Ex Parte Boismier et al

Board of Patent Appeals and Interferences

Mar 3, 2009

10410896 (B.P.A.I. Mar. 3, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DENNIS A. BOISMIER and STEFAN PALLAZZA
__________

Appeal 2009-0085
Application 10/410,896
Technology Center 3700
__________

Decided:1 March 3, 2009
__________

Before ERIC GRIMES, RICHARD M. LEBOVITZ, and STEPHEN
WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
embolic protection filter for temporary use in a blood vessel. The Examiner

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-0085
Application 10/410,896

rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and enter a new ground of rejection.
STATEMENT OF THE CASE
The invention relates to embolic protection devices. (Spec. 1.)
Appellants describe an embolic protection filter made of two materials, one
of which is radiopaque. (Id.) The claimed filter comprises a support
structure made of composite material having an inner core of radiopaque
material, and an outer layer that can be a shape-memory or superelastic
material.
Claims 1, 2, 5-7, 9-10, 13-18, 21-23, 25, 26 and 29-34 are on appeal.2
The Examiner rejected the claims as follows:
• claims 1, 2, 5-7, 9, 10, 14-18, 21-23, 25, 26 and 30-34 are rejected
under 35 U.S.C. § 103 as unpatentable over Heath3 in view of
Khosravi;4 and
• claims 13 and 29 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Heath and Khosravi and further
in view of Bagaoisan.5
Appellants argue the claims in four groups:
• claims 1, 2, 5-7, 9-10 and 14-16;
• claims 17, 18, 21-23, 25, 26 and 30-33;
• claims 13 and 29; and

2 Claims 3, 4, 8, 11, 12, 19, 20, 27 and 28 are also pending but have been
withdrawn from consideration by the Examiner. (App. Br. 3).
3 Int’l Application WO 93/19803 by Heath et al., published Oct. 14, 1993.
4 U.S. Patent No. 6,129,739, issued to Farhad Khosravi, Oct. 10, 2000.
5 U.S. Patent No. 6,270,477 B1, issued to Bagaoisan et al., Aug. 7, 2001.
2
Appeal 2009-0085
Application 10/410,896

• claim 34.
Claims 2, 5-7, 9-10 and 14-16 will stand or fall with claim 1; claims 18, 21-
23, 25, 26 and 30-33 will stand or fall with claim 17; and claim 29 will stand
or fall with claim 13. 37 C.F.R. § 41.37(c)(1)(vii). The four representative
claims read as follows:
1. An embolic protection filter attachable to a guidewire for
temporary placement within a blood vessel to collect embolic debris during a
medical procedure, said embolic protection filter comprising:

a support structure including a composite material having an outer
layer formed of a first material, and an inner core layer disposed within the
outer layer and formed of a second material different than the first material,
the second material having a radiographic density greater than the first
material to enhance the visibility of the embolic protection filter; and

a filter membrane operatively coupled to the support structure.

13. The embolic protection filter of claim 1, wherein said support
structure includes an anti-thrombogenic coating.

17. An embolic protection filter attachable to a guidewire for
temporary placement within a blood vessel to collect embolic debris during a
medical procedure, said embolic protection filter comprising:

a support structure forming a proximal mouth of the embolic
protection filter, said support structure including a composite material
having an outer layer formed of a first material, and an inner core layer
disposed within the outer layer and formed of a second material different
than the first material, the second material having a radiographic density
greater than the first material to enhance the visibility of the embolic
protection filter; and

a filter membrane operatively coupled to the support structure.

3
Appeal 2009-0085
Application 10/410,896

34. An embolic protection filter attachable to a guidewire for
temporary placement within a blood vessel to collect embolic debris during a
medical procedure, said embolic protection filter comprising:

a composite wire loop forming a proximal mouth of the embolic
protection filter, said composite wire loop comprising at least one outer layer
formed of a first material, and an inner layer formed of a second material
different than the first material, the first material formed of a superelastic
alloy having shape-memory characteristics at body temperature, the second
material having a radiographic density greater than the first material to
enhance the visibility of the embolic protection filter; and

a filter membrane operatively coupled to the support structure.

