Ex Parte Marcade et al

Board of Patent Appeals and Interferences

Dec 29, 2008

09777274 (B.P.A.I. Dec. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEAN PAUL MARCADE, ANTHONY WEST, and
FREDERICK W. KORNAHRENS
____________

Appeal 2007-2500
Application 09/777,274
Technology Center 3700
____________

Decided: December 29, 2008
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Before WILLIAM F. PATE, III, HUBERT C. LORIN, and ANTON W.
FETTING, Administrative Patent Judges.

PATE, III, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
This is a response to Appellants’ Request for Reconsideration filed on
Nov. 26, 2007 pursuant to 37 C.F.R. § 41.52(a)(1) (2007). Such Requests
must state with particularity points believed to have been misapprehended or
overlooked by the Panel in rendering the Decision.
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Appellants’ first point raised in the Request is that the Board has
offered too narrow a construction of the claim term “configured to mate.”
Although we are familiar with the argument that we have erred in construing
a claim term, it is rare that we see an argument that the Board has construed
a claim term too narrowly.
The Appellants agree with our construction of the “configured”
portion of the term as formed or shaped, but Appellants do not agree that “to
mate” should be construed as having the same shape and diameter.
Curiously, while arguing our construction of the term is too broad,
Appellants have yet to offer a construction of the entire term “configured to
mate” even up to and including in the Request, since they never construe the
claim term “mate.” We were and are of the view that “mate” when used in
this context should be construed as fitting together. Thus, we agree with
Appellants that our claim construction advanced in the opinion, if construed
to mean exactly the same shape and diameter, is overly narrow, inasmuch as
it is clear that extender 114 is configured to be received or alternatively
receives first leg 132 (see claims 71 and 72 and Appellants’ description of
the claimed subject matter at Br. 4:1-2). Accordingly, with an abundance of
caution, we reconsider our construction of the claim term “configured to
mate” and change our construction of the term to the broader “shaped or
formed to interfit or fit together.” Admittedly, we are at a loss as to how this
broader claim construction helps the Appellants’ case.
Additionally, as we mentioned in our decision, the expression
“configured to mate” only describes the extender, and there is no
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requirement in claim 67 that the extender be introduced into the vasculature
or actually mated with the body. Only the body is stated as having been
emplaced.
Next Appellants argue our inference that short tube graft 8 of Martin
has the same general diameter as straight tube graft or extender 18 of Martin.
We agree that the written disclosure of Martin does not affirmatively state
that these two components are of the similar diameters and shapes.
Notwithstanding this fact, it remains our finding that Martin anticipates
Appellants’ claim 67 as we found in our original decision and for an
additional reason based on our new and broader claim construction advanced
above.
In our Decision, we referred to Figure 5 as showing that short tube
graft 8 and straight tube graft or extender 18 are fitted together. We concur
in that finding and reiterate that the Figure teaches that these parts fit
together for blood flow. Appellants do not argue that this is not the case.
Under our new claim construction it can be seen that parts that fit together
anticipate Appellants’ claim element of “configured to mate.” Secondly, the
disclosure states that the straight tube graft 18 overlaps the short tube graft 8
and that the straight tube graft 18 may be expanded into position,
presumably by a balloon catheter. See Martin at col. 4, ll. 15-19. This is
another indication that these grafts are “configured to mate” as required by
the claimed subject matter, since these two grafts are formed to fit together.
With respect to the Appellants’ argument that the extender is
configured to mate with the longer leg of the body, we agree that this is what
the claim requires, and we have two responses thereto. First of all, Martin
gives a range of lengths for both the distance from the bottom end 6 to the
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opening 7 and for the length of the short tube graft 8. While both of these are
disclosed as preferably 1 cm, Martin does contemplate a range of length for
both of these features of from 0.5 cm to 1.5 cm. Martin does not state that
these lengths are related or have to be the same. Thus, Martin does
contemplate that the length of short tube graft 8 might, in some instances, be
longer than that length which terminates in the opening 6, thus making short
tube graft 8 the longer leg. In this situation, the straight tube graft 18 is
certainly configured to mate with the longer leg 8 thus satisfying the claimed
limitation.
Secondly, as we discussed in out prior decision, there is an overlap of
size ranges between the opening 6 and the opening 7 of Martin. Opening 6
has a diameter of 4 to 6 mm, col. 2, l. 63. Opening 7 has a diameter of 4 to 8
mm. See col. 2, l. 66. Inasmuch as we have previously found that straight
tube graft 18 is sized so as to be configured to mate with short tube graft 8,
at least for some contemplated sizes of opening 6 and short tube graft 8,
straight tube graft 18 is the same dimension as the opening 6. Note that the
claim never requires these two pieces--opening 6 and straight graft 18--to be
connected, only that they be “configure to mate.” Thus it was our finding
that the claimed subject matter of claim 67 lacked novelty over the Martin
reference. We note that this is additionally true to the extent that straight
tube graft 18 could be placed in opening 6 and expanded by balloon catheter
to fill and seal the opening.
Appellants point to the “overlap” terminology of Martin, while we
agree that Martin does state that short tube graft 8 and straight graft 18
overlap, this refers to the linear disposition or axial extent. The two tubes
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overlap so that the graft 18 may be expanded to fit in the straight tube graft
and common femoral artery when expanded.
Finally, Appellants argue that there are structural differences between
the end opening 6 and the straight graft tube 18. As we reiterated above, the
claim does not require the installation of the extender in the longer leg, only
that these structure be somehow “configured to mate.” Here is where
Appellants’ broader claim construction lets them down. As we have detailed
above, these structures of Martin would certainly “fit,” i.e., dimensionally.
Their actual use together is not required in claim 67. And while Appellants
argue that a stented straight tube graft 18 could not be placed in a stented
opening 6, which has not be established on this record, whether these parts
are stented or not is immaterial as they are not required to actually be mated
by the claimed subject matter.
For the reasons given above, our prior decision has been reconsidered
and granted to the extent that we have broadened our claim construction of
the expression “configured to mate’ in claim 67. With respect to making
any further changes in our Decision the Request is denied.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2007).

GRANTED-IN-PART

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Application 09/777,274

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