Ex Parte Edoga et al

Patent Trial and Appeal BoardJun 11, 2013

10837827 (P.T.A.B. Jun. 11, 2013)

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. 10/837,827 05/03/2004 John K. Edoga 103056A-400 3295 27267 7590 06/12/2013 WIGGIN AND DANA LLP ATTENTION: PATENT DOCKETING ONE CENTURY TOWER, P.O. BOX 1832 NEW HAVEN, CT 06508-1832 EXAMINER CHUKWURAH, NATHANIEL C ART UNIT PAPER NUMBER 3721 MAIL DATE DELIVERY MODE 06/12/2013 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 JOHN K. EDOGA and THIERRY RICHARD ____________ Appeal 2011-000532 Application 10/837,827 Technology Center 3700 ____________ Before STEFAN STAICOVICI, BENJAMIN D.M. WOOD, and ADAM V. FLOYD, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-000532 Application 10/837,827 2 STATEMENT OF THE CASE John K. Edoga and Thierry Richard (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting under 35 U.S.C. § 103(a) claims 7-14 and 37 as unpatentable over Laufer (US 6,149,660, iss. Nov. 21, 2000), Cummins (US 7,008,435 B2, iss. Mar. 7, 2006), and Huitema (US 6,638,297 B1, iss. Oct. 28, 2003) and claims 15, 16, 19-31, 35, 36, 38, and 39 as unpatentable over Laufer, Cummins, Huitema, and Becht (US 4,196,836, iss. Apr. 8, 1980)1. Claims 1-6 and 40-65 have been withdrawn. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). INVENTION Appellants’ invention relates to a stapler for connecting an endograft to a vessel including a staple that is “U-shaped with a pair of straight legs connected by a central portion and a second condition in which the straight legs are formed into loops.” Spec. 12, para. [0057] and figs. 23A and 23B. Claim 7 is illustrative of the claimed invention and reads as follows: 7. An endovascular stapler system for securing an endograft to a vessel, said system comprising: a staple formed from a memory alloy, said staple including first and second legs joined by a central portion, said legs forming two parallel loops when in a natural condition; a trigger housing including a trigger mechanism within said housing; a staple housing for storing said staple in a deformed condition, said staple having two parallel straight legs joined by 1 Claims 17, 18, and 32-34 are objected to by the Examiner as being dependent upon a rejected base claim and otherwise indicated as being allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claim. Final Rejection, mailed March 31, 2009, at 12. Claims 17, 18, and 32-34 are not part of the instant appeal. Appeal 2011-000532 Application 10/837,827 3 said central portion when in said deformed condition, said staple housing having a proximal end and a distal end, said staple housing having a staple exit area formed therein near said distal end thereof, said staple housing including a staple channel having a first guide flange for guiding said first leg of said staple and a second guide flange, which is parallel to and laterally spaced from said first guide flange, for guiding said second leg of said staple, each of said first and second guide flanges including a substantially straight portion and an arcuate portion, said substantially straight portion being configured for storing said staple in said deformed condition, said arcuate portion having a radius that controls transformation of said staple from said deformed condition to said natural condition as said staple exits said staple exit area, said staple channel extending through said staple housing to said staple exit area thereby defining a longitudinal direction; and a balloon situated exterior to said staple housing near said distal end thereof, said balloon adapted to be selectively inflated and deflated to push said staple exit area against the endograft and the vessel; wherein said trigger mechanism is configured to actuate driving a staple from said staple housing through said staple exit area into the endograft and the vessel and transform said staple from said deformed condition to said natural condition as it moves forward along said staple channel due to properties of said memory alloy and not from bending or other shaping introduced by said trigger mechanism or said staple housing, and said two parallel loops of said staple are formed in a direction that is substantially parallel to said longitudinal direction of said staple channel and not toward each other. SUMMARY OF DECISION We REVERSE. Appeal 2011-000532 Application 10/837,827 4 ANALYSIS Each of independent claims 7, 19, and 37 requires, inter alia, a staple that in a natural condition has “legs forming two parallel loops . . . in a direction that is substantially parallel to said longitudinal direction of said staple channel and not toward each other.” App. Br., Claims Appendix. Pointing to Figure 23 of Laufer, the Examiner found that Laufer discloses “a staple with parallel loops connected by a central element.” Ans. 4. The Examiner further found that “Huitema teaches a staple (Figs. 2 and 4) formed of memory alloy which forms loops of any orientation, [which] is old and well known in the art.” Id. The Examiner concluded that “it would have been obvious to one skilled in the art at the time the invention was made to modify Laufer’s staple to include a memory alloy which forms the loop as shown in Fig. 4 [of Huitema], parallel to each other.” Ans. 5. Appellants argue that neither Laufer nor Huitema discloses a staple having “two parallel loops,” as called for by each of independent claims 7, 19, and 37. App. Br. 13. In response, the Examiner further takes the position that “Huitema's staple forms two parallel loops” and that “it is capable of being aligned in a direction substantially parallel to a longitudinal direction of the staple channel” because “memory alloy is known [in the] art to deform in any preferred orientation.” Ans. 15. At the outset, we agree with Appellants that in the staple of Laufer, the “ends are forced together to form a single loop and not parallel loops,” as called for by each of independent claims 7, 19, and 37. See Reply Br. 5; see also Laufer, figs. 23 and 24. We further agree with Appellants that in contrast to each of independent claims 7, 19, and 37, which require the claimed loops to be “not toward each other,” the loops of Huitema’s staple Appeal 2011-000532 Application 10/837,827 5 are “directed toward one another.” See Reply Br. 7-8; see also Huitema, fig. 4. Moreover, as Appellants have noted, the loops of Huitema “are in- line with one another,” and as such “contact one another.” Reply Br. 7. An ordinary and customary meaning of the term “parallel” is “extending in the same direction, everywhere equidistant, and not meeting.” MERRIAM WEBSTER’S COLLEGIATE DICTIONARY (10th Ed. 1997). In this case, since Huitema’s loops contact one another, they meet, are not everywhere equidistant and as such, do not constitute “parallel loops.” Lastly, while the Examiner’s position also appears to be that a staple having “parallel loops” would have been obvious merely because memory alloy can deform in any preferred orientation, the Examiner has not made any finding as to the particular type of staple called for in each of independent claims 7, 19, and 37, namely, a staple having “parallel loops . . . in a direction that is substantially parallel to said longitudinal direction of said staple channel and not toward each other.” As such, we find that the Examiner’s legal conclusion of obviousness is not supported by facts, and thus, cannot stand. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (the examiner has the initial duty of supplying the requisite factual basis and may not, because of doubts that the invention is patentable, resort to speculation, unfounded assumptions, or hindsight reconstruction to supply deficiencies in the factual basis). Thus, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. § 103(a) of claims 7-14 and 37 as unpatentable over Laufer, Cummins, and Huitema. The addition of Becht does not remedy the deficiencies of Laufer, Cummins, and Huitema as described supra. Therefore, we likewise do not sustain the rejection of claims 15, 16, 19-31, 35, 36, 38, and 39 as Appeal 2011-000532 Application 10/837,827 6 unpatentable over the combined teachings of Laufer, Cummins, Huitema, and Becht. SUMMARY The decision of the Examiner to reject claims 7-16, 19-31, and 35-39 is reversed. REVERSED mls