Ex Parte Arbefeuille

Patent Trial and Appeal BoardOct 29, 2012

11218917 (P.T.A.B. Oct. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte SAMUEL ARBEFEUILLE __________ Appeal 2011-013552 Application 11/218,917 Technology Center 3700 __________ Before TONI R. SCHEINER, ERIC GRIMES, and FRANCISCO C. PRATS, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to an endoluminal prosthesis. The Examiner has rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE The Specification discloses “an improved endoluminal prosthesis … configured in a manner that provides columnar strength while providing improved device flexibility, and [ ] maintaining a relatively small pre- deployed, collapsed profile” (Spec. 4). Appeal 2011-013552 Application 11/218,917 2 Claims 1-11, 23-25, and 31-33 are on appeal. Claim 1 is representative and reads as follows: 1. An endoluminal prosthesis comprising: a tubular graft comprising a graft material, a proximal portion having a proximal opening, and a distal portion having a distal opening, the proximal and distal openings and the graft material forming a lumen for the flow of body fluid therethrough; and a first annular support member comprising a plurality of spokes coupled by a plurality of apices to form a closed ring, having an axis extending longitudinally therethrough, a second annular support member comprising a plurality of spokes coupled by a plurality of apices to form a closed ring, having an axis extending longitudinally therethrough, said first and second annular support members being attached to said tubular graft, but otherwise unconnected to one another, wherein each of the annular support members are attached to the graft material along the tubular graft to define, for each of the plurality of annular support members, a corresponding circumferential area of the graft material around a corresponding annular support member, wherein at least one of the apices of said first annular support member is attached within the corresponding circumferential area of the graft material of said second annular support member, which is adjacent the first annular support member, so that at least one of the apices of said first annular support member extends axially toward said second support member and axially beyond one of said apices of said second annular support member, and wherein at least one of the apices of the first annular support member extends axially beyond an other of the apices of the first annular support member. Claims 11 and 23 are the only other independent claims. Similar to claim 1, claim 11 requires “at least one undulating member of a support structure [that] lengthwise overlaps an undulating member of an adjacent support structure” (Appeal Br. 25-26 (Claims Appendix)) and claim 23 requires that “one of the apices extending beyond other of the apices of the Appeal 2011-013552 Application 11/218,917 3 first support member is attached to the graft material within the circumferential area of the second support member.” (Appeal Br. 26-27 (Claims Appendix)). The Examiner has rejected claims 1-11, 23-25 and 31-33 under 35 U.S.C. § 103(a) as obvious in view of Hartley,1 Lau2 and Lenker.3 The Examiner finds that Hartley discloses an endoluminal prosthesis comprising a tubular graft comprising graft material and annular support members defining “a plurality of apices [that] comprise alternating crests and troughs,” but does not teach that a “first support member is attached to the graft material within the circumferential area of the second support member” (Answer 4). The Examiner finds that Lau discloses a trough “extending axially beyond the other troughs, and the … annular support members having alternating longer and shorter crest and troughs” (id. at 5), and that Lenker discloses that “one of the longer troughs of the first support member is attached to the graft material within the circumferential area of the second support member” (id.). The Examiner concludes that it would have been obvious “to make the graft with … support members overlapping in adjacent circumferential regions to allow the prosthesis to create a good seal” with the vessel wall and provide support to the graft structure (id. at 5-6) because Lenker “discloses that the spring force of the stent creates a good seal between the 1 Hartley et al., US 6,524,335 B1, Feb. 25, 2003. 2 Lau et al., US 2002/0156423 A1, Oct. 24, 2002. 3 Lenker US 2002/0177890 A1, Nov. 28, 2002. Appeal 2011-013552 Application 11/218,917 4 support structure and the vessel wall, and therefore, overlapping the stent support rings would allow for more spring force to be exerted in a specific location and thus cause better sealing” (id. at 6). Appellant argues that “the Examiner is relying solely on FIG. 3C as providing support for the overlapping support members features recited in the claims. However, it is improper … to rely on dimensions of drawings when the reference does not disclose that the drawings are to scale and the reference is silent regarding the dimensions or relative dimensions of the drawings.” (Reply Br. 4-5.) Appellant argues that “Lenker does not describe the annular support members 212 of FIG. 3C as overlapping and does not disclose that the drawings are to scale” (id. at 5). We agree with Appellant that the Examiner has not adequately shown that the cited references would have made obvious a prosthesis with an annular support member that overlaps the circumferential area of an adjacent annular support member. The Examiner finds that Lenker discloses this limitation, and provides the following annotated version of (part of) Lenker’s Figure 3C to support his finding: (Answer 5.) Lenker’s Figure 3C shows a side view of Lenker’s prosthesis after it is deployed (Lenker 3, ¶0026). The Examiner has annotated a portion of Figure 3C to indicate an overlapping circumferential area between Appeal 2011-013552 Application 11/218,917 5 two adjacent annular support members. However, “it is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue. See In re Wright, 569 F.2d 1124, 1127, 193 USPQ 332, 335 (CCPA 1977) (‘Absent any written description in the specification of quantitative values, arguments based on measurement of a drawing are of little value.’).” Hockerson-Halberstadt, Inc. v. Avia Group Intern., Inc., 222 F.3d 951, 956 (2000). The Examiner has not pointed to any description of Figure 3C in Lenker’s text as support for finding that the annular support members in the figure are intended to overlap. In fact, Figure 3C is described as showing the same embodiment as Figure 3A (Lenker 3, ¶0026), and Figure 3A does not show overlapping annular supports. The Examiner also relies on the general disclosure in Lenker that annular support members are used to create a seal between the prosthesis and the inner wall of a body lumen. However, the Examiner has not pointed to any disclosure in Lenker of an arrangement of annular supports in which an apex of one annular support is within the circumferential area of a second annular support. Thus, Figure 3C without accompanying descriptive text is not sufficient support the Examiner’s finding that Lenker discloses overlapping annular supports. The Examiner also reasons that Lenker discloses that the spring force of the stent will hold the prosthesis firmly against the vessel wall and provide a good seal.… Thus one having ordinary skill in the art would conclude that adding more stents to an area would increase the amount of force that is applied to that area, and thus form a Appeal 2011-013552 Application 11/218,917 6 better seal. In order to add more stent force to an area, it would be necessary to overlap the adjacent stents to provide that extra force. (Id. at 10.) This reasoning is not persuasive because Lenker does not disclose overlapping annular supports, and the Examiner has not provided evidence or sound technical reasoning to support her conclusion that overlapping supports would be necessary to provide the amount of spring force desired by Lenker. SUMMARY We reverse the rejection of claims 1-11, 23-25 and 31-33 under 35 U.S.C. § 103(a). REVERSED lp