Ex Parte WasDyke et al

Patent Trial and Appeal Board

Nov 19, 2014

10894382 (P.T.A.B. Nov. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOEL M. WASDYKE and ANTHONY VRBA
____________

Appeal 2012-006548
Application 10/894,3821
Technology Center 3700
____________

Before MARK NAGUMO, MICHAEL P. COLAIANNI, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 involving claims related to a
retrievable intravascular filter. The Examiner rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE

Background
“The present invention relates generally to devices for filtering blood
clots within a blood vessel. More specifically, the present invention pertains

1 According to Appellants, the real party in interest is Boston Scientific
Scimed, Inc. App. Br. 4.
Appeal 2012-006548
Application 10/894,382

2
to retrievable intravascular filter devices and associated methods for
retrieving such devices within the body.” Spec. 1.
The Claims
Claims 1 and 3–32 are on appeal.2 Claim 1 is representative and reads
as follows.
1. A retrievable intravascular filter, comprising:
an apical head;
a plurality of elongated filter legs actuatable between a
collapsed position and an expanded position within a blood
vessel, each of the filter legs having a proximal end and a distal
end; and
one or more bendable anchoring members welded to the
distal end of each filter leg, the one or more bendable anchoring
members being configured to releasably secure the elongated
filter legs to the wall of the blood vessel, each of said one or
more anchoring members including a coiled member being
configured to selectively bend in response to an external force
applied thereto within the blood vessel wherein a pointed tip
portion of each anchoring member is configured to pierce the
wall of the blood vessel at an angle.
App. Br. 28.
The Rejections
1. The Examiner maintains that claims 1, 3–10, 12–17, and 19–26 are
unpatentable under 35 U.S.C. § 103(a) over Ravenscroft ’5583 in
view of Ravenscroft ’2864 and El-Nounou.5

2 Although listed in Appellants’ Claims Appendix, claims 33–36 have been
withdrawn and there is no outstanding rejection related to them. See App.
Br. 4; Ans. 4–16.
3 Ravenscroft et al., US 6,007,558, issued on Dec. 28, 1999.
4 Ravenscroft et al., US 7,056,286 B2, issued on Jun. 6, 2006.
5 El-Nounou et al., US 5,242,462, issued on Sept. 7, 1993.
Appeal 2012-006548
Application 10/894,382

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2. The Examiner maintains that claims 28 and 29 are unpatentable
under 35 U.S.C. § 103(a) over Ravenscroft ’558 in view of Irie.6
3. The Examiner maintains that claims 30–32 are unpatentable under
35 U.S.C. § 103(a) over Ravenscroft ’558 in view of Irie and
Ravenscroft ’286.
4. The Examiner maintains that claims 11, 18, and 27 are
unpatentable under 35 U.S.C. § 103(a) over Ravenscroft ’558 in
view of Ravenscroft ’286, El-Nounou, and Irie.

DISCUSSION

1. Ravenscroft ’558 in view of Ravenscroft ’286 and El-Nounou
Appellants argue that this rejection should be reversed based on
certain limitations common to independent claims 1, 12, and 19.
Accordingly, we limit our analysis below to the rejection of claim 1, which
is equally applicable to claims 12 and 19, and claims 3–10, 12–17, and 19–
26 stand or fall with claim 1.
The Examiner finds that Ravenscroft ’558 discloses each of the
limitations of claim 1 except for the requirement that the anchoring member
include a coiled member that is welded to the filter leg. Ans. 5–6. With
respect to these missing elements, the Examiner finds that Ravenscroft ’286
discloses a retrievable filter with anchoring members in a coiled
configuration, and the Examiner finds that El-Nounou teaches an
intravenous filter in which anchoring members are welded to the filter legs.
Id. at 6–7. The Examiner concludes that it would have been obvious to

