Ex Parte PetersenDownload PDFBoard of Patent Appeals and InterferencesFeb 2, 201210762643 (B.P.A.I. Feb. 2, 2012) Copy Citation 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. 10/762,643 01/20/2004 Scott Petersen 1001.1735101 5318 11050 7590 02/02/2012 SEAGER, TUFTE & WICKHEM, LLC 1221 Nicollet Avenue Suite 800 Minneapolis, MN 55403 EXAMINER SEVERSON, RYAN J ART UNIT PAPER NUMBER 3731 MAIL DATE DELIVERY MODE 02/02/2012 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 SCOTT PETERSEN __________ Appeal 2010-010335 Application 10/762,643 Technology Center 3700 __________ Before ERIC GRIMES, STEPHEN WALSH, and JACQUELINE WRIGHT BONILLA, Administrative Patent Judges. BONILLA, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims directed to a blood clot filter comprising an apical head, filter legs, filter tubes, and a retrieval apparatus. The Examiner has rejected the claims as obvious under 35 U.S.C. §103(a). We have jurisdiction under 35 U.S.C. § 6(b) (2011). We reverse. Appeal 2010-010335 Application 10/762,643 2 STATEMENT OF THE CASE The invention relates to a retrievable blood clot filter placed within a blood vessel, where the filter comprises: (1) an apical head; (2) a plurality of elongated filter legs, where each leg has a first end coupled to the apical head; (3) a plurality of filter tubes, where each tube has a first end joined together at a hub; and (4) a retrieval apparatus including (i) a tubular inner member configured to grasp the apical head, (ii) a middle tubular member configured to engage the hub, and (iii) an outer sheath for encapsulating the blood clot filter device. Claims 1, 2, 5, 6, 9, 16, 17, 19, 20, 21, 24, 25, and 33-36 are on appeal. Claims 1 and 16 are independent. Claim 1 is representative and reads as follows (emphasis added): 1. A retrievable blood clot filter actuatable between a collapsed position and an expanded position within a blood vessel, comprising: an apical head defining a filter longitudinal axis; a plurality of elongated filter legs each having a joined end section and a free end section, each filter leg including a support member having a first end coupled to the apical head, and a second end configured to expand outwardly away from the filter longitudinal axis and being coupled to an anchoring member configured to releasably secure the blood clot filter device to the inner wall of the blood vessel; a plurality of filter tubes each having a first end, a second end, and an inner lumen configured to slidably receive the support members therein, the first end of each filter tube being joined together at a hub, and a landing pad fixedly secured to the second end of each filter tube; and Appeal 2010-010335 Application 10/762,643 3 a retrieval apparatus for retrieving or repositioning the blood clot filter device within the blood vessel, the retrieval apparatus including a tubular inner member configured to grasp the apical head, a middle tubular member configured to engage the hub, and an outer sheath for encapsulating the blood clot filter device. Claim 16 is similar to claim 1 and likewise recites, inter alia, “a retrieval apparatus … including an inner member configured to grasp the apical head, a middle tubular member configured to engage the hub, and an outer sheath for encapsulating the blood clot filter device” (emphasis added). Unlike claim 1, however, claim 16 does not recite a landing pad. The claims stand rejected as follows: Claims 16, 17, 20, 21, 25, and 33-35 as obvious over Ravenscroft et al., U.S. Patent No. 6,007,558, in view of Suon et al., U.S. Patent No. 6,342,062. Claims 1, 2, 5, 6, 9, and 19 as obvious over Ravenscroft in view of Suon and Whitcher et al., U.S. Patent No. 6,273,901. Claims 24 and 36 as obvious over Ravenscroft in view of Suon as applied to claims 16 and 35, and further in view of Herbert et al., U.S. Patent No. 6,482,221. I. Issue The first issue is whether Ravenscroft and Suon, read in combination, taught and/or suggested to one of skill in the art all the limitations of the blood clot filter system recited in claims 16, 17, 20, 21, 25, and 33-35. (See App. Br. 12.) App App 1. filter 2. 3. eal 2010-0 lication 10 Ravensc . (Ravens Figure 7 Figure 7 Fi Figure 8 10335 /762,643 roft descri croft, col. in Ravens depicts a gure 8 in R depicts an Find bes a remo 2, ll. 21-2 croft is rep blood clot avenscro upper por 4 ings of Fac vable ves 6.) roduced b filter as di ft is reprod tion of the t sel-implan elow. sclosed in uced belo blood clot table bloo this refere w: filter in a d clot nce. Appeal 2010-010335 Application 10/762,643 5 withdrawal configuration. 4. Ravenscroft states that “[a]s shown by FIGS. 7 and 8, the hub 12 may be spaced from a sleeve 38 by a plurality of metal washers 40. The sleeve 38 receives and mounts the ends of the tubular legs 26 and, if arms are provided, the ends of the arms 20. (Ravenscroft, col. 6, ll. 27-31.) 