Ex Parte Petersen

Board of Patent Appeals and Interferences

Feb 2, 2012

10762643 (B.P.A.I. Feb. 2, 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.
10/762,643 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
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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.)
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10335
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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.)
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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
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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
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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
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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
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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
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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.
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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
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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

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