Ex Parte Eidenschink

Board of Patent Appeals and Interferences

Mar 8, 2012

10932679 (B.P.A.I. Mar. 8, 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.
10/932,679 09/02/2004 Tracee E.J. Eidenschink 1001.1772101 2425
11050 7590 03/08/2012
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
03/08/2012 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 TRACEE E.J. EIDENSCHINK
__________

Appeal 2010-010768
Application 10/932,679
Technology Center 3700
__________

Before ERIC GRIMES, LORA M. GREEN, and ERICA A. FRANKLIN,
Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1, 4-11, 14-18, 20, and 23-28.
1
We have
jurisdiction under 35 U.S.C. § 6(b).

1
Claims 29-33 are also pending, but stand withdrawn from consideration
(App. Br. 3).
Appeal 2010-010768
Application 10/932,679

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STATEMENT OF THE CASE
Claims 1, 11, and 20 are the independent claims on appeal. Claim 1 is
representative of the claims on appeal, and reads as follows:
1. An inflatable intravascular filter, comprising:
an apical head;
one or more inflatable filter legs operatively coupled to the apical head,
each inflatable filter leg including a first end section, a second end section,
and an interior cavity,
wherein the apical head includes a one-way valve mechanism in fluid
communication with the interior cavity; and
wherein the one-way valve mechanism includes a releasable
connection to connect to an inflation catheter.

The following grounds of rejection are before us for review:
I. Claims 1, 4-8, 11, 14-16, 20, 23-25, and 28 stand rejected under 35
U.S.C. § 103(a) as being rendered obvious by the combination of
El-Nounou,
2
Allen,
3
and Rogers.
4

II. Claims 9, 17, and 26 stand rejected under 35 U.S.C. § 103(a) as
being rendered obvious by the combination of El-Nounou, Allen,
and Rogers, as further combined with Clark.
5

III. Claims 10, 18, and 27 stand rejected under 35 U.S.C. § 103(a) as
being rendered obvious by the combination of El-Nounou, Allen,
Rogers, and Clark as further combined with Abiuso.
6

We reverse.

2
El-Nounou et al., US 5,059,205, issued Oct. 22, 1991.
3
Allen et al., US 6,989,027 B2, issued Jan. 24, 2006.
4
Rogers et al., US 5,534,024, issued Jul. 9, 1996.
5
Clark et al., US 5,713,853, issued Feb. 3, 1998.
6
Abiuso et al., US 5,213,576, issued May 25, 1993.
Appeal 2010-010768
Application 10/932,679

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FINDINGS OF FACT
FF1. The present invention is drawn to an inflatable intravascular filter and
system (Spec. 1).
FF2. Figure 3 of the disclosure is reproduced below:

Figure 3 shows an intravascular filter 110 having an apical head 112, one or
more inflatable legs 114 “actuatable between a radially collapsed position
and a radially expanded position,” as well as a base member 128 (id. at 7).
FF3. The apical head 112 can include an inflation lumen 122, a guidewire
lumen 124, and an internal valve mechanism 126 (id.).
FF4. The Specification teaches that the inflatable legs have an interior
cavity 120 adapted to receive an inflation medium, and the base member 128
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Application 10/932,679

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can also be configured to inflate when pressurized with an inflation medium
(id.).
FF5. The Examiner finds that El-Nounou teaches “a filter having a plurality
of legs (16, see figure 1) and an apical head (14)” (Ans. 3).
FF6. El-Nounou is drawn to an intravascular filter (El-Nounou, col. 1, ll. 7-
9). Specifically, El-Nounou discloses that each leg has
securement means on its distal end with respect to the head, the
improvement being that the securement means on the distal end
of each leg being of multiple curvilinear configuration to define
a pad which permits hook engagement of a vessel wall in which
the filter is emplaced, while preventing penetration of that hook
through the vessel wall, which might otherwise damage body
tissue.

(Id. at col. 1, l. 66-col. 2, l. 6.)
FF7. Figure 1 of El-Nounou is reproduced below:
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Application 10/932,679

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Figure 1 shows a vena cava filter as taught by El-Nounou (id. at col. 3, ll.
15-17).
FF8. El-Nounou teaches that the legs 16 are “about 0.018 inches in
diameter fabricated from stainless steel or titanium wire, and are of about
2.02 inches in final length” (id. at col. 3, ll. 50-53).
FF9. The Examiner finds that El-Nounou does not teach that “the legs are
inflatable and include a base member” (Ans. 3).
FF10. The Examiner finds that Allen teaches “the use of inflatable legs (388)
and a base member (386) on an intravascular device to allow for greater
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control over expanding and contracting the filter (because the rate of
inflation can be controlled) and to provide greater contact area between the
vessel and the filter (due to the base member)” (Ans. 4).
FF11. Allen discloses “a percutaneously delivered temporary valve” (Allen,
col. 2, ll. 39-41).
FF12. Figure 9 is reproduced below:

Figure 9 “shows a percutaneously delivered temporary valve having
centering balloons” (id. at col. 3, ll. 22-23).
FF13. As to the device shown in Figure 9, Allen teaches:
The temporary valve assembly 380 comprises an elongate
member 382, a temporary valve 384 disposed on the elongate
member 382, and a centering balloon 386 supported by braces
388. The braces 388 are collapsible, and include a passage (not
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Application 10/932,679

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shown) communicating between a lumen in the elongate
member 382 and the interior of the centering balloon 386 for
inflation of the centering balloon 386. In one embodiment, the
braces 388 are made of the same material and are integral to the
centering balloon 386. The braces 388 inflate with the
centering balloon 386. In another embodiment, the braces 388
are made of a metal, such as stainless steel or a shape metal
alloy like nitinol. The centering balloon 386 can be
manufactured from a material such as polyethylene,
polyethylene terephthalate (PET), nylon, Pebax® polyether-
block co-polyamide polymers, or the like.

(Id. at col. 9, ll. 41-56.)
FF14. The Examiner concludes that it would have been obvious “to have
made the legs of El-Nounou [ ] inflatable, as taught by Allen [ ], to provide a
filter device that is more easily expandable and contractible in the
vasculature and to provide greater contact area between the vessel and the
filter to maintain the filter in it’s [sic] desired treatment location” (Ans. 4).
FF15. The Examiner finds that “the combination of El-Nounou [ ] and Allen
[ ] does not disclose a one-way valve in the apical head of the filter” (id.).
FF16. The Examiner finds that Roger teaches “the use of a one-way valve
(see figure 3) on an inflatable intravascular device to allow the device to be
deployed in the vessel lumen without deflating when the inflation tube is
removed” (id.).
FF17. The Examiner concludes that it would have been obvious to include a
one-way valve as taught by Rogers in the apical head of the filter suggested
by El-Nounou and Allen because that would allow the filter to be maintained
in an inflated, expanded state after the inflation tube is removed (Ans. 4).

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Application 10/932,679

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ANALYSIS
Appellant argues that the combination of El-Nounou and Allen would
not have arrived at the inflatable legs as required by the independent claims
of the present invention (see, e.g., App. Br. 8-10). Appellant asserts that the
inflatable braces of Allen are deployed in a planar array attached to an
elongated member, and “are not characterized as having mechanical
properties which might be satisfactory in the mechanically actuated filter
legs of El-Nounou” (Reply Br. 4). Appellant further asserts that the reason
for combining Allen with El-Nounou appears to be based on the properties
supplied by the centering balloon, and not the inflatable braces themselves
(id.).
Appellant further asserts that Rogers discloses a generally toroidal
chamber, which Appellants assert is most analogous to the centering
balloons of Allen (App. Br. 12). Appellant thus asserts that even if one were
to combine El-Nounou, Allen, and Rogers, the ordinary artisan would place
the valve of Rogers in the centering balloons of Allen where it could be in
fluid communication with the balloon and optional struts of Allen (id.).
We agree with Appellant that the combination of El-Nounou, Allen,
and Rogers does not render obvious the claimed intravascular filter and
system. Specifically, the Examiner has not provided adequate scientific
reasoning or evidence as to why the ordinary artisan would replace the metal
legs having a hook engagement at the end of the filter of El-Nounou with the
inflatable braces of Allen. Stated differently, the Examiner has not
explained why the ordinary artisan would use the inflatable planar braces of
Allen, which serve to stabilize the centering balloon of Allen, to replace the
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legs of El-Nounou, which radially expand upon deployment to allow the
hooks to engage with the vessel wall. Moreover, even if one were to
combine Allen with Rogers, at best one may obtain a filter with a centering
balloon (i.e., base member) secured to the end of the legs, wherein planar
inflatable braces are used to center the centering balloon, and thus the filter,
in the vasculature. As such, we also agree with Appellant that the Examiner
has not provided sufficient scientific reasoning or evidence as to why one
would then place the one-way valve mechanism in the apical head of El-
Nounou, rather than in the centering balloon of Rogers. We thus reverse the
obviousness rejection over the combination of El-Nounou, Allen, and
Rogers.
As to the remaining obviousness rejections, as the Examiner has not
explained how Clark and Abiuso overcome the above deficiencies of El-
Nounou, Allen, and Rogers, we are compelled to reverse those rejections as
well.

SUMMARY
We reverse the rejection of:
Claims 1, 4-8, 11, 14-16, 20, 23-25, and 28 under 35 U.S.C. § 103(a)
as being rendered obvious by the combination of El-Nounou, Allen, and
Rogers;
Claims 9, 17, and 26 under 35 U.S.C. § 103(a) as being rendered
obvious by the combination of El-Nounou, Allen, and Rogers, as further
combined with Clark; as well as
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Application 10/932,679

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Claims 10, 18, and 27 under 35 U.S.C. § 103(a) as being rendered
obvious by the combination of El-Nounou, Allen, Rogers, and Clark as
further combined with Abiuso.

REVERSED

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