Ex parte Hobbs et al.

Board of Patent Appeals and Interferences

Mar 24, 1999

08081984 (B.P.A.I. Mar. 24, 1999)

Application for patent filed June 23, 1993. According to1
appellants, this application is a continuation-in-part of
Application 08/004,635 filed January 12, 1993, now abandoned;
which is a continuation of Application 07/846,142 filed March
5, 1992, now abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte EAMONN HOBBS and WILLIAM APPLING
____________
Appeal No. 96-3203
Application No. 08/081,9841
____________
ON BRIEF
____________
Before McCANDLISH, Senior Adminstrative Judge, STAAB, and
McQUADE, Administrative Patent Judges.
McCANDLISH, Senior Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s
final rejection of claims 21 through 31, 33 and 34 under 35
U.S.C. § 102(b). The only other claims still pending in the
Appeal No. 96-3203 Page 2
Application No. 08/081,984
The cylindrical and conical segments are described in2
the specification as cylindrical and conical portions.
application have been withdrawn from consideration as being
directed to a nonelected invention.
The claimed invention relates to a non-permanent blood
clot filter which is adapted to be inserted into a blood
vessel. The filter is formed from a single high memory
coiled wire having a cylindrical segment (14b) and a conical
segment (14a). According to claim 21, the only independent2
claim on appeal, the cylindrical segment extends from a
first end (16) of the coiled wire to an “intermediate
position,” and the conical segment extends from the
intermediate position to the second end (18) of the coiled
wire.
A copy of the appealed claims is appended to
appellant’s brief.
Appeal No. 96-3203 Page 3
Application No. 08/081,984
A translation of this reference is attached to the3
examiner’s answer.
The following reference is relied upon by the
examiner as evidence of anticipation in support of his
rejection under 35 U.S.C. § 102(b):
German Patent (Heinke) 3,203,410 Nov. 25,3
1982
Claims 21 through 31, 33 and 34 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Heinke.
The Heinke reference discloses a helically coiled
wire that is adopted to be placed in a blood vessel for
sealing the blood vessel. According to Heinke’s
specification, the coiled wire may have a “cylindrical,
conical or barrel-shaped form” (translation, pages 3-4). The
conical embodiments are shown in Figures 5 and 6 of the
Heinke reference. From the examiner’s response to
appellants’ arguments on page 6 of the answer, we understand
that he relies on the conical embodiment shown in Figure 6
of the Heinke reference.
Appeal No. 96-3203 Page 4
Application No. 08/081,984
Appellants do not appear to dispute the examiner’s
position that Heinke’s device “is capable of performing in
the same manner as Applicant’s [sic, applicants’] device” as
set forth on page 3 of the answer. In support of this
position, the examiner relies on Heinke’s disclosure that
the coiled wire will “inhibit the blood flow to a high
degree” thus inferring that some blood will flow past the
coiled wire to filter the blood. We nevertheless cannot
sustain the § 102(b) rejection of claim 21.
Contrary to the examiner’s position as set forth on
page 3 of the answer, Heinke does not disclose that the
“largest loop is cylindrical” in the embodiment shown in
Figure 6 or, for that matter, the other conical embodiment
shown in Figure 5. Instead, the coiled wires shown in both
of these embodiments are merely described as being
“conical,” thus inferring that the coiled wire has a spiral
form in which the diameter of the coiled wire continuously
and progressively decreases from the base end to the apex of
the coiled configuration. In contrast, a loop or segment
thereof would be required to have a constant diameter in
Appeal No. 96-3203 Page 5
Application No. 08/081,984
order to be considered as having a “cylindrical” form. From
Heinke’s description that the embodiments shown in Figures 5
and 6 are conical, it cannot be assumed that the largest
turn or loop or even a segment thereof has a constant
diameter to assume a cylindrical configuration.
The barrel-shaped embodiments shown in Figures 7 and
8 also fail to anticipate the subject matter of appealed
claim 1 because the cylindrical portion in each of these
barrel configurations lies intermediate the ends of the
coiled wire and thus does not extend from one end of the
wire as required by claim 1. Obviously, Heinke’s cylindrical
embodiments of Figures 3 and 4 also fail to anticipate the
subject matter of claim 1 because they lack the claimed
conical segment.
Since each and every element of appealed claim 21 is
not expressly or inherently disclosed in Heinke, this
reference does not anticipate the subject matter of claim
21. See RCA Corp. v. Applied Digital Data Systems, Inc., 730
F.2d 1440, 1444, 221 USPQ. 385, 388 (Fed. Cir. 1984).
Appeal No. 96-3203 Page 6
Application No. 08/081,984
The examiner’s decision rejecting claims 21 through
31, 33 and 34 is therefore reversed.
Appeal No. 96-3203 Page 7
Application No. 08/081,984
REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge
)
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
HEM/jlb
Appeal No. 96-3203 Page 8
Application No. 08/081,984
Lloyd McAulay
McAulay Fisher Nissen Goldberg & Keil
261 Madison Avenue
New York, NY 10016