Ex Parte Boyle et al

Board of Patent Appeals and Interferences

Jun 19, 2012

09967906 (B.P.A.I. Jun. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM J. BOYLE, THOMAS A. HASSING,
THOMAS H. MAJCHER, PAUL MULLER, ANUJA PATEL,
and GARY SCHNEIDERMAN
____________

Appeal 2011-005954
Application 09/967,906
Technology Center 3700
____________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
ERICA A. FRANKLIN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1, 7-18, 20, 23, 26-
29, 33, 40, 41, and 48-72 (App. Br. 4). We have jurisdiction under 35
U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to an embolic filtering device used to capture
embolic debris in a body vessel. Claim 1 is representative and is reproduced
in the “CLAIMS APPENDIX” of Appellants’ Brief.
Appeal 2011-005954
Application 09/967,906

2

Claims 1, 7, 9-18, 20, 23, 26, 40, 48-51, 53-59, 61-65, and 67-72
stand rejected under 35 U.S.C. § 103(a) as unpatentable over the
combination of Kleshinski
1
and Fischell.
2

Claims 8, 27-29, 33, 41, 52, 60, and 66 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Kleshinski, Fischell and
Wolff.
3

We reverse.

ISSUE

Does the preponderance of evidence on this record support a
conclusion of obviousness?

FACTUAL FINDINGS (FF)
FF 1. Examiner finds that Kleshinski suggests a filter device comprising,
inter alia, a “filtering element (26) [that] includes a proximal edge (at 24, the
location where the conical section 26 meets the cylindrical section 32) that is
attached to the distal strut assembly . . . [24]” (Ans. 3-4).

1
Kleshinski, US 6,245,012 B1, issued June 12, 2001.
2
Fischell et al., US 6,190,403 B1, issued February 20, 2001.

3
Wolff, US 5,104,404, issued April 14, 1992.
Appeal 2011-005954
Application 09/967,906

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FF 2. For clarity, we reproduce Examiner’s, annotated illustration of
Kleshinski’s Fig. 1 below:

Examiner’s annotated illustration, is a view in side elevation of Kleshinski’s
free standing filter with annotations that identify Examiner’s interpretation
of various portions Kleshinski’s filter (Kleshinski, col. 3, ll. 41-42; Ans. 7).
FF 3. Kleshinski suggests that “the fine mesh filter material projects
outwardly to form a flexible conical section 26 with an apex 28” and that
“when the stent expands . . . the mesh filter material forms a substantially
cylindrical section 32 which opens at the proximal end of the stent and a
flexible, closed conical section 26 which extends beyond the distal end of
the stent to catch and collect small particles” (Kleshinski, col. 4, ll. 12-20).
FF 4. Examiner finds that “Kleshinski does not disclose a bending region
connecting the proximal and distal strut assemblies” and relies on Fischell to
make up for this deficiency in Kleshinski (Ans. 4).
FF 5. Examiner finds that “the combination of Kleshinski with Fischell . . .
does not disclose the bending region has a different material composition
Appeal 2011-005954
Application 09/967,906

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than the strut assemblies” and relies on Wolff to make up for this deficiency
in the combination of Kleshinski and Fischell (Ans. 5).

ANALYSIS
Appellants contend that Kleshinski’s “filter element (26) has an
extensive length which starts at the proximal inlet opening (next to strut 18)
and extends to the distal end of the apex 28” (App. Br. 13; see also FF 2).
Appellants contend that “[o]ne skilled in the art would readily recognize that
the proximal edge and proximal opening of the filtering element (26) of the
Kleshinski device is disposed on this proximal portion of the filter device,
not the distal portion” (id. at 14). In contrast, Appellants contend that
All of the pending rejected claims include the recitation that the
proximal end of the filter element has a proximal edge which
forms a proximal inlet opening and that this proximal edge is
attached directly to either the distal strut assembly or the distal
deployment ring of the distal strut assembly.

(Id. at 12.) In this regard, Appellants contend that Kleshinski fails to suggest
the claimed structure (id. at 14; see also Reply Br. 4-7). We agree. Since
Kleshinski’s filter element 26 includes element 32, we are not persuaded by
Examiner’s assertion that “the cylindrical section (32)” is not part of
Kleshinski’s filter element (Ans. 7; Reply Br. 7-9; Cf. FF 3; see also FF 1
and 2).
Examiner failed to establish that Fischell alone or in combination with
Wolff make up for the deficiencies in Kleshinski (see generally App. Br. 16-
18).
Appeal 2011-005954
Application 09/967,906

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CONCLUSION OF LAW
The preponderance of evidence on this record fails to support a
conclusion of obviousness.
The rejection of claims 1, 7, 9-18, 20, 23, 26, 40, 48-51, 53-59, 61-65,
and 67-72 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Kleshinski and Fischell is reversed.
The rejection of claims 8, 27-29, 33, 41, 52, 60, and 66 under 35
U.S.C. § 103(a) as unpatentable over the combination of Kleshinski, Fischell
and Wolff is reversed.

REVERSED

cdc