Ex Parte Lafontaine et al

Patent Trial and Appeal Board

Nov 20, 2014

11049019 (P.T.A.B. Nov. 20, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte DANIEL M. LAFONTAINE, MARK L. JENSON, and
WILLIAM J. DRASLER
__________

Appeal 2012-005833
Application 11/049,019
Technology Center 3700
__________

Before DEMETRA J. MILLS, ULRIKE W. JENKS, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2012-005833
Application 11/049,019

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STATEMENT OF CASE
The following claim is representative.
1. A filter system, comprising:
an elongate filter body defining a lumen that extends from a proximal
end toward a distal end and including a catheter and an expandable filter
fixedly attached to a distal end of the catheter between the proximal end and
the distal end of the elongate filter body that selectively prevents passage of
particulate matter, wherein the expandable filter has a compressed state and
an expanded state; and
a valve within the expandable filter defining a lumen of the valve and
having a reversibly sealable opening defined by surfaces that deflect between
a closed configuration and an open configuration for unidirectional flow of a
fluid through the lumen of the valve, a frame of the valve adjoined to the
expandable filter adjacent the distal end of the elongate filter body, wherein
the expandable filter filters the unidirectional flow of the fluid passing
through the lumen of the valve in a longitudinal direction, and wherein the
particulate matter that is prevented from passing through the expandable filter
can be removed from the expandable filter in the expanded state through the
proximal end of the lumen of the elongate filter body as the valve provides
for the unidirectional flow of the fluid through the lumen of the valve.

Cited References

Root et al. US 6,673,090 B2 Jan. 6, 2004
Eskuri US 2004/0254601 A1 Dec. 16, 2004
Morrill et al. US 7,083,633 B2 Aug. 1, 2006

Grounds of Rejection
1. Claims 1, 2, and 5–11 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Root in view of Eskuri.
2. Claims 3 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Root in view of Eskuri and Morrill.

Appeal 2012-005833
Application 11/049,019

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FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages
4–11. The following facts are highlighted.
1. Figure 1A of Appellants’ Specification is reproduced below.

Figure 1A shows that, “[t]he expandable filter region 150 can be
attached to the distal end of the catheter 180.” (Spec. as amended,
[0036], emphasis added.)
2. Appellants’ Specification states that, “[m]ethods of coupling the
[leaflet] frame 120 to the expandable filter region 150 of the
elongate filter body 102 can be as described herein for coupling the
valve leaflets 118 to the frame 120.” (Spec. 10, ll. 15–18.)
3. Appellants’ Specification states that
Valve leaflets 118 can be coupled to the various
embodiments of valve frame 120, as described herein, in
any number of ways. For example, a variety of fasteners
can be used to couple the material of the valve leaflets
118 to the valve frame 120. Fasteners can include, but
are not limited to, biocompatible staples, glues, and
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Application 11/049,019

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sutures. In one embodiment, the material of the valve
leaflets 118 can be wrapped at least partially around the
valve frame 120 and coupled using the fastener. In an
additional embodiment, valve leaflets 118 can be coupled
to the various embodiments of valve frame 120 through
the use of heat sealing, solvent bonding, adhesive
bonding, or welding the valve leaflets 118 to either a
portion of the valve leaflet 118 (i.e., itself) and/or the
valve frame 120. Valve leaflets 118 can also be attached
to valve frame 120 according to the methods described in
U. S. Patent Application Publication US 2002/0178570 to
Sogard et al., which is hereby incorporated by reference
in its entirety.

(Spec. 9, ll. 6–18.)

4. The ordinary meaning of the term “fix”1 is
a. To place securely; make stable or firm: fixed the tent
poles in the ground. See Synonyms at fasten.
b. To secure to another; attach: fixing the notice to the
board with tacks.

5. Figure 4 of Root is reproduced below.

Figure 4 shows “filtration assembly includes proximal edge 21
circumferentially in contact with an outer surface of the catheter.”
“Filter mesh 25 is associated with the outer surface of the catheter at

1 The Free Dictionary, http://www.thefreedictionary.com/fix (last
visited on November 15, 2014).

Appeal 2012-005833
Application 11/049,019

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proximal edge 21 and is operably connected to the filter assembly at
distal edge 22.” (Col 5, ll. 23–32) (emphasis added.)

