Endologix, Inc.

Patent Trials and Appeals Board

Mar 23, 2020

14330812 - (D) (P.T.A.B. Mar. 23, 2020)

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.
14/330,812 07/14/2014 Marie Therese Robin 109167-0204 4197
128926 7590 03/23/2020
Foley & Lardner LLP
3000 K Street N.W.
Suite 600
Washington, DC 20007-5109
EXAMINER
SNOW, BRUCE EDWARD
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
03/23/2020 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARIE THERESE ROBIN
Appeal 2018-008026
Application 14/330,812
Technology Center 3700
Before JENNIFER D. BAHR, EDWARD A. BROWN, and
CHARLES N. GREENHUT, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 19, 20 22, 23, 25–30, 33, 34, 36–39,
and 41–43. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Endologix, Inc.,
which is the assignee of record. Appeal Br. 2.
Appeal 2018-008026
Application 14/330,812
2
CLAIMED SUBJECT MATTER
The claims are directed to apparatus for repairing aneurysms. Claim
19, reproduced below, is illustrative of the claimed subject matter:
19. An apparatus, comprising:
an inner graft tube that bifurcates at a bifurcation point into
a first branch of the inner graft tube and a second branch of the
inner graft tube; and
an outer inflatable balloon attached to the inner graft tube;
the outer inflatable balloon extending from a first location
above the bifurcation point to a second location below the
bifurcation point and defining an inflatable space that is
inflatable with a settable substance, the inflatable space of the
outer inflatable balloon including a continuous volume below the
bifurcation point from a bottom of the outer inflatable balloon on
the first branch of the inner graft tube to a bottom of the outer
inflatable balloon on the second branch of the inner graft tube.
REFERENCES
The prior art relied upon by the Examiner is:
Reference Name Document ID Pub. Date
Rogers US 5,534,024 July 9, 1996
Rhodes US 5,665,117 Sept. 9, 1997
Abolfathi US 5,785,679 July 28, 1998
Dehdashtian WO 01/21108 Al Mar. 29, 2001

REJECTIONS2
Claims 19, 20, 22, 23, 25–27, 30, and 33 are rejected as anticipated
by, or, in the alternative, under 35 U.S.C. § 103(a) as obvious over,
Dehdashtian as evidenced by Rogers. Final Act. 4.

2 The Examiner withdrew a rejection under 35 U.S.C. § 112, first paragraph.
Ans. 10.
Appeal 2018-008026
Application 14/330,812
3
Claims 19, 23, 25, 30, and 33 are rejected as anticipated by or, in the
alternative, under 35 U.S.C. § 103(a) as obvious over Rogers. Final Act. 7.
Claim 22, 26–29, 34, 36–39, and 41–43 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Rogers and Rhodes as evidenced by
Abolfathi. Final Act. 10.
OPINION
Dehdashtian alone
The Examiner first takes the position that Dehdashtian anticipates
each of the independent claims before us, claims 19, 30 and 33, because
“[u]nder inherency, ‘an outer balloon’ can be reasonably interpreted as
comprising three segments.” Final Act. 5. The Examiner’s statement
conflates the principle of inherency—necessarily present but not expressly
mentioned aspects of subject matter in the prior art—with the principle of
affording claim terms their broadest reasonable interpretation. See MPEP
§§ 2111, 2112. Even were we to agree with what seems to be the Examiner’s
ultimate position with this statement, that there is nothing in the claim
precluding “an outer balloon” from reasonably being interpreted to comprise
three discrete inflatable balloon segments, there remains insufficient
evidence to conclude that Dehdashtian actually discloses that. The entirety
of Dehdashtian’s disclosure concerning the Figure 3 embodiment relied
upon by the Examiner is reproduced below:
In the embodiment of the invention depicted in Figure 3, the
implant 10 comprises three individual segments. This
embodiment is adapted such that it may be used in respect of an
aneurysm spanning the area of the aorta 12 that bifurcates to form
the common iliac arteries 13. The portions of the implant may be
attached to an intraluminal graft 11 of [sic] may be inserted into
the distinct areas of the aneurysm 20 separately.
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Application 14/330,812
4
Dehdashtian 8:15–20.
Although this disclosure mentions “three individual segments,” those
segments are segments of the “implant 10.” There is not enough information
to determine whether those three segments combine to reasonably be
regarded as “an outer balloon.” They may just as likely comprise three
individual discrete balloons forming segments of the implant. As Appellant
correctly points out, without the same balloon having both attributes of
“extending from a first location above the bifurcation point to a second
location below the bifurcation point” and “including a continuous volume
below the bifurcation point” the Examiner’s position clearly fails. App. Br.
13.

