Ex Parte Osborne et al

Patent Trial and Appeal Board

Feb 29, 2016

12316734 (P.T.A.B. Feb. 29, 2016)

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.
12/316,734 12/16/2008 Thomas A. Osborne 8627/3470 (PA-6328-RFB) 6609
48003 7590 02/29/2016
BGL/Cook - Chicago
PO BOX 10395
CHICAGO, IL 60610
EXAMINER
GHERBI, SUZETTE JAIME J
ART UNIT PAPER NUMBER
3738
MAIL DATE DELIVERY MODE
02/29/2016 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 THOMAS A. OSBORNE and MICHAEL H. PALNE
____________

Appeal 2014-000674
Application 12/316,734
Technology Center 3700
____________

Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.

STEPINA, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Thomas A. Osborne and Michael H. Palne (Appellants) appeal under
35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–15 and
20–261. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
The claimed invention “relates to a device for enabling repeated
access to a blood vessel.” Spec. 1, ll. 9–10.

1 Claims 16–19 have been cancelled. Appeal Br. 2 (filed May 28, 2013).
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Application 12/316,734

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Claims 1, 10, 12, and 20 are independent. Claim 1 is illustrative of
the claimed invention and reads as follows:
1. An intraluminal device for use in accessing a vessel
lumen with a medical implement, the intraluminal device
comprising:
a lattice of structural elements forming a tubular shape
having a device wall defining a device lumen, the device wall
having a fenestration side and an opposite side located opposite
the fenestration side;
a fenestration disposed in the fenestration side of the
device wall, the fenestration passing through the fenestration
side of the device wall allowing access of the medical
implement to the device lumen through the fenestration side of
the device wall;
a reinforced perimeter on the fenestration side around the
fenestration; and
a reinforced portion opposing the fenestration, the
reinforced portion formed in the opposing side of the device
wall.

Appeal Br. 18.

REFERENCES RELIED ON BY THE EXAMINER
Wisselink US 5,984,955 Nov. 16, 1999
Brucker US 7,799,064 B2 Sept. 21, 2010
Davidson US 2003/0195606 A1 Oct. 16, 2003
LaDuca US 2008/0275542 A1 Nov. 6, 2008
Kocur US 2009/0012596 A1 Jan. 8, 2009

REJECTIONS ON APPEAL
Claims 1–5, 10, 11, and 20–26 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Brucker and Davidson.
Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Brucker, Davidson, and Wisselink.
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Application 12/316,734

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Claims 8, 9, 11–13, 15, and 20–26 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Brucker, Davidson, and Kocur.
Claims 1 and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable
over LaDuca and Davidson.

ANALYSIS
The rejection of claims 1–5, 10, 11, and 20–26 as unpatentable over Brucker
and Davidson
The Examiner finds that Brucker discloses most of the limitations of
independent claims 1, 10, and 20, including a device wall having a
fenestration side 16 and a wall opposite the fenestration side, but that
Brucker’s wall does not have “an opposite reinforced portion opposing the
fenestration formed in the opposing side of the device wall.” Final Act. 3–4
(mailed December 27, 2012). The Examiner finds that the term “reinforced”
may refer to a portion of a stent “having a higher density of struts that form
the stent [than the density of the struts] elsewhere on the stent.” Id. at 4
(citing Spec. ¶ 35). The Examiner relies on Davidson as teaching that “a
stent device with an opening/hold 22 and a cell pattern that may be formed
such that sections are either thicker, wider or formed at a higher cell density
to provide a differential wall mass.” Id. (citing Davidson, ¶ 40). The
Examiner concludes that it would have obvious to one having ordinary skill
in the art at the time the invention was made “to modify the scaffold of
Brucker et al. and provide a higher density of struts opposing the reinforced
fenestration in order to provide differential wall mass and to prevent
instruments from going th[r]ough the cells of the device.” Id.
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Appellants argue that the Examiner’s reasoning for combining
Brucker and Davidson, namely, to provide differential wall mass and to
prevent instruments from going through the cells of the device, is improper
because “nowhere within Brucker or Davidson is there any disclosure of an
instrument going through a cell of a device.” Appeal Br. 10. Appellants
assert that the Examiner’s position that “the differential wall mass will
prevent instruments (such as a wire guide 54) from puncturing tissue,” is
implausible because the Examiner “does not provide any reference
indicating that this is a known problem.” Id. Appellants argue that
moreover, “there is no indication as to why ‘providing a differential wall
mass’ would be of benefit in Brucker.” Reply Br. 3. Appellants thus argue
that the Examiner is “relying on the Appellant’s own disclosure describing
the benefit of the reinforced portion as a motivation for combining the
references,” which is an improper “reliance on hindsight to combine the
references.” Appeal Br. 10; see also Reply Br. 3–4.
We agree with Appellants that the Examiner has not adequately
explained why it would have been obvious to modify Brucker to include a
reinforced portion opposite the fenestration. Although the Examiner found
that Davidson teaches a cell pattern that may be formed such that sections
are either thicker, wider or formed at a higher cell density, this teaching only
provides a differential wall mass, which by itself is not a sufficient reason to
modify Brucker. The Examiner does not provide an adequate reason as to
why it would have been obvious to modify Brucker to include a differential
wall mass. Rather, the Examiner’s rationale for the modification, i.e., to
prevent instruments from going through the cells of the device, appears to be
a restatement of Appellants’ stated advantage. Final Act. 4; Ans. 7, cf. Spec.
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9, ll. 4–8 and Appeal Br. 10. Aside from referring to the same reasoning
Appellants’ Specification provides for using a reinforced portion, the
Examiner has not provided rational underpinnings for modifying Brucker to
include such reinforced portion. Based on the record presented, the
Examiner’s rationale for modifying Brucker to provide a reinforced portion
appears to be based on impermissible hindsight. Accordingly, we do not
sustain the rejection of independent claims 1, 10, and 20, or claims 2–5, 11,
and 21–26, dependent from claims 1 and 20, as unpatentable over Brucker
and Davidson.

