Ex Parte Arcand et al

Patent Trial and Appeal Board

Mar 9, 2016

12548558 (P.T.A.B. Mar. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/548,558 08/27/2009
11050 7590 03/11/2016
SEAGER, TUFTE & WICKHEM, LLP
100 South 5th Street
Suite 600
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Ben Arcand
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1001.2152101 7342
EXAMINER
BACHMAN, LINDSEY MICHELE
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
03/11/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
BSC.USPTO@stwiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BEN ARCAND, GREG DALLMAN, JIM
ANDERSON, ERIN GUEST, KYLE HENDRIKSON, and AL
UTKE
Appeal2013-002521
Application 12/548,558
Technology Center 3700
Before JILL D. HILL, JAMES J. MAYBERRY, and LEE L. STEPINA,
Administrative Patent Judges.
MAYBERRY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ben Arcand et al. (Appellants) seek our review under 35 U.S.C. § 134
of the Examiner's rejections of claims 1-8, 10, 11, and 16-20. Claim 9 is
canceled and claims 12-15 are withdrawn. Appeal Br. 4. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
Appeal2013-002521
Application 12/548,558
CLAIMED SUBJECT MATTER
The claims are directed to an embolic protection device with an
improved filter membrane. Spec. 1, 5-7. Claims 1 and 16 are independent.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. An embolic protection filter device, comprising:
an elongate shaft;
a filter coupled to the shaft, the filter including a filter
frame and a filter membrane having a plurality of apertures
formed therein attached to the filter frame;
wherein the filter is configured to shift between a first
collapsed configuration and a second expanded configuration;
and
wherein the apertures have a first shape when the filter is
in the first configuration and a second shape when the filter is
in the second configuration,
wherein the apertures are arranged to provide auxetic
properties to the filter membrane.
REJECTIONS
I. Claims 1-8, 10, and 11 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement.
II. Claims 1-7, 10, and 11 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Dieck (US 6,890,341 B2, issued May 10, 2005)
and Sridharan (US 2003/0124279 Al, published July 3, 2003).
III. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dieck, Sridharan, and Boyle (US 6,695,865 B2, issued
Feb. 24, 2004).
IV. Claims 16-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dieck and Boyle.
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Application 12/548,558
ANALYSIS
Rejection I
Claim 1 recites, in relevant part, "wherein the apertures are arranged
to provide auxetic properties to the filter membrane." Appeal Br. 24, Claims
App. The Examiner determines that one of ordinary skill in the art could not
make or use the invention without undue experimentation, because the
Specification fails to "show or describe an arrangement of apertures that
would provide auxetic properties to the filter membrane." Final Act. 3--4;
see also Answer 3--4 ("One of ordinary skill in the art would require undue
experimentation to determine the arrangement of apertures that would
provide auxetic properties to the membrane.").
Appellants contend, with respect to this rejection, that "[t]he
Examiner's comments have indicated a belief that the claim recites a filter
membrane formed from an auxetic material rather than a filter membrane
which exhibits auxetic behavior attributable to the presence of the
apertures." Appeal Br. 8. This contention is misplaced, as we understand
the Examiner's rejection to be based on the belief that the membrane does
not have to be made of an auxetic material and, instead, the recited auxetic
properties result from the shape and arrangement of the recited apertures.
See Final Act. 4. In the Final Action, the Examiner recounts exchanges
during prosecution-in which Appellants contended that the membrane of
claim 1 did not have to be made of an auxetic material to exhibit auxetic
properties and that these properties are based on the shape and arrangement
of the apertures. See id. The Examiner then determines that, based on this
contention, the Specification fails to show or describe the aperture shapes
and arrangements in sufficient detail such that one of ordinary skill in the art
could make or use the invention of claim 1 without undue experimentation.
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Application 12/548,558
Id.; see also Answer 3--4 ("Appellant[s'] [S]pecification and drawings show
several examples of aperture arrangement in Figure 16-22 but none of these
examples are identified as an aperture arrangement that provides auxetic
properties to the filter membrane.").
Appellants argue that "the claimed subject matter is adequately
disclosed in the specification at page 8, lines 25-26: 'In some embodiments,
the apertures may be arranged to provide auxetic properties to filter
membrane 22. '" Appeal Br. 9. This argument does not apprise us of
Examiner error. As the Examiner correctly responds, Rejection I concerns
enablement, not written description. Answer 2-3. The issue is whether an
artisan of ordinary skill could make or use the invention of claim 1 without
undue experimentation. See AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244
(Fed. Cir. 2003) ("The enablement requirement is satisfied when one skilled
in the art, after reading the specification, could practice the claimed
invention without undue experimentation.") (quoting In re Wands, 858 F.2d
731, 736-37 (Fed. Cir. 1988)). A disclosure that merely states that apertures
may be arranged in a way to provide auxetic properties to a filter membrane
fails to explain how the apertures need to be arranged.