6. According to Root, “[a]fter completion of the ablative procedure, the
filtration assembly is contracted and removed with the catheter,
thereby preventing the emboli from entering left atrium 117, through
mitral valve 130, left ventricle 135, and exiting aorta 100
downstream to lodge in the peripheral organs.” (Col. 6, ll. 26–31.)

Discussion
ISSUE
Among other arguments, the Examiner finds with respect to “fixedly
attaching” the filter to the catheter that
Figures 6A and 6B of Root clearly show a filter (20) attached to
the distal end of the catheter (10) at edge (21). . . . [T]he filter is
“fixedly” attached since edge (21) of the filter is
“circumferentially in contact with an outer surface of the
catheter” (column 6, lines 41-42 of Root). Furthermore, the
edge (21) remains in contact with the catheter when the filter is
expanded or contracted (see Figures 6A and 6B). Therefore, the
filter is fixedly attached to the catheter at filter edge (21).

(Ans. 7.)

Appellants contend that
Root discloses only that “The filtration assembly includes
proximal edge 21 circumferentially in contact with an outer
surface of the catheter” or “Filter mesh 25 is associated with the
outer surface of the catheter at proximal edge 21”. (Col. 5, lines
27- 33.) Accordingly, Root fails to teach that proximal edge 21
of the filter assembly is attached in any way to the distal end of
catheter 10, much less disclosing “an expandable filter fixedly
attached to a distal end of the catheter” (emphasis added), as
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recited in independent claim 1 and, mutatis mutandis, in
independent claim 8. Further, “attached” in context, and as
viewed by the court, means secured to or joined to the solid
surface of the object in question”, mere contact is insufficient.
“attached is construed to mean secured or joined to the solid
surface” (Affymetrix, Inc. v. Hyseq, Inc., 132 F. Supp. 2d 1212,
2001 U.S. Dist. (N.D. Cal. 2001)

(Reply Br. 2; see also App. Br. 10 for similar argument.)

The issue is: Does the cited prior art support the Examiner’s finding
that the claimed subject matter is obvious? Does Root disclose a filtration
device “fixedly attached” to the catheter?

PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office). The Board “determines the scope of claims in patent
applications not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction ‘in light of the specification as
it would be interpreted by one of ordinary skill in the art.’” Phillips v. AWH
Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (quoting In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
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case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (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 relevant art; and (4) objective
evidence of nonobviousness, if present.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).

ANALYSIS
We agree with the Examiner’s fact finding, statement of the rejection
and responses to Appellants’ arguments as set forth in the Answer. We find
that the Examiner has provided evidence in the prior art to support a prima
facie case of obviousness. We provide the following additional comment to
argument set forth in the Answer.
Appellants argue that Root does not show a filter “fixedly attached” to
the catheter. (App. Br. 10.) We are not persuaded. Appellants’
Specification, as amended, shows and describes the filter 150 as “attached”
to catheter 180. (FF1; Spec. ¶[0036].) The Specification indicates how
leaflets 128 are attached to leaflet frame 120 (FF2) and how leaflet frame
120 is attached to elongated filter 150 (FF3), but does not specifically
indicate how elongated filter 150 is “fixedly attached” to catheter 180.
Thus, we give the term “fixedly attached” its ordinary meaning. Appellant
must show in the Specification an intent to re-define a term in order to act as
his own lexicographer. “Without evidence in the patent specification of an
express intent to impart a novel meaning to a claim term, the term takes on
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its ordinary meaning.” Optical Disc Corp. v. Del Mar Avionics, 208 F.3d
1324, 1334 (Fed. Cir. 2000).
The term “fix” means “To secure to another; attach.” (FF4.) Figures
4, 6A, and 6B of Root show a filter “attached to,” “associated with,” or
“contacting the catheter,” circumferentially. (FF5.) In our view, this
disclosure of attachment or securing of the filter to the catheter in Root is
sufficient to support a prima facie case of obviousness. Moreover, Root
indicates that “[a]fter completion of the ablative procedure, the filtration
assembly is contracted and removed with the catheter” (FF6.) Thus, the
filter is fixed to the catheter to an extent that it is “removed with the
catheter.”
“After a prima facie case of obviousness has been established, the
burden of going forward shifts to the applicant. Rebuttal is merely ‘a
showing of facts supporting the opposite conclusion,’ and may relate to any
of the Graham factors including so-called secondary considerations.” In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). In the present case, we do
not find Appellants have not come forth with sufficient rebuttal evidence
showing that the elongated filter of Root is not “fixedly attached” to the
catheter of Root. For example, Appellants provide no evidence that the filter
of Root is left within the body after surgery or that it would have a tendency
to fall off the catheter of Root.
Appellants argue on page 15 of the Brief and on page 7 of the Reply
Brief, that Root would become inoperable for its intended purpose if
modified as proposed, by Eskuri. We agree with how the Examiner
addressed these arguments on pages 9–11 of the Answer.
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We agree with the Examiner’s responses to additional arguments
presented by Appellants and addressed by the Examiner on pages 7–11 of
the Answer. Appellants do not address the remaining rejections on the
merits, but rely on their arguments for Rejection 1. (App. Br. 16–17.)
Rejection 2 is affirmed for the reasons set forth for Rejection 1.
We do not find that Appellants have rebutted the Examiner’s prima
facie case of obviousness by a preponderance of the evidence. The
obviousness rejections are affirmed.
CONCLUSION OF LAW
The cited references support the Examiner’s obviousness rejections,
which are affirmed for the reasons of record.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc

Notice of References Cited

Application/Control No.

11/049,019
Applicant(s)/Patent Under
Reexamination
Daniel M. Lafontaine et al.
Examiner

Tom Hughes
Art Unit

3700

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The Free Dictionary, http://www.thefreedictionary.com/fix (last visited on
November 15, 2014).

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*A copy of this reference is not being furnished with this Office action. (See Manual of Patent Examining Procedure, Section 707.05(a).)
**APS encompasses any electronic search i.e. text, image, and Commercial Databases.
U.S. Patent and Trademark Office
PTO-892 (Rev. 03-98Notice of References Cited Part of Paper No. 16
thefreedictionary.com
fix ks)
v.fixed, fix·ing, fix·es
v.tr.
1.
a. To place securely; make stable or firm: fixed the tent poles in the ground. See Synonyms at
fasten.
b. To secure to another; attach: fixing the notice to the board with tacks.
2.
a. To put into a stable or unalterable form: tried to fix the conversation in her memory.
b. To make (a chemical substance) nonvolatile or solid.
c. Biology To convert (nitrogen) into stable, biologically assimilable compounds.
d. To kill and preserve (a specimen) intact for microscopic study.
e. To prevent discoloration of (a photographic image) by washing or coating with a chemical
preservative.
3. To direct steadily: fixed her eyes on the road ahead.
4. To capture or hold: The man with the long beard fixed our attention.
5.
a. To set or place definitely; establish: fixed her residence in a coastal village.
b. To determine with accuracy; ascertain: fixed the date of the ancient artifacts.
c. To agree on; arrange: fix a time to meet.
6. To assign; attribute: fixing the blame.
7.
a. To correct or set right; adjust: fix a misspelling; fix the out-of-date accounts.
b. To restore to proper condition or working order; repair: fix a broken machine.
c. Computer Science To convert (data) from floating-point notation to fixed-point notation.
8. To make ready; prepare: fixed the room for the guests; fix lunch for the kids; fixed himself a milkshake.
9. To spay or castrate (an animal).
10. Informal To take revenge upon; get even with.
11. To influence the outcome or actions of by improper or unlawful means: fix a prizefight; fix a jury.
v.intr.
1. To direct one's efforts or attention; concentrate: We fixed on the immediate goal.
2. To become stable or firm; harden: Fresh plaster will fix in a few hours.
3. Chiefly Southern U.S. To be on the verge of; to be making preparations for. Used in progressive
tenses with the infinitive: We were fixing to leave without you.
n.
1.
a. The act of adjusting, correcting, or repairing.
b. Informal Something that repairs or restores; a solution: no easy fix for an intractable problem.
2. The position, as of a ship or aircraft, determined by visual observations with the aid of equipment.
3. A clear determination or understanding: a briefing that gave us a fix on the current situation.
4. An instance of arranging a special consideration, such as an exemption from a requirement, or an
improper or illegal outcome, especially by means of bribery.
5. A difficult or embarrassing situation; a predicament. See Synonyms at predicament.
6. Slang An amount or dose of something craved, especially an intravenous injection of a narcotic.
Phrasal Verb:
fix up
1. To improve the appearance or condition of; refurbish.
2. To provide; equip.
3. Informal To provide a companion on a date for: fixed me up with an escort at the last minute.
Idiom:
fix (someone's) wagon
To get revenge on another.
Page 1 of 12fix - definition of fix by The Free Dictionary
11/15/2014http://www.thefreedictionary.com/p/fix