Kerr, Andrew Download PDFPatent Trials and Appeals BoardJun 1, 20212020005196 (P.T.A.B. Jun. 1, 2021) 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. 15/440,145 02/23/2017 Andrew Kerr 200359-00002 4165 1218 7590 06/01/2021 HESPOS & PORCO LLP P. O. BOX 68 ESSEX FELLS, NJ 07021-0068 EXAMINER BLANCO, JAVIER G ART UNIT PAPER NUMBER 3774 NOTIFICATION DATE DELIVERY MODE 06/01/2021 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): USPTO@dockettrak.com docketing@hpiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREW KERR Appeal 2020-005196 Application 15/440,145 Technology Center 3700 Before STEFAN STAICOVICI, JILL D. HILL, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 62–83.3 See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant indicates that the present Appeal is related to an appeal in co- pending U.S. Application Serial Number 15/864,845. Appeal Br. 4. 2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Andrew Kerr. Appeal Br. 3. 3 Claims 1–61 and 84–88 are withdrawn. Final Act. 1. Appeal 2020-005196 Application 15/440,145 2 CLAIMED SUBJECT MATTER The claims are directed to a method of repairing a section of a blood vessel by using a stent/graft assembly (along with recitation of numerous limitations on the structure of the assembly). Claim 62, reproduced below, is illustrative of the claimed subject matter: 62. A method for repairing a section of a blood vessel that has an aneurysm, the method comprising: inserting a stent graft assembly into the blood vessel, the assembly comprising: a tubular stent configured to contact a first relatively healthy section of the blood vessel, the stent having opposite first and second axial ends; a tubular graft having a first axial end, the tubular graft having a flexible wall at least a portion of which is adjacent the first axial end and configured to contact the first relatively healthy section of the blood vessel; a discrete annular element affixed to the graft in proximity to the first axial end of the graft, the annular element being connected by a plurality of circumferentially spaced apart hooking devices to the second axial end of the stent to achieve a substantially end-to-end non-abutting connection between the stent and the graft without overlap; and whereby the substantially end-to-end connection without overlap enables a smaller cross-section than a connection with overlap so that the assembly can be introduced more easily into the blood vessel. Appeal Br. 22. (Claims App.). Appeal 2020-005196 Application 15/440,145 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Brown US 5,769,887 June 23, 1998 Cox US 5,824,040 Oct. 20, 1998 Pierce US 6,152,956 Nov. 28, 2000 Clerc US 6,860,900 B2 Mar. 1, 2005 Kerr US 9,937,066 B2 Apr. 10, 2018 REJECTIONS I. Claims 62–83 are rejected on the ground of obviousness-type double patenting over claim 1 of Kerr. Final Act. 3. II. Claims 62–64, 71–75, 80, and 83 are rejected under 35 U.S.C. § 102(b) as anticipated by Clerc.4 Final Act. 4. III. Claims 62–80 and 83 are rejected under 35 U.S.C. § 102(b) as anticipated by Pierce.5 Final Act. 6. IV. Claims 81 and 82 are rejected under 35 U.S.C. § 103(a) as unpatentable over Clerc and either of Brown and Cox.6 Final Act. 10–11. 4 The heading for this rejection indicates that these claims are also rejected as unpatentable under 35 U.S.C. § 103(a) over Clerc, but the body of the rejection addresses claim 62 only on the basis of anticipation. See Final Act. 4–5. 5 The heading for this rejection indicates that these claims are also rejected as unpatentable under 35 U.S.C. § 103(a) over Pierce, but the body of the rejection addresses claim 62 only on the basis of anticipation. See Final Act. 6–7. 6 The heading for this rejection indicates that the rejection is based on Clerc, Brown, and Cox taken together, but the body of the rejection indicates that Brown and Cox are relied upon to teach the same claim element. See Final Act. 10–11. Therefore, for the purposes of this rejection, Brown and Cox are understood to be alternatives to each other. Appeal 2020-005196 Application 15/440,145 4 V. Claims 81 and 82 are rejected under 35 U.S.C. § 103(a) as unpatentable over Pierce and either of Brown and Cox. 7 Final Act. 12–13. OPINION Rejection I—Obviousness-type Double Patenting over Kerr Claims 62–83 Appellant does not address this rejection. See Appeal Br. 9–21. Accordingly, we summarily affirm Rejection I. Rejection II—Anticipation by Clerc Claims 62, 63, 64, 71–75, 80, and 83 The Examiner finds Clerc discloses all of the elements recited by claim 62. Final Act. 4–5. In particular, the Examiner finds Clerc’s fixation section 430 meets the requirements of the recited tubular stent, and Clerc’s tubular graft cover 450 meets the requirements of the tubular graft. Final Act. 4–6 (citing Clerc, Fig. 7); see also Clerc 7:3–31. Appellant argues “[Clerc] does not teach or suggest the claimed ‘annular element being connected by a plurality of circumferentially spaced apart hooking devices to the second axial end of the stent to achieve a substantially end-to-end non-abutting connection