Ex Parte Coghlan et al

Patent Trial and Appeal Board

Aug 31, 2016

13458242 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/458,242 04/27/2012
77218 7590 09/02/2016
Medtronic Vascular - APV Division
c/o IP Legal Department
3576 Unocal Place
Santa Rosa, CA 95403
FIRST NAMED INVENTOR
Kieran Coghlan
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.
P0041038.USU1 8849
EXAMINER
LOPEZ, LESLIE ANN
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
rs. docketingapv@medtronic.com
medtronic _apv _docketing@ cardinal-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIERAN COGHLAN, EMILIE SIMMONS, and
MEGHAN PEARSON
Appeal2014-007162
Application 13/458,242 1
Technology Center 3700
Before PHILIP J. HOFFMANN, BRADLEYB. BAY AT, and
AMEE A. SHAH, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-20. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.
1 According to Appellants, the real party in interest is Medtronic Vascular,
Inc. Appeal Br. 1 (filed Jan. 6, 2014).
Appeal2014-007162
Application 13/458,242
INVENTION
Appellants' "invention relates generally to endoluminal medical
devices and procedures, and more particularly to an endoluminal prosthesis
or graft configured for placement in the abdominal aorta having branch
vessels extending therefrom." Spec. i-f 1.
Claims 1 and 18 are the only independent claims on appeal. Claim 1
is illustrative of the claimed subject matter and reads as follows:
1. A prosthesis for implantation within a blood vessel, the
prosthesis comprising:
a tubular body of a graft material;
first and second opposing couplings that extend outwardly from
the tubular body, wherein each coupling includes a base coupled
to the tubular body, a top spaced from the tubular body, and a
coupling lumen disposed between the base and the top that is in
fluid communication with a lumen defined by the tubular body;
and
a variable stiffness stent coupled to the tubular body
proximal of the couplings and including a plurality of cro\'l/ns and
a plurality of struts with each crown being formed between a pair
of opposing struts, wherein the variable stiffness stent includes
at least two zones of greater flexibility relative to at least two
zones of less flexibility, wherein the at least two zones of greater
flexibility and the at least two zones of less flexibility comprise
a circumference of the variable stiffness stent, and wherein each
of the at least two zones of greater flexibility comprise at least
two consecutive struts and at least two crowns coupled to the at
least two consecutive struts and wherein each of the at least two
zones of less flexibility comprises at least two consecutive struts
and at least two crowns coupled to the at least two consecutive
struts, and wherein one of the at least two zones of greater
flexibility is approximately circumferentially aligned with the
first coupling and the other of the at least two zones of greater
flexibility is approximately circumferentially aligned with the
second coupling.
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Appeal2014-007162
Application 13/458,242
REJECTIONS2
The following rejections are before us for review:
I. The Examiner rejected claims 1-3, 6, 7, 18, and 19 under 35
U.S.C. § 102(b) as being anticipated by Hartley (US 7,413,573
B2, iss. Aug. 19, 2008; hereinafter "Hartley'573").
II. The Examiner rejected claims 1-3, 6, 8, 9, 18, and 19 under 35
U.S.C. § 102(b) as being anticipated by Hartley
(US 2003/0199967 Al, pub. Oct. 23, 2003; hereinafter
"Hartley' 967").
III. The Examiner rejected claims 4, 5, and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Hartley'573 and Callol
(US 2003/0125802 Al, pub. July 3, 2003).
IV. The Examiner rejected claims 10 and 11 under 35 U.S.C.
§ 103(a) as being unpatentable over Hartley'573.
V. The Examiner rejected claims 12-17 under 35 U.S.C. § 103(a)
as being unpatentable over Hartley' 573 and Hartley
(US 6,524,335 Bl, iss. Feb. 25, 2003; hereinafter
"Hartley' 33 5").
Final Rejection 4--18 ("Final Act.," mailed Aug. 6, 2013).
2 The rejection of claims 12-17 under 35 U.S.C. § 112 is withdrawn.
Answer 2-3 ("Ans.," mailed Apr. 11, 2014).
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Appeal2014-007162
Application 13/458,242
ANALYSIS
Rejection I
Appellants argue that the Examiner eITed in rejecting claim 1 under 3 5
U.S.C. § 102(b) because Hartley'573 does not disclose a variable stiffness
stent,
where! n the variable stiffness stent includes at least two zones of
greater flexibility relative to at least two zones of less
flexibility ... compris[ing] a circumference of the variable
stiffness stent. .. and wherein one of the at least two zones of
greater flexibility is approximately circumferentially aligned
with the first coupling and the other of the at least two zones of
greater flexibility is approximately circumferentially aligned
with the second coupling.
(App. Br. 6----11 ). The Examiner maintains that the rejection is proper and
cites Figure 2 of Hartley· 573 as disclosing these limitations of claim 1 (Final
Act. 5; see also Ans. 6). ln particular, the Examiner relies on an annotation
of Figure 2; demonstrating an "[e]stimated image of [the] complete
circumference of stent 9" (Final Act 7).
A determination that a claim is anticipated under 35 U.S.C. § 102(b)
requires that we compare the claim to the prior art reference and make
factual findings that "each and every limitation is found either expressly or
inherently in [that] single prior art reference." Celeritas Techs. Ltd. v.
Rockwell Int'! Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998); see also In re
Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).
\Ve have reviewed Figure 2 ofHart!ey'573, as well as its
corresponding description, but we find nothing that expressly discloses these
contested limitations. Figure 2 shows a cross-section of the stent graft
shown in Figure l (Hartley'573 6:26---27). \Ve agree \vith Appellants that
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Appeal2014-007162
Application 13/458,242
Hartley's stent appears uniform around the circumforence in Figure 1 (App.
Br. 7). tv1oreover, Haiiley' 573 does not disclose any variation in flexibility
or nonconfonnity around the circumference of stent 9, and describes the
stent to be in the form of well-known Gianturco style zig zag Z stents (see
Hartley'573 2:43-44, 7:7-15). The Examiner's "estimated image' of
annotated Figure 2 that is relied upon "to show [that] the nurnber of turns
and stn1ts is different in each section along an entire cross-section" (Ans. 6)
is unsupported by any explicit disclosure in Hartley'573. Thus, we find
nothing in the reference that expressly discloses or shows a stent that
includes at least two zones of greater flexibility relative to at least two zones
of less flexibility comprising a circumference of the stent, and at least two
zones of greater flexibility that are approximately circumferentially aligned
with the couplings, as recited in claim 1 .
To the extent that the Examiner maintains that Hartley' 5 7 3 inherent! y
discloses these disputed limitations of claim 1, more than speculation is
required. The Examiner asserts that "stiffness is a material prope1iy of the
st1ucture and therefore if the structure/composition clairned is met, it would
inherently have any physical and material properties associated with it"
(Ans. 6). But the Examiner does not provide evidence or technical
reasoning that makes "clear that the missing descriptive matter is necessarily
present in the thing described in the reference, and that it would be so
recognized by persons of ordinary skill." Continental Can Co. USA, Inc. v.
Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). "Inherency ... may
not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient."
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Appeal2014-007162
Application 13/458,242
Id. at 1269 (quoting Jn re Oelrich, 666 F.2d 578, 581(CCPA1981)). In
other words, the physical property of the structure does not necessarily
account for the variable flexibility of the different zones comprising a
circumference of the stent or that the at least two zones of greater flexibility
are approximately circumferentially aligned with the couplings.
Therefore; we do not sustain the rejection of independent claim 1
under 35 U.S.C. § 102(b), or the rejection of claims 3, 6, and 7, which
depend from claim l. Independent claim 18 includes language substantia11 y
similar to the language of claim l, and the Examiner relies on the same
deficient findings in Hartley' 573 to support the anticipation rejection of
claim 18 (see Final Act. 8). As such, we do not sustain the rejection of clairn
18, or dependent claim 19, for the reasons discussed above.
Rejection ll
We are also persuaded by Appellants' arguments (App. Br. 15----20)
that the Examiner erred in rejecting claim 1under35 U.S.C. § 102(b)
because we do not find the above disputed limitations expressly or
inherently disclosed by Figure 12 ofHartley'967. In rejecting claim 1, the
Examiner relies solely on annotations derived from the dimensions of
features in the schematic view of a human aorta showing placement of a
stent graft (Final Act 9----11; see annotated Figure 12). Although a drawing
in a reference may be cited against the claims of a utility patent application
even though the features shown in the drawing are unexplained in the
disclosure, we agree with Appellants that the simplified schematic of Figure
12 cannot reasonably be relied upon to have disclosed these disputed
features to one of ordinary skill in the art. Therefore, we do not sustain the
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Application 13/458,242
rejection of independent claim 1, or the rejection of claims 3, 6, 8, and 9
dependent thereon. For the same reasons, we do not sustain the rejection of
independent claim 18, or dependent claim 19.
Rejections 111-V
For the foregoing reasons, we do not sustain the rejections of
dependent claims 4, 5, 10-17, and 20 under 35 U.S.C. § 103(a) because the
Examiner's use of the disclosures of Callol and Hartley' 33 5 do not remedy
the shortcomings ofHartley'573 as discussed above (see Final Act. 13-18).
SUMMARY
The decision to reject claims 1-20 is reversed.
REVERSED
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