Ex Parte Bourgeois et al

Patent Trial and Appeal Board

Apr 25, 2017

13586288 (P.T.A.B. Apr. 25, 2017)

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.
13/586,288 08/15/2012 Philip Bourgeois T012-7072US0 3101
21127 7590 04/27/2017
POT STNFT T T PC
EXAMINER
100 Cambridge Street
Suite 2101
BOSQUES, EDELMIRA
BOSTON, MA 02114 ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
04/27/2017 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):
thendricks @polsinelli. com
athumann @polsinelli. com
DC-IPDocketing@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIP BOURGEOIS and MUNISH SHAH
Appeal 2014-009537
Application 13/586,288
Technology Center 3700
Before WILLIAM A. CAPP, JAMES J. MAYBERRY, and
SEAN P. O’HANLON, Administrative Patent Judges.
O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2014-009537
Application 13/586,288
STATEMENT OF THE CASE
Philip Bourgeois and Munish Shah (Appellants)1 appeal under 35
U.S.C. § 134 from the Examiner’s decision rejecting claims 1—25 and 30—
34.2 Appellants’ representative presented oral argument on April 12, 2017.3
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
SUMMARY OF THE INVENTION
Appellants’ disclosure is directed to multilayer polymeric tubing in
which the layers are successively adhered. Spec. 12. Claim 1, reproduced
below from page 48 (Claims Appendix) of the Appeal Brief with paragraph
structure added, is illustrative of the claimed subject matter:
1. A tube comprising an inner layer, an outer layer and a
barrier layer disposed between the inner layer and the outer
layer,
wherein the barrier layer is bound to the outer layer by a
layer of adhesive disposed between the outer layer and the
barrier layer and the barrier layer is bound to the inner layer by
a layer of adhesive disposed between the inner layer and the
barrier layer,
wherein the inner layer comprises a polyethylene, the
outer layer comprises a thermoplastic polyurethane and the
barrier layer comprises a material that acts as a barrier to gas.
1 According to Appellants, the real party in interest is Tekni-Plex, Inc. App.
Br. 3.
2 Claims 26—29 are withdrawn. Id. at 53 (Claims App’x).
3 Oral argument was made in absence of a court reporter. Appellants’
representative expressly waived recordation of the oral argument.
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REJECTIONS4
Claims 1 and 2 stand provisionally rejected on the ground of non-
statutory obviousness-type double patenting as being unpatentable over
claim 1 of copending U.S. Patent Application No. 13/354,029 (“the ’029
Application”).
Claims 15, 16, and 18 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 1, 2, 6, and 15—18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Quigley (US 6,357,485 B2, iss. Mar. 19, 2002),
Messerly (US 5,052,444, iss. Oct. 1, 1991), and Kanai (EP 2 177 805 A2,
pub. Apr. 21, 2010).
Claims 3, 4, 7—10, and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Quigley, Messerly, Kanai, and Bekele (US
8,399,077 Bl, iss. Mar. 19, 2013).5
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Quigley, Messerly, Kanai, and Mueller (US
2009/0317611 Al, pub. Dec. 24, 2009).
Claims 11, 12, and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Quigley, Messerly, Kanai, Julien (US
4 The rejection of claims 2, 6—10, and 12 under 35 U.S.C. § 112, second
paragraph, as being indefinite is withdrawn. Ans. 23.
5 We note that although claim 13 was not included in the heading of this
rejection, its recitations are addressed in the body of the rejection. See also
id. at 7—8, 23.
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Application 13/586,288
2009/0087606 Al, pub. Apr. 2, 2009), Penhasi (US 2003/0208259 Al, pub.
Nov. 6, 2003), and Bekele.6
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Quigley, Messerly, Kanai, and Julien.
Claims 20-24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Julien and Bekele.7
Claim 25 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Julien, Bekele, and Penhasi.
Claims 30 and 31 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yamada (US 2007/0178131 Al, pub. Aug. 2, 2007) and
Kanai.
Claims 32 and 33 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yamada, Kanai, Julien, and Bekele.
Claim 34 stands rejected under U.S.C. § 103(a) as being unpatentable
over Yamada, Kanai, Julien, Bekele, and Mueller.
6 We note that although claim 19 is not included in the heading of this
rejection, it is addressed in the body of the rejection.
