Ex Parte Arcand et alDownload PDFPatent Trial and Appeal BoardMar 9, 201612548558 (P.T.A.B. Mar. 9, 2016) Copy Citation 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 Claim 9 is canceled and claims 12-15 are withdrawn.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. 2 Appeal2013-002521 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. 3 Appeal2013-002521 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, 4 Appeal2013-002521 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. 5 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). 6 Appeal2013-002521 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. 7 Appeal2013-002521 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 8 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 9 Appeal2013-002521 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 /T""'I 1 r"i • I"\ f\ f\ f\._ / ' • T\ • , T\ , T rT11 1 r--, #', T\ , T ~tCopy with citationCopy as parenthetical citation