Ex Parte Eells et alDownload PDFPatent Trial and Appeal BoardMar 28, 201711578284 (P.T.A.B. Mar. 28, 2017) Copy Citation 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. 12730/757 (PA -5490-PCT/U 9732 EXAMINER DUKERT, BRIAN AINSLEY ART UNIT PAPER NUMBER 3738 MAIL DATE DELIVERY MODE 11/578,284 10/12/2006 48003 7590 0: BGL/Cook - Chicago PO BOX 10395 CHICAGO, IL 60610 Scott E. Eells 03/28/2017 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 SCOTT E. EELLS and THOMAS A. OSBORNE Appeal 2015-005663 Application 11/578,2841 Technology Center 3700 Before: JAMES P. CALVE, FREDERICK C. LANEY, and ARTHUR M. PESLAK, Administrative Patent Judges. LANEY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Scott E. Eells and Thomas A. Osborne (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s Final decision rejecting claims 1, 2, 4— 15, and 17—19.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellant, the real party in interest is Cook Medical Technologies LLC. Appeal Br. 3 (filed Sept. 8, 2014). 2 Claims 3, 16, and 20 have been canceled. Final Act. 2. Appeal 2015-005663 Application 11/578,284 INVENTION Appellant’s invention relates generally to “a repair device for correcting leakage at the proximal (inflow) end of a stent graft due to migration or changes in the aneurysm that result in blood pressure being restored to the aneurysm sack, which could cause it to rupture.” Spec. 1. Claims 1, 14, and 18 are independent. Claim 1, reproduced below, is illustrative of the claimed invention. 1. A stent graft repair device, for repairing a preexisting stent graft in a body vessel, comprising: a tubular graft of biocompatible graft material having a proximal end, a distal end and; a passage extending longitudinally there through a first expandable stent at the proximal end of the tubular graft and extending beyond the graft material at the proximal end; the first expandable stent having a first plurality of barbs attached thereto and extending longitudinally therealong and pointing in a direction toward the distal end of the tubular graft, wherein the barbs extend beyond[gj the proximal end of the graft material, and a second expandable stent disposed on an interior surface of the tubular graft and within the passage of the tubular graft, the second expandable stent having a second plurality of barbs attached thereto and extending longitudinally therealong and pointing in a direction toward the proximal end of the tubular graft, wherein the second plurality of barbs protrude through the tubular graft and are configured to engage the graft material at a proximal end of the pre-existing stent graft. Appeal Br. 17 (Claims App. (emphasis added)). 2 Appeal 2015-005663 Application 11/578,284 REJECTIONS The following rejections are before us for review: I. The Examiner rejected claims 1, 4, and 10 under 35 U.S.C. § 102(b) as anticipated by Pinheiro (US 6,355,056 Bl, iss. Mar. 12, 2002). II. The Examiner rejected claims 2, 12—15, and 17—19 under 35 U.S.C. § 103(a) as being unpatentable over Pinheiro and Hartley (US 2003/0199967 Al, pub. Oct. 23, 2003). III. The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as being unpatentable over Pinheiro and Drasler (US 2001/0047198 Al, pub. Nov. 29, 2001). IV. The Examiner rejected claims 5—9 under 35 U.S.C. § 103(a) as being unpatentable over Pinheiro and Fogarty (US 2004/0098097 Al, pub. May 20, 2004). ANALYSIS Rejection I Appellants contend there are two deficiencies with the Examiner’s finding that Pinheiro Figure 1 discloses a device that anticipates claim 1. First, Appellants assert Pinheiro Figure 1 lacks the necessary clarity to establish, by a preponderance of the evidence, the disclosed device has a second expandable stent disposed on an interior surface with a second plurality of barbs protruding through the tubular graft. Appeal Br. 11—13. Second, Appellants assert it is error to rely on Pinheiro Figure 1 to show a device with a first expandable stent at the proximal end of the tubular graft, which extends beyond the graft material at the proximal end and has a first 3 Appeal 2015-005663 Application 11/578,284 plurality of barbs that also extend beyond the proximal end of the graft material pointing toward the distal end. Id. at 13—15. Appellants argue the above deficiencies demonstrate the rejection of claim 1 and, as a result, dependent claims 4 and 10, was error. Id. at 15. Appellants’ argument is persuasive for the following reasons. The Examiner’s findings that Pinheiro discloses the barb-related elements of claim 1 is based solely on Figure 1, reproduced below. Final Act. 2—3, 4—5. | fJSS iNPsi I / ^8% ffft) fife $$ H X *:*• V Jw 't A wV» ‘ V s.. I,.S > ■'« p> ivW‘S l vVx ,nJa»Vi « yp < ^ XX < x 'ttfc X{ -***.. ............... x»:»*>■■■■ „■ . . >: ..A.. .. . •■v.. o-.