Kerr, Andrew

Patent Trials and Appeals Board

Jun 2, 2021

2020005696 (P.T.A.B. Jun. 2, 2021)

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.
15/864,845 01/08/2018 Andrew Kerr 200359-00004 9404
1218 7590 06/02/2021
HESPOS & PORCO LLP
P. O. BOX 68
ESSEX FELLS, NJ 07021-0068
EXAMINER
BLANCO, JAVIER G
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
06/02/2021 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):
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docketing@hpiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW KERR
Appeal 2020-005696
Application 15/864,845
Technology Center 3700
Before STEFAN STAICOVICI, JILL D. HILL, and LEE L. STEPINA,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–4, 9, 10, 12–22, 24, 27, and 28.3 See
Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant indicates that the present Appeal is related to an appeal in co-
pending U.S. Application Serial Number 15/440,145. Appeal Br. 4.
2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Andrew Kerr.
Appeal Br. 3.
3 Claims 5–8, 11, 23, 25, 26, and 29 are withdrawn. Final Act. 1.
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Application 15/864,845
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CLAIMED SUBJECT MATTER
The claims are directed to a stent/graft assembly. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An endovascular stent graft assembly for repairing a
section of a blood vessel that has an aneurysm, the blood vessel
having first and second relatively healthy sections adjacent and
on opposite ends of the aneurysm, the assembly comprising:
a tubular stent configured to contact a first relatively
healthy section of the blood vessel, the stent having opposite first
and second axial ends;
a graft having a first axial end and a tubular portion
adjacent the first axial end configured to contact the first
relatively healthy section of the blood vessel; and
the graft being connected to the second axial end of the
stent by a plurality of axially projecting extensions mounted at
circumferentially spaced apart locations on at least one of the
stent or the graft, each of the plurality of axially projecting
extensions comprising a radially extending surface remote from
its respective mounting location and configured to achieve a
substantially end-to-end fixed connection between the stent and
the graft without overlap between the stent and the graft,
wherein the substantially end-to-end fixed connection
without overlap enables a smaller cross-section than a connection
with overlap so that the assembly can be introduced more easily
into the blood vessel.
Appeal Br. 16 (Claims App.).
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Application 15/864,845
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Brown US 5,769,887 June 23, 1998
Cox US 5,824,040 Oct. 20, 1998
Robichon US 6,102,940 Aug. 15, 2000
Pierce US 6,152,956 Nov. 28, 2000
Kerr ’017 US 7,105,017 B2 Sept. 12, 2006
Kerr ’423 US 8,257,423 B2 Sept. 4, 2012
Kerr ’182 US 9,050,182 B2 June 9, 2015
Kerr ’209 US 10,105,209 B2 Oct. 23, 2018

REJECTION4
I. Claims 19–22 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite. Final Act. 2–3.
II. Claims 1–4, 9, 10, 12–22, 24, 27, and 28 are rejected on the
ground of obviousness-type double patenting over claims 1 and 2 of Kerr
’017, claims 1 and 2 of Kerr ’423, claims 1–21 of Kerr ’182, and claims 1–9
of Kerr ’209. Final Act. 4–5.
III. Claims 1–4, 9, 10, 12–22, 24, 27, and 28 are rejected under 35
U.S.C. § 102(b) as anticipated by Pierce.5 Final Act. 6–9.

4 The Examiner also entered a provisional obviousness-type double
patenting rejection of claims 1–4, 9, 10, 12–22, 24, 27, and 28 over “claims”
of Application Serial Number 15/440,145. Final Act. 5. As Application
Serial Number 15/440,145 is still pending, we leave it to the Examiner to
determine the propriety of maintaining this rejection.
5 The heading for this rejection indicates that these claims are also rejected
as unpatentable under 35 U.S.C. § 103(a) over Pierce, but the body of the
rejection addresses the claims only on the basis of anticipation by Pierce.
See Final Act. 4–5.
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Application 15/864,845
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IV. Claims 1–4, 9, 10, 12–22, 24, 27, and 28 are rejected under 35
U.S.C. § 103(a) as unpatentable over Robichon and any of Brown, Pierce, or
Cox.6 Final Act. 9–11.