The rejection of claims 6 and 7 as unpatentable over Brucker, Davidson,
and Wisselink
We do not sustain the rejection of claims 6 and 7 as unpatentable over
Brucker, Davidson, and Wisselink inasmuch as claims 6 and 7 depend from
claim 1 and the Examiner does not rely on Wisselink in any way that would
remedy the deficiency of the rejection of claim 1.

The rejection of claims 8, 9, 11–13, 15, and 20–26 as unpatentable over
Brucker, Davidson, and Kocur
Like claim 1, independent claims 12 and 20 each recites, in part, “a
reinforced portion opposing the fenestration, the reinforced portion formed
in the opposing side of the device wall.” Appeal Br. 21–22. Consequently,
the Examiner’s rejection of claims 12 and 20 suffers from the same
deficiency as the rejection of claim 1 based on Brucker and Davidson.
Because claims 8, 9, 11, 15, and 23 depend from claim 1; claim 13 depends
from claim 12; and claims 21, 22 and 24–26 depend from claim 20, and
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because the Examiner does not rely on Kocur in any way that would remedy
the deficiency of the rejection of claim 1, for the same reasons discussed
above, we do not sustain the Examiner’s rejection of claims 8, 9, 11–13, 15,
and 20–26.

The rejection of claims 1 and 14 as unpatentable over LaDuca and
Davidson
The Examiner finds that LaDuca discloses most of the limitations of
claim 1, including a device wall having at least one fenestration 6a–6c and a
wall opposite the fenestration side, but that LaDuca’s wall does not have “a
reinforced portion opposing the fenestration.” Final Act. 6. The Examiner
finds that the term “reinforced” includes “a stent having a higher density of
struts that form the stent [than the density of struts] elsewhere on the stent.”
Id. (citing Spec. ¶ 35). The Examiner relies on Davidson as teaching that “a
stent device with an opening/hold 22 and a cell pattern [that] may be formed
such that sections are either thicker, wider or formed at a higher cell density
to provide a differential wall mass.” Id. at 7 (citing Davidson, ¶ 40). The
Examiner concludes that it would have obvious to one having ordinary skill
in the art at the time the invention was made “to modify the scaffold of
LaDuca and provide a higher density of struts opposing the reinforced
fenestration in order to provide differential wall mass and to prevent
instruments from going th[r]ough the cells of the device.” Id.
Appellants argue that the Examiner’s “motivation for combining
LaDuca and Davidson,” is improper, because “nowhere within LaDuca or
Davidson is there any disclosure of an instrument going through a cell of a
device.” Appeal Br. 15. Appellants assert that LaDuca and Davidson “do
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not contemplate the possibility of a medical device puncturing the vessel
opposite the fenestration.” Id. Appellants thus argue that “the Office Action
is relying on the Appellant’s own disclosure describing the benefit of the
reinforced portion as a motivation for combining the references.” Id.
Appellants therefore assert that “the Examiner has not provided an adequate
explanation as to why it would be obvious to combine the differential wall
mass of Davidson with the scaffold structure of LaDuca,” and as such the
Examiner’s explanation “is hindsight based on the Appellant’s own
disclosure.” Id.
We agree with Appellants that the Examiner has not provided an
adequate reason as to why it would have been obvious to modify LaDuca to
include a reinforced portion opposite the fenestration. As discussed supra,
Davidson’s teaching of a cell pattern that may be formed such that sections
are either thicker, wider or formed at a higher cell density, only provides a
differential wall mass, but the Examiner does not explain why it would have
been obvious to modify LaDuca to include a differential wall mass. Again,
the Examiner’s rationale for the modification, i.e., to prevent instruments
from going through the cells of the device, appears to rely on impermissible
hindsight. Final Act. 7, cf. Spec. 9, ll. 4–8 and Appeal Br. 15. Aside from
referring to the same reasoning Appellants’ Specification provides for using
a reinforced portion, the Examiner has not provided reasoning with rational
underpinnings for modifying LaDuca to include such reinforced portion.
See In re Khan, 441 F.3d at 988. In view of this, the Examiner’s rationale
for modifying LaDuca to provide a reinforced portion appears to be based on
knowledge gleaned only from Appellants’ disclosure. Accordingly, we do
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not sustain the rejection of independent claim 1, or claim 14, dependent
therefrom, as unpatentable over LaDuca and Davidson.

DECISION
The decision of the Examiner to reject claims 1–13, 15, and 20–26
under 35 U.S.C. § 103(a) as being unpatentable over Brucker, Davidson,
Wisselink, and Kocur is reversed.
The decision of the Examiner to reject claims 1 and 14 under 35
U.S.C. § 103(a) as unpatentable over LaDuca and Davidson is reversed.

REVERSED