5. In addition, “[t]he washers 40 are formed of thermal shape memory material, and below a temperature transformation level for the material, they lie flat against the sleeve 38 as shown in FIG. 7. However, when the washers are subjected to temperatures above their temperature transformation level, they bow upwardly along the longitudinal axis of the filter 10 as shown in FIG. 8 driving the hub 12 away from the sleeve 38 so that the hub draws the shafts 32 upwardly to pull the hooks 28 into the tubular legs 26.” (Id. at col. 6, ll. 34-42.) 6. The Examiner finds that Ravenscroft presents a filter having an apical head (called a “hub” 12 in Ravenscroft), which is joined to a plurality of elongated filter legs. (Ans. 3.) Each of the filter legs includes a support member (depicted as (32) in Figures 7 and 8 of Ravenscroft). (Ans. 3.) Ravenscroft’s filter also includes a plurality of filter tubes (depicted as (26) in Figures 7 and 8 of Ravenscroft) that receive the support members. (Ans. 3.) The filter also includes a hub (depicted as (38) in Figures 7 and 8 of Ravenscroft). (Ans. 3-4 and 7.) 7. Appellant asserts that Ravenscroft does not teach or suggest a retrieval apparatus including “a middle tubular member configured to engage the hub” as recited in claims 16 and 1. (App. Br. 9.) App App 8. vess 9. Figu comp 10. tubu enga (Ans 11. skill devi 12. Exam eal 2010-0 lication 10 The Exa el filter. (A Figure 6 re 6 depict onents 51 The Exa lar inner m ging the h . 4. (emph The Exa in the art t ce of Rave In this c iner also Examine contacts 10335 /762,643 miner foun ns. 4.) in Suon is s a blood , 60, 40). miner find ember (51 ub, and an asis in ori miner con o use the r nscroft. (I ontext, and states that r never sta the hub. R d that Suo reproduc clot filter w s that the ), a tubula outer shea ginal)). cludes that etrieval de d.; see als in respon : ted that th ather, Ex 6 n describe ed below. ith a rem “retrieval r middle m th (40) fo it would h vice descr o, id. at 6. se to Appe e middle t aminer sta s a retriev oval devic device of ember (6 r encapsul ave been ibed in Su ) llant’s arg ubular me ted that th al device e (emphas Suon et al 0) that is c ating the f obvious to on with th uments, th mber inhe e middle t for a blood is added to . has a apable of ilter.” one of e filter e rently ubular Appeal 2010-010335 Application 10/762,643 7 member is capable of engaging the hub. This is not a statement of inherency; rather it is a statement that the claimed structures can perform the claimed function. Examiner notes here that the claims do not specify how the hub is engaged, where it is engaged, or at what point in time it is engaged. It is the Examine[r’]s position that since the washers (40) and hub (38) have the same diameter, the inner surface of the tubular member of Suon et al. is capable of contacting the hub at a point around its circumference. (Id. at 6 (emphasis in original).) Principles of Law An obviousness analysis compares the claimed invention and the prior art to determine whether “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.” Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1289 (Fed. Cir. 2006); see also 35 U.S.C. § 103(a). The ultimate question of obviousness is one of law, based upon factual inquiries set forth in the Graham case: (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the pertinent art; and (4) objective evidence of non-obviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). Analysis Appellant focuses attention on the retrieval device defined in claim 16, and contends that the device comprising “a middle tubular member configured to engage the hub” would not have been obvious. The Examiner finds that if one skilled in the art substituted the retrieval apparatus described in Suon in place of (or used it in addition to) the retrieval apparatus of Ravenscroft (i.e., washers 40), one would have Appeal 2010-010335 Application 10/762,643 8 made the filter device recited in claim 16. (Ans. 4, 6.) Looking at teachings in both references, however, we disagree with the Examiner’s assessment as it relates to the “retrieval apparatus” clause recited in claim 16. We agree with the Examiner that Figure 6 of Suon discloses a retrieval apparatus having inner tubular member (51), a middle tubular member (60), and an outer sheath (40) for encapsulating the filter. (Ans. 4; FF 9.) The issue, however, is whether the middle tubular member in Suon (either as taught or suggested in Suon itself, or when combined with teachings in Ravenscroft) is “configured to engage the hub” as recited in claim 16. In order to meet the “retrieval apparatus” element of claim 16, under the Examiner’s analysis, it would have to be the case that, inter alia, the inner tubular