between the stent and the graft without overlap.’” Appeal Br. 10 (emphasis omitted). Specifically, Appellant argues, Figure 7 of Clerc fails to meet the “without overlap” requirement in claim 62. According to Appellant, tubular graft cover 450 of 7 The heading for this rejection indicates that the rejection is based on Clerc, Brown, and Cox taken together, but the body of the rejection indicates that Brown and Cox are relied upon to teach the same claim element. See Final Act. 12–13. Therefore, for the purposes of this rejection, Brown and Cox are understood to be alternatives to each other. Appeal 2020-005196 Application 15/440,145 5 Clerc overlaps Clerc’s stent because it overlaps diseased aorta section 434, which, Appellant asserts, is part of Clerc’s stent. Id. at 9–10. In other words, Appellant contends the Examiner erred in finding that the stent in Clerc may be characterized as being limited to fixation section 430. Id. In this regard, Appellant contends that Clerc’s description of Figure 2 indicates that Clerc’s stent includes both fixation section 30 and diseased aorta section 34. Id. Appellant compares Clerc’s discussion of Figure 2 with Clerc’s discussion of Figure 7 and notes that Clerc describes the principle difference between these Figures as the addition of tubular graft cover 450 to cover diseased aorta section 434, (which is similar to its counterpart 34 in Figure 2). Id. at 9. Thus, Appellant argues diseased aorta section 434 in Figure 7 of Clerc should be considered part of a stent, similar to the way diseased aorta section 34 of Figure 2 is. Appellant thus concludes Clerc fails to meet the “without overlap” requirement because “[Clerc] has complete overlap between the diseased aorta section 434 of the stent-graft 410 and the tubular graft cover 450.” Id. at 10. In response, the Examiner states that the rejection relies on “interpreting stent 430 as the [sic] ‘a tubular stent for contacting said first relatively healthy section of said blood vessel, the stent having opposite first and second axial ends’, not stent 434.” Ans. 12. We agree with Appellant that the Examiner has not established, by a preponderance of the evidence, that tubular graft cover 450 of Clerc is “without overlap” of a portion of Clerc’s stent. First, a person of ordinary skill in the art would have considered Clerc’s diseased aorta section 34 in Figure 2 to be part of a stent. For example, Clerc states, “[s]tent 10 is a tubular device and includes an upstream or fixation section 30, renal artery branch section 32 and downstream or diseased aorta section 34.” Clerk, Appeal 2020-005196 Application 15/440,145 6 3:32–35. “[T]he fixation section 30 and diseased aorta section 34 are formed from structures which are substantially similar with the exception of their length.” Clerc, 3:46–47. Second, column 7 of Clerc makes clear that diseased aorta section 434 includes a braided filament and would be considered by a person of ordinary skill in the art to be structured similarly to diseased aorta section 34 depicted in Figure 2. Thus, as diseased aorta section 434 in Figure 7 is similar to diseased aorta section 34 in Figure 2, diseased aorta section 434 would also have been considered to be part of a stent in Clerc (the same way diseased aorta section 34 is). Consequently, as tubular graft cover 450 overlaps diseased aorta section 434, Figure 7, tubular graft cover 450 overlaps part of a stent. As a result, the Examiner’s finding that Figure 7 meets the “without overlap” requirement in claim 62 is not supported by a preponderance of the evidence. Accordingly, we do not sustain the rejection of claim 62, and claims 63, 64, 71–75, 80, and 83 depending therefrom, as anticipated by Clerc. Rejection III—Anticipation by Pierce Claim 62 In rejecting claim 62 as anticipated by Pierce, the Examiner determines that Pierce discloses the recited “discrete annular element” in each of Figures 3, 5, 6B, and 8 as follows. Figure 3 shows first axial end of graft 44 as comprised of a series of interconnected rings or annular members, with the axial-most ring annular member broadly interpreted to be “a discrete annular element”; Figure 5 shows annular element 50, which is clearly shown in Figure 5 as a discrete annular element in proximity to first axial end of the graft 44; Figure 6B shows annular member 78, which is clearly shown in Figure 6B as a discrete annular member in proximity to first axial end of the graft 44; Figure 8 shows annular element 76, which is clearly shown in Figure 8 as Appeal 2020-005196 Application 15/440,145 7 discrete annular element in proximity to first axial end of graft 44. Final Act. 7 (emphasis added). First, Appellant argues that Pierce fails to disclose a discrete annular ring as recited in claim 62. Specifically, Appellant argues that element 44 of Pierce is not a separate entity, and, therefore, is not a “discrete” annular ring. Appeal Br. 15–16. This argument does not address all of the Examiner’s findings of fact regarding Pierce and the recited “discrete annular element.” In this regard, the Examiner relies on any one