OPINION
Rejection I (Indefiniteness) and Rejection II (Obviousness-type Double
Patenting)
Appellant makes no arguments contesting these rejections. See
Appeal Br. 10–15. Accordingly, we summarily sustain Rejections I and II.
Rejection III (Anticipation by Pierce)
Appellant argues for the patentability of the claims subject to this
ground of rejection, i.e., claims 1–4, 9, 10, 12–22, 24, 27, and 28, as a group.
See Appeal Br. 10–13. We select claim 1 as representative of the group, and
claims 2–4, 9, 10, 12–22, 24, 27, and 28 stand or fall with claim 1. See 37
C.F.R. § 41.37(c)(1)(iv).
The Examiner finds Pierce discloses all of the elements recited in
claim 1, including a tubular stent and a graft, “the graft being connected to
the second axial end of the stent by a plurality of axially projecting
extensions . . . comprising a radially extending surface remote from its
respective mounting location and configured to achieve a substantially end-
to-end fixed connection between the stent and the graft without overlap
between the stent and the graft.” Final Act. 6 (citing Pierce, 5:1–14, Figs. 3,

6 In the heading for this rejection, the Examiner lists all four references as
forming the basis of unpatentability, but the body of the rejection explains
that the disclosures or Brown, Pierce, and Cox are each used only to address
the same element in claim 1, and, therefore, these references are applied in
the rejection of claim 1 as alternatives. See Final Act. 6–7.
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5, 6A, 6B, 8). Specifically, the Examiner finds wires 42 of Pierce connect
stent 40 to graft 44. Id.; see also Pierce, 5:1–14, Figs. 3, 5.
Appellant contends “Pierce does not teach or suggest an arrangement
of the tubular stent, the graft and the axial extensions for achieving a
substantially end-to-end fixed connection.” Appeal Br. 10. Arguing for an
interpretation of claim 1 that excludes the arrangement disclosed by Pierce,
Appellant states:
the [S]pecification of the subject application explains that “the
tubular graft and the fixation device are connected substantially
in end-to-end relationship with little or no overlap. In certain
embodiments, the substantially end-to-end relationship of the
tubular graft and the fixation device may include a small axial
space between the tubular graft and the fixation device”.
Id. (quoting Spec. ¶ 13 (emphasis omitted)). Referring to Figure 3 of Pierce,
Appellant asserts, “the length of each wire[] 42 in Pierce exceeds the length
of the corresponding tubular stent 40 and also significantly exceeds the
diameter defined by either the tubular stent 40 or the graft 44.” Id. at 10–11.
Appellant also contends that a perfect end-to-end connection of a stent
and graft would be difficult or impossible to achieve because of the
structural properties of these components, and, therefore, the word
“substantially” before the term “end-to-end” means that only a small axial
space is allowed between these two components. See Appeal Br. 12. Based
on this contention, Appellant argues “the skilled artisan would understand
that the spacing between the stent and the graft taught by Pierce exceeds the
diameters of the stent and the graft and also exceeds the length of the stent.”
Id. at 12–13. Appellant concludes, “[t]he skilled artisan would appreciate
that the spacing between the stent and the graft as taught by Pierce is neither
a ‘substantially end-to-end connection’ as set forth in the claims nor ‘a small
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axial space between the tubular graft and the fixation device’ as set forth in
the [S]pecification.” Id. at 13.
In response, the Examiner discusses the broadest reasonable
interpretation of claim 1, stating, “[a]n ‘end-to-end connection’ simply
means an end of the stent connected to an end of the graft, which is clearly
shown in each of the embodiments of [Pierce]. Further, each of the
