Ex Parte Arbefeuille

Patent Trial and Appeal BoardNov 5, 2012

11219321 (P.T.A.B. Nov. 5, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte SAMUEL ARBEFEUILLE __________ Appeal 2011-013614 Application 11/219,321 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 … a relatively small pre-deployed, collapsed profile” (Spec. 4). Appeal 2011-013614 Application 11/219,321 2 Claims 5-10, 26 and 28-30 are on appeal. Claim 5 is representative and reads as follows: 5. An endoluminal prosthesis comprising: a tubular graft having a length and comprising: a graft material, a proximal end having a proximal opening, and a distal end having a distal opening, wherein the proximal and distal openings and the graft material form a lumen for the flow of body fluids therethrough; an annular support member attached to the graft material, but otherwise being unconnected to another annular support member, said annular support member comprising a closed ring defining a circumference and an axis extending longitudinally therethrough, a plurality of apices coupled by a plurality of spokes, wherein the apices comprise alternating crests and troughs arranged to hold the graft material in a leak resistant sealing engagement with the inner wall of a body lumen; wherein at least one of the troughs extends axially beyond an other of the troughs; wherein the troughs of the annular support member comprise a plurality of alternating longer troughs and shorter troughs; wherein said annular support member corresponds to a first annular support member and further comprising a second annular support member comprising a plurality of second spokes coupled by a plurality of second apices to form a second ring, wherein the second annular support member is attached to the graft material to define a circumferential area of the graft material around the second annular support member, but otherwise being unconnected to said first annular support member, and wherein the 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. Claim 26 is the only other independent claim and, similar to claim 5, requires that “at least one trough of said first annular support member extends axially toward said second annular support member and axially beyond one of said apices of said second annular support member” (Appeal Br. 21-22 (Claims Appendix)). Appeal 2011-013614 Application 11/219,321 3 The Examiner has rejected claims 5-10, 26 and 28-30 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 with “a plurality of apices coupled by a plurality of spokes, wherein the apices comprise alternating crests and troughs … [and] at least one of the troughs extends axially beyond an other of the troughs,” but does not teach “a plurality of alternating longer and short troughs [or 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” (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 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 member[s] 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.) because Lenker “discloses that the spring force of the stent creates a good seal between the support structure and the vessel wall, and therefore, overlapping the stent support 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 2011-013614 Application 11/219,321 4 rings would allow for more spring force to be exerted in a specific location and thus cause better sealing” (id. at 5-6). 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.) 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 her 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 two adjacent annular support members. However, “it is well established that Appeal 2011-013614 Application 11/219,321 5 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 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 anything in Lenker that actually describes an arrangement of annular supports in which a trough of one annular support is within the circumferential area of a second annular support. Figure 3C is described as showing the same embodiment as Figure 3A (Lenker 3, ¶0026), and Figure 3A does not show overlapping annular supports. Thus, Figure 3C without accompanying descriptive text is not sufficient to 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 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. (Answer 10.) Appeal 2011-013614 Application 11/219,321 6 This reasoning is not persuasive since overlapping annular supports are not discussed in Lenker, 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. Thus, we reverse the rejection of independent claim 5 and dependent claims 6-10. Since independent claim 26 is similar to claim 5 in requiring that one trough of the first support member “extends … axially beyond one of said apices of said second annular support member,” we also reverse the rejection of independent claim 26 and dependent claims 28-30. SUMMARY We reverse the rejection of claims 5-10, 26 and 28-30 under 35 U.S.C. § 103(a). REVERSED lp