Ex Parte Ferren et al

Patent Trial and Appeal Board

Nov 28, 2016

12004107 (P.T.A.B. Nov. 28, 2016)

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.
SE1-1100-US 8755
EXAMINER
MEHTA, BHISMA
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
12/004,107 12/18/2007
80118 7590 11/28/2016
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
Bran Ferren
11/28/2016 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 BRAN FERREN, RODERICK A. HYDE,
MURIEL Y. ISHIKAWA, ERIC C. LEUTHARDT,
DENNIS J. RIVET, LOWELL L. WOOD, JR., and
VICTORIA Y. H. WOOD
Appeal 2013-008005
Application 12/004,107
Technology Center 3700
Before PATRICK R. SCANLON, MICHELLE R. OSINSKI, and
BRADLEY B. BAYAT, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Bran Ferren et al. (Appellants)1 appeals under 35 U.S.C. § 134 from
the Examiner’s final decision rejecting claims 293—296, 298, 302—305, 307,
320, and 323—327, which are all of the pending claims. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is Invention Science
Fund I, LLC, an affiliate of Intellectual Ventures Management, LLC.
Appeal Br. 4.
Appeal 2013-008005
Application 12/004,107
THE CLAIMED SUBJECT MATTER
Claim 293, the sole independent claim on appeal is reproduced below
and is representative of the claimed subject matter on appeal.
293. A therapeutic administration system comprising:
one or more capture components configured to accelerate
a decrease in a local concentration of one or more therapeutic
structures along a downstream portion of a vasculature; and
one or more dispensation components configured to
release the one or more therapeutic structures into an upstream
portion of the vasculature.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Ranchod US 2008/0058758 A1 Mar. 6, 2008
THE REJECTION
Claims 293—296, 298, 302—305, 307, 320, and 323—327 stand rejected
under 35 U.S.C. § 102(e) as anticipated by Ranchod. Final Act. 3—8.
OPINION
Claims 293—296, 298, 302, 303, 305, 320, and 323—327
The Examiner finds that Ranchod discloses all of the limitations of
independent claim 293, including “one or more capture components
configured to accelerate a decrease in a local concentration of one or more
therapeutic structures along a downstream portion of a vasculature.” Final
Act. 3. In particular, the Examiner points to inner catheter assembly 70,
which may be extended or retracted relative to outer catheter assembly 20
via control device 134 such as computer and/or display device 136, as the
one or more capture components. Id.', Ranchod, 173. The Examiner states
2
Appeal 2013-008005
Application 12/004,107
that inner catheter assembly 70 includes filtration element 74 that includes
filtration structures 120. Final Act. 3; Ranchod, ]Hf 63, 66.
The Examiner reasons that the identified capture component is
configured to accelerate a decrease in a local concentration of therapeutic
structures because its “filtration structures (120) which are a sponge-like
structure . . . hav[e] ports or conduits which . . . maximize the potential
surface area for coating and filtration” and accomplish the claimed function
via “the exposure of the filtration structure (74). . . and the deployment or
expansion of the filtration structures (120) which fully encompasses 360° of
the cross-sectional area of the blood vessel ([] 12).” Final Act. 3^4 (citing
Ranchod, Tflf 66, 68). The Examiner explains that the therapeutic structures
are subjected to “filtering or trapping and binding ... in the ports or conduits
of the filtration structures . . . once the filtration structures (120) are
deployed.” Id. at 10 (citing Ranchod, 166); see also Ans. 12.
First, the Examiner explains that “if the one or more therapeutic
structures are introduced before the deployment or the expansion of the one
or more capture components, the result will be that the deployment or
expansion of the one or more capture components will accelerate a decrease
in the local concentration of the one or more therapeutic structures in the
area of the deployment or expansion.” Final Act. 12; see also Ans. 11, 20.
The Examiner notes the use of Ranchod’s apparatus to intercept and remove
therapeutic substances in order “to limit or eliminate any possible harmful
effects to downstream tissues.” Ans. 21 (citing Ranchod, 52, 54—55).