OBVIOUSNESS
The Issue
The Examiner rejected most of the claims as obvious over the
combined teachings of the Heath and Khosravi references. The Examiner
found that Heath’s embolic filter disclosed all the elements of claims 1, 17
and 34, except for comprising a membrane. (Ans. 4.) Khosravi disclosed an
embolic filter membrane that enhanced filtration. (Id.) The Examiner
concluded that one of skill in the art at the time of the invention would have
found it obvious to add Khosravi’s membrane to Heath’s filter for “enhanced
filtration ability.” (Id.)
Claim 13 requires the filter support structure to include an anti-
thrombogenic coating that Heath and Khosravi did not teach. Bagaoisan
taught that a variety of anti-thrombogenic coatings were available for use on
catheters used for embolic containment. (Ans. 4.) The Examiner concluded
it would have been obvious at the time for one of ordinary skill in the art to
add a thrombogenic coating to the combined filter suggested by Heath and
4
Appeal 2009-0085
Application 10/410,896

Khosravi, “thereby preventing the body from forming clots and rejecting the
device.” (Ans. 4-5.)
Appellants contend that “modifying the vena cava filter disclosed in
Heath to include a filter membrane as taught in Khosravi would present
detrimental consequences which may result in impairment or death of the
patient in which the vena cava filter is placed.” (App. Br. 7-8). According
to Appellants, Heath’s filter is “permanent,” in contrast to the claimed filter
“for temporary placement,” and Heath’s filter was configured to allow
smaller clots to pass through rather than capture them. (Id. at 9.) Appellants
thus argue that Heath teaches away from the claimed invention. (Id. at 11.)
Appellants further argue that Heath’s filter had a distal opening, not the
“proximal mouth” of claim 17 (id. at 12), and that Heath does not teach the
composite wire loop recited in claim 34 (id. at 13). Regarding claim 13,
Appellants contend that “Bagaoisan fails to overcome the insufficiencies of
the teachings of Heath and Khosravi.” (Id. at 13.)
The issues are:
• does the claim phrase “for temporary placement” distinguish Heath;
• did Heath teach away from the claimed invention;
• if Heath’s filter had a distal opening, must the rejection of claim 17 be
reversed;
• did Heath disclose a composite wire loop; and
• did Bagaoisan overcome the alleged insufficiencies of the teachings of
Heath and Khosravi?

5
Appeal 2009-0085
Application 10/410,896

Findings of Fact
1. Heath’s invention related to metal medical components to be used
inside the body, such as medical wires used in guidewires, filters, and
other medical devices. (1:3-7.)
2. Heath disclosed that “[t]ypically, X-ray fluoroscopy is used to view
the medical device within the body cavity to monitor placement and
operation. . . . the medical device must include some radiopaque
material . . . to provide sufficient contrast on an X-ray image.” (1:22-
32.)
3. Heath taught that “optimum properties” could be achieved with
medical wires having a multiple material coaxial construction, which
“allows increased radiopacity of a metal medical device without
adversely affecting and in some cases improving other important
properties such as the biocompatibility, size or other performance
characteristics.” (2:7-9; 3:15-20.)
4. Heath taught that “it would be preferable to put the dense radiopaque
material (e.g., tantalum) on the inside (core) since dense materials are
generally less elastic and the elastic material (e.g., titanium or nickel-
titanium alloy) on the outside (clad).” (2:14-18.)
5. Heath’s elastic material included “superelastic alloys, precursor alloys
of superelastic alloys, stainless steel, and titanium and its alloys. The
superelastic alloy is nitinol.” (4:21-24.)
6. Heath taught that the core metal, relatively dense to enhance
radiopacity, would preferably be formed from tantalum, tungsten,
rhenium, bismuth, silver, gold, platinum or iridium. (11:9-17.)
6
Appeal 2009-0085
Application 10/410,896

