W. L. Gore & Associates, Inc.

Patent Trials and Appeals Board

Aug 20, 2020

2020001170 (P.T.A.B. Aug. 20, 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.
13/906,247 05/30/2013 Stephen F. Quinn 450385.001539
MP/232EUS
2181
133414 7590 08/20/2020
Faegre Drinker Biddle & Reath LLP - W.L. Gore
2200 Wells Fargo Center
90 South Seventh Street
Minneapolis, MN 55402-3901
EXAMINER
PELLEGRINO, BRIAN E
ART UNIT PAPER NUMBER
3799
NOTIFICATION DATE DELIVERY MODE
08/20/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentdocketing@faegredrinker.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte STEPHEN F. QUINN
__________

Appeal 2020-001170
Application 13/906,247
Technology Center 3700
__________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 5, 14–18, and 24–35, which
constitute all the claims pending in this application. Final Act. 1 (Office
Action Summary). Claims 2–4, 6–13, and 19–23 have been canceled. See
Appeal Br. 9–10 (Claims App.). We have jurisdiction under 35 U.S.C.
§ 6(b). For the reasons explained below, we do not find error in the
Examiner’s rejections. Accordingly, we AFFIRM the Examiner’s rejections.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “W. L. GORE
& ASSOCIATES, INC.” Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to intravascular stent grafts.”
Spec. ¶ 2. Apparatus claims 1 and 31 are independent. Claim 1 is
illustrative of the claims on appeal and is reproduced below.
1. A stent graft, comprising:
a stent;
a primary graft coupled to the stent, the primary graft
having a first end and a second end, the primary graft having a
side opening therethrough between the first and second ends, the
primary graft forming a fluid flow channel with the side opening
being arranged on a perimeter of the primary graft between the
first end and the second end; and
an internal graft channel formed within the primary graft
and separated from the fluid flow channel by a partition, the
internal graft channel having a first open end arranged with the
side opening and a second open end parallel to the first end of
the primary sleeve, the second open end of the internal graft
channel in fluid communication with the side opening in the
primary graft, the internal graft channel capable of allowing
branch fluid flow through and between the first open end and the
side opening of the primary graft.
REFERENCES RELIED ON BY THE EXAMINER
Pinchuk US 5,855,598 Jan. 5, 1999
Wisselink US 5,984,955 Nov. 16, 1999
Hyodoh et al. US 2003/0040771 A1 Feb. 27, 2003

THE REJECTIONS ON APPEAL
Claims 1, 5, 14–18, and 24–30 are rejected under (pre-AIA) 35 U.S.C.
§ 112, second paragraph, as being indefinite. Final Act. 3.
Claims 1, 5, 14–18, and 24–35 are rejected under (pre-AIA) 35 U.S.C.
§ 103(a) as unpatentable over Pinchuk, Hyodoh, and Wisselink. Final Act.
3.
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ANALYSIS
The rejection of claims 1, 5, 14–18, and 24–30
as being indefinite
The Examiner finds, “[t]here is insufficient antecedent basis” for the
recitation “the primary sleeve” at line 11 of claim 1. Final Act. 3. Thus, the
Examiner determines that claim 1 is indefinite because “[i]t is not evident”
what “the primary sleeve” refers to in the claim. Final Act. 3.
Appellant concedes that “the limitation ‘primarily sleeve’ in line 11 of
claim 1 is a typographical error” and states that “Appellant is amendable to
amending claim 1 by way of [an] Examiner’s amendment or if prosecution is
re-opened.” Appeal Br. 8. Appellant, however, argues that the term at issue
“would be under[]stood by one of skilled in the art to refer to the claimed
primary graft” because “[t]he primary graft is the sole ‘primary’ feature in
claim 1.” Appeal Br. 8; see also Reply Br. 5.
A claim is properly rejected as being indefinite under 35 U.S.C. § 112,
second paragraph if, after applying the broadest reasonable interpretation in
light of the specification, the metes and bounds of a claim are not clear
because the claim “contains words or phrases whose meaning is unclear.” In
re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014).
It is undisputable that “the primary sleeve” lacks antecedent basis. As
such, it is uncertain that a skilled reader would understand that “the primary
sleeve” refers back to “a primary graft” of claim 1. Thus, the metes and
bounds of claim 1 and its dependent claims are not clear.
For these reasons, the rejection of claims 1, 5, 14–18, and 24–30 as
indefinite, is sustained.