The Examiner also notes the use of “feedback or signals to warn of an
unsafe condition like an excessive amount of therapeutic substance in the
body lumen” and that the “feedback component is connected to a control
3
Appeal 2013-008005
Application 12/004,107
device (134) which includes a controller (138) to control the operation of the
system including the extension and retraction of the one or more capture
components (70, 136).” Id.', Ranchod, Tflf 54—55, 73.
Second, the Examiner explains that “as more of the . . . therapeutic
substances are captured or trapped by the capture components . . ., the . . .
capture components . . . will accelerate a decrease in the local concentration
of one or more therapeutic structures ... by preventing more of the . . .
therapeutic structures from reaching the downstream portion due to the
increased number of the captured or trapped . . . therapeutic structures
forming a physical blockage preventing more of the . . . therapeutic
structures from passing through or advancing past the one or more capture
components.” Ans. 11; see also id. at 13.
Appellants argue that a prima facie case of unpatentability has not
been established because the Examiner has not explained how it reaches its
mapping of claim 293 (including the claimed capture component in
particular) onto Ranchod under a broadest reasonable interpretation
consistent with the Specification. Appeal Br. 36—37. To the extent
Appellants’ argument is based on the Examiner’s failure to expressly
construe the claimed “capture components configured to accelerate a
decrease in a local concentration of one or more therapeutic structures along
a downstream portion of a vasculature,” we determine that the failure to
expressly construe this clause is not dispositive of whether or not the
Examiner’s findings based on Ranchod’s disclosure are adequate to reject
claim 293. Rather, we consider whether the Examiner adequately supports a
finding that Ranchod’s disclosure encompasses “one or more capture
components configured to accelerate a decrease in a local concentration of
4
Appeal 2013-008005
Application 12/004,107
one or more therapeutic structures along a downstream portion of a
vasculature,” when considering a proper construction of this claim term.
As to a construction of this claim term, the Specification describes
accelerating a decrease in local concentration of therapeutic structures “by
causing one or more elements to extract” at least a portion of the therapeutic
structures “in response to . . . indications of the [therapeutic structures] in the
vicinity of the one or more body lumens.” Spec. 10:22—26. Elements that
may extract the therapeutic structures include ports or conduits that may be
opened “to allow higher-than-nominal concentrations of the lytic material to
drain out of the vascular system, optionally by a timely exposure to an
absorbent element... or other disposal vessel” and/or “microfluidic or other
pumps.” Id. at 10:26—11:2. We determine that, in accordance with the
Specification, a capture component that is configured to accelerate a
decrease in a local concentration of therapeutic structures should be
construed as a component that is designed to selectively operate in order to
extract therapeutic structures.
With this construction in mind, we determine that the Examiner has
shown that (i) inner catheter assembly 70 may be extended relative to outer
catheter 20 so as to expose filtration element 74 and deploy filtration
structures 120; (ii) inner catheter assembly 70 may be retracted relative to
outer catheter 20 without damage to filtration structures 120, thereby
allowing re-deployment, and (iii) that extension and retraction of inner
catheter assembly 70 relative to outer catheter 20 is accomplished through
the use of control device 134 and/or controller 138. Final Act. 3^4; Ans. 21;
Ranchod ]Hf 67, 68, 73. The element of control through control device 134
and/or controller 138 supports the notion that inner catheter assembly 70 is
5
Appeal 2013-008005
Application 12/004,107
designed to be selectively operated. Moreover, the Examiner has shown
that, when operated so as to deploy filtration structures 120, inner catheter
assembly 70 will extract therapeutic structures along a downstream portion
of the vasculature because of the ports and conduits of the sponge-like
structure of filtration structures 120. Final Act. 3^4; Ranchod, Tflf 66, 68. In
this way, the Examiner has adequately supported a finding that Ranchod
discloses a component that is designed to selectively operate in order to
extract therapeutic structures, and therefore, a capture component configured
to accelerate a decrease in a local concentration of one or more therapeutic
structures, as claimed.