Dehdashtian and In re Larson3
The Examiner next takes the position that “[u]nder obviousness, [i]f
‘an outer balloon’ cannot . . . reasonably be described as comprising three
portion[s]. . . It is the examiner position that it would have been obvious to
one having ordinary skill in the art to have made the three portion outer
balloon integral as a single outer balloon as merely a matter of obvious
engineering choice.” Final Act. 5–6 (citing MPEP § 2144.04 and In re
Larson, 340 F.2d 965, 968 (CCPA 1965)).
In relying on MPEP § 2144.04 the Examiner has apparently failed to
consider the very first paragraph of MPEP § 2144 which “caution[s] against
treating any line of reasoning [contained therein] as a per se rule.” Here, the
examiner has improperly applied the holding of Larson as a per se rule. In
other words, the examiner essentially finds that integrating any two things

3 340 F.2d 965 (CCPA 1965)
Appeal 2018-008026
Application 14/330,812
5
into one thing must be obvious regardless of the individual facts in the case.
That makes the present case easily distinguishable from Larson where a fact-
specific technical analysis was conducted. App. Br. 15. As our reviewing
court has pointed out: “This method of analysis is founded on legal error
because it substitutes supposed per se rules for the particularized inquiry
required by section 103. It necessarily produces erroneous results.” In re
Ochiai, 71 F. 3d 1565, 1571 (Fed. Cir. 1995).
The use of per se rules, while undoubtedly less laborious than a
searching comparison of the claimed invention — including all
its limitations — with the teachings of the prior art, flouts section
103 and the fundamental case law applying it. Per se rules that
eliminate the need for fact-specific analysis of claims and prior
art may be administratively convenient for PTO examiners and
the Board . . . But reliance on per se rules of obviousness is
legally incorrect and must cease. Any such administrative
convenience is simply inconsistent with section 103, which,
according to Graham and its progeny, entitles an applicant to
issuance of an otherwise proper patent unless the PTO
establishes that the invention as claimed in the application is
obvious over cited prior art, based on the specific comparison of
that prior art with claim limitations.
Id at 1572.
The examiner has failed to articulate any fact-specific analysis
demonstrating consideration was given to the particular problems associated
with combining separate balloon segments in discrete locations into a single
balloon. It was improper for the examiner to apply the holding in Larson
without regard for the particular nature of the claimed subject matter.

Dehdashtian and Rogers
The Examiner’s third and final position with regard to the rejection
predicated on Dehdashtian is that Rogers “teach[s] a single outer balloon
Appeal 2018-008026
Application 14/330,812
6
was known in the art.” Final Act. 6. This statement is the extent of the
Examiner’s reasoning in support of rejecting the claims based on the
combined teachings of Dehdashtian and Rogers. First, this clearly falls short
of the necessary “articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness” required by our reviewing
court. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR Int’l. v. Teleflex, 550 U.S. 398, 418 (2007). Second, as the
balloon segments in Rogers purposefully contain discrete cylinders
essentially acting as bulkheads between the balloon segments, it is not
apparent, and the Examiner does not explain, why one skilled in the art
would combine the teachings of Dehdashtian and Rogers to arrive at the
claimed subject matter, which must include a “continuous volume below the
bifurcation point.” App. Br. 16–18.

