Ex Parte Wasicek et al

Patent Trial and Appeal BoardSep 17, 2012

11093662 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/093,662 03/30/2005 Lawrence D. Wasicek 1001.1887101 9241 11050 7590 09/17/2012 SEAGER, TUFTE & WICKHEM, LLC 1221 Nicollet Avenue Suite 800 Minneapolis, MN 55403 EXAMINER ANDERSON, GREGORY A ART UNIT PAPER NUMBER 3773 MAIL DATE DELIVERY MODE 09/17/2012 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte LAWRENCE D. WASICEK and RICHARD J. RENATI ____________________ Appeal 2010-009383 Application 11/093,662 Technology Center 3700 ____________________ Before: EDWARD A. BROWN, MICHELLE R. OSINSKI, and SCOTT E. KAMHOLZ, Administrative Patent Judges. KAMHOLZ, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009383 Application 11/093,662 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-8, 10-14, 16, 17, 19-21, and 23-26. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE CLAIMED SUBJECT MATTER The claims are directed to intravascular devices. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An intravascular device comprising a filter assembly and a filter delivery member; the filter delivery member including an elongate member having a distal end and a proximal end, the elongate member comprising: a proximal region defining first, second and third lumens formed within the elongate member and having first, second and third ports extending through a side wall of the elongate member; and a distal region defining a containment lumen formed within the elongate member and a fourth port; wherein the first, second and third lumens extend from the first, second and third ports, respectively, to a proximal end of the containment lumen, wherein at least one of the first, second, or third lumens does not extend distally of the proximal end of the containment lumen; the filter assembly comprising: a filter body defining a distal guidewire lumen extending therethrough; a filter attached to the filter body; and a filter wire attached to the filter body; wherein the filter assembly is shaped and configured to fit within the containment lumen. Appeal 2010-009383 Application 11/093,662 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Shaknovich US 5,669,924 Sep. 23, 1997 Nool Chiu Beulke US 2002/0072712 A1 US 2004/0064099 A1 US 2004/0167565 A1 Jun. 13, 2002 Apr. 1, 2004 Aug. 26, 2004 REJECTIONS Appellants seek our review of the following rejections: Claims 1-8, 10-14, 16, 17, 20, 21, and 26 under 35 U.S.C. § 103(a) as encompassing subject matter unpatentable over Beulke in view of Shaknovich. Claim 19 under 35 U.S.C. § 103(a) as encompassing subject matter unpatentable over Beulke in view of Chiu. Claims 23-25 under 35 U.S.C. § 103(a) as encompassing subject matter unpatentable over Beulke in view of Nool. ANALYSIS 1. Claims 1-8, 10-14, 16, 17, 20, 21, and 26 Appellants argue these claims as a group. Br. 5-9. We therefore select claim 1 as representative and decide the appeal with respect to all claims in this group on the basis of claim 1 alone; see 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appellants do not challenge any of the Examiner’s findings as to what Beulke and Shaknovich disclose. Rather, Appellants argue that (a) neither reference discloses or suggests the use of multiple guidewire lumens (Br. 6); Appeal 2010-009383 Application 11/093,662 4 (b) Shaknovich teaches away from use of multiple guidewire lumens (id. at 6-7); (c) the Examiner’s proposed modification faces significant unaccounted-for technical challenges (id. at 7-8); and (d) the Examiner’s proposed modification requires impermissible changes to Beulke’s device (id. at 8). We consider these arguments in turn. a. Neither reference discloses or suggests the use of multiple guidewire lumens. The Examiner acknowledges that neither reference teaches the use of multiple guidewire lumens and observes that the addition of a third lumen comes rather from a duplication of existing structure in Beulke to exploit the well-known use of multiple guidewires as evidenced by Shaknovich. Ans. 6. Appellants’ argument is non-responsive to the rejection because it does not address this finding by the Examiner, nor does it address the Examiner’s conclusion that duplication of structure does not confer patentability in the absence of unexpected results. It therefore does not convince us of error. b. Shaknovich teaches away from use of multiple guidewire lumens. The Examiner found (Ans. 6), and we agree, that while Shaknovich fails to disclose multiple guidewire lumens, such failure does not amount to a teaching away from the use of multiple guidewire lumens. Appellants’ contention (Br. 6), that Shaknovich’s use of two guidewires within a single lumen amounts to teaching away from separate lumens, is unsupported by any persuasive argument or evidence showing why one of ordinary skilled in the art would have been discouraged by such disclosure from making the proposed modification to Beulke. This argument therefore does not convince us of error. Appeal 2010-009383 Application 11/093,662 5 c. The Examiner’s proposed modification faces significant unaccounted-for technical challenges. Appellants’ argument that the Examiner’s proposed modification presents “considerable technical difficulty” and is unaccompanied by any reasoning to overcome such “technical challenges” (Br. 7-8) is unsupported by any evidence describing and demonstrating the existence of any such “challenges.” Such unsubstantiated arguments do not convince us of error. d. The Examiner’s proposed modification requires impermissible changes to Beulke’s device. Appellants argue that adding a third lumen to Beulke would “require a larger device in order to support the additional materials,” but that such enlargement conflicts with Beulke’s “expressly stated goal” to “ ‘help reduce the profile of the filtering device and/or associated delivery and retrieval catheters’ ” (Br. 8, quoting Beulke para. [0025]). Again, this argument is unsubstantiated by evidence. Beulke does not present device size as an “expressly stated goal”; rather, it is presented as one desirable property that Beulke’s device “can help” achieve. See Beulke para. [0025]. Appellants also do not support their argument with evidence to show that a larger size would necessarily result from the proposed modification of Beulke. We are not convinced of error. 2. Claim 19 Appellants argue for patentability of claim 19 based on its dependence from claim 1. Br.9. Appellants’ nonspecific reference to “additional distinguishing elements” is not a persuasive argument. We find that Appellants have not identified reversible error in this rejection for the reasons given with respect to claim 1. Appeal 2010-009383 Application 11/093,662 6 3. Claims 23-25 Appellants argue for patentability of claims 23-25 based on their dependence from claim 1. Br. 10. Appellants’ nonspecific reference to “additional distinguishing elements” is not a persuasive argument. We find that Appellants have not identified reversible error in this rejection for the reasons given with respect to claim 1. DECISION For the above reasons, the Examiner’s rejection of claims 1-8, 10-14, 16, 17, 19-21, and 23-26 is AFFIRMED. 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) (2009). AFFIRMED MP