Ex Parte Pavcnik et al

Board of Patent Appeals and Interferences

Mar 30, 2012

10662216 (B.P.A.I. Mar. 30, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/662,216 09/12/2003 Dusan Pavcnik 8627-314 9125
757 7590 03/30/2012
BRINKS HOFER GILSON & LIONE
P.O. BOX 10395
CHICAGO, IL 60610
EXAMINER
LANG, AMY T
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
03/30/2012 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 DUSAN PAVCNIK, BRIAN C. CASE, JOHN A. KAUFMAN,
MICHAEL L. GARRISON, and JACOB A. FLAGLE
__________

Appeal 2011-000881
Application 10/662,216
Technology Center 3700
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

BONILLA, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to a
retrievable filter comprising a filter having a plurality of divergent legs, a
stent, and first and second attachment members that releasably attach the
filter to the stent. The Examiner has rejected the claims as anticipated and
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse, and
enter a new ground of rejection.
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STATEMENT OF THE CASE
The claims are directed to a retrievable filter for use in a vessel of a
mammal where the retrievable filter comprises a filter having a plurality of
divergent legs, a first attachment member attached to an end of the legs, a
stent, and a second attachment member attached to the stent, where the two
attachable members are releasably attached to one another.
Claims 1, 3, 8-18, 20 and 22-44 are on appeal. Claims 1, 40 and 44
are independent. Independent claims 1 and 40 are representative.
Independent claim 1 recites (emphasis added):
1. A retrievable filter for filtering solid and semi-solid
materials from a liquid moving axially in a generally tubular vessel of
a mammal comprising:
a) a filter comprising an apical hub and a plurality of divergent
legs including first and second ends, at least one of the plurality of
divergent legs being secured at the first end to the apical hub;
b) a first attachment member separate from, but attached to the
second end of at least one of the plurality of divergent legs;
c) a stent; and
d) a second attachment member separate from, but attached to
the stent, the first and second attachment members being separate
from, but attachable to one another to releasably attach the filter to the
stent.
Independent claim 40 is similar to claim 1, but also recites a retrieval
connection member and an attachment wire that extends through at least one
lumen of the legs. Specifically, claim 40 reads (emphasis added):
40. A retrievable filter for filtering solid and semi-solid
materials from a liquid moving axially in a generally tubular vessel of
a mammal comprising:
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a) a filter comprising a plurality of divergent legs each having
an upstream end and a downstream end, each of the plurality of
divergent legs further comprising a cannula and a lumen;
b) an apical hub connecting each of the downstream ends of the
plurality of divergent legs;
c) a first attachment member separate from, but attached to at
least one of the plurality of divergent legs, the first attachment
member including at least one attachment wire, the at least one
attachment wire extends through at least one lumen of the plurality of
divergent legs and is attached to a retrieval connection member;
d) a stent configured to engage a wall of the generally tubular
vessel and become incorporated by endothelial tissue; and
e) a second attachment member separate from, but attached to
the stent, the first and second attachment members being separate
from, but attachable to one another to releasably attach the filter to the
stent,
wherein an upward motion applied to the retrieval connection
member disengages the at least one attachment wire of the first
attachment member from the second attachment member.
The claims stand rejected as follows:
• Claims 1, 3, 8-13, 16, 20, 22, 24-26, and 36 under 35 U.S.C.
§ 102(e) as anticipated by Yassour et al. (U.S. Patent No. 6,712,834 B2,
issued Mar. 30, 2004).
• Claims 18, 27-35, and 37-39 under 35 U.S.C. § 103(a) as obvious
over Yassour.
• Claims 23 and 40 under 35 U.S.C. § 103(a) as obvious over Yassour
in view of DeVries et al. (U.S. Patent No. 6,342,063 B1, issued Jan.29,
2002).
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• Claim 44 under 35 U.S.C. § 103(a) as obvious over Yassour in view
of Goldberg at al. (U.S. Publication No. 2002/0116024 A1, published Aug.
22, 2002.).
I.
Issue
Does the Examiner establish that Yassour discloses a retrievable filter
comprising a second attachment member that is “separate from, but attached
to the stent” as recited in claim 1, and therefore dependent claims 3, 8-13,
16, 20, 22, 24-26, and 36?
Findings of Fact
1. The instant Specification describes a retrievable filter 100 having two
parts, i.e., a stent part 200 for positioning and engaging the vessel walls and
a filter part 300. (Spec. 7, [0042].) The filter part 300 is releasably attached
to the stent part 200 by a locking mechanism 500 that comprises a stent
attachment means 520 and a filter attachment means 510. (Id.)
2. The Specification shows embodiments of filter part 300 in Figures 6
and 7:
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3. As described in the Specification, the stent part 200 includes a filter
attachment means 510 for attaching the filter part 300 to the stent part 200.
(Spec. 9, [0047].) As shown in Figure 6, at least one filter leg “comprises a
stent attachment means 520 for releasably engaging the filter attachment
means 510….” (Id. at 11, [0053].)
4. Yassour discloses a filtering device comprising a filtering unit made
of fine wires and connected by connecting legs to a stent (also called an
anchoring member). (Yassour, col. 7, ll. 9-18.)
5. In one embodiment, Yassour describes that “Anchoring member 102
is a sleeve-like stent with a front end 106 being slightly narrowed at portion
109.” (Id. at col. 8, ll. 6-8.)
6. In this embodiment, Yassour also teaches that the “Filtering unit 100
is a thimble-like metallic net, formed at its open end 112 with laterally
projecting hooks 114.” (Id. at col. 8, ll. 13-16.)
7. As also shown in Figures 6A-C and 6F of Yassour, anchoring member
102 corresponds to a stent, and 100 corresponds to a filtering unit. Hooks
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114 are attached to, and laterally project out from, the filtering unit. As
described in Yassour, “as seen in FIG. 6C, whereby hooks 114 engage with
the tapering portion 109 of the anchor member 102 [stent].” (Id. at col. 8, ll.
21-22.) Figure 6F in Yassour also shows this engagement.
8. Figures 6A-C and 6F of Yassour are reproduced below:

