10987602 (B.P.A.I. May. 14, 2012)

Ex Parte Petersen

Board of Patent Appeals and InterferencesMay 14, 2012

10987602 (B.P.A.I. May. 14, 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. 10/987,602 11/12/2004 Scott R. Petersen 1001.1464103 1557 11050 7590 05/14/2012 SEAGER, TUFTE & WICKHEM, LLC 1221 Nicollet Avenue Suite 800 Minneapolis, MN 55403 EXAMINER SEVERSON, RYAN J ART UNIT PAPER NUMBER 3731 MAIL DATE DELIVERY MODE 05/14/2012 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 SCOTT R. PETERSEN __________ Appeal 2010-011879 Application 10/987,602 Technology Center 3700 __________ Before DONALD E. ADAMS, ERIC GRIMES, and JEFFREY N. FREDMAN, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to devices for treating vascular conditions. The Examiner has rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE The Specification discloses devices for treating occluded blood vessels (Spec. 2:9-10). The Specification discloses that the devices allow the “placement of a filter in a blood vessel during a procedure to remove an App App occlu show Figu at 3: … an with 130 mech guid follo with inclu fixed mov mov whic direc eal 2010-0 lication 10 sion or st n below: re 1 shows 22-23). Th d an inne in a portio … is fixed anism 134 ewire 130” Claims 2 ws: 40. An an outer an inner in the oute a guidew ding a filt guidewir ly attache eable betw e freely in h the guid tions. 11879 /987,602 enosis” (id a “cross- e system r shaft 108 n of outer to filter 1 for selec (id. at 6:9 9-41 are o assembly, shaft defin shaft defin r shaft lum ire dispos er fixed to e gripping d to the ou een a rela a longitud ewire is co . at 2:11-1 sectional v “includes ” (id. at 5: shaft lume 26” (id. at tively limi -11). n appeal. comprisin ing an ou ing an inn en; ed within the guidew means po ter shaft, t xed config inal direct nstrained 2 2). Figure iew of a fi a catheter 15-17). A n 106” (id 6:7-8). Th ting the lo Claim 40 g: ter shaft lu er shaft lu the inner s ire; and sitioned w he guidew uration in ion and a c from mov 1 of the S lter manip 102 having “filter 12 . at 5:21-2 e system ngitudinal is represen men; men, the i haft lumen ithin the o ire grippin which the onstricted ement in a pecificati ulating sy an outer 6 … is dis 2) and a “ “also inclu movemen tative and nner shaft , the guid uter shaft g means r guidewire configura ll longitud on is stem” (id. shaft 104 posed guidewire des a stop t of reads as disposed ewire lumen and eversibly may tion in inal Appeal 2010-011879 Application 10/987,602 3 Issue The Examiner has rejected all of the claims on appeal under 35 U.S.C. § 103(a): claims 29-34 and 36-41 based on Daniel1 and Gambale,2 and claim 35 based on Daniel, Gambale and Ham.3 Since the same issue is dispositive for both of these rejections, we will consider them together. The Examiner finds that Daniel discloses “an assembly … comprising an outer shaft with a proximal portion (390), a distal portion (394), and a longitudinally collapsible portion (392). A guidewire (346) is disposed within the outer shaft and has a filter (352) disposed thereon.” (Answer 3.) The Examiner finds that Gambale discloses “the use of a guidewire constraint … having an outer shaft (68) and an inner shaft (71)” (id. at 3-4). The Examiner finds that “the shaft (68) of Gambale et al. is analogous to the outer shaft (390) of Daniel” (id. at 4) and concludes that it would have been obvious to include Gambale’s guidewire gripping mechanism on Daniel’s device “to prevent undesired movement of the guidewire” (id.). Appellant contends that the cited references would not have made obvious a gripping means positioned in the lumen of the outer shaft and fixedly attached to the outer shaft (id. at 5-6). The issue presented is: Does the evidence of record support the Examiner’s conclusion that combining Gambale’s guidewire gripping mechanism with Daniel’s assembly would have made obvious an apparatus 1 Daniel et al., US 6,001,118, Dec. 14, 1999 2 Gambale et al., US 5,060,660, Oct. 29, 1991 3 Ham et al., US 5,456,667, Oct. 10, 1995 App App with the o Find coup conf outer Figu of Fi shaft selec 7:2) first emb eal 2010-0 lication 10 a gripping uter shaft ings of Fa 1. The S led betwe igured suc shaft cau 2. Figur re 2 shows gure 1 (rep 