embodiments of Pierce ’956 shows said connection without overlapping.”
Ans. 11. As for Appellant’s reference to paragraph 13 of the Specification,
the Examiner states, “[t]he [S]pecification of the instant application, as
originally filed, does not define the particular metes and bounds of said ‘end-
to-end connection,’” and “the particular dimensions (e.g., metes and bounds)
of the axial gap in between the end of the stent and the end of the graft are
not disclosed in the [S]pecification as originally filed.” Id.
In reply, Appellant contends, “the collar 78 shown in Fig. 6A of
Pierce is described (column 7, lines 30-32) as having an axial length of one
to two centimeters, thereby indicating that the gap between the upstream
stent and the graft appears to be at least 1 inch.” Reply Br. 2–3.
The Examiner has the better position. Paragraphs 13, 83, and 115 of
Appellant’s Specification, among others, discuss connections that are
substantially end-to-end, and Appellant’s Figure 46 (reproduced below),
depicts such a connection.
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Application 15/864,845
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Appellant’s Figure 46 depicts end 714 of graft 712 connected to end 724 of a
stent across an axial space. See Spec. ¶ 115.
Paragraph 13 of Appellant’s Specification states,
The tubular graft and the fixation device are connected
substantially in end-to-end relationship with little or no
longitudinal overlap. In certain embodiments, the substantially
end-to-end relationship of the tubular graft and the fixation
device may include a small axial space between the tubular graft
and the fixation device. One or more connecting wires may
bridge the space between the axially align tubular graft and
fixation device. The tubular graft has a length that exceeds the
length of a damaged section of a blood vessel that is being
repaired by the endovascular graft assembly.
Emphasis added. From this, we understand that the substantially end-to-end
relationship allows for at least a small axial space to be present. Paragraph
83 of Appellant’s Specification states,
As a further alternate, substantially end-to-end axial
relationship may comprise an axial gap between the tubular graft
12 and the tubular stent 20, as shown in FIGS. 4A and 4B. FIG.
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4A shows the general concept of an axial gap between the
tubular graft 12 and the tubular stent 20 prior to deployment.
FIG. 4B shows one optional deployment. The axial spacing can
provide even further advantages for the deployment and
positioning of the tubular graft 12 and the tubular stent 20.
Emphasis added.
Thus, although no indication is given in the Specification as to the
maximum size (if any) of the axial gap, the axial gap in this section is not
explicitly described as being “small.” Paragraph 83 of Appellant’s
Specification supports an interpretation that the axial gap need not be small.
Accordingly, in light of the Specification, we discern no requirement for the
end-to-end connection to have a “small” size, much less a particular size that
patentably distinguishes over the embodiments in Pierce cited by the
Examiner. Thus, Appellant’s arguments are based on an unreasonably
narrow claim interpretation.
In the Reply Brief, Appellant argues that the embodiments depicted in
Pierce’s Figures 5, 7, and 8 fail to disclose a substantially end-to-end fixed
connection between the stent and the graft without overlap between the stent
and the graft. See Reply Br. 4–7. This assertion does not address the
embodiments cited by the Examiner in support of finding this portion of the
claimed structure in Pierce. Specifically, the Examiner refers to Pierce’s
Figures 3, 5, 6A, 6B, and 8, and column 5, lines 1–4 when addressing the
pertinent recitation in claim 1. See Final Act. 6.
We sustain the Examiner’s rejection of claims 1–4, 9, 10, 12–22, 24,
27, and 28 as anticipated by Pierce.

