Ex Parte Akingba et al

Patent Trials and Appeals Board

Apr 9, 2019

14228414 - (D) (P.T.A.B. Apr. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/228,414 03/28/2014
26710 7590 04/11/2019
QUARLES & BRADYLLP
Attn: IP Docket
411 E. WISCONSIN A VENUE
SUITE 2350
MILWAUKEE, WI 53202-4426
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
A. George Akingba
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
144578.00090.IURTC11012 6672
EXAMINER
GANESAN, SUBA
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
04/11/2019 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):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte A. GEORGE AKINGBA and
RAGHU L. MOTAGANAHALLI 1
Appeal2017-011516
Application 14/228,414
Technology Center 3700
Before TA WEN CHANG, RACHEL H. TOWNSEND, and
DAVID COTTA, Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
modular stent assembly, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
According to the Specification,
[ w ]hile a number of types of endovascular stents have
been conceived, there is still a need for new and improved
designs. In one aspect, there is a need for a stent or stent
1 Appellants identify the Real Party in Interest as Indiana University
Research & Technology Corporation. (Appeal Br. 2.)
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Application 14/228,414
assembly that can be deployed at the intersection of one or
more arterial passages. In another aspect, there is a need
for a set of modular stents that may be adjusted or
assembled in myriad ways to accommodate vanous
geometries and angles within an arterial space.
(Spec. ,r 5.)
Claims 1-9 are on appeal. Claim 1 is illustrative and reproduced
below:
1. A modular stent assembly for deployment within a
lumen, the modular stent assembly comprising:
a trunk stent including:
an expandable body defining an interior space, the
body extending between an open proximal end and an
open distal end;
a graft material disposed on the body;
an aperture positioned between the proximal end
and the distal end, the aperture being formed through the
body and the graft material;
a trumpet stent including:
an expandable body extending between an open
first end and an open second end, an outer perimeter of
the first end being greater than an outer perimeter of the
second end, the trumpet stent further including a flared
lip having a gradually increasing diameter;
a graft material disposed on the body; and
a securement stent including an expandable body
extending between an open proximal end and an open distal end
of the securement stent,
wherein the body of the trumpet stent passes through the
aperture of the trunk stent, the first end of the trumpet stent
positioned at least partially within the interior space of the trunk
stent,
wherein the securement stent is positioned within the
interior space of the trunk stent, and
wherein an outer wall of the securement stent contacts an
inner wall of the trunk stent and the first end of the trumpet
stent, sandwiching the flared lip of the trumpet stent between
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the securement stent and the trunk stent, thereby coupling the
trumpet stent to the trunk stent.
(Appeal Br. 9-10 (Claims App'x).)
The Examiner rejects claims 1-8 under 35 U.S.C. § 103 as being
unpatentable over Brown2 and Wholey. 3 (Ans. 2.)
The Examiner rejects claim 9 under 35 U.S.C. § 103 as being
unpatentable over Brown, Wholey, and Yu. 4 (Ans. 6.)
DISCUSSION
Issue
The Examiner has rejected claims 1-8 as obvious over Brown and
Wholey. The Examiner has rejected claim 9 as obvious over Brown,
Wholey, and Yu. The same issues are dispositive for both rejections, and we
therefore discuss them together.
The Examiner finds that Brown teaches all of the limitations of claim
1, except that Brown does not disclose a trumpet stent "with an outer
perimeter of the first end being greater than an outer perimeter of the second
end, the trumpet stent further including a flared lip having a gradually
increasing diameter," and likewise does not specify that "an outer wall of the
securement stent contacts the first end of the trumpet stent, sandwiching the
flared lip of the trumpet stent between the securement stent and the trunk
stent, thereby coupling the trumpet stent to the trunk stent." (Ans. 2-3, 4.)
The Examiner finds, however, that Wholey teaches "a side branch
stent with a larger outer perimeter on one end, further including a flared lip
2 Brown et al., US 2007/0055362 Al, published Mar. 8, 2007.
3 Wholey et al., US 2007/0173921 Al, published July 26, 2007.
4 Yu, US 2008/0114444 Al, published May 15, 2008.
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having a gradually increasing diameter ... for the purpose of engaging the
main vessel prosthesis secure the stent and to provide a substantially smooth
transition with a branch body lumen." (Id. at 3--4.) The Examiner concludes
that
[i]t would have been obvious to one of ordinary skill in the
art at the time the invention was filed to have provided the
branch stent of Brown with an outer perimeter of the first
end being greater than an outer perimeter of the second
end and with a flared lip having a gradually increasing
diameter as taught by Wholey as an obvious alternate side
branch stent design that desirably engages and secures the
side branch stent to the main prosthesis while providing a
smooth transition with a branch lumen. This modification
would have occurred using known methods and would
have yielded predictable results to one of ordinary skill in
the art at the time the invention was filed.