of elements 44, 50, 76, and 78 in Pierce as disclosure of this structure. See Final Act. 7. In the Reply Brief, Appellant adds an attack on element 76 of Pierce in relation to the “discrete annular element” recited in claim 62. See Reply Br. 1–2. This argument is untimely and will not be considered. Further, Appellant again fails to address elements 50 and 78 in Pierce. See id. Accordingly, Appellant’s arguments regarding the “discrete annular element” are unavailing. Second, Appellant argues that Pierce fails to disclose a substantially end-to-end non-abutting connection between the stent and the graft without overlap. Appeal Br. 16–18. In particular, Appellant argues that the axial spacing between Pierce’s stent and graft is too large to meet the requirement of claim 62 that these components be substantially end-to-end. See id. For example, Appellant states, “[i]t also is submitted that the skilled artisan would understand that the spacing between the stent and the graft taught by Pierce exceeds the diameters of the stent and the graft and also exceeds the length of the stent.” Id. at 17. Appeal 2020-005196 Application 15/440,145 8 The Examiner has the better position on this point because Appellant’s attempt to patentably distinguish claim 62 does not apply the broadest reasonable interpretation of claim 62 in light of the Specification. Paragraphs 13, 83, and 115 of Appellant’s Specification, among others, discuss connections that are substantially end-to-end, and Appellant’s Figure 46 (reproduced below), depicts such a connection. Appellant’s Figure 46 depicts end 714 of graft 712 connected to end 724 of a stent across an axial space. See Spec. ¶ 115. Paragraph 13 of Appellant’s Specification states, The tubular graft and the fixation device are connected substantially in end-to-end relationship with little or no longitudinal overlap. In certain embodiments, the substantially end-to-end relationship of the tubular graft and the fixation device may include a small axial space between the tubular graft and the fixation device. One or more connecting wires may bridge the space between the axially align tubular graft and Appeal 2020-005196 Application 15/440,145 9 fixation device. The tubular graft has a length that exceeds the length of a damaged section of a blood vessel that is being repaired by the endovascular graft assembly. Emphasis added. From this, we understand that the substantially end-to-end relationship allows for at least a small axial space to be present. Paragraph 83 of Appellant’s Specification states, As a further alternate, substantially end-to-end axial relationship may comprise an axial gap between the tubular graft 12 and the tubular stent 20, as shown in FIGS. 4A and 4B. FIG. 4A shows the general concept of an axial gap between the tubular graft 12 and the tubular stent 20 prior to deployment. FIG. 4B shows one optional deployment. The axial spacing can provide even further advantages for the deployment and positioning of the tubular graft 12 and the tubular stent 20. Emphasis added. Further, claim 72 depends from claim 62 and recites, The method of claim 62 wherein the stent graft assembly has a substantially end-to-end connection between the stent and the graft with an axial gap between the stent and the graft, and the plurality of circumferentially spaced apart looking devices are disposed within the gap between the stent and the graft. Appeal Br. 23 (Claims App.) (emphasis added). Thus, although no indication is given as to the maximum allowed size (if any) of the axial gap, the axial gap in this section is not explicitly described as being “small.” Paragraph 83 of Appellant’s Specification supports an interpretation that the axial gap need not be small. Accordingly, in light of the Specification, we discern no requirement for the substantially end-to-end connection to have a “small” size, much less a particular size that patentably distinguishes over the embodiments in Pierce cited by the Examiner. Thus, Appellant’s arguments are based on an unreasonably narrow claim interpretation, and we sustain the Examiner’s rejection of claim 62 as anticipated by Pierce. Appeal 2020-005196 Application 15/440,145 10 Claims 63–80 and 83 Appellant does not make arguments for the patentability of claims 63– 80 and 83 aside from those discussed above regarding claim 62. See Appeal Br. 14–18. Accordingly, for the same reasons, we sustain the rejection of claims 63–80 and 83 as anticipated by Pierce. Rejection IV—Unpatentability over Clerc and either of Brown and Cox Claims 81 and 82 The Examiner does not use the teachings of Brown and Cox in any manner that would remedy the deficiency discussed above regarding Rejection II. Accordingly, for the same reasons, we do not sustain Rejection IV. Rejection V—Unpatentability over Pierce and either of Brown and Cox Claims 81 and 82 The Examiner finds that, “[a]lthough [Pierce] discloses the subject matter of ‘hooks or barbs are welded to the stent’ . . . it is not particularly clear if the ‘members’ (or ‘hooking devices’) are mounted to the annular member by a