Ex Parte Linder et al

Board of Patent Appeals and Interferences

May 23, 2012

10936857 (B.P.A.I. May. 23, 2012)

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.
10/936,857 09/09/2004 Richard J. Linder 1001.1940102 1298
11050 7590 05/24/2012
SEAGER, TUFTE & WICKHEM, LLC
1221 Nicollet Avenue
Suite 800
Minneapolis, MN 55403
EXAMINER
LANG, AMY T
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
05/24/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD J. LINDER, DARYL R. EDMISTON,
and STEVEN W. JOHNSON
____________

Appeal 2011-002207
Application 10/936,857
Technology Center 3700
____________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1, 2, 4, 5, 7-16, 18,
19, 21, 22, 32, 33, and 35-44 (App. Br. 4; Ans. 2). We have jurisdiction
under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a filter device. Claims 1, 10, and 14 are
representative and are reproduced in the “CLAIMS APPENDIX” of
Appellants‟ Brief.
Appeal 2011-002207
Application 10/936,857

2
Claims 1, 2, 4, 5, 7, 9, 13, 15, 16, 18, 19, 21, 32, 33, and 35-44 stand
rejected under 35 U.S.C. § 102(e) as being anticipated by Leopold.
1

Claims 10-12 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Leopold and Karwoski.
2

Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Leopold and Wang.
3

Claims 1, 7, 8, 15, 16, 21, and 22 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Leopold and Kocur.
4

We reverse.

Anticipation:
ISSUE
Does the preponderance of evidence on this record support
Examiner‟s finding that Leopold teaches Appellants‟ claimed invention?
FACTUAL FINDINGS (FF)
FF 1. Appellants disclose that “percutaneous interventional procedures,
i.e., angioplasty, atherectomy, and stenting, often dislodge material from the
vessel walls. This dislodged material can enter the bloodstream, and may be
large enough to occlude smaller downstream vessels, potentially blocking
blood flow to tissue” (Spec. 3: ¶ [007] (emphasis added)).
FF 2. Appellants disclose that the pore size of their device‟s filter media
can vary as needed, so long as the pores are sized (i) so that the
pores do not compromise blood flow through the filter, i.e.,

1
Leopold et al., US 2002/0029077 A1, published March 7, 2002.
2
Karwoski et al., US 5,824,050, issued October 20, 1998.
3
Wang et al., US 2004/0122464 A1, published June 24, 2004.
4
Kocur, US 7,022,132 B2, issued April 4, 2006.
Appeal 2011-002207
Application 10/936,857

3
prevent or severely restrict blood flowing through the filter, and
(ii) collect material that could potentially occlude smaller
downstream vessels, potentially blocking blood flow to tissue
or result in stroke or infarction.

(Spec. 16-17: ¶ [054]).
FF 3. Leopold‟s device comprises a stent graft coupled to a guide means
(Ans. 3).
FF 4. For clarity, Leopold‟s FIG. 3 is reproduced below:

“FIG. 3 is a perspective view of [a mammalian implant] . . . in an expanded
state” (Leopold 2: ¶ [0026]).
FF 5. Leopold teaches that a “[s]tent-graft (106) generally includes a thin-
walled tube or graft member (124), a stent member (126), which can be a
self-expanding stent, and a ribbon or tape member (128) for coupling the
stent (126) and graft (124) members together” (Leopold 5: ¶ [0080]; see also
FF 4).
FF 6. Leopold teaches that “[t]he stent (126) and graft (124) members may
be heat bonded together, thus sealing in portions of the stent member (126)
that are between the tape member (128) and the graft member (124)” (id.).
FF 7. Leopold exemplifies a “graft member [that] is porous expanded
polytetrafluorethylene (PTFE)” (Leopold 6: ¶ [0089]).
FF 8. Examiner finds that “the graft material of Leopold is porous and
inherently „leaky‟ to some degree” (Ans. 9).
Appeal 2011-002207
Application 10/936,857

4
FF 9. Examiner finds “that the stent graft of Leopold overlaps the instantly
claimed filtering means since it is able to filter material from a blood stream,
especially when placed at the intersection of a bifurcated vessel,” as
illustrated in Examiner‟s illustration below:

Examiner illustrates “a stent placed at the intersection of a bifurcated vessel”
((id. at 3-4 (emphasis added); Final Rej. 9).
FF 10. Leopold‟s FIG. 14A, reproduced below, illustrates a bifurcated stent-
graft for placement at the intersection of a bifurcated vessel:

