Ex Parte Rakos et al

Patent Trial and Appeal BoardApr 16, 2013

11385621 (P.T.A.B. Apr. 16, 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. 11/385,621 03/21/2006 Ronald Rakos 01-102US02 [209.0090004] 3803 54953 7590 04/17/2013 BROOKS, CAMERON & HUEBSCH, PLLC 1221 NICOLLET AVENUE SUITE 500 MINNEAPOLIS, MN 55403 EXAMINER MASHACK, MARK F ART UNIT PAPER NUMBER 3773 MAIL DATE DELIVERY MODE 04/17/2013 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 RONALD RAKOS and KRZYSZTOF SOWINSKI ____________ Appeal 2012-002061 Application 11/385,621 Technology Center 3700 ____________ Before DONALD E. ADAMS, DEMETRA J. MILLS, and LORA M. GREEN, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134 involves claims 1, 3, and 5-11 (App. Br. 3; Ans. 3). 1 We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE CASE The claims are directed to a modular endoluminal device. Claims 1 and 8 are representative and are reproduced in the Claims Appendix of Appellants’ Brief. 1 Pending claim 14 stands withdrawn from consideration (App. Br. 3 and Reply Br. 3). Appeal 2012-002061 Application 11/385,621 2 Claims 1 and 8-11 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Penn, 2 Marcade, 3 and Evans. 4 Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Penn, Marcade, Evans, and Fogarty. 5 Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Penn, Marcade, Evans, and Amplatz. 6 Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Penn, Marcade, Evans, Greenan, 7 and Goicoechea. 8 We affirm. ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion that the combination of Penn, Evans, and Marcade suggests a modular endoluminal device comprising, inter alia, inner and outer members and first and second leg portions, wherein a leg stump portion of the inner member protrudes into the first leg portion in the assembled configuration, and a second leg portion of the inner member protrudes through the first fluid exit opening of the outer member? 2 Penn, et al., WO 97/41803, published November 13, 1997. 3 Marcade et al., US 5,993,481, issued November 30, 1999. 4 Evans et al., US 6,102,938, issued August 15, 2000. 5 Fogarty et al., US 5,824,037, issued October 20, 1998. 6 Amplatz et al., US 6,468,301 B1, issued October 22, 2002. 7 Greenan et al., US 6,344,052 B1, issued February 5, 2002. 8 Goicoechea et al, US 5,683,450, issued November 4, 1997. Appeal 2012-002061 Application 11/385,621 3 FACTUAL FINDINGS (FF) FF 1. Penn’s Figures 10-11 are reproduced below: “Figures 10 and 11 illustrate … a method for production of a bifurcated stent” (Penn 11: 17-18; see generally Ans. 5). FF 2. Penn suggests a first and second stent section, wherein the “first stent section 45c is provided with an opening 54c” and the “second stent section 55c is provided with an opening 56c” (id. at 15: 8-9; Ans. 5). FF 3. Penn suggests: As illustrated by arrow C in Figure 10, the end of second stent section 55c is coaxially fed into an end of first stent section 45c. Once the leading end of second stent section 55c reaches opening 54c of first stent section 45c, it is pulled through opening 54c as illustrated by arrow D in Figure 10. Second stent section 55c is pulled through opening 54c until opening 56c is aligned with opening 54c - this is illustrated by dashed oval E in Figure 11. (Id. at 15: 14-19; Ans. 5.) FF 4. Examiner finds that Penn “does not explicitly disclose … the inner member further comprising a leg stump portion protruding into the first leg portion in the assembled configuration” (Ans. 6). Appeal 2012-002061 Application 11/385,621 4 FF 5. Evan’s Figures 4A and 4B are reproduced below: “FIG. 4A illustrates a bifurcated endoluminal prosthetic system which includes a bifurcated endoluminal prosthesis, a branch prosthesis, and a shunt for deployment within the bifurcated prosthesis” (Evans, col. 6, ll. 61- 64; see generally Ans. 6). “FIG. 4B illustrates a shunt for deployment within a bifurcated prosthesis, wherein the shunt comprises a liner supported by a frame having a trunk portion, a branch portion, and a branch port portion so that the frame is highly stable when the shunt is expanded within the bifurcated prosthesis” (id. at col. 6, l. 66 - col. 7, l. 4; see generally Ans. 6). FF 6. Examiner finds that Evans’ device comprises an “inner member 91 and an outer member 80 wherein the inner member comprises a leg stump portion 99 positioned in the outer members leg portion” (Ans. 6). FF 7. Examiner finds that Penn “does not explicitly disclose the relationship between the sizes of two first fluid openings” and relies on Marcade to suggest that “the diameters of the ends of the outer … and inner member … may vary or taper in order to accommodate … an aneurysm that extends down one of the iliac arteries” (id. at 5). FF 8. Examiner finds that the combination of Penn, Marcade, and Evans does not “explicitly disclos[e] a first or second seal ring positioned adjacent Appeal 2012-002061 Application 11/385,621 5 the outer