6 Irie, US 5,370,657, issued on Dec. 6, 1994.
Appeal 2012-006548
Application 10/894,382

4
include a coiled anchoring member that is welded to the filter legs in
Ravenscroft ’558’s filter. Id.
The dispositive issue with respect to this rejection is whether the
Examiner has made a prima facie showing that the proposed combination of
art discloses a filter having coiled anchoring members welded to the legs.
Findings of Fact
We have determined that the factual findings in the analysis below are
supported at least by a preponderance of the evidence. See Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
Principles of Law
To justify combining reference teachings in support of a
rejection it is not necessary that a device shown in one
reference can be physically inserted into the device shown in
the other. The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted).
During prosecution, an application’s claims are given their broadest
reasonable scope consistent with the specification. In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim
must be read in light of the specification, as it would be interpreted by one of
ordinary skill in the art. Id.
Analysis
Appellants primarily argue that this rejection should be reversed
because one of ordinary skill in the art would not have had a reasonable
App
App

expe
anch
the f
App
bend
’286
Rave
Noun
at 11
unpe
in Fi
Figu
bloo
eal 2012-0
lication 10
ctation tha
oring mem
ilter leg w
ellants also
; the spira
does not b
nscroft ’2
ou’s devi
–24; Repl
For the r
rsuasive.
Ravensc
gures 1, 2
re 1 of Rav
d clot filte
06548
/894,382
t the anch
bers of R
hile minim
argue tha
l of Raven
end; the e
86 is not a
ce does no
y Br. 1–17
easons set
roft ’558 d
and 3, rep
enscroft ’
r having a
oring mem
avenscroft
izing dam
t the anch
scroft ’286
xternal for
pplied wit
t connect
.
forth belo
iscloses a
roduced b
558 depic
hub 12, w
5
bers of Ra
’558 and
age to the
ors in Rav
is not a c
ce applied
hin the blo
the anchor
w, we find
removabl
elow.
ts a side el
ire legs 26
venscroft
remain fun
blood ves
enscroft ’5
oil; the sp
to the spi
od vessel;
ing memb
each of t
e intraveno
evational v
, and hook
’286 can r
ctional fo
sel. App.
58’s devic
iral of Rav
ral membe
and the w
er to the le
hese argum
us filter a

iew of an
s 28. Rav
eplace the
r anchorin
Br. 20.
e do not
enscroft
r of
eld in El-
g. See id.
ents
s depicted
expanded
enscroft

g

App
App

’558
a leg
3, ll.
of a

vess
Figu
posit
Figu
eal 2012-0
lication 10
col. 3, ll.
of Raven
15–16; co
hook for a
Ravensc
el as depic
re 6 of Rav
ion. Rave
re 8 of Rav
06548
/894,382
13–14; col
scroft ’558
l. 4, ll. 62–
leg of Rav
roft ’286 d
ted in Figu
enscroft ’
nscroft ’2
enscroft ’
. 4, ll. 27–
’s filter in
64. Figur
enscroft ’
iscloses a
re 6 repro
286 depic
86 col. 4, l
286 is rep
6
37. Figur
cluding a j
e 3 is a sid
558’s filte
blood clot
duced belo
ts a blood
l. 9–10.
roduced be
e 2 is a sid
uncture se
e view of
r. Id. at co
filter imp
w.

clot filter i
low.

e view of
ction 30.
another em
l. 3, ll. 17
lanted wit
n a deploy
a hook for
Id. at col.
bodimen
–18.
hin a bloo
ed

t
d
App
App

Figu
of R
conf
emer
poin
secti
Rave
back
pred
discl
effec
can m
med
weld
eal 2012-0
lication 10
re 8 of Rav
avenscroft
iguration.”
Ravensc
ge from a
t, and this
ons which
nscroft ’2
toward th
etermined
oses that a
tive in ma
ake it dif
ical implan
El-Noun
ed to filter
06548
/894,382
enscroft ’
’286’s filt
Id. at col
roft ’286 d
n elongate
section pa
form curv
86 also dis
e longitud
force . . . .
nchoring h
ny instanc
ficult to pr
t device.”
ou disclos
legs as sh
286 depic
er in whic
. 4, ll. 13–
iscloses th
leg 12 is s
sses throug
es emerge
closes tha
inal axis o
” Id. at co
ooks, suc
es, are sub
operly po
Id. at col
es an intra
ow in Fig
7
ts an embo
h the anch
14; col. 7,
at, in use,
traight sec
h a blood
.” Id. at c
t “[t]he an
f the ancho
l. 3, ll. 23
h as those
ject to a n
sition and
. 1, ll. 50–
venous fil
ure 4 repro
diment of
or is in a “
ll. 59–66.
the “first
tion 110 b
vessel wa
ol. 7, l. 66
chors are f
r shaft in
–25. Furth
in Ravens
umber of d
maintain t
63.
ter with an
duced bel

a deploye
spiral

end of the
earing the
ll before f
–col. 8, l. 3
ormed to
response t
er, Raven
croft ’558
isadvanta
he position
choring m
ow.
d anchor
anchor to
anchor
ollowing
.
contract
o a
scroft ’286
, “although
ges which
of a
embers