•. ......... A,' ■ .v .XAV,' ... ^.'X' -x ' * . iv' i' ..'•■fe -- 'VXXXX".\, * ' X'"S" \.............,XxX.»S\X^x\Xx^X ,S',X>\N’vXX-;'. ; j - ^ 7<#£ ' X . -X ---------- K.XX-;'- -m' mm? m D-fesi .S^somsl; Pinheiro Figure 1 above illustrates an expanded intraluminal prosthesis (col. 3,11. 10—11) and includes annotations by the Examiner. Final Act. 4. To further demonstrate the Examiner’s findings, an additional annotated version of Pinheiro Figure 1 is provided, reproduced below. Id. at 3. 4 Appeal 2015-005663 Application 11/578,284 ■ Sufe Ua$h of Bssfe (?5; The above annotated Pinheiro Figure 1 shows, according to the Examiner, the barb of the proximal end (as well as the distal end) spans a distance from a point distal to the graft's end to a point proximal to the graft's end (as shown). Barb (25) is oriented so as to extend beyond the end of the graft in a proximal direction, while still pointing towards the barb(s) of the distal end. Id. at 2. Pointing to stent (20) and the barbs (25) on the left side of Pinheiro Figure 1 (as shown in the first annotated Figure 1 reproduced above on the previous page), the Examiner finds the Pinheiro device discloses a second expandable stent disposed on an interior surface with a second plurality of barbs protruding through the tubular graft. Id. at 5. The Examiner finds that Figure 1 of Pinheiro as annotated “illustrates the barbs (25) piercing through the graft material (10) in the longitudinal cross-section of the device.” Id. 5 Appeal 2015-005663 Application 11/578,284 The Examiner offers no supportive evidence for these findings from Pinheiro’s Specification. Disagreeing with the Examiner’s interpretation of Figure 1, Appellants argue it illustrates attaching the barbs to the portion of the stent disposed outside of a tubular graft and extending outside the graft instead of through it. Appeal Br. 11—13. As support, Appellants cite column 4, lines 35—43, of Pinheiro’s Specification descripting barbs (25) as “extend[ing] outside of graft 10.” To which the Examiner retorts, Figure 1 “illustrates a portion of the graft (10) extends in a longitudinal distance beyond the barb (25)” and, therefore, shows the barb (25) as protruding through the graft. Ans. 3. Claim 1 requires attaching a second set of barbs to a second stent that is disposed on an interior surface of the tubular graft and within the passage of the tubular graft and to protrude through the tubular graft pointing toward the proximal end of the tubular graft. Having considered Pinheiro’s Specification and Figure 1, the Examiner’s finding that Pinheiro discloses a barb protruding through the graft is not supported by a preponderance of evidence. The Examiner recognizes that Pinheiro shows graft 10 in a cross- sectional view with hatch marks. Ans. 5. Barbs 25 are shown in the foreground of the cross-sectional portion of graft 10 and its inner surface 13 in Figure 1. We find no indication in Figure 1 that any of barbs 25 extend through inner surface 13 of graft 10 or the wall of graft 10. The express disclosure in Pinheiro’s Specification that the barbs “extend outside of the graft” more strongly favors the Appellants’ interpretation. In addition, Pinheiro discloses that stents 20 may be secured to inner surface 13 of graft 10 by stent sutures 36 as illustrated in Figure 1. Pinheiro, 3:65—67. Stent 6 Appeal 2015-005663 Application 11/578,284 sutures 36 “are provided in order to maintain stents 20 in a position adjacent first open end portion 10a and second open end portion 10b of graft 10.” Id. at 3:67-4:3. Such sutures would not appear to be necessary to anchor stents 20 in graft 10 if barbs 25 extended through the walls of graft 10. Pinheiro also discloses that barbs 25 attach to intermediate portions 22a at locations that are situated outside the proximal and distal ends of graft 10 in Figure 1. Id. at 4:39^42. Figure 2 of Pinheiro discloses such barbs 25 extending from a point at an edge of the graft into an inner surface of blood vessel 50 to anchor the prosthesis. Id. at 4:42-44. We find no indication in Figure 1 or the written description in Pinheiro’s specification that any barbs 25 extend through graft 10, or are positioned inside of graft 10 in any way. The Examiner’s finding that Figure 1 illustrates barbs 25 