Patrick W. Kelly

Patent Trials and Appeals Board

Jan 29, 2020

13706036 - (R) (P.T.A.B. Jan. 29, 2020)

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.
13/706,036 12/05/2012 Patrick W. Kelly 12-398-US1 8712
20306 7590 01/29/2020
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32ND FLOOR
CHICAGO, IL 60606
EXAMINER
PELLEGRINO, BRIAN E
ART UNIT PAPER NUMBER
3774
MAIL DATE DELIVERY MODE
01/29/2020 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 PATRICK W. KELLY
____________

Appeal 2018-005569
Application 13/706,036
Technology Center 3700
____________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
MICHAEL L. WOODS, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Appellant filed a Request for Rehearing on January 20, 2020,
(“Request for Rehearing,” “Request,” or “Req. Reh’g”), under 37 C.F.R.
§ 41.52, seeking rehearing of our Decision mailed November 19, 2019,
(“Decision” or “Dec.”).
We grant the Request to the extent that we misapprehended an
argument made by Appellant in its Appeal Brief. After reconsidering
Appellant’s arguments, however, we deny Appellant’s Request to change
our Decision and affirm the rejection of claims 1–11, 17, and 18 as
unpatentable.

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ORIGINAL DECISION ON APPEAL
Below is a summary of our original Decision:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–4, 6, 7, 9,
18
103 Piplani, Nunez 1–4, 6, 7, 9,
18