FIG. 14A is a perspective view of a bifurcated stent-graft” (Leopold 3: ¶
[0047]; see generally id. at 9: ¶¶ [0112]-[0121]).
Appeal 2011-002207
Application 10/936,857

5
ANALYSIS
According to Examiner, “[s]ince the combined elements of the
Leopold stent are sufficiently porous to allow some substances to pass
through but not others, it is Examiner‟s position that the Leopold stent is
capable of acting as a filtering means as claimed” (Ans. 8). We are not
persuaded. Instead, we agree with Appellants‟ contention that Leopold fails
to teach “the filter means of the pending claims” (App. Br. 12-13). Further,
in contrast to Examiner‟s reasoning, Leopold suggests the use of a bifurcated
stent-graft for placement at a bifurcated vessel (FF 10).
Further, notwithstanding Examiner‟s assertion to the contrary,
assuming, arguendo, that a person of ordinary skill in this art would
incorrectly place Leopold‟s stent at the intersection of a bifurcated vessel,
Leopold‟s stent would not filter material from the blood stream (Cf. FF 8-9;
see also Reply Br. 3). Instead, a person of ordinary skill in this art would
reasonably expect Leopold‟s stent to block blood flow in one vessel and
assuming, arguendo, that some material would be capable of passing
through Leopold‟s stent, that material passing through the stent would enter
the blood flow of the intersecting vessel.
Therefore, notwithstanding Examiner‟s assertions and contrary to
Appellants‟ Specification, a person of ordinary skill in this art would
reasonably expect that the placement of Leopold‟s non-bifurcated stent-graft
at the intersection of a bifurcated vessel stent would (i) compromise blood
flow through the filter, i.e., prevent or severely restrict blood flowing
through the filter, and (ii) fail to collect material that could potentially
occlude smaller downstream vessels, potentially blocking blood flow to
Appeal 2011-002207
Application 10/936,857

6
tissue or result in stroke or infarction (Cf. FF 2; see e.g., Appellants‟ Claim
11; see Reply Br. 2-7).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support
Examiner‟s finding that Leopold teaches Appellants‟ claimed invention.
The rejection of claims 1, 2, 4, 5, 7, 9, 13, 15, 16, 18, 19, 21, 32, 33, and 35-
44 under 35 U.S.C. § 102(e) as being anticipated by Leopold is reversed.

Obviousness:
The combination of Leopold and Karwoski:
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 11. Appellants disclose that the filter media “can have a variety of
differently sized holes or pores . . . ranging from about 50 microns to about
200 microns” (Spec. 16: ¶ [054]).
FF 12. Examiner finds that “Leopold discloses a filter device comprising a
filtering means and a guide member. The filtering means consists of a stent
strut structure and a filter media of PTFE graft material” (Ans. 6).
FF 13. Examiner finds that “Leopold does not specifically disclose the size
of the filter media” and relies on Karwoski to suggest “a graft material
comprised of ePTFE with a pore size from 50 to 500 microns” (id.).
ANALYSIS
Based on the combination of Leopold and Karwoski, Examiner
concludes that, at the time of Appellants‟ claimed invention, it would have
been prima facie obvious for a person of ordinary skill in this art to utilize
Appeal 2011-002207
Application 10/936,857

7
Karwoski‟s graft material on Leopold‟s stent (Ans. 6). We are not
persuaded for the reasons provided by Appellants (App. Br. 17-18; Reply
Br. 8-10).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support a
conclusion of obviousness. The rejection of claims 10-12 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Leopold and Karwoski is
reversed.

The combination of Leopold and Wang or Kocur:
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 14. Examiner relies on Leopold as discussed above (Ans. 6 and 7).
FF 15. Examiner finds that “Leopold does not disclose the catheter as
comprising a soft distal tip” and relies on Wang to suggest “that it is well
known in the art for catheters to comprise soft distal tips to prevent or
minimize injury to the vessel” (id. at 6).
FF 16. Examiner finds that “Leopold does not disclose a second restraining
means wherein the tether of the first restraining means secures the second
restraining means around the filtering struts” and relies on Kocur to make up
for this deficiency in Leopold (id. at 7).
ANALYSIS
Examiner fails to establish that either Wang or Kocur make up for the
deficiencies in Leopold discussed above (see App. Br. 19).

Appeal 2011-002207
Application 10/936,857

8
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support a
conclusion of obviousness. The rejection of claim 14 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Leopold and Wang is
reversed. The rejection of claims 1, 7, 8, 15, 16, 21, and 22 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Leopold and Kocur is
reversed.
REVERSED

alw