Appeal 2020-005696
Application 15/864,845
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Rejection IV (Unpatentability over Robichon and any of Brown, Pierce, and
Cox)
Appellant argues for the patentability of the claims subject to
Rejection IV, i.e., claims 1–4, 9, 10, 12–22, 24, 27, and 28, as a group. See
Appeal Br. 13–15. We select claim 1 as representative of the group, and
claims 2–4, 9, 10, 12–22, 24, 27, and 28 stand or fall with claim 1. See 37
C.F.R. § 41.37(c)(1)(iv).
The Examiner finds Robichon teaches most of the elements of claim
1, including “an end-to-end connection between a stent and a graft,” but
does not disclose “the end-to-end connection of the stent and the graft [i]s
achieved by wire hook[s].” Final Act. 9–10. However, the Examiner finds
this deficiency is remedied by each of Brown, Cox, and Pierce. Id. at 10
(citing Brown, 5:53–57; Pierce, 5:9–13, Figs. 3, 5, 6A, 6B, 8; Cox, 14:18–
33).
Robichon
Appellant states “[Robichon] appears to suffer from the deficiencies
of Pierce that were described in detail above.” Appeal Br. 13.
Pierce
Appellant’s argument specifically directed to Pierce as it applies to
Rejection IV is that “Pierce is used as a secondary reference in this rejection.
The above-described deficiencies of Pierce apply equally well to this
rejection.” Appeal Br. 13.
Brown
With respect to the teachings of Brown, Appellant contends, “in both
of [the embodiments depicted in Figures 6 and 7 of Brown,] there is
significant overlap between the stent and the graft, leading to the larger
cross-section that the subject invention avoids.” Appeal Br. 13.
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Cox
As for the Examiner’s reliance on the disclosure of Cox, Appellant
argues:
The connection of the ring members 114 to the flat connecting
members 118 has nothing to do with the substantially end-to-end
connection of a stent and a graft. In fact, the entire complex
assembly of ring members 114 and flat connecting members 118
taught by [Cox] is circumferentially and axially coextensive with
the graft 112. All other embodiments of [Cox] have all or at least
a major part of the graft and stent in overlapping relationship.
Appeal Br. 14 (underlining omitted, italicization added).
Appellant concludes:
The very large axial space disclosed by [Robichon] and Pierce
and the overlap disclosed by [Brown] and [Cox] do not suggest
a substantially end-to-end connection between the stent and the
graft without overlap, as set forth in the claims on appeal, and do
not suggest a substantially end-to-end relationship of the tubular
graft and the stent that includes a small axial space, as set forth
in the specification.
Appeal Br. 14–15 (underlining omitted).
In response, the Examiner reiterates the interpretation of the term
“end-to-end” in claim 1 as requiring only that the end of the stent is
connected to the end of the graft. Ans. 13. The Examiner characterizes
Appellant’s discussion of Cox as an attack on the references individually
rather than in the combination as proposed in the rejection. Id. at 14. The
Examiner finds Cox “shows that connectors (e.g., ‘axially projecting
extensions’) come in different forms and shapes, including ‘comprising a
radially extending surface’ or ‘hooking fasteners’, as recited in the
independent claims.” Id. at 14–15.
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In the Reply Brief, Appellant reiterates the argument for a narrow
interpretation of “substantially end-to-end”.
Appellant’s argument regarding a “substantially end-to-end
connection” and Robichon is unavailing. As discussed above, the broadest
reasonable interpretation of claim 1, in light of the Specification, does not
require any particular spacing between the stent and the graft. Thus,
Appellant’s argument is based on an unreasonably narrow interpretation of
claim 1.
Appellant’s contentions regarding Brown and Pierce do not address
the Examiner’s rejection, which relies on Robichon to teach “a plurality of
axially projecting extensions (plurality of wires 192) configured to connect
to the second axial end of the stent at a plurality of circumferentially spaced-
apart locations for achieving a substantially end-to-end fixed connection
without overlap between the stent and the graft.” Final Act. 10 (emphasis
added). Accordingly, Appellant does not apprise us of Examiner error as to
the Examiner’s reliance on Brown and Pierce.
We agree with Appellant that the portion of Cox identified by the
Examiner as disclosing a connection between a stent and graft (see Final
Act. 10; Cox 14:18–33), fails to disclose this feature. Accordingly, we do
not sustain the rejection of claim 1, and claims 2–4, 9, and 10 depending
therefrom, as unpatentable over Robichon and Cox. For the same reasons,
we do not sustain the rejection of independent claims 12 and 17, and
associated dependent claims 13–16, 18–22, 24, 27, and 28, as unpatentable
over Robichon and Cox.
Aside from the issues discussed above, Appellant introduces an
argument not made in the Appeal Brief, and which addresses findings the
Examiner articulated in the Final Office Action. Specifically, Appellant
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states “[a] new issue presented by the Examiner in the Response to
Arguments section of Examiner’s Answer is that the [Robichon] shows an
end-to-end connection of the stent and the graft without overlap.” Reply Br.
3. Appellant then argues, for the first time, that Robichon teaches a tandem
stent, and a graft covers a part of this stent, thus providing an overlap
between the stent and graft which is prohibited in claim 1. See id. 3–4.
However, as discussed supra, the Examiner’s finding that Robichon
discloses an end-to-end connection of a stent and a graft, without overlap, is
set forth in the Final Office Action. See Final Act. 10. Appellant does not
identify any reason as to why the “tandem stent” argument was not made in
the Appeal Brief in response to the findings stated by the Examiner in the
Final Office Action. See Reply Br. 3. Accordingly, Appellant’s “tandem
stent” argument has been waived.

CONCLUSION
The Examiner’s decision to reject claims 1–4, 9, 10, 12–22, 24, 27,
and 28 is affirmed.

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More specifically,
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
19–22 112 Indefiniteness 19–22
1–4, 9, 10,
12–22, 24,
27, 28
Nonstatutory
Double Patenting
Kerr 7105017,
Kerr 8257423,
Kerr 9050182,
Kerr 10105209
1–4, 9, 10,
12–22, 24,
27, 28

1–4, 9, 10,
12–22, 24,
27, 28
102 Pierce 1–4, 9, 10,
12–22, 24,
27, 28

1–4, 9, 10,
12–22, 24,
27, 28
103 Robichon, Brown, 1–4, 9, 10,
12–22, 24,
27, 28

1–4, 9, 10,
12–22, 24,
27, 28
103 Robichon, Pierce 1–4, 9, 10,
12–22, 24,
27, 28

1–4, 9, 10,
12–22, 24,
27, 28
103 Robichon, Cox 1–4, 9, 10,
12–22, 24,
27, 28
Overall
Outcome
1–4, 9, 10,
12–22, 24,
27, 28

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