Ex Parte Sarac

Patent Trial and Appeal Board

Nov 29, 2016

11484331 (P.T.A.B. Nov. 29, 2016)

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.
11/484,331 07/10/2006 Timur P. Sarac TIMS-024466 US CIP 1 7789
26294 7590 12/01/2016
TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300 EAST NINTH STREET, SUITE 1700
CLEVELAND, OH 44114
EXAMINER
PREBILIC, PAUL B
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
12/01/2016 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):
rkline @ tarolli. com
docketing@tarolli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMUR P. SARAC
Appeal 2013-007071
Application 11/484,331
Technology Center 3700
Before PATRICK R. SCANLON, MICHELLE R. OSINSKI, and
BRADLEY B. BAYAT, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Timur P. Sarac (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s final decision rejecting claims 19—39, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2013-007071
Application 11/484,331
THE CLAIMED SUBJECT MATTER
Claims 19, 25, and 30 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter on appeal.
19. An endovascular apparatus comprising:
a tubular sleeve having a central lumen with a cranial end.
the cranial end extending circumferentially around the central
lumen to hold the sleeve open and secure the sleeve to a wall of
state to a second state and comprising:
a plurality of M configuration sections, the M
configuration sections arranged around the circumference
of the cranial end of the tubular sleeve so as to form a
Hared cylindrical shape when unconstrained by a patient’s
anatomy, wherein a caudal opening of the flared
cylindrical shape is larger in diameter than a cranial
opening of the flared cylindrical shape such that when
positioned within the patient’s anatomy the
caudal opening is larger in diameter than the cranial
opening.
The Examiner relied on the following evidence in rejecting the claims
at least a first expandable atts device attached to
EVIDENCE
on appeal:
Porter
Chuter
Yadav
Lazarus
Quiachon
US 5,064,435
US 5,387,235
US 5,824,044
US 6,083,258
US 6,165,214
Nov. 12, 1991
Feb. 7, 1995
Oct. 20, 1998
July 4, 2000
Dec. 26, 2000
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Application 11/484,331
REJECTIONS
I. Claims 19-24, 35, and 36 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement. Final Act. 2—3.
II. Claims 25—33 and 37—39 stand provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable
over claims 2—4, 7—12, 15, and 17—21 of Application No. 13/075,532.
Id. at 3^4.
III. Claims 19-24 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Chuter. Id. at 5—6.
IV. Claims 19—24 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Chuter and Porter. Id.
V. Claims 25—27, 30—32, and 35—38 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Quiachon. Id. at 6—7.
VI. Claims 28, 29, 33, and 34 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Quiachon and Yadav. Id. at 7.
VII. Claim 39 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Quiachon and Lazarus. Id. at 7. Id. at 7—8.
OPINION
Rejection 1
Claims 19—24
Claim 19 recites that “a plurality of M configuration sections [are]
arranged ... so as to form a flared cylindrical shape when unconstrained by
a patient’s anatomy” and that “a caudal opening of the flared cylindrical
shape is larger in diameter than a cranial opening of the flared cylindrical
shape.” Appeal Br. 22 (Claims App.). The Examiner finds that these claim
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features, added by amendment, were not described in the Specification in
such a way as to reasonably convey that a person of ordinary skill in the art
had possession of the claimed invention at the time the application was filed.
Final Act. 2—3.
Appellant argues that Figure 13N illustrates a side elevational view of
a device in which the left side has a smaller diameter than the right side, and
that “[t]he left side ... in Figure 13N corresponds to the structure shown at
the top of Figure 13U”, which is the cranial end. Appeal Br. 14. Appellant,
therefore, states that “the [Specification clearly discloses the flared
cylindrical shape (e.g., Figure 13N) and that the caudal opening is larger
than the cranial opening (Figure 13U).” Id. The Examiner responds that the
“diameter difference, if any, is not pronounced enough or clearly present.”
Ans. 5. The Examiner also responds that “Figure 13N is considered
diagrammatic and not a literal picture of the device” because it “only shows
half the struts because it only shows 6 of the 12 struts that would be present
in a full ring or cylinder.” Id.