member (51) in Suon grasps the apical head, i.e., (12) in Ravenscroft, and the middle tubular member (60) of Suon is “configured to engage” the hub (38) of Ravenscroft. We agree with the Examiner that “engage the hub” means that the middle tubular member must at least “contact” or “touch” the hub at some point around its circumference. (Ans. 6.) For the purpose of our analysis, we do not need to address whether the term “engage” means something more than that definition, as asserted by Appellant. (Reply Br. 7.) According to claim 16, the first end of each filter tube is coupled to the hub. Looking at Suon, we conclude that the position of the hub (38) of Ravenscroft corresponds to a point at or near where (54) is depicted in Figure 6 of Suon. The arrow of (54) in Figure 6 points to the location where Appeal 2010-010335 Application 10/762,643 9 filter tubes, i.e., (14) in Suon or (26) in Ravenscroft, would connect to the hub. Because the filter tubes would be capable of fanning out radially and touching the bottom circumference of the middle tubular member (60) when fanned out, as depicted in Figure 6 (and other figures in Suon), the hub would have a smaller circumference compared to the circumference of the middle tubular member (60) of Suon. The depictions of the hub (38) and tubes (26) in Figures 7 and 8 in Ravenscroft are consistent with Suon in this regard. The tubes (26) likewise fan out radially from the hub (38) in these figures presented in Ravenscroft. Thus, the question becomes whether one skilled in the art would have had any reason or motivation to either enlarge the circumference or Ravencroft’s hub or decrease the circumference of Suon’s middle tubular member (60), so that the hub was at least capable of contacting or at some point touching the middle tubular member (60) of Suon. One must keep in mind that Ravenscroft did not disclose a retrieval apparatus comprising an inner member, middle member and outer sheath, and therefore did not teach or suggest a middle tubular member as recited in claim 16. Thus, a skilled artisan would have looked to Suon to see how to make the retrieval apparatus. One would have seen that the filter tubes should fan out radially and be capable of touching the bottom of the middle tubular member (60) located below the hub when the tubes are fanned out to a circumference larger than the circumference of the middle member. See Figure 6 of Suon. Consistently, as noted by Appellant, Suon states that “[o]nce filter 10 is grasped by stabilizer 50, catheter 60 [i.e., the middle tubular member] can Appeal 2010-010335 Application 10/762,643 10 be advanced into engagement with struts 14.” (App. Br. 11; see also Suon, col. 2., ll. 66-67.). In other words, Suon suggests that the middle tubular member engages with the filter tubes, i.e., (14) in Suon or (26) in Ravenscroft, as depicted in Figure 6. The Examiner’s rejection does not establish that Suon and/or Ravenscroft suggested an alternative way of making a retrieval apparatus, e.g., where the hub itself directly touched the middle tubular member, as shown in Figure 10 of the instant Specification. (See Specification, Figure 12, showing hub (38) touching middle tubular member (80).) The Examiner asserts that the middle tubular member in Suon is capable of engaging the hub, but points to no evidence in support. (Ans. 6.) The Examiner does not point to a suggestion in the art to enlarge the hub circumference, use a hub having a large enough circumference, or decrease the circumference of Suon’s middle tubular member so that the hub contacts the middle tubular member (60) of Suon. At most, the Examiner asserts that “since the washers (40) and the hub (38) [in Ravenscroft] have the same diameter, the inner surface of the tubular member of Suon et al. is capable of contacting the hub at a point around its circumference.” (Id.) These statements regarding washers (40) and hub (38) in Ravenscroft, however, ignore the teachings in Suon regarding the relevant retrieval apparatus in question. The retrieval apparatus described in Ravenscroft (i.e., metal washers (40) that change shape upon temperature change) do not meet the elements recited in the “retrieval apparatus” clause in claim 16. Thus, the retrieval apparatus of Suon is the relevant retrieval apparatus for the purposes of our Appeal 2010-010335 Application 10/762,643 11 analysis, and therefore a skilled artisan would look to Suon for specific teachings in this regard. In other words, the diameter of the washers in relation to the hub as depicted in Ravenscroft is not relevant to the obviousness analysis here. What matters for the purpose of understanding the retrieval device in question are the teachings in Suon. As discussed above, Suon did not suggest a middle tubular member that would engage with a hub, such as the hub