Appeal 2012-006548
Application 10/894,382

8
Figure 4 depicts the distal end of a leg of El-Nounou’s filter including a
main portion 44, an attached segment 46, a weld 48, and a bent tip or hook
50. El-Nounou col. 3, ll. 25–26; col. 4, ll. 19–30.
Appellants argue that replacing the anchoring member of Ravenscroft
‘558 with the anchoring member of Ravenscroft ‘286 would not result in a
functional device because the anchoring member of Ravenscroft ‘286
requires a trigger mechanism to positively propel it through the vessel wall
that is not present in Ravenscroft ‘558 and because Ravenscroft ‘558 teaches
that it is undesirable for the anchoring member to significantly damage the
vessel wall. See App. Br. 14–20.
To the extent Appellants assert that the proposed combination of
Ravenscroft ’558 and Ravenscroft ’286 would not result in a functional
device because the specific anchoring spiral of Ravenscroft ’286 would not
function as a direct replacement for the anchoring hook of Ravenscroft ’558,
we disagree. A holding of obviousness does not require an exact
substitution of elements, and we conclude that the combined teachings of
these references would have suggested a filter with anchoring members as
claimed. Ravenscroft ’558, as noted by Appellants, discloses the desirability
that the filter is removable without significant damage to the blood vessel.
See Ravenscroft ’558 col. 2, ll. 21–25. However, Ravenscroft ’558
compares its filter with “previously known permanent vena cava filters” and
not other removable devices. Id. col. 4, ll. 54–55. Ravenscroft ’286 also
provides a temporary implant that is “designed to facilitate subsequent
removal” and has an improved anchoring system for maintaining the
position of the device. Ravenscroft ’286 col. 1, ll. 10–14, 60–63. Further,
Ravenscroft ’286 is designed to effectively anchor an implantable device
Appeal 2012-006548
Application 10/894,382

9
using “very small, fine anchor components.” Based on these disclosures, we
agree with the Examiner that it would have been obvious to include an
anchoring system having coiled anchoring member as in Ravenscroft ’286 in
the device of Ravenscroft ’558 to enhance the anchoring function of the
device. One of ordinary skill would also have recognized that the use of
“very small, fine anchor components” would help to minimize the damage to
the blood vessel upon removal of the device, thus addressing the concerns
raised in Ravenscroft ‘558.
Appellants also argue that the anchors in Ravenscroft ’558’s device do
not bend. Specifically, Appellants assert that juncture portion 30 flexes in
response to a withdrawal force and the hook 28 moves, but does not bend,
when the juncture section flexes. See Reply Br. 4. We find this argument
unpersuasive and agree with the Examiner’s finding that the anchoring
member in Ravenscroft ’558 may be defined as both the hook 28 and the
juncture portion 30 such that the anchoring member bends when an external
force is applied. A definition of the term bend is “to force back to an
original straight or even condition.” Merriam-Webster Online Dictionary,
http://www.merriam-webster.com/dictionary/bend (last visited on Nov. 18,
2014). The Specification does not include any specialized meaning of the
term bend, and we find that the Examiner’s conclusion that the hook and
juncture portion is an anchoring member that bends is consistent with this
definition of the term bend and the broadest reasonable interpretation of the
claim. Although Appellants disagree with the Examiner’s characterization,
Appellants do not provide persuasive evidence or explanation showing that
the Examiner’s characterization is inconsistent with the claim language, the
Specification, or the understanding of a person of ordinary skill in the art.
Appeal 2012-006548
Application 10/894,382