We find Appellants’ general allegations that the claims define a
patentable invention because the Examiner has failed to establish a prima
facie case of unpatentability unpersuasive. See, e.g., Appeal Br. 31—56,
58—60. We now address any specific distinctions advanced by Appellants as
to the gaps that exist between Ranchod and the claims.
Appellants point to the lack of valves, pumps, or other similar capture
components described in the Specification. Appeal Br. 57. Anticipation
does not require that the prior art reference teach what the application at
issue teaches. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed.
Cir. 1983), cert, denied, 465 U.S. 1026 (1984), overrules on other grounds
by SRI Int’l v. Matsushita Elect. Corp. of America, 775 F.2d 1107 (Fed. Cir.
1985). It is only necessary for the claims to ‘“read on’ something disclosed
in the reference, i.e., all limitations in the claim are found in the reference, or
‘fully met’ by it.” Id. Therefore, Ranchod’s failure to teach the specific
capture components described in the Specification is not persuasive of
Examiner error.
6
Appeal 2013-008005
Application 12/004,107
Appellants also argue that Ranchod “just start[s] capturing ‘agent A’
as a passive response to the presence of ‘agent A’ in the bloodstream (just
after ‘ports 42’ of ‘first catheter 20’ start injecting, e.g.),” rather than
accelerating a decrease. Appeal Br. 57, n.32. Appellants point out that the
“chemical coating” on filtration structures 120 could have been applied
before insertion of catheter 10 into blood vessel 12, and therefore, does not
accelerate a decrease in the concentration of therapeutic structures. Appeal
Br. 57. Appellants further argue that there is “no apparent relationship”
between the function of displaying information regarding the amount of
thrombolytic agent remaining in blood vessel 12 downstream of filtration
element 74 and the second catheter assembly being configured to accelerate
a decrease in a local concentration of therapeutic structures. Id.
As described hereinabove, Ranchod’s second catheter assembly 70
includes filtration element 74 which, in turn, includes filtration structures
120. Because second catheter assembly 70 is designed such that the
deployment of filtration structures 120 can be selectively controlled to
extract therapeutic structures, we determine it sufficiently meets the claim
language. It is not necessary that Ranchod disclose that the filtration
structure actually be selectively operated in response to detection of a
threshold level of therapeutic structures along a downstream portion of a
vasculature, as suggested by Appellants. See Hewlett-Packard Co. v.
Bausch &Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (“[Apparatus
claims cover what a device is, not what a device does.”). Because
Ranchod’s filtration structures 120 are designed for selective operation
(through a controller) so as to extract therapeutic structures, the Examiner is
on solid ground in finding that Ranchod discloses a capture component
7
Appeal 2013-008005
Application 12/004,107
configured to aece a decrease in a local concentration of one or more
therapeutic structures along a downstream portion of a vasculature, as
recited in the claim, even if Ranched tails to explicitly disclose that the
filtration structures are selectively deployed in response to information
regarding the amount of therapeutic structures in the blood vessel.
As an additional matter, at least some of Appellants’ arguments
appear to be predicated on a belief that a reference must describe a limitation
in haec verba. See, e.g., Appeal Br. 39 (“[T]he Ranchod reference does not
recite ‘one or more capture components configured to accelerate a decrease
in a local concentration of one or more therapeutic structures along a
downstream portion of a vasculature.”). There is no such requirement. See
In re Bode, 550 F.2d 656, 660 (CCPA 1977).
For the foregoing reasons, we sustain the Examiner’s rejection of
claim 293 under 35 U.S.C. § 102(b) as anticipated by Ranchod, We also
sustain the Examiner’s rejection of claims 294—296, 298, 302, 303, 305, 320,
and 323—327, for which Appellants rely on the same arguments and
reasoning we found unpersuasive in connection with independent claim 293.
See Appeal Br. 60-61.
Claim 304
Appellants separately argue the patentability of dependent claim 304.
Appeal Br. 61—74. Claim 304 recites that the one or more capture
components comprise a semi-permeable membrane. Id. at 91 (Claims App.).