To satisfy the written description requirement, the Specification must
describe the claimed invention in sufficient detail that one skilled in the art
can reasonably conclude that the inventor had possession of the claimed
subject matter as of the filing date. Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1562—63 (Fed. Cir. 1991). Specifically, the Specification must
describe the claimed invention in a manner understandable to a person of
ordinary skill in the art and show that the inventor actually invented the
claimed invention. Id.; Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010). One shows “possession” of the invention by
describing the invention using such descriptive means as words, structures,
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Application 11/484,331
figures, diagrams, formulas, etc. that fully set forth the claimed invention.
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). The
issue of whether the written description requirement has been satisfied is a
question of fact. Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 865
(Fed. Cir. 1993).
Although “under proper circumstances, drawings alone may provide a
‘written description’ of an invention as required by § 112” (see Cooper
Cameron Corp. v. Kvaerner Oilfield Prods., Inc., 291 F.3d 1317, 1322 (Fed.
Cir. 2002) (quoting Vas-Cath Inc., 935 F.2d at 1565)), in this case, we find
that the original disclosure does not reasonably convey to a skilled artisan
that Appellant had possession of the claimed feature. The only support
Appellant offers for the flared nature of the M configuration section is the
“schematic side view[]” of Figure 13N (Spec. 131). Notably, neither Figure
13U nor the corresponding “schematic top view[]” of Figure 13G support
that such an M configuration section is flared. In light of the schematic
nature of the drawing of Figure 13N in which the feature in question is not
particularly clear and/or pronounced and the fact that the corresponding
drawings fail to support that the M configuration section is flared, we agree
with the Examiner that the drawings do not reasonably convey to skilled
artisans that Appellant possessed the claimed invention as of the filing date.
Accordingly, we sustain the Examiner’s rejection of claims 19—24
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Claims 35 and 36
Claim 35 recites that an M-stent formed by four struts connected end-
to-end has a second apex formed by the “the second end of the second strut
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. . . joined to the first end of the third strut” in which “the second apex [is]
positioned above the first end of the first stmt and the second end of the
fourth stmt.” Appeal Br. 24 (Claims App.). Claim 36 recites that “an angle
formed at the first apex between the first and second stmts is different than
an angle formed at the second apex between the second and third stmts.” Id.
The Examiner finds that these features lack clear original support and
“contradicts the original disclosure of Figures 13H to 13U that show equal
length legs and equal angles between legs.” Final Act. 2.
Appellant argues that “[o]ne of skill in the art would recognize that by
referring to an ‘M,’ [Appellant] has identified a shape that includes different
angles between the legs and/or shorter middle stmts because such
characteristics ... are clearly recognized as associated with the shape of the
letter ‘M.’” Appeal Br. 11. Appellant asserts that the Specification and
prosecution history distinguish M-shaped springs from V-shaped springs.
Id. at 10 (citing Spec. 1 50,11. 14—16). Appellant also asserts that Figure 9
as originally filed in the parent application (U.S. Patent Application No.
10/624,864) (hereinafter referred to as “the parent application”) shows
shorter middle stmts (Id. at 11), as well as an arrangement in which angles
opening toward the right side are different than angles opening toward the
left side, or else the device would be illustrated as having a cylindrical
configuration (id. at 13 (citing original Figures 13G, 13N, 13U of the parent
application)).
The Examiner responds that an M configuration as opposed to a V
configuration may instead refer to the number of stmts between adjacent
components, as opposed to necessarily providing any information regarding
the lengths or angles of the stmts. Ans. 3. The Examiner also finds that “the
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capital letter ‘M’ has a middle or second apex that is not [necessarily] above
the first end of the first strut and the second end of the fourth strut.” Id. at 4.
We agree with the Examiner that Appellant has not provided sufficient
evidence to persuade us that mere reference to an “M” would be recognized
by one of ordinary skill in the art as necessarily providing shorter middle
struts or different angles between legs.