Although not required, the Examiner makes findings for certain
Wands factors-a non-exhaustive list of factors used in determining whether
any necessary experimentation to make or use an invention would be undue.
See Answer 3 (listing factors); see also Wands, 858 F.2d at 736-39
(explaining and analyzing factors). The Examiner finds that the
Specification provides no direction or working examples of shapes and
arraignments of apertures to arrive at a membrane that exhibits auxetic
properties. Answer 3--4. The Examiner also finds that the state of the prior
art discloses auxetic materials as membranes and membranes with apertures,
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Application 12/548,558
but no prior art is identified that discloses arranging apertures to provide
auxetic properties of a membrane. See id. Appellants do not address these
findings nor address any of the other Wands factors in reply. See Reply Br.
1--4.
Appellants argue that "[t]he instant specification discloses, among
other suitable aperture shapes and combinations of shapes, apertures 424
[depicted in Figure 10 of the Specification] which, when provided as a
pattern of apertures in a (non-auxetic) membrane 22, suffices to enable" the
claim limitation of claim 1 at issue. Appeal Br. 11; see also Spec. 8:25-9: 1
(providing that aperture 424, depicted in Figure 10 of the Specification,
illustrates how a square aperture that exhibits auxetic properties may
appear). This argument fails to apprise us of Examiner error. As the
Examiner correctly responds, "Appellant[s'] disclosure does not describe or
show what is considered a 'suitably repeated' arrangement of apertures nor
does the [S]pecification disclose which aperture shapes can be 'suitably
repeated' to impart auxetic properties." Answer 5. Appellants fail to
identify any disclosure in the Specification that would adequately guide one
of ordinary skill in the art as to how to arrange the given shapes in a way
such that the membrane exhibits auxetic properties. Indeed, aperture 424---a
single depiction-is the only depiction of a resulting aperture for a
membrane exhibiting auxetic material. The Specification does not provide
any arrangement of square apertures that would result in aperture 424 or
otherwise provide any guidance on how one of ordinary skill in the art
would determine how to arrange square apertures in a suitably repeated
arrangement to arrive at a membrane that exhibits auxetic properties.
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Appeal2013-002521
Application 12/548,558
As Appellants explain:
In general, the material of the membrane, specific
arrangement of apertures, and the shape( s) of the apertures
function together to determine the degree of auxetic character
obtained and so any particular pattern which might have been
illustrated would not necessarily have produced the same
behavior in a non-elastic membrane as it would in a highly
elastic material. Illustration of a specific pattern of apertures, as
apparently expected by the Examiner, is inappropriate to enable
the claim when the material of the membrane has not been
specified.
Appeal Br. 12. This explanation further supports the Examiner's rejection-
Appellants recognize that membrane material, aperture shape, and aperture
arrangement all contribute to whether the filter membrane would exhibit
auxetic properties. However, the Specification provides no guidance to the
artisan of ordinary skill as to how to arrive at the correct combination of
these three variables to make or use the claimed invention without unduly
experimenting on different combinations of materials, shapes, and
arrangements.
Appellants further contend that "[ o ]ne of ordinary skill in the art is
aware of the features in auxetic structures which give rise to auxetic
properties through redirection of stresses and strains within the structure."
Reply Br. 3. "Accordingly, the design principles are well known and
implementation of the design principles in a specific material does not
require undue experimentation as illustrated by the several examples
presented in the Appeal Brief." Id. We find this argument unpersuasive as
well. Appellants point to no persuasive evidence in the record to support
this contention. "Attorney's argument in a brief cannot take the place of
evidence." In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (citation
omitted).
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Application 12/548,558
For the reasons above, we sustain the Examiner's rejection of
independent claim 1, and claims 2-8, 10, and 11, which directly depend
from claim 1, under 35 U.S.C. § 112, first paragraph, as failing to comply
with the enablement requirement.
Rejection II
In rejecting claim 1 as obvious over Dieck and Sridharan, the
Examiner finds that Dieck discloses much of the subject matter of claim 1,
except "apertures [that] are arranged to provide auxetic properties to the
filter membrane." Final Act. 4--5. The Examiner further finds that
Sridharan teaches the use of auxetic materials for filter membranes. Id. at 5.
The Examiner determines that "[i]f an auxetic material, such as the one
described by Sridharan[], is used for the filter membrane in the Dieck[]
device, it would be obvious that the apertures would provide auxetic
properties to the filter membrane." Id. The Examiner concludes that claim 1
"would have been obvious because the substitution of one filter membrane
material for another would have yielded predictable results to one of
ordinary skill in the art at the time of the invention." Id.