The Examiner finds that filtration element 74 or wire mesh 130 of Ranchod
meets the claim in that the “sponge-like structure [of filtration structures 120
making up filtration element 74] comprises a semi-permeable membrane”
and/or that “wire mesh (130) is a fine wire mesh and is disclosed as acting
8
Appeal 2013-008005
Application 12/004,107
[as] an embolus/thrombus catching device to prevent the progression of
thrombolytic material to a downstream location.” Final Act. 5 (citing
Ranchod ]Hf 69—71).
Appellants argue that the Examiner has failed to establish a prima
facie case of unpatentability of claim 304. Appeal Br. 61—74. In this regard,
Appellants argue that the Patent Office has not shown through “objectively
verifiable evidence” that Ranchod discloses what is recited in claim 304. Id.
at 61, 68. Yet, the cited portions of the reference and the accompanying
explanation provided by the Examiner collectively constitute the
“objectively verifiable evidence” which Appellants allege is lacking.
As to Appellants’ arguments that modifying the cited reference
renders the art unsatisfactory for its intended purpose and changes its
principle of operation {id.), such arguments are not persuasive in that they do
not address the rejection as articulated by the Examiner, which is based on
anticipation by Ranchod.
Appellants also argue that the Patent Office has not adequately
explained how it reaches its mapping of claim 304 onto Ranchod under a
broadest reasonable interpretation. Id. at 62. Appellants maintain that, in
doing so, the Patent Office has not done what “is required under 37 C.F.R.
§ 1.104(c)(2).” Id. at 63. The Federal Circuit has held that the Patent Office
carries its procedural burden of establishing a prima facie case when its
rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the
applicant of the reasons for rejection, “together with such information and
references as may be useful in judging of the propriety of continuing the
prosecution of [the] application.” See In re Jung, 637 F.3d 1356, 1362 (Fed.
Cir. 2011). Thus, “all that is required of the office to meets its prima facie
9
Appeal 2013-008005
Application 12/004,107
burden of production is to set forth the statutory basis of the rejection and
the reference or references relied upon in a sufficiently articulate and
informative manner as to meet the notice requirement of § 132.” Id. at 1363.
Here, the Examiner notified Appellants that claim 304 is rejected as
anticipated by Ranchod and provided the portions of the reference that are
the basis for the rejection. We find that the Examiner’s rejection satisfies
the notice requirement of § 132, and therefore, establishes a prima facie case
of obviousness. Therefore, the burden shifts to Appellants to rebut the
Examiner’s prima facie case by distinctly and specifically pointing out the
supposed errors in the Examiner’s action, as well as the specific distinctions
believed to render the claims patentable over the applied references.
As an initial matter, with respect to Appellants’ argument that
significant textual distinctions exist between the actual recitations of
Ranchod and the language of claim 304 (see, e.g., Appeal Br. 64—70),
textual identity is not required. The Examiner does not contend, nor is the
Examiner required to demonstrate, that the identical text of claim 304
appears in the cited reference.
Next, Appellants argue that filtration element 74 has “a coating ‘with
a chemical adapted to react with the thrombolytic agent A’ that may ‘bind
the thrombolytic agent A to filtration structures 120,’” but this provides “no
reason to assume that such a coating would be ‘semi-permeable.’” Appeal
Br. 71. Appellants further argue that “wire mesh 130 ‘is composed of an
electrically conductive material’ and that ‘remaining active thrombolytic
agent A (see FIG. 9B) reacts with wire mesh 130 which changes the
electrical conductivity of the wire mesh 130,’” but this provides “no reason
to assume that wire mesh 130 of Ranchod includes any kind of membrane at
10
Appeal 2013-008005
Application 12/004,107
all, much less one that is semi-permeable.” Id. at 71 (emphasis omitted).
Appellants add that not every sponge-like structure, nor every fine wire
mesh, is a semi-permeable membrane. Id. at 73 n.50. Appellants further
argue that “[t]he Examiner has . . . neglected to consider whether the phrase
‘semi-permeable membrane’ has an art-known meaning.” Id. at 73 n.51.