depicted as (38) in Figure 7 of Ravenscroft. Because one reading Suon, either alone or in combination with Ravenscroft, would not have been motivated to make a retrieval device comprising a middle tubular member configured to engage the hub, we conclude that the Examiner has not established a prima facie case of obviousness with regard to claim 16. Because claims 17, 20, 21, 25, and 33- 35 depend on independent 16, and therefore also require a middle tubular member configured to engage the hub, we conclude that the Examiner has likewise failed to establish a prima facie case of obviousness regarding these claims as well. II. Issue The second issue is whether Ravenscroft, Suon and Whitcher, read in combination, taught and/or suggested to one of skill in the art the blood clot filter recited in claims 1, 2, 5, 6, 9, and 19. Analysis Claim 1 is similar to claim 16 discussed above. In relevant part, claim 1 recites a blood filter comprising a retrieval apparatus including [i] a Appeal 2010-010335 Application 10/762,643 12 tubular inner member configured to grasp the apical head, [ii] a middle tubular member configured to engage the hub, and [iii] an outer sheath for encapsulating the blood clot filter device. (Claim 1.) In section I above, we discuss in detail why one reading Ravenscroft and/or Suon, either alone or in combination, would not have been motivated to make a retrieval device comprising a middle tubular member configured to engage the hub as recited in both claims 16 and 1. Nothing in Whitcher provided what was lacking in Ravenscroft and/or Suon in this regard. Rather, the Examiner cites to Whitcher for the teaching of a landing pad as recited in claim 1 (not recited in claim 16). (Ans. 4.) In other words, according to the Examiner, it would have been obvious to combine the landing pads of Whitcher with the blood clot filter prepared via the combination of Ravenscroft and Suon. As such, the Examiner points to no evidence that one would have been motivated to make a blood clot filter comprising a retrieval device including a middle tubular member configured to engage the hub. Thus, as with claim 16, we conclude that the Examiner has not established a prima facie case of obviousness with regard to claim 1. Because claims 2, 5, 6, 9, and 19 all depend on independent claim 1 or 16, and therefore also require a middle tubular member configured to engage the hub, we conclude that the Examiner has likewise failed to establish a prima facie case of obviousness regarding these claims as well. Appeal 2010-010335 Application 10/762,643 13 III. Issue The third issue is whether Ravenscroft, Suon and Herbert, read in combination, taught and/or suggested to one of skill in the art the blood clot filter system recited in claims 24 and 36. Analysis Claims 24 and 36 both depend on independent claim 16, and therefore also require a middle tubular member configured to engage the hub. In section I above, we discuss why one reading Ravenscroft and/or Suon, either alone or in combination, would not have been motivated to make a retrieval device comprising a middle tubular member configured to engage the hub as recited in claim 16. The Examiner points to no evidence indicating that Herbert provided what was lacking in Ravenscroft and/or Suon in this regard. Instead, the Examiner merely cites to Herbert for the teaching of a tubular member made of braided material. (Ans. 5.) As such, we conclude, for the same reasons discussed above regarding claim 16, that the Examiner has failed to establish a prima facie case of obviousness regarding claims 24 and 36. Conclusions of Law Because Ravenscroft, in view of Suon, with or without a consideration of Whitcher or Herbert, did not teach and/or suggest a blood clot filter comprising a retrieval device including a middle tubular member configured to engage the hub as recited in independent claims 16 and 1, we conclude the Examiner has failed to establish a prima facie case of obviousness regarding Appeal 2010-010335 Application 10/762,643 14 these two independent claims. Because all other pending claims depend on claim 16 or 1, and therefore likewise require this element, we further conclude that the Examiner has failed to establish a prima facie case of obviousness with regard to all other claims at issue. SUMMARY We reverse the rejection of claims 16, 17, 20, 21, 25, and 33-35 under 35 U.S.C. §103(a) as unpatentable over Ravenscroft in view of Suon. We also reverse the rejection of claims 1, 2, 5, 6, 9, and 19 under 35 U.S.C. §103(a) as unpatentable over Ravenscroft in view of Suon, and in further view of Whitcher. We further reverse the rejection of claims 24 and 36 under 35 U.S.C. §103(a) as unpatentable over Ravenscroft in view of Suon, and in further view of Herbert. REVERSED lp Copy with citationCopy as parenthetical citation