Ex Parte Kusleika

Board of Patent Appeals and Interferences

Aug 23, 2012

10682696 (B.P.A.I. Aug. 23, 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.
10/682,696 10/09/2003 Richard S. Kusleika MVA1004USC3 9277
9561 7590 08/23/2012
POPOVICH, WILES & O'CONNELL, PA
8519 EAGLE POINT BLVD
Suite 180
LAKE ELMO, MN 55042
EXAMINER
TYSON, MELANIE RUANO
ART UNIT PAPER NUMBER
3773
MAIL DATE DELIVERY MODE
08/23/2012 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 RICHARD S. KUSLEIKA
__________

Appeal 2010-001778
Application 10/682,696
Technology Center 3700
___________

Before JOSEPH F. RUGGIERO, THOMAS S. HAHN, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-001778
Application 10/682,696

- 2 -
SUMMARY
Appellant appeals from the following rejections of claims 50-73:
1. Claims 50 and 60 stand rejected under 35 U.S.C. § 103(a)
as obvious over Ladd (US 6,059,814; issued May 9, 2000) and
Pannek (US 5,224,945; issued July 6, 1993);
2. Claims 50-73 stand rejected under 35 U.S.C. § 103(a) as
obvious over Patterson (US 5,941,869; issued Aug. 24, 1999)
and Pannek; and
3. Claims 50, 51, 55, 59-64, 68, and 73 stand rejected under
35 U.S.C. § 102(b) as anticipated by Pannek.1
We have jurisdiction under 35 U.S.C. § 6(b). We review the appealed
rejection for error based upon the issues identified by Appellant. See Ex
parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
We reverse.

INVENTION
Appellant discloses a vascular filter for trapping emboli, i.e.,
particulates within a bloodstream. (Title; Spec. 6.) Appellant’s Figure 2,
reproduced below, shows a schematic side view of an exemplary
embodiment. (Spec. 4.)

1 The obviousness rejections (Nos. 1 and 2) are final rejections (Final Rej. 2-
4 (Nov. 13, 2008)) appealed under 35 U.S.C § 134(a). The anticipation
rejection (No. 3) was entered as a new ground of rejection under 37 C.F.R.
§ 41.39(a)(2) (Ans. 5-6) and is now appealed by virtue of Appellant’s
response under 37 C.F.R. § 41.39(b)(2) (Reply Br. 2).
Appeal 2010-001778
Application 10/682,696

- 3 -

Appellant’s Figure 2 shows a schematic side view of the invention.
The filter 50 slides freely on a mandrel 20, which is part of a
guidewire. (Spec. 4-5, 8-9.) The mandrel 20 has an affixed stopper 40 that
is positioned between and cannot pass through collars 60, 65 (“distal slider
60” and “proximal slider 65”) of the filter 50, such that the stopper 40 limits
the sliding range of the filter 50. (Spec. 9.)
Independent claim 50, reproduced below, is illustrative:
50. An apparatus for filtering emboli from blood
flowing through a vessel, the apparatus comprising:
a guidewire having a distal region and a stop on the distal
region; and
a filter element configured to rotate and translate on the
guidewire, the filter element having a proximal end and a distal
end,
wherein the stop is disposed intermediate the proximal
and distal ends of the filter element.

OBVIOUSNESS REJECTION OF CLAIMS 50
AND 60 OVER LADD AND PANNEK
A. LADD
Ladd discloses an emboli filter. (Abstract.) Ladd’s Figure 1,
reproduced below, shows a schematic side view of an embodiment (col. 4, ll.
25-27):
Appeal 2010-001778
Application 10/682,696