Appellants, however, fail to set forth what such an art-known meaning is, let
alone provide evidence that Ranchod’s filtration element 74 and/or wire
mesh 130 is not in accordance with such an art-known meaning.
The Examiner responds that the rejection of the claims is based on a
broadest reasonable interpretation of the term semi-permeable membrane,
considering the lack of any specific structure given to the semi-permeable
membrane in the Specification. Final Act. 15 (citing Spec. Tflf 27, 71); see
also American Heritage Dictionary, available at www.ahdictionary.com (last
visited Nov. 18, 2016) (defining “semipermeable” as “partially permeable”)
and Oxford English Dictionary, available at www.oed.com (last visited Nov.
18, 2016) (defining “membrane” as “[a]ny thin, often pliable, sheet or
layer”). In the absence of a more detailed explanation by Appellants as to
why filter element 74 and fine wire mesh 130 cannot be considered semi­
permeable membranes, we are not persuaded the Examiner erred in making
such a finding.
For the foregoing reasons, we sustain the rejection of claim 304 under
35 U.S.C. § 102(b) as anticipated by Ranchod.
Claim 307
Appellants separately argue the patentability of dependent claim 307.
Appeal Br. 74—84. Claim 307 recites that the one or more capture
components comprise a conduit configured to bear a blood-containing
11
Appeal 2013-008005
Application 12/004,107
material into a body lumen. Id. at 91 (Claims App.). The Examiner finds
that Ranchod’s conduit 70 meets the claim in that “conduit (70) is capable of
bearing a blood-co[ntaining] material from the interior of the conduit into
the body lumen in which the conduit is located.” Final Act. 6; see also id. at
18 (“The rejection of claim 307 has been based on the conduit (70) being
configured to bear a blood-containing material into a body lumen as the one
or more capture components of Ranchod et al[.] comprises a conduit
configured to bear and capable of bearing a blood-containing material into a
body lumen.”).
Appellants argue that even though “filtration element 74 of second
catheter 70 might capture dissolved or dislodged thrombotic material 78
(possibly including blood),” this provides “no reason to assume . . . that
second catheter 70 would ever bear a blood-containing material into blood
vessel 12 or any other ‘body lumen.’” Appeal Br. 81 (emphasis omitted).
The Examiner responds that Ranchod’s capture component “is
broadly disclosed as a catheter which includes a conduit which is capable of
bearing a blood-containing material from the interior of the conduit into the
body lumen in which the conduit is located.” Ans. 18. At the outset, we
note that the phrase “configured to” is narrower than “capable of’ and has a
meaning more akin to “designed to.” See Aspex Eyewear, Inc. v. Marchon
Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012). Ranchod discloses
capture component 70 as a filtering and sensing catheter 72 surrounded by
inner sheath 100, in which capture component 70 is designed for a close fit
between sensing catheter 72 and inner sheath 100, and includes end wall 108
“to prevent or minimize fluid entry through distal opening 114 into annular
space 116 defined between inner sheath 100 and filtering and sensing
12
Appeal 2013-008005
Application 12/004,107
catheter 72.” Ranchod ]Hf 63, 64 (emphasis omitted). Because Ranchod’s
catheter is designed so as to avoid fluid entering into the annular space
around the catheter, the Examiner has not adequately explained how any
conduit of capture component 70 is designed to bear blood containing
material from the interior of the conduit into the body lumen in which the
conduit is located.
For the foregoing reasons, we do not sustain the rejection of claim 307
under 35 U.S.C. § 102(b) as anticipated by Ranchod.
DECISION
The Examiner’s decision to reject claims 293—296, 298, 302—305,
320, and 323—327 under 35 U.S.C. § 102(b) as anticipated by Ranchod is
affirmed.
The Examiner’s decision to reject claim 307 under 35 U.S.C. § 102(b)
as anticipated by Ranchod is reversed.
AFF1RMED-1N-PART
13