7 We note that although the heading of this rejection indicates the claims are
rejected in view of Quigley, Messerly, Kanai, and Bekele, the body of the
rejection makes clear the rejection is based on Julien and Bekele. See also
Ans. 15—16, 26.
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ANALYSIS
Provisional Double Patenting
The Examiner provisionally rejects claims 1 and 2 on the ground of
non-statutory obviousness-type double patenting in view of claim 1 of the
’029 Application. Final Act. 3^4.
Initially, we note that the Examiner did not include this provisional
rejection in the listing of “rejection[s that] are applicable to the appealed
claims” section of, or otherwise mention this provisional rejection in, the
Examiner’s Answer. See Ans. 2. Thus, it is not clear to us whether the
Examiner intended to maintain this rejection.
In any event, we do not reach the merits of the Examiner’s provisional
double patenting rejection because it would be premature to do so at this
time, consistent with the holding of Ex Parte Moncla, 95 USPQ2d 1884,
1885 (BPAI 2010) (precedential). We note that the ’029 Application is still
pending, and is itself under appeal.
Indefiniteness
The Examiner finds that the term “visually delaminate” as used in
claims 15, 16, and 18 is indefinite because it “is a relative term which
renders the claim indefinite.” Final Act. 5. The Examiner interprets this
language as meaning “to be visual with bare naked eyes, with eyeglasses,
with a microscope or with other visualization techniques,” which, according
to the Examiner, “does not provide a standard for ascertaining the requisite
degree.” Ans. 23—24 (emphasis omitted).
Appellants traverse, arguing that the phrase “visually delaminate” is
“commonplace terminology used in patent claims to designate a
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circumstance that can be observed visually.'1'’ App. Br. 39-40. Appellants
note that the term “visually delaminate” and other similar terms “[are]
routinely recognized by the Patent Office as acceptable under [35 U.S.C. §]
112.” Id. at 40. Appellants provide a list of 14 U.S. patents they purport to
include such claim language. Id. at 40-42.
A claim is indefinite when it contains language that is “ambiguous,
vague, incoherent, opaque, or otherwise unclear in describing and defining
the claimed invention.” In re Packard, 751 F.3d 1307, 1311 (Fed. Cir.
2014). Here, the Specification treats whether the tube layers visually
delaminate in a binary manner—either there is delamination or there is no
delamination—rather than as a term of degree. See, e.g., Spec. ^fl[ 32, 34.
Appellants’ representative and Dr. Philip Bourgeois confirmed this intention
during oral argument, noting that delamination would cause the layers to
peel away from each other and would be readily observable with the naked
eye rather than requiring any enhanced visualization tool such as a
microscope. We therefore interpret “do not visually delaminate” and “does
not visually delaminate” as prohibiting any amount of delamination of the
tube layers that can be seen by the normal human eye.
Accordingly, we do not sustain the rejection of claims 15, 16, and 18
as being indefinite.
Obviousness Based on Quigley, Messerly, and Kanai
The Examiner finds that Quigley discloses a tube substantially as
claimed in independent claim 1, including, inter alia, an inner layer (liner
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12)8, a barrier layer (pressure barrier layer 58), an outer layer (outer
protective layer 60), and a layer of adhesive (interface layer 56) “disposed
between the inner layer and the barrier layer,” but fails to disclose that the
“barrier layer is bound to the outer layer by a layer of adhesive (56) disposed
between the outer layer and the barrier layer[,] and [that] the outer layer
comprises a thermoplastic polyurethane.” Final Act. 6 (emphasis omitted).
The Examiner finds that Messerly discloses a tube (hose 60) having an inner
layer (core tube 2), a barrier layer (tape 12)9, and an outer layer (jacket 10),
wherein “the barrier layer is bound to the outer layer by a layer of adhesive.”
Id. (citing Messerly, 4:19—27) (emphasis omitted). The Examiner reasons
that it would have been obvious to a person of ordinary skill “to have an
adhesive layer between an outer and a barrier layer of a tube to maintain the
layers together.” Id. The Examiner finds that Kanai discloses a tube (heat
exchange pipe 16) having an inner layer (first layer 17), a barrier layer
(second layer 19), and a polyurethane outer layer (third layer 21). Id. (citing
Kanai 113) (emphasis omitted). The Examiner reasons that it would have
been obvious to a person of ordinary skill “to use a polyurethane layer as the
outer layer of the invention of modified Quigley to modify the flexibility of
the tube.” Id. at 6—7.