7. Heath’s Example 3 referred to Fig. 5 and explained “a wire of the
invention may also be used in a blood clot filtration device of the type
positioned within a blood vessel.” (16:3-22.)
8. Heath did not disclose a filter membrane coupled to the filtration
device. (Ans. 4.)
9. Khosravi taught “a vascular filter or thrombectomy/embolectomy
device that comprises a blood permeable sac affixed at its perimeter to
a support hoop . . . [that] supports a proximally-oriented mouth of the
sac when the device is deployed in a vessel.” (Col. 2, l. 67 – col. 3, l.
6.)
10. Khosravi’s support hoop is formed of a super-elastic material, such as
a nickel-titanium alloy (nitinol) or other super-elastic material. (Col.
5, l. 59 – col. 6, l. 2.)
11. Khosravi Fig. 6 disclosed a device comprising a filter frame 53 and 54
(support hoops), with a filter membrane 58 (permeable sac), attached
to guide wire 52. (Col. 8, ll. 15-42.)
12. Khosravi’s support hoops 53 and 54 could include “radiopaque
features, such as gold or platinum bands 65.” (Col. 8, ll. 35-38.)
13. Khosravi’s openings or pores 60 in sac 58 “permit red blood cells to
easily pass through the sac.” (Col. 8, ll. 27-28.)
14. Khosravi’s membrane or sac openings could be made in a preferred
embodiment to filter particles of about 20 to 400 microns. (Col. 5, ll.
41-58.)
7
Appeal 2009-0085
Application 10/410,896

15. Khosravi taught that radiopaque features could be bands attached to,
or radiopaque wire wrapped around, the frame at the mouth of the
device. (Col. 9, ll. 53-60; and Fig. 10.)
16. Khosravi did not disclose an inner core of radiopaque material.
17. Bagaoisan taught that “a variety of antithrombogenic coatings” could
be applied to catheters being used for embolic containment. (Col. 9,
ll. 35-39.)

Principles of Law
A patent may not be obtained . . . if the differences between the
subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary
skill in the art to which said subject matter pertains.

35 U.S.C. § 103(a).
Obviousness is a question of law based on fact findings. The scope
and content of the prior art are determined; differences between the prior art
and the claims at issue are ascertained; and the level of skill in the art is
resolved. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). Against
that background, the obviousness or nonobviousness of the subject matter is
determined. Id.; In re Kahn, 441 F.3d 977, 985 (Fed. Cir. 2006). The
proper question to ask is whether a person of ordinary skill in the art, “facing
the wide range of needs created by developments in the field of endeavor,
would have seen a benefit to” combining the prior art teachings. KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, ___, 127 S. Ct. 1727, 1744 (2007).
“[T]he question is whether there is something in the prior art as a whole to
8
Appeal 2009-0085
Application 10/410,896

suggest the desirability, and thus the obviousness, of making the
combination, not whether there is something in the prior art as a whole to
suggest that the combination is the most desirable combination available.”
In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (citation omitted).
A prior art reference is said to teach away from an Applicant’s
invention “when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). “The prior art’s
mere disclosure of more than one alternative does not constitute a teaching
away from . . . alternatives because such disclosure does not criticize,
discredit, or otherwise discourage the solution claimed.” Fulton, 391 F.3d at
1201.
“The preamble of a claim does not limit the scope of the claim when it
merely states a purpose or intended use of the invention. . . . [R]eview of a
patent in its entirety should be made to determine whether the inventors
intended such language to represent an additional structural limitation or
mere introductory language.” In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir.
1994). The claims are given their “broadest reasonable interpretation
consistent with the specification.” Id.

Analysis
Claim 1
1. The Examiner determined that it would have been obvious to add
Khosravi’s permeable emboli filter membrane to Heath’s blood clot
9
Appeal 2009-0085
Application 10/410,896

filtration device. Appellants dispute that one of skill in the art would have
been inclined to add Khosravi’s filter membrane to Heath’s filter because it
“would present detrimental consequences,” rendering Heath’s filter
“unsatisfactory for its intended purpose,” and would change the principle of
operation of Heath’s filter. (App. Br. 8.)
The principle of operation that Heath identified was “achiev[ing]
optimum properties by creating a multiple material coaxial construction.”
(FF3.) Optimal properties meant that medical devices being used within the
body could be better visualized from outside the body with X-ray equipment
if they were made with Heath’s composite wires. Heath put the principle
into operation by using dense radiopaque material as the core of a wire, and
elastic material such as nickel-titanium alloy as the cladding on the outside.
(FF4.) Heath taught that wire embodying the principle of operation could be
used in filters. (FF1.) Adding Khosravi’s membrane to Heath’s filter would
not have changed the principle of operation of Heath’s invention.
Appellants assume as their premise that the principle of operation for
all of Heath’s filter embodiments must be limited to exacting filtration
details they read into Heath’s Example 3. But the principle of filtration even
for Example 3 would not have been changed by combining Khosravi’s
teachings with Heath’s. Both Heath’s Example 3 and Khosravi’s devices
operated by the same filtration principle--capturing some clots and passing
smaller ones. The suggested combination would have given users of
embolic filters the option to filter at Khosravi’s finer level of discrimination,
allowing blood cells to pass but capturing embolic debris less than 3 mm in
diameter. (Ans. 4.) Adding Khosravi’s membrane would have been
10
Appeal 2009-0085
Application 10/410,896