weld, fuse, or adhesive (or fixedly mounted to the stent by a weld, fuse, or adhesive).” Final Act. 12 (citing Pierce, 2:47–49) (emphasis omitted). Nonetheless, the Examiner finds [T]his is already known in the art. For example, each of [Brown] (C5:L53-57) and [Cox] (C14:L18-33) discloses “hooking devices” mounted to an “annular member” (which “annular member” could be a ring of a stent) by a weld, fuse, or adhesive (or fixedly mounted to a stent by a weld, fuse, or adhesive) in order to securely attach an end of said stent to an end of said Appeal 2020-005196 Application 15/440,145 11 graft, and in order to securely attach said “hooking device” to said stent [onto] said “annular member”. Final Act. 12 (emphasis added). From this, the Examiner reasons it would have been obvious to a person of ordinary skill in the art [T]o have combined the teaching of an end-to-end connection between a stent and a graft, and fixation/connection of a “hooking device” to a stent or an “annular member”, which fixation/connection is achieved by welding or soldering (i.e., fusing), bonding/adhesive (i.e., fusing) and tying (i.e., stitching/suturing), as taught by each of [Brown or Cox], with the stent/graft assembly of [Pierce], in order to securely attach an end of said stent to an end of said graft, and in order to securely fixed/mount said “hooking device” to said stent or to said “annular member”. Notice, there is no criticality provided for the particular “fixedly mounted” of the “hooking device” to either one of the stent or the “annular member”. Therefore, a person having ordinary skill in the art will be left with the choice of fixing the “hooking device” to either the stent or the “annular member”. Id. at 12–13 (emphasis added). Pierce and Brown Appellant asserts,8 [Brown] has no suggestion of the opposite ends of those wires 29 being connected to a discrete annular element as set forth in independent claims [sic] 62. Rather, the wires 29 “are woven into the graft 12” (Brown et al., column 5, line 54) and the wires 29 appear to extend a significant part of the length of the graft 12. 8 To address the rejection based on Pierce and either of Brown and Cox, Appellant incorporates its discussion of the rejection based on Clerc and either of Brown and Cox. See Appeal Br. 20. Appeal 2020-005196 Application 15/440,145 12 Appeal Br. 18 (emphasis added). Thus, Appellant attacks Brown for failing to disclose a connection of its wires to a discrete annular element. This argument does not point out error in the Examiner’s findings of fact regarding Brown and does not address the reasoning applied by the Examiner to provide the specifically recited connection to the annular member. Rather, Appellant’s argument merely identifies a specific connection in Brown that is not made to an element that is “discrete.” As the Examiner proposes to further modify Brown’s (welding, soldering, fusing, bonding, adhesive) connection as it is applied to the assembly of Pierce, Appellant’s argument does not address the rejection presented by the Examiner. See Final Act. 12–13. Accordingly, we sustain the Examiner’s rejection of claims 81 and 82 as unpatentable over Pierce and Brown. Pierce and Cox Appellant argues that Figures 7E–7G of Cox describe “how a stent can be assembled by using flat connecting members 118 cut from a flat sheet material to join ring members 114 of the stent to one another. Each ring member 114 will be joined to an upstream or downstream ring member 114 by a large number of circumferentially arrayed flat connecting members 118.” Appeal Br. 19 (emphasis omitted). Appellant further contends, “[t]he connection of the ring members 114 to the flat connecting members 118 has nothing to do with the substantially end-to-end connection of a stent and a graft,” and “the entire complex assembly of ring members 114 and flat connecting members 118 taught by Cox et al. is circumferentially coextensive with the graft 112.” Appeal Br. 19 (emphasis omitted). Appellant’s argument is persuasive because, in the rejection of claims 81 and 82, the Examiner’s finding that Cox discloses securely attaching an Appeal 2020-005196 Application 15/440,145 13 end of a stent to an end of a graft (Final Act. 12) is not supported by a preponderance of the evidence. Rather, as Appellant points out, Cox’s connections are from one part of a stent to another part of a stent. See Cox, Fig. 7A. Accordingly, we do not sustain the Examiner’s rejection of claims 81 and 82 as unpatentable over Pierce and Cox. CONCLUSION The Examiner’s decision to reject claims 62–83 is affirmed. More specifically, DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 62–83 Nonstatutory Double Patenting 62–83 62–64, 71– 75, 80, 83 102(b) Clerc 62–64, 71– 75, 80, 83 62–80, 83 102(b) Pierce 62–80, 83 81, 82 103(a) Clerc, Brown 81, 82 81, 82 103(a) Clerc, Cox 81, 82 81, 82 103(a) Pierce, Brown 81, 82 81, 82 103(a) Pierce, Cox 81, 82 Overall Outcome 62–83 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). Appeal 2020-005196 Application 15/440,145 14 AFFIRMED Copy with citationCopy as parenthetical citation