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Figures 6A-C and 6F depict different aspects of a filtering device comprising
a filtering unit 100 with laterally projecting hooks 114, and an anchoring
member 102 (a stent) that is slightly narrowed at portion 109.
9. When discussing Yassour in relation to claim 1, the Examiner states
that “the hooks [114] clearly overlap the instantly claimed first attachment
member and the narrowed portion [109] clearly overlaps the instantly
claimed second attachment member.” (Ans. 4, 9.)
10. The Examiner further states: “Although the narrowed portion is
attached to the stent, it is still separate from the stent since it comprises a
different region with a distinct diameter and a separate function.” (Id. at 4
and 9.)
11. Regarding the narrowed portion 109 in particular, the Examiner states
that it is “narrower than the stent since it is not used to hold a vessel but
instead to connect to the filter.” Thus, according to the Examiner, the
narrow portion 109 is separate from the stent. (Id. at 9-10.)
Principles of Law
An invention lacks novelty under 35 U.S.C. § 102 if each and every
element of the claim is described or disclosed, either explicitly or inherently,
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in a single prior art reference. In re Schreiber, 128 F.3d 1473, 1477 (Fed.
Cir. 1997); Finnigan Corp. v. International Trade Comm’n, 180 F.3d 1354,
1365 (Fed. Cir. 1999). Such a reference is said to “anticipate” the invention.
The Examiner bears the initial burden, on review of the prior art or on any
other ground, of presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 1445 (1992).
Analysis
The Examiner concludes that the narrowed portion 109, i.e., a tapering
portion of the stent, in Yassour corresponds to the “second attachment
member separate from, but attached to the stent” as recited in claim 1. (FF
9-11.) We note that the instant Specification does not define what “separate
from, but attached to” means. That said, this phrase has an ordinary
meaning, i.e., it refers to something that is separate (i.e., a separate and
distinct prior to attachment) but attached to something else. In contrast to
the hooks 114, which are separate from, but attached to the filtering unit in
Yassour, the narrowed portion 109 in Yassour is not “separate from, but
attached to the stent” as the quoted phrase would be normally understood in
the art. As shown in the Figures and described in the Yassour specification,
the narrowing portion 109 is part of the stent itself, albeit angled inward.
(FF 5-8.) Thus, we disagree with the Examiner that the narrowed portion
109 is a “second attachment member separate from, but attached to the
stent.” The narrowed portion 109 is attached but is not “separate from, but
attached” to the stent, i.e., the anchoring member 102 in Yassour.
The Examiner points to nothing else in Yassour that might be a
“second attachment member separate from, but attached to the stent.”
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Because the Examiner has failed to show that Yassour discloses the second
attachment member recited in claim 1, the Examiner has failed to establish
by a preponderance of the evidence that Yassour anticipates this claim.
Likewise, the Examiner has failed to establish anticipation of claims 3, 8-13,
16, 20, 22, 24-26, and 36, which each depend on claim 1, and therefore also
recite the same second attachment member element.
Conclusion of Law
The Examiner fails to establish that the filtering device comprising the
narrowed portion 109 in Yassour discloses a retrievable filter comprising a
second attachment member that is “separate from, but attached to the stent”
as recited in claim 1. Thus, the Examiner fails to establish that Yassour
anticipates claim 1, or claims 3, 8-13, 16, 20, 22, 24-26, and 36, which
depend on claim 1.
II.
Issue
Does the Examiner establish that Yassour, DeVries and/or Goldberg
disclose or suggest a retrievable filter comprising a second attachment
member that is “separate from, but attached to the stent” as recited in
independent claims 1, 40, and 44, and dependent claims 18, 23, 27-35, and
37-39?
Principles of Law
“An examiner bears the initial burden of presenting a prima facie case
of obviousness.” In re Huai-Hung Kao, 639 F.3d 1057, 1066 (Fed. Cir.
2011).
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Analysis
When discussing the obviousness rejections of claims 18, 23, 27-35,