expected to enhance filtration ability because the improved filter would have
caught “more medium sized particles,” but that is not a change in the
principle of operation. (Ans. 5.) The desirability of the combination would
have been appreciated by a person of ordinary skill in the art at the time
Appellants’ invention was made. See Princeton Biochemicals, Inc. v.
Beckman Coulter, Inc., 411 F.3d 1332, 1338 (Fed. Cir. 2005) (“the nature of
the problem supplies a motivation to combine these prior art references.”)
Appellants argue that Heath’s Example 3 is limited to a vena cava
filter of the type described in patents to Herms et al.6 and El-Nounou et al.,7
because Heath incorporated those patents by reference. (App. Br. 8.) Herms
mentioned filters that retained large emboli and allowed clots smaller than 3
millimeters to pass, and Appellants infer that Heath’s disclosure was limited
by Herms. (App. Br. 9.) Appellants conclude that the combination of the
Heath and Khosravi teachings would be unsatisfactory for Herms’ purpose.
(App. Br. 10-11.)
First, Appellants’ claims are not limited by the size of particle filtered.
The arguments about size therefore carry little weight.
Second, we are not persuaded that a person of skill in the art would
have read Heath so narrowly. Heath taught that its improved medical wires
“can be used for a variety of purposes such as tracking, stenting, filtering”
etc. (FF1.) Nothing in Heath limits filtration to a particular size. Neither
Heath nor Herms taught specific particle diameters that should be filtered, or
others that should not be filtered. Although Appellants find a command in

6 U.S. Patent No. 4,817,600, issued to Herms et al., Apr.4, 1989.
7 U.S. Patent No. 5,059,205, issued to El-Nounou et al., Oct. 22, 1991.
11
Appeal 2009-0085
Application 10/410,896

Herms to filter at no lower than 3 millimeters, we do not. Herms reported,
in a “Background of the Invention” section, that “[f]ilters of this type are
typically formed of fine wire legs and . . . . The filter may trap clots of
approximately three millimeters or larger. The clot, depending on its age
and nature, may stay permanently in the filter or be resorbed by the body.”
(Herms, col. 1, ll. 13-21.) Herms was simply reporting what was typical in
the pre-existing art. After that one mention of particle size in the
“Background” section, Herms did not return to the topic. Khosravi
evidences that there was a recognized need in the prior art for embolic filters
to filter particles smaller than 3 millimeters. (FF13-14.) There is nothing in
Heath or Herms that “taught away” from the combination of Heath with
Khosravi.
Third, Appellants’ claims are directed to devices, not methods of
using devices. “Under section 103 we must look to the person of ordinary
skill in the art to which the invention pertains, not those who may use the
invention.” In re Grout, 377 F.2d 1019, 1021 (CCPA 1967) (for the beehive
device claimed, persons of ordinary skill in the art were persons who built
beehives, not beekeepers who used them). Khosravi is evidence that
filtering small particles was desirable at the time of the invention. Persons
of skill in the art of making such devices would have been motivated by that
need to make such devices for use by doctors. Appellants’ arguments about
“injurious implications or death of a patient” (App. Br. 11), although not
based on statements in the references, might have been pertinent to
precautions a doctor using such a device might have taken, but they would
not have discouraged persons of skill in the art from providing devices to
12
Appeal 2009-0085
Application 10/410,896