(Id. at 4.)
The Examiner further finds, with respect to the limitations in the last
wherein clause of claim 1 (i.e., "wherein an outer wall of the securement
stent contacts ... the first end of the trumpet stent, sandwiching the flared
lip of the trumpet stent between the securement stent and the trunk stent,
thereby coupling the trumpet stent to the trunk stent"), that "the prior art
includes all the claimed structural components" and is merely silent "as to
the specific order that the prosthesis components are assembled." (Id.) The
Examiner concludes that it would have been obvious "to have provided the
flared lip of the trumpet stent between the trunk stent and the securement
stent as an obvious arrangement of the prior art components suitable for
serving as a vascular prosthesis," in order to "further provide a smooth
transition with a branch lumen." (Id.) The Examiner finds that such
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modification "would have occurred using known methods and would have
yielded predictable results." (Id. at 4--5.)
Appellants contend that the combination of cited prior art would not
suggest to a skilled artisan a modular stent assembly "wherein an outer wall
of [a] securement stent contacts an inner wall of [a] trunk stent and the first
end of [a] trumpet stent, sandwiching the flared lip of the trumpet stent
between the securement stent and the trunk stent, thereby coupling the
trumpet stent to the trunk stent," as required by claim 1. (Appeal Br. 4--7;
Reply Br. 2-3.)
The issue with respect to this rejection is whether a preponderance of
evidence of the record supports the Examiner's finding that the combination
of Brown and Wholey suggests a modular stent assembly "wherein an outer
wall of [a] securement stent contacts an inner wall of [a] trunk stent and the
first end of [a] trumpet stent, sandwiching the flared lip of the trumpet stent
between the securement stent and the trunk stent, thereby coupling the
trumpet stent to the trunk stent."
Analysis
We agree with Appellants that the Examiner has not established a
prima facie case that Brown and Wholey suggests a modular stent assembly
"wherein an outer wall of [a] securement stent contacts an inner wall of [a]
trunk stent and the first end of [a] trumpet stent, sandwiching the flared lip
of the trumpet stent between the securement stent and the trunk stent,
thereby coupling the trumpet stent to the trunk stent," as required by claim 1,
the only independent claim.
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Application 14/228,414
The Examiner first asserts that the prior art discloses all of the claimed
structural components and that "[t]he difference between the prior art and
the claim is that the prior art is silent as to the specific order that the
prosthesis components are assembled." (Ans. 4.)
We are not persuaded. The claims require a particular arrangement of
the three structural components, i.e., the trunk stent, the trumpet stent, and
the securement stent, wherein the flared lip of the trumpet stent is
sandwiched between the trunk stent and the securement stent. Thus, the
difference between the claims and the prior art is structural and not merely in
the order in which the components are assembled. Notably, Brown teaches
only two different stents, one inside the other. One of those stents can have
a side branch structure that deploys in a petal like manner. (See, e.g., Brown
,r,r 13-14, 38-39.) Similarly, Wholey teaches two different stents, one that
protrudes outwardly from inside the other. (See e.g., Wholey ,r,r 18, 86.)
The Examiner asserts that, based on the combination of Brown and
Wholey, it would have been
obvious to provide a side branch stent graft with a flared
lip that engages the inner surface of the Brown inner stent,
as well as to provide a side branch stent graft with a flared
lip that is sandwiched between the inner surface of the
Brown outer stent and the outer surface of the Brown inner
stent. Essentially, these are obvious means of combining
a side branch stent graft as taught by Wholey with the
double stent of Brown.
(Ans. 7.)
We are not persuaded. "[R]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
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conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Assuming that it would have been obvious to replace the side branch
structure in Brown's overlapping stent with Wholey's flaring stent, the
Examiner nevertheless has not provided persuasive reasons why it would
have been obvious to provide a flared side branch stent where the flared lip
of the stent is sandwiched between Brown's inner and outer stents, rather
than having the flared lip of the side branch stent engage the inner surface of
Brown's inner stent, as both Wholey and Brown teach (see e.g., Brown i-fl3
and Wholey ,r 18).