protruding through tubular graft 10 is further undermined by the fact that Figure 1 lacks the customary marks a skilled artisan would expect to find if Pinheiro was intended to illustrate the barbs as passing through the graft as Appellants contend. Appeal Br. 11. In particular, Appellants argue that “[t]here are no hatch marks indicating that the barb extends through the wall of the graft.” Id. To which the Examiner responds, “one of ordinary skill would have engineering drawing knowledge sufficient to conclude that said barb (25) protrude through the graft (10).” Ans. 4. However, the Examiner fails to provide a reason or factual basis why a skilled artisan would conclude that the drawings show barbs 25 protruding through graft 10 when they connect to stent 22 outside of graft 10. In this regard, we further note that Pinheiro teaches, “the prosthesis of FIG. 1 implanted in a blood vessel” is shown in Figure 2, reproduced below. Pinheiro col. 3,11. 10—11, Fig. 2 (annotations added). 7 Appeal 2015-005663 Application 11/578,284 rti z Pinhiero’s Figure 2 unambiguously depicts barbs attached to the stent at a position that is exterior to the graft and extending away from the graft. In sum, the Examiner’s reliance of Pinheiro’s Figure 1 to show barbs protruding through a graft is not supported by a preponderance of the evidence. Even if we were to accept the Examiner’s position that Pinheiro Figure 1 shows barbs (25) protruding through the graft (10), Figure 1 would still fail to show barbs attached to a stent on an interior surface of the tubular graft and within the passage of the tubular graft. Figure 1 shows contrarily that barbs (25) are attached to the stent at a position exterior to and outside of the distal and proximal ends 10a, 10b of graft 10. Again, pointing to stent (20) and the barbs (25), except on the right side of Pinheiro Figure 1, the Examiner finds the Pinheiro device discloses a device with a first expandable stent at the proximal end of the tubular graft that extends beyond the graft material and has a first plurality of barbs that also extend beyond the proximal end of the graft material pointing toward the distal end. Id. at 4—5. Disagreeing, Appellants argue the barbs on the right side of Figure 1, which extend beyond the end of the graft (i.e., the barb extends outside the outer edge of the graft), are actually pointing away from 8 Appeal 2015-005663 Application 11/578,284 the distal end, which is the opposite direction claim 1 requires. Appeal Br. 13-15. Dismissing Appellants’ observation, without disagreeing with its accuracy, the Examiner responds, [a] barb (25) that extends substantially along the longitudinal axis, as in Pinheiro Figure 1, can be reasonably interpreted as extending/pointing towards both a proximal and/or distal end. As the barb is oriented in said longitudinal direction, Pinheiro teaches the limitations as claimed. Ans. 5. We do not agree such an interpretation would be reasonable on this record. The Examiner offers no evidence to support such an interpretation, which directly contradicts what the record does support as discussed above. The Examiner simply has not mustered sufficient evidence to show Pinheiro discloses the first plurality of barbs claim 1 requires, particularly where Pinheiro discloses that barbs 25 that extend beyond a proximal end of graft 10 also point in the same proximal direction and barbs 25 that extend beyond a distal end also point in the same distal direction. In view of the above deficiencies, which also infect the Examiner’s rejection of dependent claims 4 and 10 (see Final Act. 5—6), we do not sustain the Examiner’s rejection of claims 1, 4, and 10. Rejections II—IV The Examiner adopts the above findings regarding claim 1 (see supra, Rejection I) into the rejections of claims 2, 5—9, 11—15, and 17—19. See Final Act. 6—9. Independent claims 14 and 18 both recite that “the second plurality of barbs protrude through the tubular graft” and that a first plurality of barbs extends beyond the distal or proximal end of the tubular graft and point toward the other end, i.e., to the other of the distal or proximal end of 9 Appeal 2015-005663 Application 11/578,284 the tubular graft. Neither Hartley, Drasler, nor Fogarty is relied upon by the Examiner to the cure these deficiencies. Therefore, we do not sustain the Examiner’s rejections of claims 2, 5—9, 11—15, and 17—19. DECISION The Examiner’s rejections of claims 1, 2, 4—15, and 17—19 are reversed. REVERSED 10 Copy with citationCopy as parenthetical citation