meet the need Khosravi identified. See Fulton, 391 F.3d at 1200 (“case law
does not require that a particular combination must be the preferred, or the
most desirable, combination described in the prior art in order to provide
motivation for the current invention.”).
Appellants’ argument for limiting Heath by implications they perceive
in Herms is also unpersuasive because it does not give due weight to
Khosravi’s disclosure. When a combination of prior art teachings is relied
on to show obviousness, attacking only one reference is often unpersuasive.
Each reference “must be read, not in isolation, but for what it fairly teaches
in combination with the prior art as a whole.” In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references.”).
2. After several Office actions rejecting the claims over Heath and
Khosravi, Appellants amended the claims by adding the phrase “for
temporary placement.” (Amend. filed Oct. 13, 2006.) The Specification and
original claims did not use the term “temporary.” Appellants argue that
“temporary” distinguishes Heath’s filter shown in Fig. 5, which they
describe as “for permanent implantation.” (App. Br. 8-9.)
The ordinary meaning of temporary is “lasting for a limited time.”8
Notwithstanding their own argument, Appellants acknowledge that filters
described in Heath were “maintained in situ for extended periods (of at least
8-10 years).” (Id. at 9.) Heath’s filters were not permanent because a filter
maintained in situ for a period of 8-10 years is “lasting for a limited time,”

8 Merriam Webster’s Collegiate Dictionary, 10th Ed. 1993.
13
Appeal 2009-0085
Application 10/410,896

not permanent. An implantation for a period, whether extended or not, is
temporary, not permanent.
Appellants did not assign a special meaning to “temporary,” and there
are no structural features in the body of the claim that define Appellants’
filter in a way that is different from the filter suggested by the combination
of Heath and Khosravi. Using the ordinary meaning of temporary, for a
period of time, we conclude that “for temporary placement” does not
distinguish the claimed filter from that suggested by the combination of
Heath and Khosravi.

Claim 13
Claim 13 further limits the filter of claim 1 by reciting that the
“support structure includes an anti-thrombogenic coating.” Bagaoisan
taught using anti-thrombogenic coatings on catheters being used for embolic
containment. (FF17.) Appellants rely on their arguments concerning claim
1, and add only a general comment that Bagaoisan “fails to overcome the
insufficiencies of the teachings of Heath and Khosravi.” (App. Br. 13.)
Appellants do not identify any specific error in the Examiner’s reliance on
Bagaoisan for suggesting that the effectiveness of the support structure
would be enhanced by “providing a therapeutic agent.” (Ans. 4.) We
conclude that the Examiner established the prima facie obviousness of claim
13, and that Appellants have not rebutted it.

Claim 17
14
Appeal 2009-0085
Application 10/410,896

Appellants argue that the “support structure forming a proximal
mouth” recited in claim 17 is different from Heath’s filter having a distal
opening rather than a proximal mouth. (App. Br. 11-12.) Heath itself is
silent on this point, but Appellants read El-Nounou’s disclosure into Heath
as support for their argument. (App. Br. 12.) The ordinary dictionary
meaning for proximal is near, which requires a reference point for meaning.
We conclude that until Appellants’ filter is attached to a guidewire, the term
“proximal” as used in Appellants’ claims is not a meaningful distinction of
“mouth” from prior art filter mouths. (See Ans. 5.)
Claim 17 is directed to “a filter attachable to a guidewire,” i.e., the
filter by itself, not attached to a guidewire. Claim 17 does not recite
defining structural limitations for “proximal mouth” by which one end of the
unattached filter can be distinguished from the other. While Appellants
might intend the term “proximal” to imply structural features on the
attachable filter by itself, they have not identified any. We must therefore
determine if the term itself has a structural meaning for the mouth of a filter
before the filter is oriented by attachment to a guidewire. See Paulsen,
30 F.3d at 1479 (review the entire disclosure to make the determination).
The written description in the Specification uses the term “proximal”
once, in the “Background of the Invention.” (Spec. 2:6-9.) Those lines in
the “Background” describe a prior art technique of attaching a radiopaque
coil at the frame that forms the proximal mouth, but they do not indicate
there would necessarily be a difference in the unattached structure if the
mouth were oriented in the proximal or distal direction after attachment.
That description of prior art is consistent with Khosravi, which shows the
15
Appeal 2009-0085
Application 10/410,896