- 4 -

Ladd’s Figure 1 shows a schematic side view of a prior art
filter.
The filter 40 (“filter assembly 40”) is formed by outwardly biased
wires 46, a tube 30 (“outer wall 30” of “rod 28”), collars 42, 44 (“proximal
ring connector 42” and “distal ring connector 44”) securing the ends of the
wires 46 to the tube 30, and a perforated fabric (not labeled) cupped over the
distal halves of the wires 46. (Col. 5, ll. 5-45.) The proximal collar 42 is
affixed to the tube 30. (Col. 5, ll. 5-7.) The distal collar 42 slides freely so
as to allow the biased wires 46 to flex outward and thereby expand the filter
40 against the artery wall. (Col. 5, ll. 5-16.)
B. PANNEK
Pannek discloses an atherectomy cutter for removing artery plaque.
(Abstract.) Pannek’s Figures 5 and 6A, reproduced below, show a
perspective view and cross-sectional side view of an embodiment,
respectively (col. 4, ll. 35-41):
Appeal 2010-001778
Application 10/682,696

- 5 -

Pannek’s Figures 5 and 6A show a perspective view and cross-
sectional side view of a prior art atherectomy cutter.
The cutter has rotating blades 32a-d. (Col. 6, ll. 56-60.) The distal
ends of the blades 32a-d are held by a collar 38 (“grommet 38”) that slides
freely on a guidewire 14. (Col. 5, ll. 24-27.)2 The proximal ends of the
blades 32a-d respectively slide within notched grooves 56a-d of a hub 54.
(Col. 6, ll. 44-47; col. 7, ll. 5-9.) Distally sliding the blades 32a-d
successively pulls their proximal ends into the notches 58, 60, 62 (in this
order), thereby changing the radial lengths of the blades 32a-d from the
guidewire 14. (Col. 6, l. 61 – col. 7, l. 20; Figs. 6A-C.) Sliding of the
blades 32a-d is achieved by distally pushing the collar 38 with an abutment
28 affixed to the guide wire 14. (Id.)
C. CONTENTIONS
Independent claim 50 recites a “stop . . . disposed intermediate the
proximal and distal ends of the filter element.” Independent claim 60
similarly recites a “stop . . . disposed intermediate the proximal and distal
ends of the vascular filter.”

2 Pannek’s first embodiment (Figs. 3-4C) and second embodiment (Figs. 5-
6C) bear merely two structural differences. (Col. 6, ll. 36-38.) Most of the
in-common features, such as the collar 38, are described with respect to only
the first embodiment.
Appeal 2010-001778
Application 10/682,696

- 6 -
The Examiner found that Ladd teaches all but the claimed stops.
(Ans. 3.) The Examiner found that Pannek’s abutment 28 is a stop
positioned between the ends of the blades 32a-d and configured to limit the
proximal movement of the blades 32a-d. (Id.) In view of the abutment 28,
the Examiner concluded that Pannek suggests placing a stop on Ladd’s tube
30, particularly between the collars 42, 44 and so as to “allow the filter to
expand to a predetermined radius, thus eliminating the risk of
overexpansion.” (Ans. 4.)
Appellant argues that the Examiner does not “understand and/or
appreciate what Pannek discloses to a person of skill in the art.” (App. Br.
10.) Appellant contends the Examiner does not understand that the
abutment 28 is not a stop limiting movement of another element. (App. Br.
11.) Nor does the abutment maintain a radial length of the blades 32a-d.
(App. Br. 12.)
D. ISSUE
Has the Examiner shown that Pannek’s teachings for the abutment 28
suggest adding a stop to Ladd’s device, as proposed?
E. ANALYSIS
Contrary to the Examiner’s determinations, there is no indication that
Pannek’s abutment 28 is even held in place near the collar 38, much less that
the abutment 28 stops a proximal movement of the collar 38 so as to
maintain the radial lengths of the blades 32a-d. As noted in our discussion
of Pannek, the abutment 28 is disclosed as merely pulling the blades 32a-d
into the notches 58, 60, 62 of the hub 54 (which are the actual structures that
limit the movements and thereby maintain the radial lengths of the blades
32a-d). Because the Examiner proposes to add a stop to Ladd’s device in
Appeal 2010-001778
Application 10/682,696

- 7 -
view of undisclosed functions of the abutment 28, we hold the Examiner has
not articulated a proper rationale for the modification. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) (“[A] court must ask whether the
improvement is more than the predictable use of prior art elements according
to their established functions.”).
For the above reasons, the obviousness rejection of claims 50 and 60
is not sustained.

