Ex Parte Wasicek

Board of Patent Appeals and Interferences

Jul 23, 2012

10616785 (B.P.A.I. Jul. 23, 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.
10/616,785 07/10/2003 Lawrence Wasicek 1001.1693101 2009
11050 7590 07/23/2012
SEAGER, TUFTE & WICKHEM, LLC
1221 Nicollet Avenue
Suite 800
Minneapolis, MN 55403
EXAMINER
NGUYEN, VI X
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
07/23/2012 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 LAWRENCE WASICEK
__________

Appeal 2011-009647
Application 10/616,785
Technology Center 3700
__________

Before ERIC GRIMES, STEPHEN WALSH, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a medical device. The Patent Examiner rejected the
claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.
Appeal 2011-009647
Application 10/616,785

2
STATEMENT OF THE CASE
Claims 1-8, 10-15, 19-21, 24-29, 33, 34, 38-40, and 44-46 are on
appeal. Claim 1 is representative and reads as follows:
1. A medical device, comprising:
an elongate shaft including a longitudinally extending proximal
section having a distal end, a longitudinally extending distal section having a
proximal end, and a connector connecting the proximal section and the distal
section of the elongate shaft, wherein the connector is fixedly secured to
both the proximal section and the distal section, securing the distal end of
the proximal section with the proximal end of the distal section; and
a filter coupled to the shaft.

The Examiner rejected the claims as follows:
 claims 1, 4-8, 10, 13-15, 19-21, 24, 27-29, 33, 34, 38-40, and 44-461
under 35 U.S.C. § 103(a) as unpatentable over Daniel2 (Ans. 3-4); and
 claims 2, 3, 6, 11, 12, 25, and 26 under 35 U.S.C. § 103(a) as
unpatentable over Daniel and Stevens3 (Ans. 4-5).

OBVIOUSNESS
The Issues
The Examiner found that Daniel’s Figure 4 illustrated a medical
device shaft as defined by Appellant’s claim 1, but that Figure 4 did not

1 Although claims 8, 14, 15, 19, 28, 29, and 33 were not included in the
statement of rejection at Ans. 3, they were discussed at Ans. 5-6 as if
obvious over Daniel. Appellant and the Examiner agree these claims should
be treated as rejected over Daniel. (See App. Br. 3 (Status of Claims) and
17-18 (Grounds of Rejection to be Reviewed on Appeal); Ans. 2 (Grounds
of Rejection to be Reviewed on Appeal, agreeing that Appellant’s statement
is correct)).
2 John Daniel et al., US 6,171,327 B1, Jan. 9, 2001.
3 John H. Stevens et al., US 6,029,671, Feb. 29, 2000.
Appeal 2011-009647
Application 10/616,785

3
show a filter coupled to the shaft. (Ans. 3.) Because Daniel’s Figure 9
showed a filter coupled to a shaft, the Examiner concluded it would have
been obvious to modify the shaft in Daniel’s Figure 4 “with a filter coupled
to the shaft as taught by Daniel in other embodiment (figure. 9) in order to
filter plaque, thrombus which releases into the blood stream during invasive
procedures . . . performed in blood vessels.” (Id.)
Appellant contends that Daniel did not “disclose ‘a connector
connecting the proximal section and the distal section of the elongate shaft,
wherein the connector is fixedly secured to both the proximal section and the
distal section ... and a filter coupled to the shaft’ as recited in independent
claim 1 and, mutatis mutandis, in independent claims 10, 24, 39, and 40.”
(App. Br. 18.) This issue is dispositive for both rejections, as both rejections
rely on findings that Daniel disclosed a shaft with connector fixedly secured
to proximal and distal sections and suggested a filter coupled to the shaft.