Appellants traverse, first arguing that “Quigley does not disclose or
suggest... an ‘inner layer bound to a barrier layer.’” App. Br. 14. Rather,
Appellants continue, Quigley’s “adhesive (56) is purposely arranged so as
8 Parentheticals refer to the terminology of the cited references.
9 We note that the Examiner cited seam 13 of Messerly’s tape 12 as
corresponding to the recited barrier layer (Final Act. 6), which we take for a
typographical error.
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not to bind the inner (12) layer to the barrier layer ([58])” because
“Quigley’s adhesive (56) is purposely disposed between and binds a
composite (14) layer to the inner layer (12)” which “prevents inner layer
(12) from being bound to barrier layer (58).” Id.
The Examiner responds by noting that Quigley’s barrier layer 58 is
bondable to composite layer 14, which is bonded to liner 12, and, thus,
“constru[es] the barrier layer 58 to be bonded to layer 12 by means of
adhesive layer 56 and layer 14.” Ans. 24. The Examiner also determines
that “[AJppellant does not claim that the inner layer and the barrier layer are
directly bound by the adhesive layer.” Id. at 25.
We are persuaded by Appellants’ arguments. Claim 1 recites, in
relevant part, “the barrier layer is bound to the inner layer by a layer of
adhesive disposed between the inner layer and the barrier layer.” App.
Br. 48 (Claims App’x) (emphasis added). We construe this language as
requiring a layer of adhesive to be in contact with both the inner layer and
the barrier layer, thereby binding these layers together.10 The Examiner’s
interpretation that Quigley’s liner 12 is bound to barrier layer 58 “by means
of adhesive layer 56 and [composite] layer 14” (Ans. 24 (emphasis added))
does not correspond to the claim language. As correctly noted by
Appellants, Quigley’s interface layer 56 binds liner 12 to composite
layer 14, but does not bind liner 12 to barrier layer 58.
Appellants also argue that Messerly does not teach a barrier layer
bound to an outer layer because Messerly’s tape is surrounded by a pair of
10 Our construction does not preclude the “adhesive layer” from having two
layers of adhesive separated by a carrier layer, such as a film.
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fibrous layers that Messerly instructs should not be bound to anything. App.
Br. 17 (citing Messerly 3:45—67).
The Examiner responds that because Messerly teaches “that ‘it is to be
understood that various layers, excepting the two fibrous reinforcement
between which the flexible metal tape moisture barrier herein described is
located, may be bonded together, when desired by surface softening
techniques, adhesives or other suitable bonding means,’” “Messerly teaches
the use of adhesive to adhere layers in a tube.” Ans. 25 (quoting Messerly
4:19—25) (emphasis omitted).
We are persuaded by Appellants’ arguments. Notably, the passage
cited by the Examiner for support contradicts the Examiner’s conclusion—
Messerly specifically states that its tape 12 is not to be adhered to its
surrounding layers (fibrous enforcement layers 4, 8). Thus, Messerly does
not teach an outer layer bound to a barrier layer by an adhesive.
Additionally, Messerly’s core tube 2 is separated from tape 12 by fibrous
reinforcement layer 4, and jacket 10 is separated from tape 12 by fibrous
reinforcement layer 8. Thus, tape 12 would not be bound to core 2 or jacket
10 as required by claim 1 even if adhesive layers were added.
We additionally find that the Examiner’s rationales for modifying
Quigley’s tube lack rational underpinnings. See In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) (cited with approval in KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007)). Regarding the modification based on Messerly,
the Examiner has not identified a reason why a person of ordinary skill in
the art would want to “maintain the layers together.” See Final Act. 6.
Regarding the modification based on Kanai, the Examiner has not
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established that forming Quigley’s outer protective layer 60 of a
thermoplastic polyurethane, alone, would “modify the flexibility of the
tube.” See id. at 7. We note that Kanai teaches forming ah of the tube, other
than the barrier layer, of polyurethane to achieve flexibility. See Kanai 124
(“[T]he first layer 17 and the third layer 21 are made of polyurethane; and
therefore, the pipe is flexible and easily processed.”)
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claim 1, nor of its dependent claims 2, 6, and 15—18, as being
unpatentable in view of Quigley, Messerly, and Kanai.