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The rejection of claims 1, 5, 14–18, and 24–35
as obvious over Pinchuk, Hyodoh, and Wisselink
Appellant argues claims 1, 5, 14–18, and 24–35 (i.e., all the claims)
together. Appeal Br. 3–6. We select claim 1 for review, with independent
claim 31, and dependent claims 5, 14–18, 24–30, and 32–35, standing or
falling with claim 1. See 37 C.F.R. § 1.37(c)(1)(iv).
Claim 1 recites a stent graft comprising “a primary graft” and “an
internal graft channel formed within the primary graft.” The primary graft is
recited as having “a side opening” that is “arranged on a perimeter of the
primary graft” between its first end and second end. The internal graft
channel is recited as having “a first open end arranged with the side opening
and a second open end parallel to the first end of the primary [graft].”2
Appeal Br. 9 (Claims App.).
Appellant contends:
(1) “[t]he Pinchuk reference fails to discuss a side opening within the
trunk” (Appeal Br. 4);
(2) “the Hyodoh reference cannot teach an internal graft channel
within a primary graft,” “cannot teach a main graft with a side opening,” and
“an internal graft channel having a first open end arranged with the side
opening and a second open end parallel to the first end of the primary graft”
(Appeal Br. 5); and,
(3) the Wisselink reference fails to teach or describe a device “having
an internal graft channel having a first open end arranged with the side

2 Assuming Appellant intends claim 1 to recite “parallel to the first end of
the primary graft” rather than the existing recitation of “parallel to the first
end of the primary sleeve,” which lacks antecedent basis, as discussed
above. Emphasis added.
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opening and a second open end parallel to the first end of the primary graft”
(Appeal Br. 6). See also Reply Br. 2–4.
“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references []. [The reference] must be read, not in isolation,
but for what it fairly teaches in combination with the prior art as a whole.”
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). See also Ans. 5–
6.
Here, Appellant does not address the rejection but rather, attacks the
references individually. The Examiner finds that Pinchuk discloses a stent
graft having a stent 121c and a primary graft that is coupled to the stent.
Final Act. 3 (citing Pinchuk Fig. 32); see also Pinchuk Fig. 31. The
Examiner further finds that Pinchuk discloses “an internal graft channel
128c formed within the primary graft separated by a partition 126c from
another fluid flow channel.” Final Act. 3. The Examiner acknowledges that
“Pinchuk does not disclose the primary graft having a side opening
therethrough between the first and second ends with [an] internal channel
[being] in fluid communication with the side opening.” Final Act. 3–4;
emphases added. Hence, Appellant’s contention above regarding Pinchuk
lacking a side opening (see Appeal Br. 4) is not responsive to the
Examiner’s rejection.
Rather, the Examiner relies on Hyodoh for disclosing “that multiple
branch or secondary stent grafts are placed within the aorta and out the side
vessel for maintaining flow through the branches.” Final Act. 4 (citing
Hyodoh Fig. 55); emphasis added. The Examiner did not rely on Hyodoh
for disclosing an “internal graft channel within a primary graft” as Appellant
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contends above, but instead for teaching “a main graft with a side opening”
(which Appellant disputes despite Hyodoh’s disclosure thereof in Figure
55). Appeal Br. 5; Final Act. 4. Thus, Appellant’s contention that Hyodoh
fails to disclose an “internal graft channel” as recited (see Appeal Br. 5) is
not responsive to the Examiner’s reliance on Hyodoh (see Final Act. 4) and,
consequently, is not persuasive of Examiner error.
The Examiner further relies on Wisselink for additionally disclosing
“stent grafts having a primary graft 12 [that] can include side openings 14
for branch grafts 16.” Final Act. 4 (citing Wisselink Figs. 1a, 1c); emphasis
added. See also Ans. 5–6. Accordingly, Appellant’s contention above
regarding Wisselink as failing to teach “an internal graft channel having a
first open end arranged with the side opening” (see Appeal Br. 6) is likewise
not persuasive of Examiner error.
However, claim 1 includes the further limitation that the second end
of the internal graft channel be “parallel to” the first end of the primary graft.
Appellant contends that “no reference” teaches this limitation. Appeal Br. 3;
see also id. at 5, 6; Reply Br. 3, 4 (“[t]here is no combined teaching of the
references . . . that includes . . . a second open end parallel to the first end of
the primary graft”). The Final Office Action does not specifically address
this “parallel” recitation, but does reference Figure 32 of Pinchuk, which
appears to disclose an opening into internal graft channel 128c that is
depicted parallel to the opening of the primary graft. See Final Act. 3. The
Examiner further states, “thus a branch stent graft of Pinchuk can be diverted
to a side vessel [and that] the second opening of the internal channel would
be parallel with the primary graft first end.” Ans. 6. As above, Appellant
contends that no reference explicitly teaches this “parallel” limitations, but
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Appellant does not explain how Figure 32 of Pinchuk fails to at least suggest
this limitation as indicated by the Examiner above. See also Pinchuk
Figures 20, 21, 25, 29, and 30 for further suggestions to one skilled in the art
that “the second opening of the internal channel would be parallel with the
primary graft first end.” Ans. 6.
Appellant also contends that there is a lack of motivation to combine
the teachings of the references. See Appeal Br. 3. Appellant argues that,
instead, the rejection is based on improper hindsight reconstruction and a
mere rearrangement of parts that is “insufficient to support a finding of
obviousness.” Appeal Br. 7. Appellant contends that the lack of motivation
stems from the fact that Pinchuk discloses that its device is designed to
extend below the renal arteries and to be used with respect to issues
concerning the aorto-iliac bifurcation. Appeal Br. 7 (citing Pinchuk 11:1–
10); see also Reply Br. 4. In other words, Appellant argues that if Pinchuk’s
device is designed for use at the renal arteries, which are secondary arteries
that extend nearly 90 degrees from the main artery, then Pinchuk’s device
would need a side opening in its stent graft. See Appeal Br. 7. However,
according to Appellant, because Pinchuk’s device is designed for use with
the lower aorto-iliac bifurcation, which has branch arteries extending at a
smaller angle with respect to each other––rather than at 90 degrees,
Pinchuk’s device does not need a side opening in its stent graft.3 Appellant

