the substitution of the bridge of Fischell for the bridge of
Dang would have been prima facie obvious to one of ordinary skill in the art.
As to the remaining rejections, Appellant argues that the additional
references cited by the Examiner do not remedy the efficiencies of Dang and
Fischell as to claim 1 (see App. Br. 6). Those arguments are not convincing
for the reasons set forth above with respect to the rejection of claim 1.

CONCLUSION OF LAW
We conclude that the preponderance of evidence of record support the
Examiner’s conclusion that the combination of Dang and Fischell renders
the endolumenal prosthesis of claim 1 obvious.
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We thus affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
being rendered obvious by the combination of Dang and Fischell. As claims
2-17, 19-21, 23-31, 34, 40, 41, 43-46, and 51-53 stand or fall with claim 1,
we affirm the rejection as to those claims as well.
As Appellant did not offer separate arguments as to the remaining
rejections, we also affirm the rejection of
claims 18, 22, 32, 33, 35-39, 47-49, and 54 under 35 U.S.C. § 103(a)
as being rendered obvious by the combination of Dang and Fischell, as
further combined with Callol;
claim 42 under 35 U.S.C. § 103(a) as being rendered obvious by the
combination of Dang and Fischell, as further combined with Moore; and
claims 55 and 56 under 35 U.S.C. § 103(a) as being rendered obvious
by the combination of Dang and Fischell, as further combined with Ragheb.

TIME PERIOD FOR RESPONSE
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

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