Obviousness Based on Quigley, Messerly, Kanai, and Bekele
Claims 3, 4, 7—10, and 13 depend from claim 1. App. Br. 48—50
(Claims App’x). The Examiner deems these claims to be unpatentable over
Quigley, Messerly, Kanai, and Bekele, relying on the same findings and
determinations regarding Quigley, Messerly, and Kanai as discussed above
with respect to the rejection of claim 1. Final Act. 9—13; Ans. 7—11. The
Examiner does not rely on Bekele in any manner that would remedy the
deficiencies of Quigley, Messerly, and Kanai noted above.
We additionally find that the Examiner’s rationale for modifying
Quigley’s tube in view of Bekele lacks a rational underpinning. The
Examiner has not established that Bekele’s adhesive has better “adhesive
properties” (Final Act. 10) than Quigley’s adhesive and, thus, has not set
forth a reason why a person of ordinary skill in the art would use Bekele’s
adhesive in place of Quigley’s.
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Accordingly, for the foregoing reasons, we do not sustain the rejection
of claims 3, 4, 7—10, and 13 as being unpatentable over Quigley, Messerly,
Kanai, and Bekele.
Obviousness Based on Quigley, Messerly, Kanai, and Mueller
Claim 5 depends from claim 1. App. Br. 48 (Claims App’x). The
Examiner deems this claim to be unpatentable over Quigley, Messerly,
Kanai, and Mueller, relying on the same findings and determinations
regarding Quigley, Messerly, and Kanai as discussed above with respect to
the rejection of claim 1. Final Act. 13—14. The Examiner does not rely on
Mueller in any manner that would remedy the deficiencies of Quigley,
Messerly, and Kanai noted above.
We additionally find that the Examiner’s rationale for modifying
Quigley’s tube in view of Mueller lacks a rational underpinning. The
Examiner has not set forth any reason why a person of ordinary skill in the
art would use Mueller’s adhesive in place of Quigley’s—the fact that
Mueller’s adhesive can be used “to adhere two layers together” {id. at 14)
does not provide a reason why the modification would be made.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claim 5 as being unpatentable over Quigley, Messerly, Kanai, and
Mueller.
Obviousness Based on Quigley, Messerly, Kanai, Julien,
Penhasi, and Bekele
Claims 11, 12, and 19 depend from claim 1. App. Br. 49, 51 (Claims
App’x). The Examiner deems these claims to be unpatentable over Quigley,
Messerly, Kanai, Julien, Penhasi, and Bekele, relying on the same findings
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and determinations regarding Quigley, Messerly, and Kanai as discussed
above with respect to the rejection of claim 1. Final Act. 14—16. The
Examiner does not rely on Julien, Penhasi, or Bekele in any manner that
would remedy the deficiencies of Quigley, Messerly, and Kanai noted
above.
We additionally find that the Examiner’s rationales for modifying
Quigley’s tube lack rational underpinnings. For example, the Examiner has
not established that Bekele’s adhesive has better “adhesive properties” (id. at
15) than Quigley’s adhesive and, thus, has not set forth a reason why a
person of ordinary skill in the art would use Bekele’s adhesive in place of
Quigley’s.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claims 11, 12, and 19 as being unpatentable over Quigley, Messerly,
Kanai, Julien, Penhasi, and Bekele.
Obviousness Based on Quigley, Messerly, Kanai, and Julien
Claim 14 depends from claim 1. App. Br. 50 (Claims App’x). The
Examiner deems this claim to be unpatentable over Quigley, Messerly,
Kanai, and Julien, relying on the same findings and determinations regarding
Quigley, Messerly, and Kanai as discussed above with respect to the
rejection of claim 1. Final Act. 16—17. The Examiner does not rely on
Julien in any manner that would remedy the deficiencies of Quigley,
Messerly, and Kanai noted above.
We additionally find that the Examiner’s rationale for modifying
Quigley’s tube in view of Julien lacks a rational underpinning. The
Examiner has not set forth a reason why a person of ordinary skill in the art
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would want to modify the thicknesses of Quigley’s tube layers—noting the
fact that it may be possible to modify the thicknesses of Quigley’s tube
layers does not establish a reason for doing so. Id. at 17.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claim 14 as being unpatentable over Quigley, Messerly, Kanai, and Julien.
Obviousness Based on Julien and Bekele
Claims 20—23
Independent claim 20 claims a medical tube similar to the tube of
claim 1, including, inter alia, “an adhesive . . . disposed between and
binding the barrier layer and the inner layer.” App. Br. 51 (Claims App’x).