Rogers alone
The Examiner’s first theory of anticipation based on Rogers is that
“[t]he ‘inflatable space’ is reasonably interpreted to include the outer
inflatable balloon itself.” Final Act. 8. Appellant correctly argues
interpreting the balloon itself—a solid object—as “space” is an unreasonable
interpretation of the “inflatable space” defined by the balloon. App. Br. 21–
22. To the extent the Examiner intended to refer to the space ultimately
occupied by the balloon, such an interpretation is also inconsistent with the
claims which require the space to be “inflatable with a settable substance.”
This requirement makes clear the claim is referring to a contained space, i.e.,
within the balloon.
The Examiner’s second theory of anticipation based on Rogers is that
“[t]he [claim] language does not exclude the continuous volume below the
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Application 14/330,812
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bifurcation point including connecting via camber/manifold 32 above the
bifurcation point.” Final Act. 8. The only explanation as to how this allows
Rogers’ device to satisfy the claim language is that “[Rogers’] cylinders
below the bifurcation point as claimed are all continuously connected.” Ans.
15. The existence of a continuous connection by having the cylinders joined
somewhere does not, without more, demonstrate the existence of a
continuous volume below the bifurcation point. At most this demonstrates
that there is a continuous volume in Rogers, a portion of which extends
below the bifurcation point on one side and a different portion of which
extends below the bifurcation point on the other side. However, this is not
what the claims call for. Rather, the characteristic of being “below the
bifurcation point” and extending between the first and second branches is
attributed to the “continuous volume” itself, not merely two discrete portions
of a continuous volume. The Examiner is unable to point to any volume in
Rogers having the requisite characteristics according to the independent
claims.
The Examiner’s third theory of unpatentability premised on Rogers is
that “it would have been obvious to one having ordinary skill in the art to
have placed the manifold below the inner graft tube bifurcation point (as one
of a variety of locations) such that all cylinders including the inside
cylinders could be inflatable (meeting the claim language).” Final Act. 9.
The Examiner points out that Rogers states “the chamber[/manifold] 32 can
be positioned in a variety of locations along the length of the chamber.”
Ans. 16 (quoting, without expressly citing, Rogers col. 2, ll. 39–42). As
Appellant correctly argues, the quoted disclosure of Rogers relates to the
cylindrical embodiment depicted in Figures 1, 2, and 4 of Rogers as opposed
to the relied-on bifurcated embodiment depicted in Figure 7. Reply. Br. 10
Appeal 2018-008026
Application 14/330,812
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(reproducing a portion of Rogers col. 2, ll. 33–42). As a fluid manifold is
typically arranged at a common location, to or from which multiple branches
are directed, it would seem directly contrary to ordinary mechanical wisdom
to rearrange the manifold chamber 32 of Rogers so as to have a volume
situated to instead encompass the multiple branches of Rogers’ embodiment
depicted in Figure 7. The Examiner does not provide any technical reasoning
for locating the manifold chamber 32 of Rogers in this unusual way. Thus, it
appears, on the record before us, the only reason for the Examiner proposing
to do so is to recreate Appellant’s claimed subject matter though hindsight.
Of course, it is improper to base a conclusion of obviousness upon facts
gleaned only through hindsight. To draw on hindsight knowledge of the
patented invention, when the prior art does not contain or suggest that
knowledge, is to use the invention as a template for its own reconstruction—
an illogical and inappropriate process by which to determine patentability.
Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996)
(citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir.
1983)).

CONCLUSION
For the foregoing reasons, the Examiner’s rejections are REVERSED.
Appeal 2018-008026
Application 14/330,812
9
DECISION SUMMARY
Claims 35 U.S.C. § Basis/References Affirmed Reversed
19, 20, 22,
23, 25–27,
30, 33
102/103 Dehdashtian
Rogers
19, 20, 22,
23, 25–27,
30, 33
19, 23, 25,
30, 33
102/103 Rogers 19, 23, 25,
30, 33
22, 26–29,
34, 36–39,
41–43
103(a) Rogers, Rhodes,
Abolfathi
22, 26–29,
34, 36–39,
41–43
Overall
Outcome
19, 20, 22,
23, 25–30,
33, 34, 36–
39, 41–43

REVERSED