Findings of Fact
1. Daniel’s patent is titled “Intravascular Filter And Method.”
2. Daniel’s Figure 4 illustrated a shaft with connector in collapsed state:
FIG. 3 is a side view of an alternate catheter 112 having a
proximal shaft section 114 and a distal shaft section 116. Proximal
shaft section 114 is connected to distal shaft section 116 by a highly
flexible or braided section 132. When catheter 112 is withdrawn in the
direction of the arrow, braided section 132 is drawn tight for removal
from wire 26 and filter 21 as explained above with respect to catheter
12. As proximal shaft portion 114 is withdrawn proximally, braided
section 132 will be exposed outside of the body. Distal section 116
can then be advanced proximately relative to proximal section 114 as
shown in FIG. 4. Braided section 132 can then be collapsed to shorten
the overall length of catheter 112. The length of sections 114, 116 and
Appeal 2011-009647
Application 10/616,785

4
132 relative to wire 26 should be such that wire 26 can be grasped by
a physician at all times during removal of catheter 112.

(Daniel, col. 5, l. 58 – col. 6, l. 6.)
3. Daniel’s Figure 9 is reproduced here:

4. Daniel described Figure 9 as follows:
FIG. 9 is a cross sectional view of an alternate housing 118
having an atraumatic distal portion 140 which tapers distally over
filter 21 to a distal tip 120. . . . Tapered portion 140 is preferably
disposed over filter 120 [sic, 21] and then heat shrunk around filter 21.
Those skilled in the art will appreciate that heat shrink material such
as, for example, Teflon® would be suitable for forming taper portion
140.
Once housing 118 and filter 21 are positioned distally to the
treatment site, filter 21 can be deployed by withdrawing housing 118
proximally. Slit 144 will allow portion 140 to open or unwrap as
portion 140 is drawn proximally over filter 21.

(Daniel, col. 6, ll. 52-65.)

Analysis
A. We agree with the Examiner that Daniel’s Figure 4 illustrated a
connector fixedly secured to proximal and distal sections of a shaft.
Daniel’s explanation of the connection via braided section 132 in Figures 3
and 4 supports the finding. (FF 2.)
Appeal 2011-009647
Application 10/616,785

5
The second issue is whether Daniel discloses a filter “coupled to” a
shaft. The rejection relied on Daniel’s Figure 9 as evidence that Daniel
described a coupled shaft and filter. Figure 9 shows the catheter 112 with
distal housing 118 and “atraumatic distal portion 140 which tapers distally
over filter 21.” (FF 3, 4.) Daniel explains that distal portion 140 is “heat
shrunk” over filter 21, and later withdrawn to deploy the filter. (FF 4.) In
other words, housing 118 provides portion 140 as a cover that can slide
proximally to expose filter 21. Does this relation of parts establish that
Daniel described a filter coupled to a shaft? We agree with the Examiner
that it does. Catheter 112 is drawn as continuous with housing 118 and
portion 140. (FF 3.) Catheter 112, housing 118, and heat shrink portion 140
are coupled to each other, and anything else coupled to one of these three
parts is necessarily coupled to the others. When portion 140 is heat shrunk
to filter 21, it becomes coupled to the filter.
Appellant contends that “at no time does the disclosure of Daniel
indicate that filter 21 may be attached to catheter 112 instead of to wire 26.”
(App. Br. 18.) This argument is unpersuasive because claim 1 does not
require a filter “attached to” a catheter. Filter 21 is both attached to wire 26
and coupled, via heat shrinking, to portion 140 and thus to the shaft.
Appellant contends “there is no contact between [Daniel’s] filter 21
and the catheter 112 as those elements are designated in Fig. 9.” (App. Br.
20.) This argument is unpersuasive because claim 1 does not require
“contact” between filter and shaft; it requires only that they be coupled.
Appellant argues that the rejection’s interpretation of “coupled” is too
broad, and not supported by the dictionary. (App. Br. 20-21.) We disagree.
Daniel’s Figure 9 illustrated portion 140 and filter 21 heat shrunk together,
Appeal 2011-009647
Application 10/616,785

