Ex Parte Oslund et alDownload PDFPatent Trial and Appeal BoardJun 28, 201310823139 (P.T.A.B. Jun. 28, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOHN C. OSLUND and CHAD J. VOLK ____________ Appeal 2013-006981 Application 10/823,139 Technology Center 3700 ____________ Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and PATRICK R. SCANLON, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE John C. Oslund and Chad J. Volk (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 71 and 72 under 35 U.S.C. § 103(a) as unpatentable over Barbut (US 5,662,671; iss. Sep. 2, Appeal 2013-006981 Application 10/823,139 2 1997) and Khosravi (US 6,129,739; iss. Oct. 10, 2000).1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellants’ claimed invention relates to “a distal protection device having a filter basket that is maintained in the fully opened configuration after deployment and during use.” Spec. 3, ll. 13-15. Claim 71, reproduced below, is illustrative of the subject matter on appeal. 71. A distal protection device disposable within a vessel of a body comprising: a guidewire having a stop, the guidewire having proximal and distal end, the distal end being configured to be inserted into the vessel and the proximal end being configured to be located outside the body when the device is deployed within the vessel; a tube having a lumen sized to receive the guidewire, the tube being configured for axial movement along the guidewire, and distal movement of the tube being limited by the stop; a filter basket connected to the tube, the filter basket having a closed distal end and an open proximal end; and a spacing member connected to the tube and positioned proximally of the proximal end of the filter basket, the spacing member being configured to maintain the proximal end of the filter basket in an opened configuration when the device is deployed within the vessel, and the spacing member consisting essentially of a wire form. 1 The present application was the subject of a prior appeal in which the Board reversed a rejection of then-pending claims 71-73, 75-77, and 79-81 under 35 U.S.C. § 102(e) as anticipated by Khosravi. Appeal 2009-001299 (BPAI, July 30, 2009). Appeal 2013-006981 Application 10/823,139 3 ISSUES The Examiner found that Barbut discloses the claimed distal protection device including a tube (50) capable of receiving a guidewire, a filter basket (69), and a spacing member (90 or 91) except for the use of stops on the guidewire to limit the axial movement of the tube along the guidewire, as called for in claim 71.2 Final Off. Act. 3. The Examiner found that such use of stops in a guidewire was well known in the art, as evidenced by Khosravi, and that it would have been obvious modify the device of Barbut to incorporate such stops to limit and control the movement of the filter along the guidewire. Id. at 3-4. Appellants do not contest the Examiner’s findings as to the scope and content of Khosravi or the proposed modification of Barbut with Khosravi. Rather, Appellants contest the Examiner’s finding that Barbut discloses a spacing member “configured to maintain the proximal end of the filter basket in an opened configuration when the device is deployed within the vessel” and “consisting essentially of a wire form.” Br. 9. The issues presented by this appeal are: Did the Examiner have a sound basis for finding that the projecting fingers 90, 91 of Barbut are capable of maintaining the proximal end of the filter basket in an opened configuration when the device is deployed within the vessel? 2 Appellants do not argue dependent claim 72 apart from claim 71. Br. 10. As such, claim 72 stands or falls with claim 71. See 37 C.F.R. § 41.37(c)(1)(vii) (2012). Appeal 2013-006981 Application 10/823,139 4 Did the Examiner err in finding that the mechanical projecting fingers 90, 91 consist essentially of a wire form? ANALYSIS “Configured to maintain the proximal end of the filter basket in an opened configuration when the device is deployed within the vessel” The Examiner explained that “Barbut discloses a similar distal protection device [to Appellants’ device] comprising a filter basket and a deployable positioning finger[] 90 or 91 that is configured to extend laterally to bias the catheter toward a plaque by engaging the blood vessel wall.” Ans. 4. Barbut discloses a catheter 50 having deployable positioning members 90 and 91 which, when