The Examiner finds that Julien discloses a medical tube substantially
as claimed in claim 20, including, inter alia, an inner layer (thermoplastic
layer 10), a barrier layer (elastomeric layer 20 in combination with barrier
layer 30), an outer layer (elastomeric layer 40), and “an adhesive . . .
disposed between the barrier layer and the inner layer,” but fails to disclose
“the adhesive comprising one or more ethylene acrylic copolymers.” Final
Act. 17 (citing Julien | 80) (emphasis omitted). The Examiner finds that
Bekele teaches an adhesive comprising “more than about 90% by weight of
one or more ethylene acrylic copolymers,” and reasons that it would have
been obvious to a person of ordinary skill “to use anhydride grafted ethylene
acrylate as . . . the material for the adhesive layer in the invention of Julien
as taught by Bekele since the material has good adhesive properties.” Id.
at 18.
Appellants traverse, arguing, inter alia, that Julien does not disclose
an inner layer bound to a barrier layer. App. Br. 25.
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The Examiner responds by noting that “Julien teaches . . . [that] an
adhesive layer can be present between the layer 10 and 20, or between layers
30 and 40.” Ans. 26 (citing Julien | 80). The Examiner also determines that
claim 20 does not require “that the inner layer and the barrier layer [to be]
directly bound by the adhesive layer.” Id. at 27.
Initially, we find error with the Examiner’s determination that Julien’s
elastomeric layer 20 and barrier layer 30, together, correspond to the recited
barrier layer. See Final Act. 17. Julien’s elastomeric layer 20 is placed
adjacent inner layer 10 to provide radio frequency (RF) welding capability.
Julien || 48-49. Elastomeric layer 20, however, is not a barrier layer.
Julien provides “inter gas barrier layer 30 .. . sandwiched between the outer
layer 20 and outermost layer 40 of the multilayer tubing 200 preferably
without the use of adhesive tie layers ... to provide for resistance to
transmission of gases.” Id. 177. Thus, it is Julien’s layer 30, alone, that
corresponds to the recited barrier layer.
Furthermore, we are persuaded by Appellants’ arguments. Similarly
to claim 1 discussed above, claim 20 recites “an adhesive . . . disposed
between and binding the barrier layer and the inner layer.” App. Br. 51
(Claims App’x). We construe this language as discussed above, requiring an
adhesive to be in contact with both the inner layer and the barrier layer,
thereby binding these layer together. Because Julien’s elastomeric layer 20
is intermediate inner layer 10 and barrier layer 30, Julien does not satisfy the
requirements of claim 20.
We additionally find that the Examiner’s rationale for modifying
Julien’s tube in view of Bekele lacks a rational underpinning. The Examiner
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has not established that Bekele’s adhesive has better “adhesive properties”
(Final Act. 18) than Julien’s adhesive and, thus, has not set forth a reason
why a person of ordinary skill in the art would use Bekele’s adhesive in
place of Julien’s.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claim 20, nor of its dependent claims 21—23, as being unpatentable in
view of Julien and Bekele.
Claim 24
Independent claim 24 claims a medical tube similar to the medical
tube of claim 20, including, inter alia, “an adhesive . . . disposed between
and binding the barrier layer and the inner layer.” App. Br. 52 (Claims
App’x). We construe this language as discussed above.
The Examiner deems claim 24 to be unpatentable over Julien and
Bekele, relying on similar findings and determinations regarding Julien and
Bekele as discussed above with respect to the rejection of claim 20. Final
Act. 19.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claim 24 as being unpatentable in view of Julien and Bekele.
Obviousness Based on Julien, Bekele, and Penhasi
Independent claim 25 claims a medical tube similar to the medical
tube of claim 20, including, inter alia, “an adhesive . . . disposed between
and binding the barrier layer and the inner layer.” App. Br. 52—53 (Claims
App’x). We construe this language as discussed above.
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The Examiner deems claim 25 to be unpatentable over Julien, Bekele,
and Penhasi, relying on similar findings and determinations regarding Julien
and Bekele as discussed above with respect to the rejection of claim 20.
Final Act. 19—20. The Examiner does not rely on Penhasi in any manner
that would remedy the deficiencies of Julien and Bekele noted above.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claim 25 as being unpatentable in view of Julien, Bekele, and Penhasi.