As to the alleged shorter middle struts in the original drawing figures
of the parent application, we again agree with the Examiner’s finding that
“the difference, if any, is not clear or pronounced enough to say that it is
inherently present.” Id. As to the alleged different angle openings
purportedly suggested by the original drawing figures of the parent
application, the Examiner responds that “the wire is clearly a bendable
material and can be bent in any angle within three dimensional space” and
that “the orientation angle of view of the topmost strut pair in Figure 13N is
different from that of the bottommost pair” thereby making it “not clear
whether there is a flare or not.” Id. We agree with the Examiner that
Appellant has not provided sufficient evidence to persuade us that the non-
cylindrical shape associated with original Figures 13G, 13N, 13U of the
parent application necessarily means that the angles opening toward one side
of the device are different than angles opening toward the other side of the
device, as alleged by Appellant.
Accordingly, we sustain the Examiner’s rejection of claims 35 and 36
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
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Rejection II
Claims 25—33 and 37—39 stand provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 2—4, 7—12, 15, and 17—21 of Application No. 13/075,532. Id. at 3^4.
We decline to reach the rejection and leave it to the Examiner to determine
whether it is still proper. See Ex parte Moncla, 95 USPQ2d 1884 (BPAI
2010) (precedential).1
Rejection III
The Examiner finds that Chuter discloses all of the limitations of
independent claim 19, including, inter alia, M configuration sections
arranged around the cranial end of the tubular sleeve so as to form a flared
cylindrical shape, wherein the caudal opening of the flared cylindrical shape
is larger in diameter than the cranial opening of the flared cylindrical shape.
Final Act. 5. The Examiner’s position is that the flared shape is illustrated in
Figure 2, and that the flared shape would result in a larger caudal opening “if
placed in such a[n] anatomical structure that flared outward in that location”
and if following the graft’s contour as illustrated in Figures 15 and 47. Id. at
5—6 (citing Chuter, col. 25).
Appellant argues that “it is clear from Figures 15 and 47 . . . that the
top end or cranial end of the stent would include the barbs associated with
the top end of the stent shown in Figure 2” (Appeal Br. 16) and that “the top
(cranial end) of the stent [of Figure 2] is larger in diameter than the bottom
(caudal end) of the stent, (i.e., the opposite to the arrangement claimed in
[cjlaim 19)” {id. at 15) (emphasis omitted).
1 Notably, a Notice of Abandonment was entered in connection with
Application No. 13/075,532 on February 10, 2016.
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The Examiner acknowledges that when “used in the fashion it is
[intended to be] used,” Chuter “does not show a larger caudal diameter.”
Final Act. 6. The Examiner, however, asserts that “one could reasonably
call the bottom end [of the stent] the cranial end and the top end [of the
stent] the caudal end, thereby making the caudal end of a wider diameter
than the cranial end. Ans. 5.
We are not persuaded that it would be reasonable to call the bottom
end of the stent the cranial end and the top end of the stent the caudal end.
The terms “cranial” and “caudal” have specific meanings as anatomical
terms of location that would be contrary to such a designation. Moreover,
the manner in which the term “cranial” is used in connection with the tubular
sleeve and with the M configuration section should be consistent. The claim
itself requires the M configuration section (or stent) to be arranged at the
cranial end of the tubular sleeve, and the Examiner points to the M
configuration section (or stent) disposed at the top end of the tubular sleeve.
Calling a bottom end of the M configuration section its cranial end would be
inconsistent with calling a top end of the tubular sleeve its cranial end.
The Examiner alternatively responds that Figures 15 and 47 show an
embodiment in which the bottom end of the stent is flared larger than the top
end. Ans. 5—6 (citing annotated version of Figure 47 of Chuter). This
feature is not adequately shown in the drawings to support the Examiner’s
findings by a preponderance of the evidence.
For the foregoing reasons, we do not sustain the rejection of claims
19-24 under 35 U.S.C. § 102(b) as anticipated by Chuter.
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Rejection IV
The Examiner finds that “Porter teaches that it was known [in the art]
to make stent[s] with flared ends that remain flared as a means to anchor the
stent to the inside wall of the blood vessel.” Final Act. 6 (citing Porter, Figs.
1—5, 3:27—39). The Examiner concludes that it would have been obvious to
a person of ordinary skill in the art “to make the caudal end of the Chuter
spring flare out against the anatomy as a way to better anchor it to the vessel
or for the reasons explained by Porter.” Id. (citing Porter, 3:27—39) (stating
that “[t]he first and second ends have diameters greater than the first
diameter when the stent is in the relaxed state, and when compressed tend to
have a greater restoring force against the cavity wall segment, as compared
to the remainder of the stent.”).