5, 8, 10, 11 103 Piplani, Nunez,
Dehdashtian
5, 8, 10, 11
17 103 Piplani, Nunez,
Ressemann
17
Overall
Outcome
1–11, 17, 18
Dec. 13.
CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim on appeal before us. Appeal Br.
(Claims App.). We reproduce claim 1, below:
1. A debranching stent graft limb comprising:
a main body stent graft limb with a bifurcation defining a
first leg and a second leg,
wherein the main body stent graft limb has a distal end
and a proximal end;
wherein the main body stent graft limb has a diameter at
the proximal end in the range from about 14 mm to about 18
mm;
wherein the diameter along the length of the main body
stent graft limb either tapers outwardly toward the distal end or
remains constant;
wherein the first leg has a diameter ranging from about 8
mm to about 12 mm; wherein the second leg has a diameter
ranging from about 6 mm to about 10 mm; and
wherein the distance from the proximal end of the main
body stent graft limb to the distal end of the first leg and the
second leg is in the range from about 70 mm to about 90 mm;
and
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wherein the diameter of the first leg is about 2 mm
greater than the diameter of the second leg;
wherein the length of the first leg and the length of the
second leg are each a minimum of about 30 mm; and
wherein the main body stent graft limb comprises a stent
structure extending along the length of the main body stent
graft limb, wherein the first leg comprises a stent structure
extending along the length of the first leg and wherein the
second leg comprises a stent structure extending along the
length of the second leg.
Id. (emphasis and indentations added for clarity).
APPELLANT’S CONTENTIONS
A rehearing request under 37 C.F.R. § 41.52 has the very specific
requirements that the party seeking rehearing allege that the Board
misapprehended or overlooked something in rendering the original decision.
Appellant contends that we misapprehended arguments presented in
the Appeal Brief filed January 29, 2018 (“Appeal Br.”), and in the Reply
Brief filed on May 7, 2018 (“Reply Br.”). Req. Reh’g 1. In particular,
Appellant argues that we “misapprehended and/or overlooked Appellant’s
arguments and evidence directed to the criticality of the six (6) claimed
ranges recited in claim 1 . . . [and] narrowed the criticality argument to a
single claimed range.” Id. at 2.
ANALYSIS
In our Decision, we responded to Appellant’s argument that the
claimed ranges are critical, and considered the declaration testimony of
Appellant’s expert, Dr. Kelly. See Dec. 7–11. Having reviewed Dr. Kelly’s
declaration (Appeal Br. (Exh. A), “Declaration” or “Decl.”), we found that
“Dr. Kelly’s testimony is vague and we cannot discern which, if any, of the
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claimed ranges is critical and achieves unexpected results.” Dec. 9. In light
of this confusion, we assumed, apparently incorrectly, that Appellant and Dr.
Kelly intended to focus its argument on the one claimed range that the
Examiner determined to be obvious, and not explicitly disclosed by Piplani.
See id. at 7 (“The issue is whether Appellant has shown that the claimed
range—wherein the diameter of the first leg is about 2 mm greater than the
diameter of the second leg—achieves unexpected results”); see also Final
Act. 2–5 (finding that Piplani does “not explicitly disclose the diameter of
the first leg is about 2 mm greater than the diameter of the second leg” but
nevertheless reasoning that the limitation would have been obvious over
Nunez, as further evinced by Gordon).
Because we focused Appellant’s criticality argument to on one
claimed range instead of all six claimed ranges, we grant Appellant’s
Request to reconsider our Decision.
Having granted Appellant’s Request to reconsider our Decision, the
issue turns to whether Appellant has shown criticality of the six claimed
ranges by demonstrating that the six claimed ranges achieve unexpected
results relative to the prior art ranges.
We find that Appellant has not shown criticality of any or all of the
six claimed ranges, and deny Appellant’s Request to change our Decision.
“The law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other variable within the
claims. . . . [I]n such a situation, the applicant must show that the particular
range is critical, generally by showing that the claimed range achieves
unexpected results relative to the prior art range.” In re Woodruff, 919 F.2d
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1575, 1578 (Fed. Cir. 1990). Criticality is shown by some noticeable
difference in the qualities. In re Lilienfeld, 67 F.2d 920, 924 (CCPA 1933).
As similarly explained in our Decision, we are not persuaded that any
of the claimed ranges are critical or achieve unexpected results. See Dec. 7–
11; see also id. at 10 (“nothing in the Specification or Declaration leads us to
believe that the ranges recited in claim 1 are somehow ‘critical’ or lead to
unexpected results.”).
First, Dr. Kelly’s testimony lacks adequate factual support, and we
give little weight to his unsupported assertions that the claimed ranges are
critical. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003)
(“[A]ccord[ing] little weight to broad conclusory statements [in expert
testimony before the Board] that it determined were unsupported by
corroborating references [was] within the discretion of the trier of fact to
give each item of evidence such weight as it feels appropriate”); see also
Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294
(Fed. Cir. 1985) (“Opinion testimony rendered by experts must be given
consideration, and while not controlling, generally is entitled to some
weight. Lack of factual support for expert opinion going to factual
determinations, however, may render the testimony of little probative value
in a validity determination” (citations omitted)); see also Dec. 8 (citing
Velander and Ashland Oil).
In particular, Dr. Kelly testifies that “the ranges adapt the debranching
stent graft limb to be a modular docking station for other stent grafts and to
permit revision procedures with fewer side effects than known up-and-over
techniques.” Decl. ¶ 7 (emphasis added); see also id., generally. The
testimony, however, fails to show that it is the claimed ranges that
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unexpectedly result in revision procedures with fewer side effects. In
support of his testimony, Dr. Kelly references Exhibits B, C, and D of the
Appeal Brief, yet these Exhibits do not support his contention that the ranges
are critical. Id.; see also Appeal Br. (Exhs. B, C, D) (“Exhibits”). These
Exhibits depict various stent grafts, but nothing in the Exhibits establishes
that the six ranges recited in claim 1 are present in the stent grafts shown, let
alone support a finding that stent grafts with the claimed ranges result in
revision procedures with fewer side effects. As we found in our Decision,
“we accord little weight to Dr. Kelly’s declaration and find it insufficient to
establish that the ranges of claim 1 exhibit unexpected results.” Dec. 9.
Second, we cited Appellant’s Specification to further support our
finding that the claimed ranges are not critical. See Dec. 9–10 (citing Spec.
3–23). Appellant argues that our citation to the unclaimed embodiments of
the Specification was in error and not otherwise relevant to the criticality
finding. See Req. Reh’g 5 (“[The] Board’s new argument misapprehends
the relevance of Appellant’s unclaimed embodiments and this new position
is not relevant to the criticality argument.”). We disagree. Indeed, Dr. Kelly
cites to the general teachings of the Specification in support of his testimony,
and our analysis would be incomplete without a thorough review of it. See,
e.g., Decl. ¶ 9 (“Based on the foregoing and in view of the teachings of the
Specification . . .”).
In the present case, we found that the Specification described “at least
twenty four different embodiments, several of which having multiple sub-
embodiments.” Dec. 9 (citing Spec. 3–23). We found that the
“Specification includes multiple embodiments with ranges that cover a wide
spectrum of ranges, and nothing in the Specification or Declaration leads us
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to believe that the ranges recited in claim 1 are somehow ‘critical’ or lead to
unexpected results.” Id. at 9–10. The numerous broad ranges disclosed in
the Specification—and the lack of any accompanying description explaining
the criticality of these numerous ranges—are relevant, as they discredit
Appellant’s own criticality argument. See, e.g., Ex parte Shastry et al., No.
2017-003614, 2017 WL 6817003, at *7 (PTAB Dec. 11, 2017) (“Appellants
do not establish criticality or unexpected results for the narrow range of
peroxide amount claimed, in view of the broader range disclosed in the
Specification ¶ 13.”).
For the foregoing reasons, Appellant has not shown, either through the
Specification, Dr. Kelly’s Declaration, or the Exhibits, any noticeable
difference in the qualities of the claimed ranges. See Lilienfeld, 67 F.2d at
924.
We grant Appellant’s Request to the extent that we have considered
our Decision in light of the points raised therein. We are not persuaded by
Appellant’s arguments, however, that any or all of the six ranges recited in
claim 1 are critical or achieve unexpected results. As such, we deny
Appellant’s Request to modify our Decision and affirm the Examiner’s
rejection of claims 1–11, 17, and 18.

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CONCLUSION
SUMMARY OF OUR REHEARING DECISION
Below is a summary of our Rehearing Decision:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Granted Denied
1–4, 6, 7,
9, 18
103 Piplani, Nunez 1–4, 6, 7, 9,
18
5, 8, 10,
11
103 Piplani, Nunez,
Dehdashtian
5, 8, 10, 11
17 103 Piplani, Nunez,
Ressemann
17
Overall
Outcome
1–11, 17, 18

Below is a summary of the Final Outcome of this appeal:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6, 7,
9, 18
103 Piplani, Nunez 1–4, 6, 7, 9,
18

5, 8, 10,
11
103 Piplani, Nunez,
Dehdashtian
5, 8, 10, 11
17 103 Piplani, Nunez,
Ressemann
17
Overall
Outcome
1–11, 17, 18

DENIED