Ex Parte Baker et al

Board of Patent Appeals and Interferences

Mar 27, 2008

10066436 (B.P.A.I. Mar. 27, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BOSTON SCIENTIFIC CORPORATION
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Appeal 2008-0415
Application 10/066,436
Technology Center 3700
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Decided: March 27, 2008
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Before WILLIAM F. PATE III, RICHARD TORCZON, and SALLY C.
MEDLEY, Administrative Patent Judges.

Filed by TORCZON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The subject matter of the claims on appeal relates to a graft assembly
for repairing aneurysms. Claims 22-32 stand rejected under 35 U.S.C. § 103
as having been obvious (Ans. at 3). The rejection is AFFIRMED.
Appeal 2008-0415
Application 10/066,436

THE CLAIMS
Boston Scientific does not offer separate arguments for the rejected
claims. Therefore, the claims stand or fall together. We select the
independent claim 22 as representative of the claims on appeal. 37 C.F.R.
§ 41.37(c)(1)(vii). Claim 22 defines the invention as follows (App. Br. at
10):
A graft assembly for repairing aneurysms, comprising:
a graft having a length, a first end and a second end; and
a plurality of unconnected and discrete frames including
a first frame attached to the graft along substantially the length
of the graft, each frame defining a ring and having a plurality of
alternating apices and the first frame being self-expanding.
THE REJECTION
The examiner relies upon the following as evidence in support of the
rejections:
Rhodes US Patent 5,122,154 16 June 1992
Lazarus et al. US Patent 5,275,622 4 January 1994
Issue
The issue is whether Boston Scientific has shown the examiner erred
in rejecting claim 22 as being unpatentable over Rhodes in view of Lazarus.
Findings of Fact
We find the following enumerated facts:
1. The Lazarus reference teaches a graft with springs located at
alternating apices (Lazarus, col. 10, ll. 6-8).
2. Lazarus discloses a graft that expands to its expanded position as
soon as the graft is free of the delivery capsule (Lazarus, col. 10, ll. 6-10).
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Application 10/066,436

3. The Lazarus reference has unconnected and discrete frames
located at the ends of the tubular graft (Lazarus, col. 9, ll. 3-5 and
Lazarus Fig. 10).
4. Rhodes discloses a graft having a plurality of expandable,
ring-like frames located along the graft (Rhodes, col. 5, ll. 62-66).
5. Boston Scientific has not pointed us to any objective evidence of
secondary considerations in the record.
Principle of Law
Claim language is to be read in light of the specification as a person of
ordinary skill in the art would interpret it. In re Am. Acad. of Sci. Tech. Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004).
In analyzing obviousness, the scope and content of the prior art must
be determined, the difference between the prior art and the claim
ascertained, and the ordinary level of skill in the art resolved, Graham v.
John Deere Co., 383 U.S. 1, 17 (1966).
Section 103 forbids issuance of a patent when the difference
between the applicant's subject matter and the prior art would have
been obvious at the time the invention was made to a person having
ordinary skill in the art, KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007).
OBVIOUSNESS
Boston Scientific argues the combination of Rhodes and Lazarus must
have some suggestion or motivation, either in the references themselves or
in knowledge generally available to one of ordinary skill in the art, regarding
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Application 10/066,436

the use of self-expanding grafts. Its second argument is Rhodes teaches
away from using these self-expanding grafts (Br. at 6).
To illustrate the fact that all of the claim 22 limitations are in the prior
art, we have reproduced Lazarus's Figure 10 below.

Figure 10 shows a graft 121 with a tubular member 122 and first and
second ends 123, 124 with expandable spring means 131 at each end 123,
124.
A graft assembly for repairing aneurysms, comprising:
a graft 121 having a length, a first end 123 and a second
end 124; and
a plurality of unconnected and discrete frames 131, 131
including a first frame 131 [either] attached [via sutures 146
and knots 147] to the graft 121 along substantially the length of
the graft 121, each frame 131, 131 defining a ring and having a
plurality of alternating apices 133 and the first frame 131 being
self-expanding [via helical coil springs 136].

The Lazarus reference discloses all the claim limitations in claim 22
(Findings 1-3). Therefore, it was known at the time of the invention by a
person of ordinary skill that grafts can be self-expanding with a plurality of
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Application 10/066,436

alternating apices. The Rhodes reference strengthens the examiner's position
for obviousness because Rhodes teaches a graft having a plurality of
expandable, ring-like frames (Finding 4). Boston Scientific is claiming a
structure already known in the prior art and has failed to show the examiner
erred in rejecting the claims over the prior art. Because we find all the claim
limitations are in the prior art, Boston Scientific's teaching-away argument is
not persuasive.
CONCLUSION
Boston Scientific has not demonstrated prejudicial error in the
rejection of claim 22 when construed as broadly as is reasonable in view of
the specification. Since the claims stand or fall together, the obviousness
rejection for all pending claims is —
AFFIRMED
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Appeal 2008-0415
Application 10/066,436

MAT

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