Ex Parte Voeller et al

Patent Trial and Appeal BoardApr 19, 2013

10880667 (P.T.A.B. Apr. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 10/880,667 06/30/2004 Virgil Voeller 1001.1773101 1121 11050 7590 04/22/2013 SEAGER, TUFTE & WICKHEM, LLC 1221 Nicollet Avenue Suite 800 Minneapolis, MN 55403 EXAMINER HUGHES, SAMUEL T ART UNIT PAPER NUMBER 3731 MAIL DATE DELIVERY MODE 04/22/2013 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 VIRGIL VOELLER and TRACEE EIDENSCHINK __________ Appeal 2012-001055 Application 10/880,667 Technology Center 3700 __________ Before ERIC GRIMES, FRANCISCO C. PRATS, and JEFFREY N. FREDMAN, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to an intravascular filter. The Examiner rejected the claims as failing to comply with the written description requirement. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2012-001055 Application 10/880,667 2 Statement of the Case Background “Intravascular filters can be used to treat vascular conditions such as pulmonary embolism. These devices can be inserted intravenously into a target location of the body such as an artery or vein, and can capture blood clots (emboli) contained in the blood stream before they can reach the heart and/or lungs and cause permanent damage to the body” (Spec. 1, ll. 6-10). The Claims Claims 1-17 and 21 are on appeal.1 Claim 1 is representative and reads as follows (emphasis added): 1. An intravascular filter, comprising: at least two filter legs comprising a first filter leg and a second filter leg, each filter leg having a free end and an opposite joined end, wherein each filter leg has an unconstrained configuration, a delivery configuration, and a deployed configuration; a center hub, and a filter axis extending through the hub, the joined end of each filter leg secured to the center hub, each filter leg extending from the center hub, each of the filter legs having a first portion extending generally in a first axial direction, a second portion generally extending in a second opposite axial direction, and an apex positioned between the first portion and the second portion at which an acute angle is formed between the first and second portions such that the center hub is disposed axially between the apex and the free end of each of the at least two filter legs; wherein the first portion extends between the center hub and the apex; 1 Claims 18-20 are no longer subject to rejection since the Examiner has withdrawn the anticipation rejection. Appeal 2012-001055 Application 10/880,667 3 the acute angle is defined by an angle  defined as an angle between the first portion of the filter leg and the second portion of the filter leg; an angle  defined as an angle between the first portion of the filter leg and a longitudinal axis extending through the center hub; and wherein the filter is biased to expand from a delivery configuration to an unconstrained configuration wherein angle  is greater than angle  in the unconstrained configuration. The issue The Examiner rejected claims 1-17 and 21 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement (Ans. 4-5). The Examiner finds that: Claims 1-17 and 21 all recite wherein the filter “is biased to expand from a delivery configuration to an unconstrained configuration.” The instant specification does not explicitly state or even mention an unconstrained configuration. Therefore, although Applicant may have inherent support for an unconstrained configuration, Applicant does not have support wherein the unconstrained configuration acts on or affects the filter. (Ans. 4-5). The issue with respect to this rejection is: Does the evidence of record support the Examiner’s conclusion that the Specification lacks descriptive support for a filter which “is biased to expand from a delivery configuration to an unconstrained configuration”? Appeal 2012-001055 Application 10/880,667 4 Findings of Fact The following findings of fact (“FF”) are supported by a preponderance of the evidence of record. 1. The Examiner finds, and Appellants do not dispute, that there is no ipsis verbis support for the claim language to a filter which “is biased to expand from a delivery configuration to an unconstrained configuration” (see Ans. 4; App. Br. 12). 2. Figure 1 of the Specification is reproduced below: “Figure 1 is a perspective view of an intravascular filter” (Spec. 4, l. 5). Appeal 2012-001055 Application 10/880,667 5 3. Figures 3-5 of the Specification are reproduced below: “Figure 3 is a partial cross-sectional view of the intravascular filter of Figure 1, shown in delivery configuration within an introducer sheath; Figure 4 is a partial cross-sectional view of the intravascular filter of Figure 1, shown partially deployed; Figure 5 is a partial cross-sectional view of the intravascular filter of Figure 1, shown deployed” (Spec. 4, ll. 8-13). Appeal 2012-001055 Application 10/880,667 6 4. The Specification teaches that filter 10 is in a “collapsed or delivery configuration within an introducer sheath” (Spec. 9, ll. 17-18). Principles of Law “In order for a disclosure to be inherent, however, the missing descriptive matter must necessarily be present in the ... specification such that one skilled in the art would recognize such a disclosure.” Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir. 1998). Analysis Figure 3 of the Specification discloses that filter 10 is in a “collapsed or delivery configuration within an introducer sheath” (FF 3-4). Figures 4 and 5 disclose the filter being deployed from the sheath into the blood vessel (FF 3). These figures show that the filter expands from a collapsed or delivery configuration to a configuration that is “unconstrained” by the introducer sheath, and is constrained only by the environment into which the filter is placed. In addition, the Examiner acknowledges that “Applicant may have inherent support for an unconstrained configuration” (Ans. 4-5). The figures do not show any separate activity or mechanism that is required to induce expansion, so the filter must therefore be “biased” or inherently arranged, so that upon being deployed from the introducer sheath, the filter inherently expands from the delivery configuration to a configuration which is not constrained by the introducer sheath. We agree with Appellants that the ordinary artisan would have reasonably recognized that the Specification, in figures 3-5, inherently discloses “wherein the filter is biased to expand from a delivery configuration to an unconstrained configuration” as required by claim 1. Appeal 2012-001055 Application 10/880,667 7 Conclusion of Law The evidence of record does not support the Examiner’s conclusion that the Specification lacks descriptive support for a filter which “is biased to expand from a delivery configuration to an unconstrained configuration.” SUMMARY In summary, we reverse the rejection of claims 1-17 and 21 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. REVERSED lp