The Examiner asserts that sandwiching the flared lip of the trumpet
stent between the trunk stent and the securement stent is "an obvious
arrangement of the prior art components suitable for serving as a vascular
prosthesis." (Ans. 4.) In particular, the Examiner asserts that a skilled
artisan would be motivated to adopt this arrangement of the stents "for the
purpose of providing functional redundancy to the flared lip securement to
ensure that it does not move, shift, or dislodge after implantation and long
term implant use," and "to ensure a smooth transition between the side
branch and the main lumen of the prosthesis" as taught by Wholey. (Id. at 7;
see also id. at 4, 8.) The Examiner also asserts that a skilled artisan "would
be motivated to sandwich the flared lip of the Wholey stent between the
inner and outer stent of Brown to reinforce the junction between the side
branch vessel and the main blood vessel." (Id. at 8.) The Examiner further
asserts that "[t]his modification would have occurred using known methods
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and would have yielded predictable results to one of ordinary skill in the art
at the time the invention was filed." (Id. at 4.)
We are not persuaded. The Examiner does not provide persuasive
evidence that Brown and/or Wholey suggest using the inner stent in Brown's
overlapping stent for purposes of securing either the outer stent or a side
branch stent. Neither does the Examiner explain how sandwiching the flared
lip of a side branch stent between an inner and outer stent would "ensure a
smooth transition between the side branch and the main lumen of the
prosthesis." If anything, one would imagine this objective being better
accomplished by having the flared lip of the side branch stent engage the
inner surface of Brown's inner stent. Finally, while Brown explains that
"[a]reas where structure of the main branch portion ... and side branch
portion ... overlap ... desirably provide increased vessel coverage and
support" (Brown ,r 79), the Examiner does not explain why the desirability
of overlapping stents would suggest to a skilled artisan that Wholey's flaring
stent should be sandwiched between Brown's inner and outer stents as
opposed to, e.g., engaging the inner surface of Brown's inner stent-the
engagement taught by both Brown and Wholey, as discussed above.
The Examiner asserts that it is not "required when combining the
teachings of Brown and Wholey to place the flared lip against the inner
surface of the inner stent" merely "because Wholey stent's flared lip is
meant to hold the stent graft to a vessel wall." ( Ans. 7.) The Examiner
asserts that "Wholey's trumpet stent is fully capable of performing its
securing and holding function equally well when positioned either within the
trunk stent or within the securement stent" and that "the structure of
Brown's inner stent is fully capable of serving the function of holding a
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trumpet stent and a trunk stent by sandwiching the trumpet stent between the
securement stent and the trunk stent." (Id. at 7; see also id. at 8.) The
Examiner asserts that,
by providing additional blood vessel support from within
the lumen of the trunk stent, the Brown inner stent holds
and secures the trunk stent. It would have been obvious to
provide the securement stent with the holding and securing
function for the trumpet stent based on the combination of
a side branch stent graft as taught by Wholey with the
double stent of Brown that would have been recognized by
a person of ordinary skill in the art.
(Id. at 8.)
We are not persuaded. As discussed above, the Examiner has not
cited persuasive evidence that the combination of Brown and Wholey would
have suggested to a skilled artisan to use Brown's inner stent in a
securement role, or, more specifically, to use the inner stent to secure a
flaring side branch stent by sandwiching the flared lip of the side branch
stent against the outer stent. The Examiner cites no persuasive evidence, for
instance, that by "providing additional blood vessel support" Brown's inner
stent is functioning to "hold[] and secure[] the [outer] stent." (Ans. 8.)
In summary, the Examiner's conclusory statements do not provide
sufficient "articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006). Accordingly, we reverse the Examiner's rejection of claim 1.
We likewise reverse the Examiner's rejections of claims 2-9, which depend
directly or indirectly from claim 1. 5 In re Fritch, 972 F.2d 1260, 1266 (Fed.
5 The Examiner rejects claim 9 as obvious over Brown, Wholey, and Yu.
The Examiner cites Yu only for the teaching of "multiple trumpet stents
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Cir. 1992). "[D]ependent claims are nonobvious if the independent claims
from which they depend are nonobvious."
SUMMARY
For the reasons above, we reverse the Examiner's decision rejecting
claims 1-9.
REVERSED
passing through the same aperture on a trunk stent." (Ans. 6.) Thus, the
Examiner's citation to Yu does not cure the deficiency in the prima facie
case with respect to the limitation "wherein an outer wall of the securement
stent contacts an inner wall of the trunk stent and the first end of the trumpet
stent, sandwiching the flared lip of the trumpet stent between the securement
stent and the trunk stent, thereby coupling the trumpet stent to the trunk
stent."
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