OBVIOUSNESS REJECTION OF CLAIMS 50-73
OVER PATTERSON AND PANNEK
A. PATTERSON
Patterson discloses an emboli filter. (Col. 24, ll. 25-30.) Patterson’s
filter 90 is formed by outwardly biased wires 96 (“structural members 96”),
collars securing the ends of the wires 96 to a rod, and foam 98 (“filter
medium 98”) arranged inside the wires 96. (Col. 24, l. 59 – col. 25, l. 4;
Figs. 30-32.) Patterson’s distal collar slides freely on the rod, such that the
wires 96 and foam 98 expand to fill the artery (Figs. 30-32.)
B. ANALYSIS
Independent claims 50, 51, 55, 60, 64, and 68, and their respective
dependent claims 52-54, 56-59, 61-63, 65-67, and 69-73, each recite a
“stop.” The Examiner found that Patterson’s device lacks a stop as claimed,
but determined that it would have been obvious to add such a stop to
Patterson’s filter in view of Pannek “for the same reasons set forth . . . with
respect to the Ladd reference.” (Ans. 8.) Thus, as in the rejection of claims
50 and 60 over Ladd and Pannek, the Examiner again proposes to add a stop
to Patterson’s device in view of undisclosed functions of Pannek’s abutment
28.
Appeal 2010-001778
Application 10/682,696

- 8 -
Accordingly, the obviousness rejection of claims 50-73 is not
sustained.

ANTICIPATION REJECTION OF CLAIMS 50,
51, 55, 59-64, 68, AND 73 OVER PANNEK
A. CONTENTIONS
Independent claims 50, 51, 55, 60, 64, and 68, and their respective
dependent claims 59, 61-63, and 73, are each directed to an “apparatus for
filtering emboli from blood” and recite a “filter element” or “vascular filter.”
The Examiner finds that Pannek’s blades 32a-d and aspirating tube 16
collectively filter emboli by way of “form[ing] a cage-like structure in which
debris enters to be removed.” (Ans. 5 (citing Pannek, col. 4, ll. 59-64).)
Appellant responds that “[c]learly, a person of skill in the art
understands the differences between a filter and an atherectomy cutting
device.” (Reply Br. 3.)
B. ISSUE
Do Pannek’s blades 32a-d and aspirating tube 16 collectively
constitute an emboli “filter” as claimed?
C. ANALYSIS
Claim terms are given their broadest reasonable interpretation
consistent with their Specification. See Phillips v. AWH Corp., 415 F.3d
1303, 1316-17 (Fed. Cir. 2005) (en banc). Appellant’s Specification
distinguishes between filtering emboli from blood and aspirating emboli-
infused blood, stating:
The problems with most temporary filters, which are
intended to be used only during a particular procedure then
retracted with the thrombi trapped therein, are more
pronounced. . . . For this reason, most atherectomy devices and
Appeal 2010-001778
Application 10/682,696

- 9 -
the like tend to aspirate the patient’s blood during the procedure
to remove the dislodged material entrained therein.
(Spec. 2.) Construing “filter” consistent with the Specification’s stated
distinction between filtering and aspirating, we hold that the claimed emboli
filters cannot encompass Pannek’s blades 32a-d and aspirating tube 16.
Accordingly, the anticipation rejection of claims 50, 51, 55, 59-64, 68,
and 73 over Pannek is not sustained.

DECISION
The Examiner’s decision rejecting claims 50-73 is reversed.

REVERSED

babc