Ex Parte Anderson et al

Board of Patent Appeals and Interferences

Jan 10, 2012

11444004 (B.P.A.I. Jan. 10, 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.
11/444,004 05/31/2006 Kent D. Anderson MVA1005USD1 5887
14018 7590 01/10/2012
Covidien
Attn: IP Legal Department
15 Hampshire Street, Bldg. 4A
Mansfield, MA 02048
EXAMINER
TRUONG, KEVIN THAO
ART UNIT PAPER NUMBER
3734
MAIL DATE DELIVERY MODE
01/10/2012 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 KENT D. ANDERSON, JOHN OSLUND,
RICHARD S. KUSLEIKA, and DANIEL O. ADAMS
__________

Appeal 2010-007560
Application 11/444,004
Technology Center 3700
__________

Before ERIC GRIMES, LORA M. GREEN, 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 vascular
protection device. The Examiner rejected the claims as anticipated. We
have jurisdiction under 35 U.S.C. § 6(b). We reverse.

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Application 11/444,004

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Statement of the Case
Background
“During vascular surgery or endovascular treatment of vessels . . .
debris such as plaque and blood clots can move from the treatment site
through a vein or artery, thus compromising the flow of blood at a location
distal from the treatment site” (Spec. 1, ll. 15-18). The Specification teaches
that “distal protection systems have been developed to prevent such debris
from embolizing in the vessel” (Spec. 1, ll. 19-20).
The Claims
Claims 1-3, 6, 9-11, and 14-16 are on appeal. Claim 1 is
representative and is reproduced below:
1. A protection device for use in a body lumen
comprising:
an elongate support member having a proximal
elongate segment and a distal elongate segment, the
proximal and distal elongate segments each having
proximal and distal ends, the proximal elongate segment
having a lumen sized to slidably receive a proximal
portion of the distal elongate segment; and
a functional element carried by the elongate
support member, the functional element being
expandable from a delivery configuration to an expanded
deployed configuration when the functional element is
deployed in the body lumen, the functional element
having a proximal end and a distal end, the proximal end
of the functional element being connected to the
proximal elongate segment and the distal end of the
functional element being connected to the distal elongate
segment at a location distal to the proximal end of the
distal elongate segment, the proximal end of the distal
elongate segment being slidably disposed within the
lumen of the proximal elongate segment such that the
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Application 11/444,004

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proximal end of the distal elongate segment is contained
within the lumen of the proximal elongate segment at a
first position when the functional element is in the
delivery configuration and at a second position when the
functional element is in the expanded deployed
configuration, a distance between the proximal end of the
distal elongate segment and the proximal end of the
proximal elongate segment being different in the first and
second positions.

The issue

The Examiner rejected claims 1-3, 6, 9-11, and 14-16 under 35 U.S.C.
§ 102(b) as anticipated by Daniel1 (Ans. 3-4).
The Examiner finds that Daniel teaches a “protection device (250) for
use in a body lumen comprising an elongate support member having a
proximal elongate segment (254) and a distal elongate segment (252)” (Ans.
3). The Examiner finds that Daniel teaches “the proximal end of the distal
elongate support segment (252) is contained within the lumen (256) of the
proximal elongate segment (254) when the filter (290) is in the delivery
configuration and when the functional element is in the expanded deployed
configuration” (id. at 3-4).
Appellants point out that claim 1 “recites that ‘the proximal end of the
distal elongate segment is contained within the lumen of the proximal
elongate segment when the functional element is in the delivery
configuration and when the functional element is in the expanded deployed
configuration’” (App. Br. 6). Appellants contend that “the Examiner has

1 Daniel et al., US 5,814,064, issued Sep. 29, 1998.
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Application 11/444,004

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erroneously concluded that this feature is disclosed in FIGS. 18A and 18B of
Daniel” (App. Br. 6).
Appellants “submit that when properly construed the drawings are not
inconsistent at all since FIGS. 18A to 18D are not meant to show the
proximal ends of either inner wire 252 or the tube 254. Rather, they show
the structure at the distal end of the device and omit the structure at the
proximal end.” (Id. at 8-9.) Appellants contend that a
person of skill in the art would understand that the only way
outer tube 254 can be moved distally with respect to inner
wire 252 is if the proximal end of inner wire 252 extends
beyond the proximal end of tube 254. That configuration
would allow an operator to grasp wire 252 while moving
tube 254 distally to achieve the deployed position shown in
FIG. 18B

(id. at 9).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Daniel anticipates claim 1?
Findings of Fact
1. Daniel teaches that
FIGS. 18A and 18B illustrate a distal protection
device 250 in accordance with another aspect of the present
invention. Device 250 includes inner wire 252 and outer
tube 254. In the preferred embodiment, inner wire 252 is a
core wire and outer tube 254 has a lumen 256 therein large
enough to accommodate longitudinal movement of inner
wire 252 therein. Also, in the preferred embodiment, inner
wire 252 has, coupled to its distal end 258, a spring tip 260.

(Daniel, col. 10, ll. 30-38.)
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2. Daniel teaches that in “order to deploy device 250, the outer
tube 254 is moved distally with respect to inner wire 252 such that the distal
ends 266 and 258 of wires 254 and 252 move longitudinally toward one
another” (Daniel, col. 10, ll. 58-62).
3. Figures 18A-D of Daniel are reproduced below:

“FIGS. 18A-18D illustrate an additional embodiment of a distal protection
device which is deployed and collapsed using a rolling flap configuration”
(Daniel, col. 3, ll. 4-6).
Principles of Law
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
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art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).
Analysis
The
Examiner submits that independent claim 1 as recited by
applicant should be given its broadest reasonable
interpretation. As a result, the section located at (reference
numeral 252 shown in figure 18A) of Daniel et al is being
interpreted as a proximal end of the distal elongate segment
(252) which slidably disposed within the lumen (256) of the
proximal elongate segment (254).

(Ans. 4.)
While we agree that claims should be given their broadest reasonable
interpretation in light of the Specification, Claim 1 requires “the proximal
end of the distal elongate segment being slidably disposed within the lumen
of the proximal elongate segment.” The term used in claim 1 is “proximal
end.” Claim 1 further recognizes that this “proximal end” is connected to
the “distal elongate segment.” While we appreciate the Examiner’s point
that the proximal end may be more than just the very terminus of the
elongate segment, and may include additional portions of the elongate
segment, the term “proximal end” must be reasonably interpreted as
including the proximal terminus or end itself of the elongate segment.
We agree with Appellants that “portions of both outer tube 254 and
inner wire 252 are omitted in FIGS. 18 A to 18D by ending those elements
at an arbitrary point shown as a wavy line at the left side of the drawing
figures” (App. Br. 8). We also agree with Appellants that “a person of skill
in the art would clearly understand that proximal portions of the device 250
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are not shown” (App. Br. 8). Thus, figures 18A-D do not show the proximal
end or terminus of wire 252, but simply show a portion of that wire.
It is therefore impossible to determine whether the proximal end or
terminus of the distal elongate segment in Daniel is located within the lumen
of the proximal elongate segment. Even if it were probable that the
Examiner was correct (which is not clearly the case in this situation),
probabilities or possibilities are insufficient to demonstrate inherency. See
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)
(“Inherency, however, 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.”) This is also not an obviousness rejection
where the Examiner could identify reasons why this modification would
have been obvious.
We are therefore constrained to reverse this anticipation rejection.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Daniel anticipates claim 1.
SUMMARY
In summary, we reverse the rejection of claims 1-3, 6, 9-11, and 14-16
under 35 U.S.C. § 102(b) as anticipated by Daniel.

REVERSED

cdc