mouth on a guidewire in proximal orientation. (FF9; FF11.) According to
its placement on the guidewire with the mouth facing away from the distal
end of the guidewire, Khosravi’s “sac 58 is coupled to support hoop 53 at its
proximal end so that the support hoop forms an opening for the sac.” See
Col. 8, ll. 15-42. Put another way, Khosravi applies the term proximal to the
mouth of the filter because it faces away from the distal end of the
guidewire. Similarly, Heath refers to the proximal end of the guidewire
remaining outside the body. See Heath at 1:9-21. In Appellants’ claim for
an “attachable” filter, there is no structure by which a proximal end can be
distinguished from a distal end while the filter is unattached.
Following Paulsen, we also review the Specification’s drawings. See
also Rowe v. Dror, 112 F.3d 473, 479 (Fed. Cir. 1997) (for the meaning of
“balloon angioplasty catheter,” look “to the specification and drawings to
determine whether those sources convey a clear structural meaning for the
phrase”). There is no drawing indicating a feature by which a proximal or
distal mouth can be identified before the filter is attached to a guidewire.
Specification Figure 1, which is only “an exemplary embodiment,” shows
the filter after it was attached. (Spec. 4:3-4.) In Figure 1, “ends 18, 20 of
the wire loop 16 may be attached to a tubular member 22 configured to slide
along a guidewire,” or “can be fixedly secured directly to the guidewire 24,
in which case the guidewire 24 can be used to advance the embolic
protection filter 10 within the body.” (Spec. 4:11-16.) The claim does not
recite the features shown in the example, and an example is not imported as
a limitation into the claims. An artisan may attach the filter to the guidewire
with the mouth facing proximally or distally as desired. Although one
16
Appeal 2009-0085
Application 10/410,896

embodiment of the filter on the guidewire after attachment is illustrated,
Figure 1 does not convey that “proximal” has a clear structural meaning as
applied to the mouth of the “attachable” filter as claimed before attachment.
In the absence of a necessary structural meaning in Appellants’
Specification and claims, we conclude that whether the mouth is proximal or
distal depends on how the filter is attached to the guidewire. The filter
mouth’s orientation toward the proximal or distal end of the guidewire
cannot be determined until the filter is attached. In the claims presented,
“proximal” is only nominal, not structural, and would apply to any filter
mouth before attachment to a guidewire because it names but doesn’t define
by structure. We agree with the Examiner’s reasoning that “proximal” does
not distinguish the claimed “attachable” filter over the applied combination
of references.
In contrast to the Specification’s lack of definition, El-Nounou defines
proximal and distal by reference to certain parts of the filter itself, not by
reference to the guidewire. Unlike Appellants’ claims, El-Nounou’s distal
end is expressly identified with respect to another part of the filter itself:
“each leg having 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.” (Col. 1, l. 64 – col. 2, l. 6,
emphasis added.) The head is similarly identified with respect to parts of the
filter itself: “a head with a plurality of legs extending distally therefrom, the
head and legs having a centrally disposed longitude axis. The legs have
proximal portions which are secured to the head . . . .” (Col. 2, ll. 7-15,
17
Appeal 2009-0085
Application 10/410,896

emphasis added.) In Appellants’ view, not only should El-Nounou’s
definitions be read into Heath, the opposite meanings should be read into
their own Specification and claims. Even if we were to read El-Nounou’s
definitions into Heath, we do not read limitations into Appellants’ claims
because Appellants’ claims are given their “broadest reasonable
interpretation consistent with the specification.” Paulsen, 30 F.3d at 1479.
The Examiner’s explanation that “proximal” does not have a
necessary structural meaning until the filter is attached is reasonable. (Ans.
5-6.) Khosravi and Heath evidence that the Examiner’s explanation of usage
in the art is correct. “Absent an express definition in their specification, the
fact that appellants can point to definitions or usages that conform to their
interpretation does not make the PTO's definition unreasonable when the
PTO can point to other sources that support its interpretation.” In re Morris,
127 F.3d 1048, 1056 (Fed. Cir. 1997). Appellants had the opportunity to
define their invention over the art by writing structural limitations into the
claims. In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984) (during
examination, an Applicant “may amend [the] claims to obtain protection
commensurate with [the] actual contribution to the art.”)