10
Further, regarding Ravenscroft ’286, Appellants also argue that the
spiral of Ravenscroft ’286 is not a coil. See Reply Br. 15. Appellants have
not identified any evidence of record that would indicate a specialized
meaning for the term coil that would exclude a spiral. We find that the
Examiner’s interpretation of coil to include a spiral is consistent with the
broadest reasonable interpretation of claim language in light of the
Specification, which does not include any specialized meaning of the term.
A definition of the term coil is “a (1) : a series of loops (2) : spiral.”
Merriam-Webster Online Dictionary, http://www.merriam-
webster.com/dictionary/coil (last visited on Nov. 18, 2014). Accordingly,
we find that the evidence of record supports the Examiner’s interpretation of
this term.
Appellants also argue that the spiral anchor in Ravenscroft ’286’s
device does not bend. Specifically, Appellants assert that the spiral itself
does not bend and simply ceases to exist as a coil when it is straightened.
App. Br. 21. However, in light of the definition of the term “bend,” supra,
we agree with the Examiner that when the anchoring member of Ravenscroft
’286 is withdrawn it is “bent from a curved configuration to a straightened
configuration.” See Ans. 14.
Next, Appellants argue that the anchoring member of Ravenscroft
’286 does not meet the claim limitations because the anchoring member does
not bend in response to an external force applied within the blood vessel.
Specifically, Appellants assert that, in use, the anchoring members of
Ravesncroft ’286 are deployed on the exterior surface of the blood vessel
and when they are retracted, force is applied external to the vessel, and not
within the vessel as required by the claim, to straighten the coil such that it
Appeal 2012-006548
Application 10/894,382

11
may pass through the vessel wall and into the filter leg. App. Br. 18. We
find that the claim, when properly construed, requires only that the coiled
member has the capability of bending when an external force is applied to it
within the blood vessel. As noted above, Ravenscroft ’286’s anchors are
formed to contract toward the center axis, thereby disengaging from the
vessel wall, when a predetermined force is applied, regardless of whether the
force is applied within or without the blood vessel. Accordingly, we find
Appellants’ argument on this point unpersuasive.
Finally, Appellants argue that El-Nounou does not disclose an
anchoring member welded to the filter leg because there is an intermediate
portion 46 between the weld 48 and the tip 50. In response, the Examiner
finds that both the segment 46 and tip 50 are part of the anchoring member,
and thus, the anchoring member is welded to the filter leg in El-Nounou.
We find that the Examiner’s definition of the anchoring member in El-
Nounou is consistent with the broadest reasonable interpretation of the
claim. While Appellants indicate that they disagree with the Examiner’s
characterization of El-Nounou, Appellants provide no explanation or
evidence showing why the Examiner’s characterization is inconsistent with
the claim language, the Specification, or the understanding of a person of
ordinary skill in the art.
Based on the foregoing, we conclude that Appellants have not
identified any reversible error in the Examiner’s rejection of claims 1, 3–10,
12–17, and 19–26, and thus, we affirm this rejection.
2. Ravenscroft ’558 in view of Irie
With respect to this rejection, Appellants argue, in addition to the
alleged deficiencies of Ravenscroft ’558 discussed above, that the anchoring
Appeal 2012-006548
Application 10/894,382

12
member of Ravenscroft ’558’s filter does not include “a shoulder configured
to act as a landing pad for the anchoring member to limit penetration into the
wall of the blood vessel by the anchoring member” as required by claim 28.
Specifically, Appellants argue that the shoulder identified by the Examiner is
not a portion of the anchor member as required by the claim but is simply a
part of the filter leg 26 to which the anchoring member is joined. App. Br.
24–25. We find this argument unpersuasive. We agree with the Examiner
that the distal end of Ravenscroft ’558’s filter leg may be considered a
shoulder portion of the anchoring member 28 that acts as a landing pad as
required by claim 28. We find that the Examiner’s characterization of the
anchoring member of Ravenscroft ’558 is consistent with the broadest
reasonable interpretation of the claim and Appellants have not provided
persuasive evidence showing that the Examiner’s characterization is
inconsistent with the claim language, the Specification, or the understanding
of a person of ordinary skill in the art.
Accordingly, Appellants have not identified any reversible error in the
Examiner’s rejection of claims 28 and 29, and thus, we affirm this rejection.
3. Ravenscroft ’558 in view of Irie and Ravenscroft ’286
Appellants do not raise separate arguments with respect to this
rejection beyond those addressed above. We therefore find that Appellants
have not identified any reversible error in the Examiner’s rejection of claims
30–32, and thus, we affirm this rejection.
4. Ravenscroft ’558 in view of Ravenscroft ’286, El-Nounou, and Irie
The only separate argument with respect to this rejection raised by
Appellants is that the Examiner erred “in not specifying which Ravenscroft
reference is said to essentially disclose the invention of claims 11, 18, and
Appeal 2012-006548
Application 10/894,382

13
27.” App. Br. 26–27. We find no reversible error. While the Examiner
references Ravenscroft without specificity, the Examiner does not rely on
either Ravenscroft reference to teach the limitations added by these claims.
Accordingly, we affirm this rejection.

CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1
and 3–32.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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