6
which meets the ordinary dictionary definitions of coupled, i.e., joined,
linked, connected, or fastened together. Appellant’s reliance on examples of
coupling mentioned in the Specification is also unpersuasive because
examples are not definitions. See In re Bigio, 381 F.3d 1320, 1325 (Fed.
Cir. 2004) (“Absent claim language carrying a narrow meaning, the PTO
should only limit the claim based on the specification or prosecution history
when those sources expressly disclaim the broader definition”).
Appellant contends that “[i]n the pending claims, the filter is
“fastened to” that shaft which includes the recited connector.” (App. Br.
21.) This argument is unpersuasive because claim 1 recites “coupled to,”
not “fastened to.”
Appellant argues that the rejection’s suggested modification would
render Daniel’s device unsatisfactory for its intended purpose. (App. Br. 21-
22.) This argument is unpersuasive because Daniel taught the connection as
an alternative embodiment for an intravascular filter. The Examiner was
entitled to presume Daniel’s disclosure was enabled. See Amgen Inc. v.
Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003).
Claims 4-8, 10, 13-15, 19-21, 39, 40, and 44-46 have not been argued
separately and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

B. Appellant contends that claim 24 and its dependent claims would not
have been obvious. (App. Br. 23-24.)
Claim 24 reads:
24. An embolic protection filtering device, comprising:
a filter wire including a core member and a covering disposed over at
least a portion of the core member, the core member including a proximal
portion and a distal portion, the proximal portion having a first flexibility
Appeal 2011-009647
Application 10/616,785

7
and including a distal end, the distal portion having a second flexibility
different from the first flexibility and including a proximal end;
a connector disposed over the distal end of the proximal portion and
the proximal end of the distal portion, the connector fixedly secured to each
of the proximal and distal portions of the core member; and
a filter assembly coupled to the filter wire, the filter assembly
including a filter frame, a filter membrane coupled to the filter frame, and
one or more struts extending between the filter frame and the filter wire.

With regard to claim 24, the rejection stated: (i) “Daniel et al, figures
4,9, teach the medical device as recited in claims 1, 10, 24 and 39 above
would also apply to these claims as well” (Ans. 3); and (ii) “Claims 24, 29,
and 40: Daniel discloses the invention substantially as claimed see the
above rejections of claims 1 and 10 and further including the limitations of a
filter assembly coupled to the filter wire (figures 7, 9), the filter assembly
includes a filter frame 118 or 124 and a filter membrane 122 coupled to the
filter” (id. at 5).
The rejection did not associate the particular features of claim 24, for
example, proximal and distal core portions with different flexibilities, with
corresponding features of Daniel’s device. We conclude that a prima facie
case of obviousness for claim 24 has not been established.
A rejection based on section 103 clearly must rest on a factual
basis . . . . we may not resolve doubts in favor of the Patent
Office determination when there are deficiencies in the record
as to the necessary factual bases supporting its legal conclusion
of obviousness.
In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). We also agree with
Appellant’s contention (see App. Br. 23) that the addition of the Stevens
reference did not cure the problem as applied to claim 24’s dependent claims
Appeal 2011-009647
Application 10/616,785

8
25 and 26. The rejection of claim 24 and its dependent claims 25-29, 33, 34,
and 38 is reversed.

SUMMARY
We affirm the rejection of claims 1, 4-8, 10, 13-15, 19-21, 39, 40, and
44-46 under 35 U.S.C. § 103(a) as unpatentable over Daniel.
We reverse the rejection of claims 24, 27-29, 33, 34, and 38 under
35 U.S.C. § 103(a) as unpatentable over Daniel.
We affirm the rejection of claims 2, 3, 6, 11, and 12 under 35 U.S.C.
§ 103(a) as unpatentable over Daniel and Stevens.
We reverse the rejection of claims 25 and 26 under 35 U.S.C. § 103(a)
as unpatentable over Daniel and Stevens.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

lp