Ex Parte Hartley

Patent Trial and Appeal Board

Mar 19, 2013

10962766 (P.T.A.B. Mar. 19, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/962,766 10/12/2004 INV001David Ernest Hartley 12730-635
(PA-5368-RFB)
8509
48003 7590 03/19/2013
BRINKS HOFER GILSON & LIONE/CHICAGO/COOK
PO BOX 10395
CHICAGO, IL 60610
EXAMINER
SZPIRA, JULIE ANN
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
03/19/2013 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 DAVID ERNEST HARTLEY
__________

Appeal 2011-006990
Application 10/962,766
Technology Center 3700
__________

Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and
JOHN G. NEW, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a stent
graft. The Examiner rejected the claims as anticipated and as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We reverse.

Appeal 2011-006990
Application 10/962,766

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Statement of the Case
Background
“This invention relates to a stent graft for use in the human or animal
body and more particularly to a stent graft which can be used as a side
branch stent graft from a main vessel stent graft” (Spec. 1, ll. 6-8).
The Claims
Claims 3-6 and 24 are on appeal. Claim 24 is representative and reads
as follows:
24. A stent graft comprising a tubular body of a biocompatible
graft material, the tubular body comprising a first end and a second
end, a lumen therethrough, being of a selected diameter and the
tubular body comprising an inside and an outside, a balloon
radially expandable stent inside the first end of the tubular body
and an extension portion of the balloon radially expandable stent
extending longitudinally beyond the first end of the tubular body
whereby the extension portion of the balloon expandable stent can
be expanded with a balloon to expand radially beyond the selected
diameter of the tubular body, a plurality of self radially expanding
stents spaced apart on the tubular body and positioned on the
outside of the tubular body towards the second end of the tubular
body and a terminal self radially expanding stent on the inside of
the tubular body at the second end of the tubular body.

The issues

A. The Examiner rejected claims 3-5 and 24 under 35 U.S.C. § 102(e) as
anticipated by Greenberg1 (Ans. 3-4).
B. The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as obvious
over Greenberg (Ans. 5).

1 Greenberg, et al., US 2002/0198587 A1, published Dec. 26,
2002.
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Application 10/962,766

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A. 35 U.S.C. § 102(e) over Greenberg
The Examiner finds that Greenberg teaches:
a stent graft comprising a tubular body of a biocompatible
material . . . comprising a first end and a second end, a
lumen . . . of a selected diameter and . . . a balloon radially
expandable stent . . . and an extension portion of the balloon
radially expandable stent extending longitudinally beyond
the first end of the tubular body whereby the extension
portion of the balloon radially expandable stent can be
expanded with a balloon (paragraph 49) to expand radially
beyond the selected diameter of the tubular body and a
plurality of self radially expanding stent . . . spaced apart on
the tubular body and positioned on the outside of the tubular
body and a terminal self radially expanding stent (58) on the
inside of the tubular body.

(Ans. 3-4).
Appellant contends that “Greenberg does not disclose a balloon
expandable stent positioned in inside a tubular body at one end of the
tubular” (App. Br. 10). Appellant contends that Greenberg “does not
disclose that balloon expandable stent resides inside a tubular body with a
portion that extends beyond the end of the tubular body . . . the attachment
stent 32 is attached to the very end of the device and is not inside as recited
by claim 24” (App. Br. 12).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Greenberg anticipates claim 24?
Findings of Fact
1. Greenberg teaches that “the stent graft assembly 10 is modular
and comprises an aortic section or a aortic section 12, an iliac section 14,
and a contralateral iliac occluder 80” (Greenberg 2 ¶ 0026).
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2. Figure 1 of Greenberg is reproduced below:

“FIG. 1 diagrammatically illustrates the stent graft assembly of the present
invention deployed within a ruptured aneurysm, and an occluder in a
selected iliac artery” (Greenberg 2 ¶ 0015).
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3. Greenberg teaches that:
The aortic section 12 includes a proximal end portion 26 . . .
An attachment stent 32 is secured to the proximal end
portion, with the stent’s distal end portion 34 along the
inside surface of the graft material 36, while the remaining
attachment portion 38 extending proximally from the graft
material and having barbs 40 for example for becoming
affixed to the vessel walls.