Appellant initially argues that Chuter and Porter lack “M
configuration sections” because neither teach “a shape that includes different
angles between the legs and/or shorter middle struts . . . [which] are clearly
recognized as associated with the shape of the letter ‘M.’” Appeal Br. 17.
We agree with the Examiner that the features relied on by Appellant are not
clearly associated with an M configuration, and thus, are not claimed. See
Ans. 7. Arguments must be commensurate in scope with the actual claim
language. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Appellant further argues that “at best, one of skill in the art in light of
Porter would modify Chuter to include ends that flare in the opposite
direction than the configuration of [c]laim 19” because “Porter discloses that
these flared ends are useful to maintain a constant axial length in the stent.”
Appeal Br. 17 (citing Porter, 5:21—25). The Examiner responds “that the
stent can follow the anatomy of the blood vessel” as taught by Porter and
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“Chuter provides the anatomy where the bottom end of the stent would be
larger because the anatomy is larger at the location adjacent the bottom of
the stent.” Ans. 7 (citing Porter, Fig. 5; Chuter, Figs. 15 and 47).
Considering the Examiner’s clarified reasoning, Appellant has not
persuasively explained why the Examiner’s articulated reasoning to modify
Chuter—i.e., to make the caudal end of the Chuter stent follow the vessel
anatomy of Chuter as shown by Porter in order to better anchor it to the
vessel—lacks rational underpinnings.
For the foregoing reasons, we sustain the rejection of claims 19—24
under 35 U.S.C. § 103(a) as unpatentable over Chuter and Porter.
Rejection V
The Examiner finds that Quiachon discloses all of the limitations of
independent claims 25 and 30, including V-shaped member 374 being the
first attachment device, and “the stent sections from B1 to B3 and B3 to B5
of Figure 17” being the M springs. Final Act. 6.
Appellant argues that one of ordinary skill in the art “would not
reasonably interpret Quiachon as disclosing stents [around] ... ‘an exterior
perimeter of the tubular sleeve’ or ‘circumferentially around the tubular
sleeve’ as recited in [cjlaims 25 and 30,” respectively. Appeal Br. 19.
Appellant points to the Specification which distinguishes an embodiment in
which M springs 68 are located “on the exterior of the tubular sleeve 12” as
opposed to “on the interior of the tubular sleeve 12.” Id. (citing Spec. 1 50,
Fig. 9). Appellant asserts that “Quiachon clearly discloses that the frame of
Figures 17, 18, and 19 are positioned within the interior of the graft wall.”
Id. at 20 (citing Quiachon, 17:49-51) (emphasis omitted).
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The Examiner responds that under the broadest reasonable
interpretation of “around,” springs that are merely “in the vicinity of
something [and] not necessarily surrounding something” can meet this
language, such that springs that are merely in the vicinity of the exterior
perimeter are around the exterior perimeter. Ans. 7—8. Moreover, the
Examiner asserts that “portions of the frame outside the graft of [Quiachon]
are ‘around’ an exterior perimeter of the sleeve in that [they] extend[] over
the perimeter.” Id. at 8 (citing Quiachon, Fig. 19, element 270). The
Examiner also asserts that “the V’s at (400) extend outside the graft and
these ends extend around the outside of the graft.” Id. (citing Quiachon, Fig.
18, col. 18). The Examiner further asserts that “the sutures or stitches used
to connect the stent and the graft can be considered part of the ‘M
configuration springs attached to the cranial end portion of the tubular
sleeve’ as claimed.” Id. (emphasis omitted).
As to independent claim 25, which recites that the “M configuration
springs . . . extend[] circumferentially around an exterior perimeter of the
tubular sleeve” (Appeal Br. 23 (Claims App.)), we do not agree with the
Examiner that an interpretation of “around” relating to being in the vicinity
of something is reasonable under the circumstances. More particularly, an
interpretation of “extending circumferentially around an exterior perimeter
of the tubular sleeve” that would extend to a spring extending
circumferentially around an interior perimeter of the tubular sleeve is not
reasonable in this context. Moreover, certain discrete portions of the frame
that extend over the perimeter or discrete sutures or stitches that are outside
the graft do not meet the language of extending circumferentially around the
exterior perimeter of the tubular sleeve, as required by the claim.