Appellants argue that:
A membrane formed from an auxetic material, such as
that of Sridharan, having the oval/circular apertures of Dieck
does not inherently result in a membrane in which it is the
oval/circular apertures of Dieck which "provide auxetic
properties to filter membrane" and the Examiner has not
provided a basis in fact and/or technical reasoning to reasonably
support the assertion that the oval/circular apertures of Dieck
necessarily provide whatever auxetic behavior may be present
in the resulting combination.
Appeal Br. 13-14.
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Application 12/548,558
We agree with Appellants. The Examiner fails to adequately support
the position that substituting Sridharan's auxetic material for Dieck's
membrane material would result in an arrangement of apertures that provide
auxetic properties to the filter membrane. See Answer 6 (explaining that the
Examiner's conclusory finding is warranted based on the lack of enabling
disclosure in the Specification but providing no other support).
For the reason above, we do not sustain the Examiner's rejection of
claim 1 under 35 U.S.C. § 103(a) as being unpatentable over Dieck and
Sridharan. We further do not sustain the rejection of claims 2-7, 10, and 11,
which directly depend from claim 1, under 35 U.S.C. § 103(a) as being
unpatentable over Dieck and Sridharan.
Re} ection III
In rejecting claim 8, which depends from independent claim 1, as
obvious over Dieck, Sridharan, and Boyle, the Examiner relies on the
obviousness determination for claim 1. Final Act. 6. As discussed above in
connection with our analysis of Rejection II, we find that determination
deficient. The Examiner does not rely on Boyle to remedy this deficiency.
Accordingly, we do not sustain the rejection of claim 8 under 35
U.S.C. § 103(a) as being unpatentable over Dieck, Sridharan, and Boyle.
Rejection IV
Independent claim 16 recites, in relevant part, "wherein a plurality of
slits are formed in the filter membrane without any substantial removal of
material." Appeal Br. 26, Claims App. The Examiner finds that Dieck
discloses much of the subject matter of claim 16, except for the recited slits
formed without any substantial removal of material. Final Act. 6. The
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Appeal2013-002521
Application 12/548,558
Examiner further finds that Boyle discloses slits that appear to be formed
without any removal of material. Id. at 7 (relying on the apertures (slots 30)
shown in Boyle's Figure 3a). As the Examiner explains, "[i]t is clear that
there is no substantial removal of material to form the slots ... : if material
was removed to create the slots, the missing material could be clearly seen in
Figure 3a, which shows the membrane in the collapsed configuration." Id.
The Examiner further determines that the above-quoted claim limitation is a
product-by-process limitation and, as such, the burden is shifted to
Appellants to explain the distinctions over the prior art imparted by the
process. Id.
Appellants argue that the Examiner fails to adequately support the
finding that Boyle's slots correspond to the recited slits. Appeal Br. 21. As
Appellants explain, the plain and ordinary meaning of slit is a long thin cut.
Id. This meaning is consistent with the use of the term "slit" in the
Specification. See Spec. 8, 11-14. In contrast, Appellants argue that the
ordinary meaning of the term slot is a long, narrow hole, which suggests that
material is removed to form the hole. Appeal Br. 21. Appellants also point
to an example in Boyle, which indicates that the apertures are formed by
etching, which would remove material. Id. at 20.
Appellants also argue that the basis of the Examiner's finding, which
is based on the appearance of the slots in Figure 3a, is improper-the lack of
a white region in slots 30 is likely due to the thickness of the graft's wall, not
an indication that no material was removed from Boyle's membrane in
forming the slots. See Appeal Br. 21.
Appellants' arguments are persuasive of Examiner error. The
Examiner fails to adequately support the finding that Boyle's slots 30 are
slits formed without any substantial removal of material as required by claim
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Application 12/548,558
16. The Examiner's reliance on the depiction of these openings in Boyle's
Figure 3a attributes characteristics to the depicted embodiment that cannot
be discerned from the details provided in the drawing. Cf Hockerson-
Halberstadt, Inc. v. Avia Group Int'!, Inc., 222 F.3d 951, 956 (Fed. Cir.
2000) ("[I]t is well established that patent drawings do not define the precise
proportions of the elements and may not be relied on to show particular sizes
if the specification is completely silent on the issue.") (citations omitted).
Further, the one example provided in Boyle indicates that material is
removed in forming Boyle's apertures. See Boyle, 10:20-24.
The Examiner's determination that the claim limitation "wherein a
plurality of slits are formed in the filter membrane without any substantial
removal of material" is a product-by-process limitation fails to support the
rejection. "A product-by-process claim is 'one in which the product is
defined at least in part in terms of the method or process by which it is
made."' Smithkline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1315
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