(Greenberg 2-3 ¶ 0028).
4. Greenberg teaches that “[o]ptionally, a molding balloon may be
used to inflate within self-expanded attachment stent 32 to assuredly press
the struts against the vessel wall and seat the barbs” (Greenberg 5 ¶ 0049).
5. Greenberg teaches that the “stents are preferably well-known
self-expanding Gianturco Z-stents, however, balloon expandable stents an
also be used” (Greenberg 6 ¶ 0055).
6. Figure 13 of Greenberg is reproduced below:

“FIG. 13 illustrates attachment stent 32 before top cap 104 has been placed
over the exposed struts 148” (Greenberg 5 ¶ 0048).
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Principles of Law
“A single prior art reference that discloses, either expressly or
inherently, each limitation of a claim invalidates that claim by anticipation.”
Perricone v. Medicis Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir.
2005).
Analysis
Greenberg teaches a modular stent graft with tubular bodies (FF 1)
which comprise self-expanded stents (FF 2-3). We agree with Appellant
that “the use of a molding balloon on a self-expanding stent after it has been
expanded is not the same as using a balloon expandable stent” (App. Br.
11). The structure of self-expanding and balloon stents are different, and
even if a balloon is later used to mold the self-expanding stent, it maintains a
different structure than a balloon expanding stent.
Further, Greenberg does not teach the combination of balloon
expandable stents and radially expandable stents spaced apart on the tubular
body. We recognize that Greenberg suggests that balloon expandable stents
and self-expanding stents are known equivalents (FF 5). However, the
current rejection is not an obviousness rejection under 35 U.S.C. § 103(a)
where we can rely upon known equivalence to support a finding of prima
facie obviousness. Instead, the current rejection is an anticipation rejection.
As stated in Arkley, an anticipatory reference under 35 U.S.C. § 102
[M]ust clearly and unequivocally disclose the claimed
compound or direct those skilled in the art to the compound
without any need for picking, choosing, and combining
various disclosures not directly related to each other by the
teachings of the cited reference. Such picking and choosing
may be entirely proper in the making of a 103, obviousness
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rejection, where the applicant must be afforded an
opportunity to rebut with objective evidence any inference
of obviousness which may arise from the similarity of the
subject matter which he claims to the prior art, but it has no
place in the making of a 102, anticipation rejection.

In re Arkley, 455 F.2d 586, 587-588 (CCPA 1972).
The instant situation is similar to Arkley, where affirmance of the
rejection would require picking and choosing from the reference in order to
arrive at the claimed invention. That is, to satisfy claim 24, we would need
to replace the self-expanding stent at the end of the tubular body taught by
Greenberg with a balloon expandable stent, but retain the remaining self-
expanding stents spaced apart on the tubular body. We do not address
whether this would have been obvious, since that question is not presented.
We simply find that claim 24 is not anticipated.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Greenberg anticipates claim 24.
B. 35 U.S.C. § 103(a) over Greenberg
The Examiner finds that it “is well known in the art that stents can be
made from a nickel, titanium or magnesium alloy” (Ans. 5). The Examiner
also finds it obvious to “use a shape memory alloy” (Ans. 5).
We agree with Appellant that “the Examiner provides no evidentiary
support for the conclusory statement in the Final Office Action” (App. Br.
15).
In this case, Appellant traverse the Examiner’s finding. When the
Examiner is challenged as to what was well known, the Examiner is required
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to produce objective evidence which supports the fact(s) at issue. The
Examiner has failed in this burden in the instant case to provide any such
evidence. See In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970) (“Assertions
of technical facts in areas of esoteric technology must always be supported
by citation to some reference work recognized as standard in the pertinent
art and the appellant given, in the Patent Office, the opportunity to challenge
the correctness of the assertion or the notoriety or repute of the cited
reference”). We do not specifically address whether stents made of shape
memory materials such as nitinol are well known in the art, because the
Examiner has failed to establish a prima facie case by failing to provide
evidence supporting this fact. It is not the role of the Board to properly
formulate a rejection which has been inadequately articulated.
SUMMARY
In summary, we reverse the rejection of claims 3-5 and 24 under 35
U.S.C. § 102(e) as anticipated by Greenberg.
We reverse the rejection of claim 6 under 35 U.S.C. § 103(a) as
obvious over Greenberg

REVERSED

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