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For the foregoing reasons, we do not sustain the rejection of
independent claim 25, and claims 26, 27, and 37, which depend therefrom,
under 35 U.S.C. § 102(b) as anticipated by Quiachon.
As to independent claim 30, which recites that the “M stent. . .
extend[s] circumferentially around the tubular sleeve” (Appeal Br. 23
(Claims App.)), we are not persuaded that Quiachon’s stent sections from B1
to B3 and B3 to B5 cannot be considered as extending circumferentially
around the tubular sleeve because they are positioned within the interior of
the graft wall. We determine Appellant’s argument is not commensurate in
scope with the actual claim language. Self, 671 F.2d at 1348.
For the foregoing reasons, we sustain the rejection of claim 30 under
35 U.S.C. § 102(b) as anticipated by Quiachon. We also sustain the
rejection of claims 31, 32, 35, 36, and 38, which depend therefrom, and for
which Appellant relies on the same arguments and reasoning we found
unpersuasive. Appeal Br. 18—20.
Rejection VI
Claims 28, 29, 33, and 34 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Quiachon and Yadav. Final Act. 7. Claims 28 and 29
depend from independent claim 25. Appeal Br. 23 (Claims App.). The
rejection of these claims relies on the Examiner’s erroneous findings as to
Quiachon with respect to independent claim 25. Final Act. 7. The Examiner
does not explain how Yadav might cure this underlying deficiency.
Accordingly, we do not sustain the rejection of claims 28 and 29 under
35 U.S.C. § 103(a) as unpatentable over Quiachon and Yadav.
Claims 33 and 34 depend from independent claim 30. Appeal Br. 24
(Claims App.). Appellant’s arguments in support of the patentability of
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claims 33 and 34 relate to the perceived deficiencies in Quiachon in
connection with independent claim 30. Id. at 20. Because we have found no
such deficiencies in Quiachon with respect to independent claim 30, we are
not persuaded of error in the Examiner’s rejection of dependent claims 33
and 34. Accordingly, we sustain the rejection of claims 33 and 34 under
35 U.S.C. § 103(a) as unpatentable over Quiachon and Yadav.
Rejection VII
Claim 39 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Quiachon and Lazarus. Final Act. 7—8. Appellant’s arguments in
support of the patentability of claim 39 relate to the perceived deficiencies in
Quiachon in connection with independent claim 30. Appeal Br. 21.
Because we have found no such deficiencies in Quiachon with respect to
independent claim 30, we are not persuaded of error in the Examiner’s
rejection. Accordingly, we sustain the rejection of claim 39 under 35 U.S.C.
§ 103(a) as unpatentable over Quiachon and Lazarus.
DECISION
The Examiner’s decision to reject claims 19—24, 35, and 36 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement is affirmed.
We decline to reach the provisional rejection of claims 25—33 and 37—
39 on the ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 2—4, 7—12, 15, and 17—21 of Application No.
13/075,532.
The Examiner’s decision to reject claims 19—24 under 35 U.S.C.
§ 102(b) as anticipated by Chuter is reversed.
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The Examiner’s decision to reject claims 19—24 under 35 U.S.C.
§ 103(a) as unpatentable over Chuter and Porter is affirmed.
The Examiner’s decision to reject claims 25—27 and 37 under
35 U.S.C. § 102(b) as anticipated by Quiachon is reversed.
The Examiner’s decision to reject claims 30—32, 35, 36, and 38 under
35 U.S.C. § 102(b) as anticipated by Quiachon is affirmed.
The Examiner’s decision to reject claims 28 and 29 under 35 U.S.C.
§ 103(a) as unpatentable over Quiachon and Yadav is reversed.
The Examiner’s decision to reject claims 33 and 34 under 35 U.S.C.
§ 103(a) as unpatentable over Quiachon and Yadav is affirmed.
The Examiner’s decision to reject claim 39 under 35 U.S.C. § 103(a)
as unpatentable over Quiachon and Lazarus is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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