37-39, 40, and 44 (Ans. 5-8), the Examiner does not indicate how Yassour,
DeVries and/or Goldberg disclose or suggest a second attachment member
that is “separate from, but attached to the stent” as recited in claims 1, 40,
and 44. Rather, the Examiner only addresses this element with regard to the
anticipation rejection of claim 1 and other dependent claims based on
Yassour. The Examiner concludes that the second attachment is expressly
taught in Yassour via the narrowed portion 109 of the stent, as shown in
Figure 6 (Ans. 4, 9). For the reasons discussed above, we disagree with this
conclusion.
Also for the same reasons discussed above, we find that the Examiner
has failed to establish a prima facie case of obviousness regarding claims 1,
40, or 44, or claims 18, 23, 27-35, and 37-39, which each depend on claim 1.
Beyond assertions made in relation to the anticipation rejection of claim 1
which we address in the section above, the Examiner has not indicated that,
nor suggested why, a skilled artisan would consider the “second attachment
member separate from, but attached to the stent” in claim 1 to be obvious in
light of the disclosure in Yassour of the narrowed portion 109 of the stent.
Nor has the Examiner suggested that DeVries discloses or suggests this
element in relation to claims 23 and 40, or that Goldberg discloses or
suggests this element in relation to claim 44.
Conclusion of Law
The Examiner fails to establish that Yassour, DeVries and/or
Goldberg disclose or suggest a retrievable filter comprising a second
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attachment member that is “separate from, but attached to the stent” as
recited in claims 1, 40, and 44. Thus, the Examiner fails to establish that
claims 1, 40, and 44, as well as claims 18, 23, 27-35, and 37-39, which
depend on claim 1, are prima facie obvious over Yassour, DeVries and/or
Goldberg.
III.
Issue
Does the Examiner establish that DeVries discloses or suggests a
retrievable filter comprising a first attachment member having an attachment
wire that extends through a lumen of a filter leg, where the wire is attached
to a retrieval connection, as recited in claim 40?
Additional Findings of Fact
12. DeVries describes removable thrombus filters. (DeVries, col. 1, ll. 6-
10.) The thrombus filter includes a body member 22 and a plurality of
elongated struts 24 (or legs). (Id. at col. 4, ll. 18-22.)
13. Figure 3 in DeVries is reproduced below:
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Figure 3 depicts a portion of a thrombus filter, and specifically an anchor
member 30 comprising a stem 32, which is attached through a sacrificial link
40 to a free end of a strut 24.
14. As stated in DeVries, “[s]acrificial link 40 includes a first bore 42 and
a second bore 44.” (Id. at col. 5, ll. 26-28.) Figure 3 shows that a first
interference fit is formed between stem 32 of anchor member 30 and the first
bore 42 of sacrificial link 40, and a second interference fit is formed between
free end 28 of strut 24 and the second bore 44 of sacrificial link 40. (Id. at ll.
29-33.) In addition, “[o]pening 41 of insulating layer 39 allows direct
contact between sacrificial link 40 and the patients blood.” (Id. at ll. 51-53.)
15. The Examiner states with regard to Figure 3 in DeVries that “each
filter leg (24) comprises a cannula (24) having a distal lumen” and that
“[a]ttachment wire (32) is disposed within the filter lumen and is attached at
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a retrieval connection point (41). (Ans. 7.) The Examiner also states that
because “link (40) comprises a bore/lumen, the filter leg then also comprises
this bore/lumen.” (Id. at 10.)
Analysis
As recited in pending claim 40, “at least one attachment wire extends
through at least one lumen of the plurality of divergent legs and is attached
to a retrieval connection member.” The Examiner states that stem 32 in
Figure 3 of DeVries corresponds to the attachment wire of claim 40, and that
stem 32 “extends through” a lumen of a filter leg via stem 32 being inserted
in first bore 42. (FF 15.) We disagree with this conclusion.
As shown in Figure 3 in DeVries, strut 24 corresponds to a filter leg
which is attached via a sacrificial link 40 to stem 32. Stem 32 is inserted in
first bore 42, while strut 24 is inserted in second bore 44, of the sacrificial
link 40. Notably, bores 42 and 44 are separate and apart from each other
within the link. Figure 3 does not show that any part of stem 32 is located