Claim 34
Claim 34 recites “a composite wire loop forming a proximal mouth of
the embolic protection filter.”
Appellants’ first argument is that Heath does not teach a “proximal
mouth” because “Heath appears to disclose a distal opening of the vena cava
filter.” (App. Br. 13.) For the reasons already explained in our analysis of
18
Appeal 2009-0085
Application 10/410,896

claim 17, the term “proximal mouth” has no structural meaning for a filter
defined as “attachable.” We are not persuaded of Examiner error on that
score.
Appellants next argue that Heath does not teach a “loop” because “the
divergent struts of the vena cava filter taught in Heath are not a loop.” (App.
Br. 13.) The Examiner found that “[Heath’s] composite wires form a round
loop cross-section near reference number 54.” (Ans. 5.)
Ordinary meanings for the word “loop”9 are:
1 : a curving or doubling of a line so as to form a closed or partly
open curve within itself through which another line can be passed
2 a : something (as an anatomical part) shaped like a loop -- see
LOOP OF HENLE; LIPPES LOOP b : a surgical electrode in the
form of a loop
3 : a fingerprint in which some of the papillary ridges make a single
backward turn without any twist
4 : a wire usually of platinum bent at one end into a small loop
(usually four millimeters in inside diameter) and used in transferring
microorganisms

The ordinary meanings for “loop” refer to a continuous thing, not a cross-
section. We agree with Appellants that a cross-section through radial struts
is not “a composite wire loop.” We reverse the rejection of claim 34 and
enter a new ground of rejection.

9 From Merriam-Webster’s Medical Dictionary, online at
http://medical.merriam-webster.com/cgi-bin/medical, last accessed Jan. 16,
2009.
19
Appeal 2009-0085
Application 10/410,896

NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Claim 34 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combined teachings of Khosravi and Heath. Khosravi disclosed an
embolic filter used during thrombectomy or embolectomy. (FF9.)
Khosravi’s filter comprised a blood permeable sac, i.e., a filter membrane,
affixed to a support hoop, i.e., a wire loop, that formed a proximal mouth
when deployed in a blood vessel. (FF9.) Khosravi’s filter was attached to a
guidewire when deployed. (FF11.) Khosravi formed the support hoop of a
superelastic material such as a nickel-titanium alloy. (FF10.) Khosravi
attached radiopaque bands or wire, such as gold or platinum, to the frame at
the mouth of the device. (FF12; FF15.) Khosravi did not disclose a
composite support hoop comprising a radiographically denser material
within the superelastic material.
Heath disclosed metal medical components to be used inside the body,
such as wires used in guidewires and filters. (FF1.) Heath taught that to
view medical devices within the body, the device must include radiopaque
material to be viewed by X-ray fluoroscopy. (FF2.) Heath taught that
optimum properties and increased radiopacity could be achieved with
multiple material coaxial construction. (FF3.) Heath’s coaxial material was
made with a dense radiopaque material in the core and elastic material such
as nickel-titanium alloy, nitinol, which has shape-memory characteristics, on
the outside. (FF4-6.) To achieve the optimum properties Heath taught, a
person of ordinary skill in the art at the time of Appellants’ invention would
have found it obvious to have made Khosravi’s support hoop with Heath’s
coaxial construction wire.
20
Appeal 2009-0085
Application 10/410,896

CONCLUSIONS OF LAW
• Heath did not teach away from the claimed invention;
• “proximal” as used in the claims does not have structural meaning that
distinguishes the claimed attachable filter from the filter suggested by
Heath and Khosravi;
• the combination of teachings in Heath, Khosravi and Bagaoisan
rendered claim 13 obvious;
• Heath did not teach a composite wire loop; and
• claim 34’s filter comprising a composite wire loop would have been
obvious over the combined teachings of Khosravi and Heath as
explained in the new ground of rejection.

SUMMARY
We affirm the rejection of claims 1, 2, 5-7, 9, 10, 14-18, 21-23, 25, 26
and 30-33 under 35 U.S.C. § 103 as unpatentable over Heath in view of
Khosravi;
we affirm the rejection of claims 13 and 29 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Heath and Khosravi and further in
view of Bagaoisan;
we reverse the Examiner’s rejection of claim 34; and
we enter a new ground of rejection for claim 34 under 35 U.S.C.
§ 103 over the combined teachings of Khosravi and Heath.

Regarding the affirmed rejection(s), 37 CFR § 41.52(a)(1) provides
"[a]ppellant may file a single request for rehearing within two months from
21
Appeal 2009-0085
Application 10/410,896

the date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this opinion 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. . . .

Should Appellants elect to prosecute further before the Examiner
pursuant to 37 CFR § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
22
Appeal 2009-0085
Application 10/410,896

case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.

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 § 41.50(b)

dm

CROMPTON, SEAGER & TUFTE, LLC
1221 NICOLLET AVENUE
SUITE 800
MINNEAPOLIS, MN 55403-2420

23