deployed, bias atherectomy assembly 80 toward the plaque material. Barbut, col. 18, ll. 62 – col. 19, l. 2; fig. 20. Figure 20 of Barbut shows the positioning members 90 and 91 contacting the vessel wall to bias the assembly 80. Barbut also describes that “[t]he guiding catheter may also be a positioning atherectomy guide catheter which has deployable positioning fingers disposed circumferentially around the guiding catheter to center the guiding catheter in a vessel, or to bias the catheter to one side, as depicted in FIG. 19.” Id. at col. 18, ll. 45-49. Barbut’s positioning members 90 and 91 are strong enough to position the catheter relative to the vessel wall and thus would also be strong enough to prevent collapse of the filter basket due to the vessel wall. As such, we find that the Examiner’s finding that Barbut’s positioning members 90 and 91 are inherently capable of maintaining the proximal end of the filter basket Appeal 2013-006981 Application 10/823,139 5 in an opened configuration when the device is deployed within the vessel is founded upon a reasonable basis in light of the disclosure in Barbut. Appellants argue only that Barbut is “entirely silent as to the materials of construction used in fabrication of the fingers 90, 91, the strength of the fingers 90, 91, or the ability of the fingers 90, 91 to in any way support the walls of a blood vessel.” Br. 8. Appellants characterize the Examiner’s inherency finding as “speculative.” Id. We disagree, and find that despite Barbut’s silence as to the materials used for positioning members 90 and 91, the Examiner had a sound basis, based on the disclosure in Barbut of the function of the positioning members 90 and 91 as biasing and centering the catheter relative to the vessel wall, on which to make a finding of inherency. See Ans. 5 (“Biasing against the blood vessel, or centering thereto, will require the deployable fingers to be strong enough to prevent the blood vessel from collapsing. Otherwise, they will not be able to perform the function required by Barbut.”). Appellants have not met their burden to show that the prior art structures do not possess this functionality as an inherent characteristic. See In re Swinehart, 439 F.2d 210, 213 (CCPA 1971) (“where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on”). Appeal 2013-006981 Application 10/823,139 6 “Wire form” The Examiner construed wire form as in the form of “a slender/thin rod.” Ans. 6. An ordinary meaning of “wire” is “metal drawn out into the form of a thin flexible thread or rod.” Oxford Dictionaries, Oxford University Press, last visited 25 June 2013. The Specification describes that “[t]he loop can be constructed of a single small diameter wire, such as a nitinol wire, or cable, coil, or stranded cable.” Spec. 5, ll. 15-16. Appellants do not proffer a definition of “wire form” different from that provided by the Examiner. We find the Examiner’s interpretation of “wire form” to be consistent with the ordinary meaning of “wire” and not inconsistent with the Specification, and thus reasonable in view of the Specification. Appellants argue only that considering the disclosure in Barbut that the fingers include “a mechanical projecting finger or one or more elastomeric balloons which are inflatable through one or more separate lumens” and the illustration of the fingers in Figure 17 of Barbut, “fingers 90, 91 cannot reasonably be characterized as ‘a spacing member . . . consisting essentially of a wire form.’” Br. 9. We agree with the Examiner’s finding (Ans. 6) that the mechanical projecting fingers 90 and 91, such as shown in Figure 20 of Barbut, are in the form of slender/thin rods and thus consist essentially of “a wire form.” For these reasons, we affirm the Examiner’s rejection of claims 71 and 72 as unpatentable over Barbut and Khosravi. Appeal 2013-006981 Application 10/823,139 7 CONCLUSIONS The Examiner had a sound basis for finding that the projecting fingers 90, 91 of Barbut are capable of maintaining the proximal end of the filter basket in an opened configuration when the device is deployed within the vessel. The Examiner did not err in finding that the mechanical projecting fingers 90, 91 consist essentially of a wire form. DECISION We AFFIRM the decision of the Examiner to reject claims 71 and 72. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). 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