3. The S 108 and p tively urg 4. Danie elongate m oli capturin 11879 /987,602 means fix lumen? ct pecificati en the inne h that rela ses the gri e 2 of the an enlarg roduced a pecificati roximal p e jaws 140 l disclose ember ha g device edly attac on disclose r shaft and tive axial m pper to gra Specificat ed cross-s bove) (id. on disclose ortion 120 of collet s a system s a proxim is mounted 4 hed to the s that a “g the outer ovement sp the gui ion is show ectional vi at 6:12-20 s that “rel of outer s 138 agains that “capt al end and proximat outer shaf ripper ma shaft. Pre between t dewire.” ( n below: ew of the ). ative mov haft 104 m t guidewir ures embo a distal en e the dista t and posit y be opera ferably, th he inner sh Spec. 3:15 stop mech ement betw ay be use e 130” (id li in a bod d. An ex l end.… W ioned in tively e gripper i aft and th -18.) anism 134 een inner d to . at 6:23 to y lumen. A pandable hen in the s e App App expa prox Figu captu l. 66 form col. posit Cont comp Figu prox 392 eal 2010-0 lication 10 nded posit imally ope 5. Figur re 23A sho ring devic -col. 17, l. 6. Danie ed of prox 17, ll. 3-4) 7. Danie ion … ove inued adv ression o 8. Figur re 23D sho imal shaft encompass 11879 /987,602 ion, the em ning mout e 23A of D ws an em e (352) an 11). l disclose imal shaft . l disclose r wire 346 ancement f mesh 392 e 23D of D ws the de 390 relativ es at least boli captu h.” (Dani aniel is sh bodiment d a device s that the “ 390, mesh s that “dev … until e of proxima ” (id. at co aniel is sh vice of Fig e to wire the mouth 5 ring devic el, col. 2, own belo that includ for retriev [r]etrieval portion 3 ice 388 is nd cap 39 l shaft 39 l. 17, ll. 2 own belo ure 23A “ 346 until t of filter 3 e forms a ll. 26-33.) w: es an expa ing it (38 device 38 92, and en inserted in 4 abuts po 0 relative t 5-31). w: with conti he interme 44” (id. at basket wi nded emb 8) (id. at c 8 is prefer d cap 394 the low p sitive stop o wire 346 nued adva diate port col. 17, ll th a oli ol. 16, ably ” (id. at rofile 396.… causes ncement o ion of mes . 40-44). f h App App in re Figu the m ll. 34 recei diagr 58 to tubu 52 an guid the r … tu tip o eal 2010-0 lication 10 9. Gamb sponse to p 10. Figu re 4 shows anner in w -36). “Th ve the pro ammatica the guide 11. Gam lar elemen d is conn 12. Gam ewire by th adial outsi bular segm f the guide 13. Figu 11879 /987,602 ale disclo ulling on re 4 of Ga “the conf hich the e sleeve 5 ximal end lly at 59 … wire.” (Id bale discl t 52.… Th ected … as bale discl e clamps de of the b ent 52. T wire to be re 4C of G ses a guid the pull w mbale is s iguration o tension is a 8 is forme of the gui serve to . at col. 8, oses that g e pull wire by solder oses that w 59, [and] t end … the hat applie nd.” (Id. a ambale is 6 ewire in w ire 46” (G hown belo f the prox pplied to d to defin dewire. Cl detachably ll. 4-11.) uidewire 2 46 extend indicated hen sleev he sleeve guidewir s a tension t col. 8, ll shown be hich “dista ambale, co w: imal end o the pull w e a bore 60 amp eleme clamp th 0 “is conn s through at 55.” (I e 58 “is cl 58 is bent e will stret to the pu . 13-20.) low: l tip can b l. 7, ll. 5- f the guid ire 46” (id dimensio nts, illustr e ends of t ected to … the flexib d. at col. 7 amped to with … tu ch in the r ll wire, cau e curved 6). ewire and . at col. 7, ned to ated he sleeve flexible le segmen , ll. 36-51 the be 52 on egion of sing the t .) App App Figu 60.… of a 67.… when Anal shaft lume lume be re guid devi mou that the s cove clam bend eal 2010-0 lication 10 re 4C show Each of collet havi [I]ntegra the rotata ysis Claim 40 s, and a gu n. Claim n and fixe versibly m ewire can Daniel d ce compris nted at its comprises haft along ring at lea Gambale ped there ing the sle 11879 /987,602 s a sleeve the clamps ng … a ro l bendable ble collet is directe idewire w 40 also req d to the ou oved betw move long iscloses an ing a guid distal end. a shaft for the guidew st the mou discloses so that a st eve. Gam 58 which , indicated tatable por fingers 69 portion 68 d to an ass ith a filter uires a gu ter shaft, w een two c itudinally emboli c ewire with Daniel’s insertion ire result th of the c a sleeve t eering wir bale disclo 7 contains “ generally tion 68 