member and engaging the inner member” and relies on Fogarty to suggest the use of seal rings to seal overlapping members of a modular stent graft apparatus, which is assembled in situ (id. at 7). FF 9. Examiner finds that the combination of Penn, Marcade, and Evans fails to “explicitly disclos[e a] … stent-graft comprising a textile, a plastic, or a combination thereof” and relies on Amplatz to suggest a “bifurcated graft comprising a fabric” (id.). FF 10. Examiner finds that the combination of Penn, Marcade, and Evans fails to suggest “an uncovered stent portion … comprising a [pent]agonal cell design” and relies on Greenan to suggest “an uncovered proximal portion of … [a] stent to prevent blocking of the renal arteries” and Goicoechea to suggest “an outer member comprising an uncovered proximal portion comprising a truncated diamond cells which makes a pentagonal cell design” (id. at 8). ANALYSIS The combination of Penn, Evans, and Marcade: Based on the combination of Penn, Evans, and Marcade, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious to, inter alia, “modify the inner member [of Penn’s stent section] by providing it with a leg stump portion (a short leg portion) [as suggested by Evans] to provide increased stability and prevent inadvertent movement” (Ans. 6; see generally FF 1-3 and 5). Claim 1: Because the rejection of claim 1 is based on the combination of Penn, Marcade, and Evans, we are not persuaded by Appellants’ contention that Appeal 2012-002061 Application 11/385,621 6 Evans alone does not suggest the subject matter of Appellants’ claim 1 (App. Br. 10-13; Reply Br. 10-14; Cf. Ans. 8-9 (“Examiner asserts that Evans was never considered to disclose … all the claim limitations…. Applicant[s] appear[] to be treating Evans as a 102 reference. Examiner merely provides Evans to teach … a shorter stump to stabilize the inner member of Penn” (emphasis removed))). For the reasons set forth by Examiner, we are not persuaded by Appellants’ contention relating to the “problems being solved” or assertion that Examiner took “Official Notice” to support the legal conclusion of obviousness (see App. Br. 13-15; Reply Br. 14-16; Cf. Ans. 9). Claim 8: Because the rejection of claim 8 is based on the combination of Penn, Marcade, and Evans, we are not persuaded by Appellants’ contention that Penn and Marcade fail to suggest the subject matter of Appellants’ claim 8 (App. Br. 15-16; Reply Br. 16-20). For the reasons set forth above, we are not persuaded by Appellants’ contention relating to the “problems being solved” or assertion that Examiner took “Official Notice” to support the legal conclusion of obviousness (Reply Br. 21-23). Appeal 2012-002061 Application 11/385,621 7 The combination of Penn, Evans, and Marcade, with (a) Fogarty, 9 (b) Amplatz, or (b) the combination of Greenan and Goicoechea: Appellants fail to address the rejections over the foregoing combinations of prior art. Thus, for the reasons set forth above with respect to the rejection of claims 1 and 8, we affirm these rejections. Arguments not made are waived. CONCLUSION OF LAW The preponderance of evidence relied upon by Examiner support a conclusion that the combination of Penn, Evans, and Marcade suggests a modular endoluminal device comprising, inter alia, inner and outer members and first and second leg portions, wherein a leg stump portion of the inner member protrudes into the first leg portion in the assembled configuration, and a second leg portion of the inner member protrudes through the first fluid exit opening of the outer member. The rejection of claims 1 and 8 under 35 U.S.C. § 103(a) as unpatentable over the combination of Penn, Marcade, and Evans is affirmed. Claims 9-11 are not separately argued and fall with claim 1. 9 We recognize that Examiner’s rationale for the rejection over the combination of Penn, Evans, Marcade, and Fogarty includes a reference to Amplatz (see Ans. 7). However, when Examiner’s reasoning is read in context it appears that Examiner’s reference to Amplatz represents a harmless typographical error and should have been a reference to the stent grafts suggested by the combination of Penn, Evans, and Marcade. Appeal 2012-002061 Application 11/385,621 8 The rejections over the combination of Penn, Evans, and Marcade, with (a) Fogarty, (b) Amplatz, or (b) the combination of Greenan and Goicoechea, are not separately addressed. Therefore: The rejection of claim 3 under 35 U.S.C. § 103(a) as unpatentable over the combination of Penn, Marcade, Evans, and Fogarty is affirmed. The rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable over the combination of Penn, Marcade, Evans, and Amplatz is affirmed. The rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable over the combination of Penn, Marcade, Evans, Greenan, and Goicoechea is affirmed. Claim 7 is not separately argued and falls with claim 6. 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). AFFIRMED cdc