3 We further note that in the Reply Brief, Appellant asserts that claim 1
requires the first open end of the internal graft to be perpendicular to the
second open end of the internal graft, but this is nowhere recited. See Reply
Br. 2; Appeal Br. 9 (Claims App.).
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argues that because of the above-noted disclosure, Pinchuk teaches away
from the claimed side opening. See Reply Br. 4–5.
We first note that the Examiner articulates a motivation for the side-
opening modification of Pinchuk by stating that
it would have been obvious to one of ordinary skill in the art to
use a side opening in a stent graft as taught by Wisselink to
establish fluid flow out the side opening into a branch vessel per
the teaching of Hyodoh et al. and modify the stent graft of
Pinchuk to have the internal graft channel be in communication
with a side opening for a branch stent graft to maintain flow into
the renal arteries.
Final Act. 4; emphasis added. The Examiner further explains that “those of
ordinary skill in the art [would] understand there are other locations in the
body where a main [] or primary [vessel] (that [is] larger in diameter) has
smaller branches extending off the side [and] which stent grafts [can be]
designed to allow or reestablish fluid flow to these side vessels.” Ans. 7.
Thus, in view of this explanation, the Examiner has provided articulated
reasoning with rational underpinning for the proposed modification, which
involves use with the renal, as opposed to iliac, arteries. See In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006).
Second, contrary to Appellant’s assertion (and as noted above), claim
1 does not require the first open end of the internal graft to be perpendicular
to the second open end of the internal graft. Claim 1 merely requires, “the
internal graft channel having a first open end arranged with the side
opening.” Appeal Br. 9 (Claims App.); emphasis added. In other words, the
internal graft’s first open end does not need to be at 90 degrees with its
second open end in order to be “arranged” with the side opening of the
primary graft.
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Third, Pinchuk discloses “[s]ame is shown in connection with treating
an aneurysm such as an abdominal aorto-iliac aneurysm. The device
includes a trunk component 101 which, in the illustrated use, is designed to
extend from below the renal arteries to a location between the proximal neck
of the aneurysm and the aorto-iliac bifurcation.” Pinchuk 11:3–8; emphasis
added. Pinchuk further discloses that “[i]n this illustrated embodiment, this
leg component is an iliac component of the bifurcated supportive graft being
assembled within the body vessel.” Pinchuk 11:35–37; emphasis added.
The recitations of “such as,” “in the illustrated use,” and “[i]n this illustrated
embodiment,” indicate that Pinchuk’s stent graft can be modified for use at
other locations rather than being designed specifically and only for use at the
aorto-iliac bifurcation. Thus, Pinchuk does not restrict its stent graft from
having branches at a particular angle or that it is for use only at a particular
location. Finally, Pinchuk does not discredit, criticize, nor disparage the
claimed side opening. See DyStar Textilfarben GmbH & Co. Deutschland
KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006).4 As such, we
do not agree with Appellant that there is no motivation to modify Pinchuk’s
stent graft in the manner proposed by the Examiner, or that Pinchuk teaches
away as argued.
In summary, and based on the record presented, we are not apprised of
Examiner error in rejecting independent claim 1 as being unpatentable over

4 In the Reply Brief, Appellant intimates that the proposed modification
would also render Pinchuk’s stent graft unsatisfactory for its intended
purpose, i.e., designed for use only at the aorto-iliac bifurcation. See Reply
Br. 5 (citing MPEP § 2143.01). However, this argument is unpersuasive for
the reasons discussed above.
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Pinchuk, Hyodoh, and Wisselink. Accordingly, we sustain the Examiner’s
rejection of claims 1, 5, 14–18, and 24–35.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 5, 14–
18, 24–30
112, Second
Paragraph
Indefiniteness 1, 5, 14–
18, 24–30

1, 5, 14–
18, 24–35
103(a) Pinchuk, Hyodoh,
Wisselink
1, 5, 14–
18, 24–35

Overall
Outcome
1, 5, 14–
18, 24–35

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED