Ex Parte Edoga et al

Patent Trial and Appeal Board

Jun 11, 2013

10837827 (P.T.A.B. Jun. 11, 2013)

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.
10/837,827 05/03/2004 John K. Edoga 103056A-400 3295
27267 7590 06/12/2013
WIGGIN AND DANA LLP
ATTENTION: PATENT DOCKETING
ONE CENTURY TOWER, P.O. BOX 1832
NEW HAVEN, CT 06508-1832
EXAMINER
CHUKWURAH, NATHANIEL C
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
06/12/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN K. EDOGA and THIERRY RICHARD
____________

Appeal 2011-000532
Application 10/837,827
Technology Center 3700
____________

Before STEFAN STAICOVICI, BENJAMIN D.M. WOOD, and
ADAM V. FLOYD, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-000532
Application 10/837,827
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STATEMENT OF THE CASE
John K. Edoga and Thierry Richard (Appellants) appeal under 35
U.S.C. § 134 from the Examiner’s decision finally rejecting under 35 U.S.C.
§ 103(a) claims 7-14 and 37 as unpatentable over Laufer (US 6,149,660, iss.
Nov. 21, 2000), Cummins (US 7,008,435 B2, iss. Mar. 7, 2006), and
Huitema (US 6,638,297 B1, iss. Oct. 28, 2003) and claims 15, 16, 19-31, 35,
36, 38, and 39 as unpatentable over Laufer, Cummins, Huitema, and Becht
(US 4,196,836, iss. Apr. 8, 1980)1. Claims 1-6 and 40-65 have been
withdrawn. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).

INVENTION
Appellants’ invention relates to a stapler for connecting an endograft
to a vessel including a staple that is “U-shaped with a pair of straight legs
connected by a central portion and a second condition in which the straight
legs are formed into loops.” Spec. 12, para. [0057] and figs. 23A and 23B.
Claim 7 is illustrative of the claimed invention and reads as follows:
7. An endovascular stapler system for securing an endograft
to a vessel, said system comprising:
a staple formed from a memory alloy, said staple
including first and second legs joined by a central portion, said
legs forming two parallel loops when in a natural condition;
a trigger housing including a trigger mechanism within
said housing;
a staple housing for storing said staple in a deformed
condition, said staple having two parallel straight legs joined by

1 Claims 17, 18, and 32-34 are objected to by the Examiner as being
dependent upon a rejected base claim and otherwise indicated as being
allowable if rewritten in independent form including all of the limitations of
the base claim and any intervening claim. Final Rejection, mailed March 31,
2009, at 12. Claims 17, 18, and 32-34 are not part of the instant appeal.

Appeal 2011-000532
Application 10/837,827
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said central portion when in said deformed condition, said
staple housing having a proximal end and a distal end, said
staple housing having a staple exit area formed therein near said
distal end thereof, said staple housing including a staple
channel having a first guide flange for guiding said first leg of
said staple and a second guide flange, which is parallel to and
laterally spaced from said first guide flange, for guiding said
second leg of said staple, each of said first and second guide
flanges including a substantially straight portion and an arcuate
portion, said substantially straight portion being configured for
storing said staple in said deformed condition, said arcuate
portion having a radius that controls transformation of said
staple from said deformed condition to said natural condition as
said staple exits said staple exit area, said staple channel
extending through said staple housing to said staple exit area
thereby defining a longitudinal direction; and
a balloon situated exterior to said staple housing near said
distal end thereof, said balloon adapted to be selectively inflated
and deflated to push said staple exit area against the endograft
and the vessel;
wherein said trigger mechanism is configured to actuate
driving a staple from said staple housing through said staple
exit area into the endograft and the vessel and transform said
staple from said deformed condition to said natural condition as
it moves forward along said staple channel due to properties of
said memory alloy and not from bending or other shaping
introduced by said trigger mechanism or said staple housing,
and said two parallel loops of said staple are formed in a
direction that is substantially parallel to said longitudinal
direction of said staple channel and not toward each other.

SUMMARY OF DECISION
We REVERSE.

Appeal 2011-000532
Application 10/837,827
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ANALYSIS
Each of independent claims 7, 19, and 37 requires, inter alia, a staple
that in a natural condition has “legs forming two parallel loops . . . in a
direction that is substantially parallel to said longitudinal direction of said
staple channel and not toward each other.” App. Br., Claims Appendix.
Pointing to Figure 23 of Laufer, the Examiner found that Laufer
discloses “a staple with parallel loops connected by a central element.”
Ans. 4. The Examiner further found that “Huitema teaches a staple (Figs. 2
and 4) formed of memory alloy which forms loops of any orientation,
[which] is old and well known in the art.” Id. The Examiner concluded that
“it would have been obvious to one skilled in the art at the time the invention
was made to modify Laufer’s staple to include a memory alloy which forms
the loop as shown in Fig. 4 [of Huitema], parallel to each other.” Ans. 5.
Appellants argue that neither Laufer nor Huitema discloses a staple
having “two parallel loops,” as called for by each of independent claims 7,
19, and 37. App. Br. 13.
In response, the Examiner further takes the position that “Huitema's
staple forms two parallel loops” and that “it is capable of being aligned in a
direction substantially parallel to a longitudinal direction of the staple
channel” because “memory alloy is known [in the] art to deform in any
preferred orientation.” Ans. 15.
At the outset, we agree with Appellants that in the staple of Laufer,
the “ends are forced together to form a single loop and not parallel loops,” as
called for by each of independent claims 7, 19, and 37. See Reply Br. 5; see
also Laufer, figs. 23 and 24. We further agree with Appellants that in
contrast to each of independent claims 7, 19, and 37, which require the
claimed loops to be “not toward each other,” the loops of Huitema’s staple
Appeal 2011-000532
Application 10/837,827
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are “directed toward one another.” See Reply Br. 7-8; see also Huitema,
fig. 4. Moreover, as Appellants have noted, the loops of Huitema “are in-
line with one another,” and as such “contact one another.” Reply Br. 7. An
ordinary and customary meaning of the term “parallel” is “extending in the
same direction, everywhere equidistant, and not meeting.” MERRIAM
WEBSTER’S COLLEGIATE DICTIONARY (10th Ed. 1997). In this case, since
Huitema’s loops contact one another, they meet, are not everywhere
equidistant and as such, do not constitute “parallel loops.”
Lastly, while the Examiner’s position also appears to be that a staple
having “parallel loops” would have been obvious merely because memory
alloy can deform in any preferred orientation, the Examiner has not made
any finding as to the particular type of staple called for in each of
independent claims 7, 19, and 37, namely, a staple having “parallel loops . .
. in a direction that is substantially parallel to said longitudinal direction of
said staple channel and not toward each other.” As such, we find that the
Examiner’s legal conclusion of obviousness is not supported by facts, and
thus, cannot stand. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967)
(the examiner has the initial duty of supplying the requisite factual basis and
may not, because of doubts that the invention is patentable, resort to
speculation, unfounded assumptions, or hindsight reconstruction to supply
deficiencies in the factual basis).
Thus, for the foregoing reasons, we do not sustain the rejection under
35 U.S.C. § 103(a) of claims 7-14 and 37 as unpatentable over Laufer,
Cummins, and Huitema.
The addition of Becht does not remedy the deficiencies of Laufer,
Cummins, and Huitema as described supra. Therefore, we likewise do not
sustain the rejection of claims 15, 16, 19-31, 35, 36, 38, and 39 as
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Application 10/837,827
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unpatentable over the combined teachings of Laufer, Cummins, Huitema,
and Becht.

SUMMARY
The decision of the Examiner to reject claims 7-16, 19-31, and 35-39
is reversed.

REVERSED

mls