within the lumen of filter leg 24. As such, rather than “extending through”
the lumen of strut 24, stem 32 and strut 24 are separate and attached via the
sacrificial link 40.
Other than state that DeVries discloses that “[a]ttachment wire (32) is
disposed within the filter lumen” as discussed above, the Examiner does not
indicate that, or suggest why, a skilled artisan would have considered it
obvious or otherwise have been motivated to insert stem 32 into the lumen
of strut 24, in light of an absence of such disclosure in DeVries or Yassour.
Thus, for this additional reason, we conclude that the Examiner has not
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established a prima facie case of obviousness of claim 40 over Yassour in
view of DeVries.
Conclusion of Law
The Examiner fails to establish that DeVries discloses or suggests a
retrievable filter comprising a first attachment member having an attachment
wire that extends through a lumen of a filter leg, where the wire is attached
to a retrieval connection, as recited in claim 40. Thus, for this additional
reason, the Examiner fails to establish that claim 40 is prima facie obvious
over Yassour in view of DeVries.
NEW GROUND OF REJECTION
Under the provisions of 37 C.F.R. § 41.50(b), we enter the following
new ground of rejection: Claim 1 is rejected under 35 U.S.C. § 102(e) as
anticipated by Yassour. We have reversed the Examiner’s rejection based
on Yassour because we disagree with how the Examiner interprets elements
in Yassour’s filtering device as corresponding to elements in the claimed
invention. As discussed above, the Examiner assumes that hooks 114 in
Yassour correspond to the recited first attachment member, and that the
narrowed portion 109 in Yassour corresponds to the second attachment
member. (Ans. 4, 9.) Especially in light of how Appellants describe their
own invention in the Specification, we interpret things in the reverse.
As shown in Figures 6 and 7 of the instant Specification, filter 300 has
a plurality of divergent legs, where each leg has a stent attachment means
520. (FF1-3; Spec. 11, [0053]; Figure 6.) The stent attachment means is
releasably engaged with a filter attachment means 510, which is part of the
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stent. (FF 1-3; Spec. 9, [0047]; 11, [0053].) The Specification and Figures 6
and 7, indicate the stent attachment means 520 (attached to the filter legs)
corresponds to the “second attachment member separate from, but attached
to the stent” as recited in claim 1. The filter attachment means 510 (attached
to the stent) corresponds to the “first attachment member separate from, but
attached to the second end of at least one of the plurality of divergent legs.”
In light of this description in the Specification, we conclude that
hooks 114 (attached to the filter) in Yassour correspond to the “second
attachment member separate from, but attached to the stent” as recited in
claim 1. In addition, the narrowed portion 109 (part of the stent) in Yassour
corresponds to the “first attachment member separate from, but attached to
the second end of at least one of the plurality of divergent legs” as recited in
claim 1. We therefore find that Yassour anticipates claim 1, although based
on different claim interpretation than relied on by the Examiner.

SUMMARY
We reverse the rejection of claims 1, 3, 8-13, 16, 20, 22, 24-26, and
36 under 35 U.S.C. § 102(e) as anticipated by Yassour. We likewise reverse
the rejection of claims 18, 27-35, and 37-39 under 35 U.S.C. § 103(a) as
obvious over Yassour. In addition, we reverse the rejection of claims 23 and
40 under 35 U.S.C. § 103(a) as obvious over Yassour in view of DeVries, as
well as claim 44 as obvious over Yassour in view of Goldberg.
We enter a new ground of rejection of claim 1 as anticipated by
Yassour. If prosecution in this case is resumed, the Examiner should
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consider whether other claims should be rejected as anticipated by Yassour
or as obvious over the prior art.
Time Period for Response
This decision contains a new ground of rejection pursuant to 37 CFR
§ 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 CFR §
41.50(b) provides "[a] new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review."
37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

REVERSED; 37 C.F.R. § 41.50(b).

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