Ex Parte Hunt

Board of Patent Appeals and Interferences

Mar 9, 2011

10815105 (B.P.A.I. Mar. 9, 2011)

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.
10/815,105 03/31/2004 James B. Hunt 8627- 431
(PA-5498-RFB)
6585
757 7590 03/09/2011
BRINKS HOFER GILSON & LIONE
P.O. BOX 10395
CHICAGO, IL 60610
EXAMINER
RYCKMAN, MELISSA K
ART UNIT PAPER NUMBER
3773
MAIL DATE DELIVERY MODE
03/09/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAMES B. HUNT
____________________

Appeal 2009-009714
Application 10/815,105
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, LINDA E. HORNER, and JOHN C.
KERINS, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-009714
Application 10/815,105
2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-27 and 36. Claims 28-35 have been canceled.
We have jurisdiction under 35 U.S.C. § 6(b).
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
A stent-graft assembly, comprising:
at least one unitary stent structure comprising a luminal surface and an
abluminal surface and having at least a first radial opening and a second
radial opening, said first and second radial openings being axially and
circumferentially defined by a plurality of struts, said first and second radial
openings extending through said stent structure between said luminal surface
and said abluminal surface, wherein said first and second radial openings are
spaced apart along a first direction;
a first graft layer disposed along at least a portion of said luminal
surface of said stent structure thereby fully covering luminal sides of said
first and second radial openings;
a second graft layer disposed along at least a portion of said abluminal
surface of said stent structure thereby fully covering abluminal sides of said
first and second radial openings;
a first attached area securing said first graft layer and said second graft
layer together through a portion of said first radial opening, wherein a first
unattached margin in which said first and second graft layers are not secured
to each other is disposed between said first attached area and an edge of said
first radial opening;
a second attached area securing said first graft layer and said second
graft layer together through a portion of said second radial opening, wherein
a second unattached margin in which said first and second graft layers are
not secured to each other is disposed between said second attached area and
an edge of said second radial opening; and
wherein said first and second unattached margins are oriented along
said first direction and on a same side of said first and second attached areas,
thereby allowing said first and second graft layers to move along said first
direction relative to said stent.
Appeal 2009-009714
Application 10/815,105
3
REJECTIONS
The Examiner makes the following rejections under 35 U.S.C. § 103(a):
I. Claims 1-11, 13, 14, and 16-19 as unpatentable over Lentz (US
5,843,166, iss. Dec. 1, 1998) and Jacobs (US 6,387,123, iss. May
14, 2002).
II. Claims 15 and 24-34 as unpatentable over Lentz, Jacobs, and
Buirge (US 2001/0034550 A1, pub. Oct. 25, 2001)
III. Claim 12 as unpatentable over Lentz, Jacobs, and Lombardi (US
6,579,314 B1, iss. Jun. 17, 2003), and
IV. Claims 20-23 as unpatentable over Lentz, Jacobs, Buirge, and
Lombardi.
The Examiner makes the following rejections under 35 U.S.C. § 102(b):
V. Claim 36 as anticipated by Lentz.

SUMMARY OF DECISION
We REVERSE.

OPINION
With respect to rejections I-IV, Appellant argues that there is no
apparent reason to combine the teachings of Lentz with Jacobs as proposed
by the Examiner, and that the Examiner has proposed the combination using
hindsight to improperly reconstruct Appellant’s invention. Appeal Br. 5-9;
Reply Br. 4. Thus, the first issue in this appeal is whether the Examiner has
set forth a reason based on rational underpinning supporting the proposed
modification of the stent structure in Lentz to include struts as taught in
Jacobs.
Appeal 2009-009714
Application 10/815,105
4
In relevant part, the Examiner proposes to add the struts 14 of Jacobs
to connect the stent rings 28’ of Lentz, in order to “enable the [stent] to
expand radially when subjected to the appropriate radially directed forces.”
Ans. 6. In the embodiment relied upon by the Examiner (see Lentz, fig. 3),
each stent ring 28’ is unconnected to the other stent rings 28’ and is located
within its own pocket 30’. These rings are capable of expanding radially
when subjected to radially directed forces. Lentz, col. 5, ll. 57-66 (“[i]n the
present invention, any conventional radially expandable stent may be
employed”). Moreover, the stent 28’ of Lentz is “free to move transversely
within the pocket 30 as it expands.”2 Connecting the stent rings 28’ with
struts as proposed by the Examiner seemingly would interfere with such
transverse movement. This begs the question as to why one of ordinary skill
in the art would look to incorporating struts 14 of Jacobs into the graft-stent
depicted in figure 3 of Lentz “to enable the [stent] to expand radially.” The
Examiner’s proposed modification (adding struts 14) does not match the
reason provided for the proposed modification (enabling radial expansion)
because the stent of Lentz already is capable of radial expansion. In other
words, the reason is not supported by rational underpinning. Without a
reason based on rational underpinning, the Examiner’s proposal to add the
struts 14 of Jacobs to the stents of Lentz appears to be solely motivated by
the desire to address the claim limitation requiring struts to define radial
openings in a unitary stent structure. For example, the Examiner has not

2 Likewise, in describing the alternative embodiment of figures 1 and 2,
which comprises a single pocket 30, Lentz emphasizes that “[s]tents 28 are
transversely movable along the longitudinal axis of composite multilayer
graft 11 in pocket 30.” Col. 5, ll. 11-12. Clearly, Lentz uses the term
“transversely” to denote the direction along the longitudinal axis.
Appeal 2009-009714
Application 10/815,105
5
identified whether strut 14 of Jacobs would provide some additional radial
expansion capabilities or benefits to the stent in Lentz. Thus, we agree with
Appellant that the Examiner’s proposed modification appears to be solely
based on impermissible hindsight. In rejections II-IV, the Examiner does
not set forth any other rational underpinning supporting the proposed
modification of the stent in Lentz in view of the strut in Jacobs.
Accordingly, we are persuaded that rejections I-IV are in error.
With respect to rejection V, Appellant argues that the Examiner’s
rejection does not properly address the limitation in claim 36 requiring that
the unattached margin extends “peripherally all around” the attached area.
Appeal Br. 9-10. The Examiner found that Lentz teaches that unattached
area (pocket) 30a’ extends “circumferentially” all around a first attached
area. Ans. 4, 14. However, as pointed out by Appellant, the unattached
margin of 30a’ identified by the Examiner only extends around one side of
the attached area. Because the unattached margin only extends around one
side of the attached area in Lentz, it cannot extend “all around” the attached
area. Accordingly, we do not sustain the Examiner’s finding that Lentz
teaches an unattached margin extending “peripherally all around” the
attached area.

DECISION
For the above reasons, we reverse the Examiner’s decision.

REVERSED
Appeal 2009-009714
Application 10/815,105
6
hh

BRINKS HOFER GILSON & LIONE
P.O. BOX 10395
CHICAGO, IL 60610