Ex Parte Ungs

Board of Patent Appeals and Interferences

Sep 7, 2012

11184644 (B.P.A.I. Sep. 7, 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.
11/184,644 07/19/2005 Mark T. Ungs 1001.1516102 2977
11050 7590 09/07/2012
SEAGER, TUFTE & WICKHEM, LLC
1221 Nicollet Avenue
Suite 800
Minneapolis, MN 55403
EXAMINER
STRANSKY, KATRINA MARIE
ART UNIT PAPER NUMBER
3734
MAIL DATE DELIVERY MODE
09/07/2012 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 MARK T. UNGS
__________

Appeal 2011-010493
Application 11/184,644
Technology Center 3700
__________

Before ERIC GRIMES, FRANCISCO C. PRATS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a distal
protection device. The Examiner rejected the claims as anticipated. We
have jurisdiction under 35 U.S.C. § 6(b). We reverse.

Appeal 2011-010493
Application 11/184,644

2
Statement of the Case
Background
The Specification teaches that “the present invention pertains to
devices and methods for filtering embolic debris from a blood vessel” (Spec.
1, ll. 7-9).
The Claims
Claims 40-45 and 47-50 are on appeal. Independent claim 40 is
representative and reads as follows:
40. A distal protection device, comprising:
a filter frame with a first contracted state and a second
expanded state;
a blood permeable filter material with an inner
surface;
wherein at least a portion of the filter frame is in
contact with the inner surface in the second state; and
wherein at least a portion of the portion of the filter
frame that is in contact with the inner surface in the second
state is not in contact with the inner surface in the first state.

The issue

The Examiner rejected claims 40-45 and 47-50 under 35 U.S.C. §
102(b) as anticipated by Epstein
1
(Ans. 3-4).
The Examiner finds
in figures 18, 19, and 24 of Espstein [sic] et al., a filter frame
(309) disposed on a distal end of a first elongate member
(320); wherein the first elongate member (320) is at lest [sic
least] partially disposed within lumen (306) of a second
elongate member (302, includes hypotube 328); a blood
permeable filter material (311) (see col. 19, lines 26-28 and

1
Epstein et al., US 5,951,589, issued Sep. 14, 1999.
Appeal 2011-010493
Application 11/184,644

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col. 20, lines 60-63 recite the filter material can be made of
permeable material) disposed at distal end of the elongate
member (302,328); wherein at least a portion of the filter
frame (311) is in contact with the inner surface of the filter
material (311) in the expanded state (as shown in fig. 24)
and not in contact with in the inner surface of the filter
material (311) in the un-expanded state (as shown in fig.
18).

(Ans. 3-4.)
Appellant contends that “[n]owhere does Epstein disclose „a blood
permeable filter material‟. . . Epstein does not appear to teach that the device
has utility with respect to filtration and repeatedly refers to the membrane as
impermeable or impervious to blood” (App. Br. 5). Appellant contends that
“permeability to blood is not an inherent or even desirable characteristic of
the permeable membranes mentioned. For example, the permeable
membrane may be gas permeable without being a blood permeable
membrane” (id.). Appellant quotes Epstein, who teaches the “membrane 36
should be substantially impermeable to blood and other liquids” (Epstein,
col. 6, ll. 10-11.)
The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s conclusion that Epstein teaches “a blood permeable
filter material” as required by claim 40?
Findings of Fact
1. Epstein teaches “a closure device and method for percutaneous
access and occlusion of vascular access sites, other puncture sites and
natural tracts in the human body which will make possible a positive seal of
Appeal 2011-010493
Application 11/184,644

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the puncture site or tract promoting rapid healing of the puncture site or
tract” (Epstein, col. 1, ll. 37-41).
2. Figure 18 of Epstein is reproduced below:
“FIG. 18 is a side-elevational view partially in section of another
embodiment of the closure or expansile device incorporating the present
invention” (Epstein, col. 3, ll. 25-27).
3. Epstein teaches that the “membrane 36 [which corresponds to
membrane 311 in Fig. 18] should be substantially impermeable to blood and
other liquids” (Epstein, col. 6, ll. 10-11).
4. Epstein teaches that:
Since it is desired that this membrane 311 be very flexible it
has a wall thickness ranging from 0.001" to 0.015" and
preferably about 0.004". It can be formed of any suitable
flexible material such as an elastomeric or a non-elastomeric
material including latex and silicone. The membrane 311
can also be made of an impermeable or a permeable material
providing for multiple uses of the device.

(Epstein, col. 19, ll. 21-27.)
Appeal 2011-010493
Application 11/184,644

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5. Epstein teaches that as “shown, the membrane 311 is
substantially impermeable to blood and other liquids” (Epstein, col. 19, ll.
40-41).
6. Epstein teaches that the “impermeable membrane 311 of the
expansile assembly 307 can be caused to assume various configurations
including a planar disk-like configuration as shown by the dotted-line
position in FIG. 18” (Epstein, col. 20, ll. 16-19).
7. Epstein teaches that “different membrane materials may be
utilized in order to construct permeable or impermeable assemblies for
different functions” (Epstein, col. 20, ll. 61-63).
Principles of Law
“A single prior art reference that discloses, either expressly or
inherently, each limitation of a claim invalidates that claim by anticipation.”
Perricone v. Medicis Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir.
2005).
“Inherency ... may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.” MEHL/Biophile Int’l. Corp. v. Milgraum,
192 F.3d 1362, 1365 (Fed. Cir. 1999).
Analysis
While Epstein clearly teaches that the membrane may be composed of
a permeable or an impermeable material (FF 4, 7), those teachings do not
clearly identify to which substances the membrane should be permeable or
impermeable. As Appellant correctly notes “the permeable membrane may
be gas permeable without being a blood permeable membrane” (App. Br. 5).
Appeal 2011-010493
Application 11/184,644

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We balance these generic teachings against specific statements by
Epstein that “the membrane 311 is substantially impermeable to blood and
other liquids” (Epstein, col. 19, ll. 40-41; FF 5). We therefore conclude that
the most reasonable interpretation is that Epstein‟s discussion of permeable
membranes does not include blood permeable membranes since Epstein
twice teaches membranes which are blood impermeable (FF 3, 5). See In re
Brink, 419 F.2d 914, 917 (CCPA 1970) (“if a reference is ambiguous and
can be interpreted so that it may or may no [sic] constitute an anticipation of
an appellant‟s claims, an anticipation rejection under 35 U.S.C. § 102 based
upon the ambiguous reference is improper.”).
Conclusion of Law
The evidence of record does not support the Examiner‟s conclusion
that Epstein teaches “a blood permeable filter material” as required by claim
40.
SUMMARY
In summary, we reverse the rejection of claims 40-45 and 47-50 under
35 U.S.C. § 102(b) as anticipated by Epstein.

REVERSED

cdc