thr … are tig is tighten embly com fixed to it idewire gr here the onfigurati , and one i apturing sy an expan system als over the g s in a mesh apture bas o be placed e within th ses that th an eccent at 59, pre eaded to t htened ab ed.” (Id. a prising o disposed ipping me guidewire ons: one in n which it stem that dable capt o compris uidewire s portion o ket. over a gu e guidew e clamp m rically disp ferably is he fixed p out the gu t col. 8, ll uter shaft within the ans in the gripping m which th cannot. comprises ure basket es a retriev uch that ad f the retrie idewire a ire can be ay be in t osed bore in the form ortion idewire 10 . 51-62.) and inner inner shaf outer shaf eans can e a capture (filter) al device vancing val device nd pulled by he form of t t Appeal 2010-011879 Application 10/987,602 8 a collet having a rotatable portion threaded to a fixed portion that is attached to the sleeve, such that the fixed portion is tightened about the guidewire when the rotatable portion is tightened. The Examiner concluded that it would have been obvious to one of skill in the art to modify Daniel’s emboli capturing system with Gambale’s clamping mechanism in order to prevent undesired movement of the guidewire (Answer 4). Appellant argues that the gripping means must be both (1) “positioned within the outer shaft lumen” and (2) “fixedly attached to the outer shaft”. While the internal threads of Gambale do appear to form part of the outer shaft (68) as asserted by the Examiner, they also define the relevant portion of the lumen of outer shaft (68) and so cannot provide “a guidewire gripping means positioned within the outer shaft lumen” of which they define the innermost surface. (Emphasis added.) No portion of the apparatus which is fixedly attached to outer shaft (68), including the inner threads, appears to be capable of contacting, much less gripping the guidewire. (Appeal Br. 6). We agree with Appellant that the Examiner has not shown that the cited references would have made obvious the gripping means required by the claims on appeal. The proposed combination would result in the modifying Daniel’s device to include the clamp of Gambale’s device; thus, the outer shaft (390) of Daniel would include Gambale’s clamp with bendable fingers (69) and rotatable portion (68) that can be tightened onto a threaded portion (67). However, even if the bendable fingers were considered to be “fixedly attached” to the outer shaft, because they are part of it, Gambale’s clamp would not be “positioned within the outer shaft lumen,” as required by both of the independent claims on appeal. Appeal 2010-011879 Application 10/987,602 9 The Examiner responded to Appellant’s argument by interpreting Gambale’s guidewire gripping means to be “the combination of both the longitudinally extending fingers (69) [which contact the guidewire] and the threads that they engage … in the outer shaft.… [T]he claims do not require the entire guidewire gripping means to be positioned within the outer shaft lumen and fixedly attached to the outer shaft.” (Answer 5.) We do not agree with the Examiner’s interpretation of claim 40. The “outer shaft lumen” of Daniel’s device is the space bounded by the cylindrical walls of element 390. If the proximal end of Daniel’s device was modified to include Gambale’s clamp, the result would be a narrower, threaded portion of the outer shaft having threaded bendable fingers that could be compressed by a rotatable portion. That narrower portion would have a narrower lumen, similar to what is shown in Gambale’s Figure 4C, but the gripping means would not be positioned within the lumen. Neither of the Examiner’s proposed interpretations of the claims (Answer 5-6) persuade us that the claims can reasonably be interpreted to read on the proposed combination of Daniel and Gambale. Conclusion of Law The evidence of record does not support the Examiner’s conclusion that combining Gambale’s guidewire gripping mechanism with Daniel’s assembly would have made obvious an apparatus with a gripping means fixedly attached to the outer shaft and positioned in the outer shaft lumen. Appeal 2010-011879 Application 10/987,602 10 SUMMARY We reverse both of the rejections under 35 U.S.C. § 103(a). REVERSED lp