Ex Parte Arbefeuille

Patent Trial and Appeal Board

Oct 29, 2012

11218917 (P.T.A.B. Oct. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SAMUEL ARBEFEUILLE
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Appeal 2011-013552
Application 11/218,917
Technology Center 3700
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Before TONI R. SCHEINER, ERIC GRIMES, and FRANCISCO C.
PRATS, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
endoluminal prosthesis. The Examiner has rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The Specification discloses “an improved endoluminal prosthesis …
configured in a manner that provides columnar strength while providing
improved device flexibility, and [ ] maintaining a relatively small pre-
deployed, collapsed profile” (Spec. 4).
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Application 11/218,917

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Claims 1-11, 23-25, and 31-33 are on appeal. Claim 1 is
representative and reads as follows:
1. An endoluminal prosthesis comprising:
a tubular graft comprising a graft material, a proximal portion having
a proximal opening, and a distal portion having a distal opening, the
proximal and distal openings and the graft material forming a lumen for the
flow of body fluid therethrough; and
a first annular support member comprising a plurality of spokes
coupled by a plurality of apices to form a closed ring, having an axis
extending longitudinally therethrough,
a second annular support member comprising a plurality of spokes
coupled by a plurality of apices to form a closed ring, having an axis
extending longitudinally therethrough, said first and second annular support
members being attached to said tubular graft, but otherwise unconnected to
one another,
wherein each of the annular support members are attached to the graft
material along the tubular graft to define, for each of the plurality of annular
support members, a corresponding circumferential area of the graft material
around a corresponding annular support member,
wherein at least one of the apices of said first annular support member
is attached within the corresponding circumferential area of the graft
material of said second annular support member, which is adjacent the first
annular support member, so that at least one of the apices of said first
annular support member extends axially toward said second support member
and axially beyond one of said apices of said second annular support
member, and
wherein at least one of the apices of the first annular support member
extends axially beyond an other of the apices of the first annular support
member.

Claims 11 and 23 are the only other independent claims. Similar to
claim 1, claim 11 requires “at least one undulating member of a support
structure [that] lengthwise overlaps an undulating member of an adjacent
support structure” (Appeal Br. 25-26 (Claims Appendix)) and claim 23
requires that “one of the apices extending beyond other of the apices of the
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Application 11/218,917

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first support member is attached to the graft material within the
circumferential area of the second support member.” (Appeal Br. 26-27
(Claims Appendix)).
The Examiner has rejected claims 1-11, 23-25 and 31-33 under 35
U.S.C. § 103(a) as obvious in view of Hartley,1 Lau2 and Lenker.3 The
Examiner finds that Hartley discloses an endoluminal prosthesis comprising
a tubular graft comprising graft material and annular support members
defining “a plurality of apices [that] comprise alternating crests and
troughs,” but does not teach that a “first support member is attached to the
graft material within the circumferential area of the second support member”
(Answer 4).
The Examiner finds that Lau discloses a trough “extending axially
beyond the other troughs, and the … annular support members having
alternating longer and shorter crest and troughs” (id. at 5), and that Lenker
discloses that “one of the longer troughs of the first support member is
attached to the graft material within the circumferential area of the second
support member” (id.).
The Examiner concludes that it would have been obvious “to make
the graft with … support members overlapping in adjacent circumferential
regions to allow the prosthesis to create a good seal” with the vessel wall
and provide support to the graft structure (id. at 5-6) because Lenker
“discloses that the spring force of the stent creates a good seal between the

1 Hartley et al., US 6,524,335 B1, Feb. 25, 2003.
2 Lau et al., US 2002/0156423 A1, Oct. 24, 2002.
3 Lenker US 2002/0177890 A1, Nov. 28, 2002.
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support structure and the vessel wall, and therefore, overlapping the stent
support rings would allow for more spring force to be exerted in a specific
location and thus cause better sealing” (id. at 6).
Appellant argues that “the Examiner is relying solely on FIG. 3C as
providing support for the overlapping support members features recited in
the claims. However, it is improper … to rely on dimensions of drawings
when the reference does not disclose that the drawings are to scale and the
reference is silent regarding the dimensions or relative dimensions of the
drawings.” (Reply Br. 4-5.) Appellant argues that “Lenker does not
describe the annular support members 212 of FIG. 3C as overlapping and
does not disclose that the drawings are to scale” (id. at 5).
We agree with Appellant that the Examiner has not adequately shown
that the cited references would have made obvious a prosthesis with an
annular support member that overlaps the circumferential area of an adjacent
annular support member. The Examiner finds that Lenker discloses this
limitation, and provides the following annotated version of (part of)
Lenker’s Figure 3C to support his finding:

(Answer 5.) Lenker’s Figure 3C shows a side view of Lenker’s prosthesis
after it is deployed (Lenker 3, ¶0026). The Examiner has annotated a
portion of Figure 3C to indicate an overlapping circumferential area between
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Application 11/218,917

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two adjacent annular support members. However, “it is well established that
patent drawings do not define the precise proportions of the elements and
may not be relied on to show particular sizes if the specification is
completely silent on the issue. See In re Wright, 569 F.2d 1124, 1127, 193
USPQ 332, 335 (CCPA 1977) (‘Absent any written description in the
specification of quantitative values, arguments based on measurement of a
drawing are of little value.’).” Hockerson-Halberstadt, Inc. v. Avia Group
Intern., Inc., 222 F.3d 951, 956 (2000).
The Examiner has not pointed to any description of Figure 3C in
Lenker’s text as support for finding that the annular support members in the
figure are intended to overlap. In fact, Figure 3C is described as showing
the same embodiment as Figure 3A (Lenker 3, ¶0026), and Figure 3A does
not show overlapping annular supports.
The Examiner also relies on the general disclosure in Lenker that
annular support members are used to create a seal between the prosthesis
and the inner wall of a body lumen. However, the Examiner has not pointed
to any disclosure in Lenker of an arrangement of annular supports in which
an apex of one annular support is within the circumferential area of a second
annular support. Thus, Figure 3C without accompanying descriptive text is
not sufficient support the Examiner’s finding that Lenker discloses
overlapping annular supports.
The Examiner also reasons that
Lenker discloses that the spring force of the stent will hold the
prosthesis firmly against the vessel wall and provide a good
seal.… Thus one having ordinary skill in the art would
conclude that adding more stents to an area would increase the
amount of force that is applied to that area, and thus form a
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better seal. In order to add more stent force to an area, it would
be necessary to overlap the adjacent stents to provide that extra
force.
(Id. at 10.)
This reasoning is not persuasive because Lenker does not disclose
overlapping annular supports, and the Examiner has not provided evidence
or sound technical reasoning to support her conclusion that overlapping
supports would be necessary to provide the amount of spring force desired
by Lenker.
SUMMARY
We reverse the rejection of claims 1-11, 23-25 and 31-33 under 35
U.S.C. § 103(a).

REVERSED

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