Obviousness Based on Yamada and Kanai
Independent claim 30 claims a method of delivering an aqueous fluid
using a tube similar to the tube of claim 1, including, inter alia, selecting a
tube having “an adhesive layer disposed between and binding the inner and
barrier layers and an adhesive layer disposed between and binding the outer
and barrier layers.” App. Br. 53 (Claims App’x). We construe this language
as discussed above.
The Examiner finds that Yamada discloses a method substantially as
claimed in claim 30, including, inter alia, selecting a tube (catheter 20)
having an inner layer (sliding layer 25), a barrier layer (polyimide tube 22),
and an outer layer (fluororesin 24), but fails to disclose that “the barrier layer
comprises one or more of an ethylene vinyl alcohol copolymer and a
polyamide.” Final Act. 21 (emphasis omitted). Notably, the Examiner does
not address the recited adhesive layers. Id. at 21—22. The Examiner finds
that Kanai teaches a barrier layer (second layer 19) formed of ethylene vinyl
alcohol, and reasons that it would have been obvious to a person of ordinary
skill “to use ethylene vinyl alcohol as the material for the barrier layer of
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Yamada as taught by Kanai since the material has high gas barrier
properties.” Id.
Appellants traverse, arguing, inter alia, that Yamada does not disclose
“an adhesive that binds an outer layer or an inner layer to a barrier layer.”
App. Br. 22 (emphasis omitted).
The Examiner responds that “Yamada teaches that layers 23 and 23
[sic] are formed from polyimide resins including fluororesins which can be
adhesive.” Ans. 27 (citing Yamada 133).
We are persuaded by Appellants’ argument. Initially, we note that
Yamada paragraph 33, relied upon by the Examiner in the Examiner’s
Answer, refers to the medical wire embodiment rather than the catheter
embodiment relied upon in the Final Action. See Yamada 133; Final Act.
21; Ans. 27. Moreover, this paragraph discloses that layer 13 is a
“fluororesin adhering layer” that coats the outer surface of resin layer 12 to
retain fluororesin layer 14 thereto. Yamada 133. There is no disclosure,
however, that the fluororesin layers themselves exhibit adhering
properties—to the contrary, this paragraph suggests the opposite, hence the
need to include fluororesin adhering layer 13. Therefore, we are persuaded
of error in the Examiner’s finding that the fluororesin layers of Yamada’s
catheter embodiment are adhesives. See Reply Br. 8—9.
Furthermore, if fluororesin adhering layer 13 of medical wire 10 were
to be added to catheter 20, Yamada teaches that such layer(s) would be
added to the surface(s) of tube 22, and fluororesin layers 23, 24 would be
positioned on the other side of such adhering layer(s). See Yamada H 33,
35, 36, Fig. 1. Thus, adhesive layer 13 would bind fluororesin layer 23 to
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tube 22, but would not bind sliding layer 25 to tube 22. As discussed above,
such configuration does not correspond with the claim language.
We additionally find that the Examiner’s rationale for modifying
Yamada’s tube lacks a rational underpinning. The Examiner has not
established that Kanai’s barrier layer has better “gas barrier properties”
(Final Act. 22) than Yamada’s polyimide tube 22 and, thus, has not set forth
a reason why a person of ordinary skill in the art would use Kanai’s barrier
layer in place of Yamada’s polyimide tube 22.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claim 30, nor of its dependent claim 31, as being unpatentable in view of
Yamada and Kanai.
Obviousness Based on Yamada, Kanai, Julien, and Bekele
Claims 32 and 33 depend from claim 30. App. Br. 53 (Claim App’x).
The Examiner deems these claims to be unpatentable over Yamada, Kanai,
Julien, and Bekele, relying on the same findings and determinations
regarding Yamada and Kanai as discussed above with respect to claim 30.
Final Act. 22—23. The Examiner does not rely on Julien or Bekele in any
manner that would remedy the deficiencies of Yamada and Kanai noted
above.
We additionally find that the Examiner’s rationales for modifying
Yamada’s catheter lack rational underpinnings. For example, the Examiner
has not established that Bekele’s adhesive has better “adhesive properties”
(Final Act. 23) than Yamada’s fluororesin adhering layer 13 (assuming it to
be added to Yamada’s catheter) and, thus, has not set forth a reason why a
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person of ordinary skill in the art would use Bekele’s adhesive in Yamada’s
catheter.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claims 32 and 33 as being unpatentable over Yamada, Kanai, Julien, and
Bekele.
Obviousness Based on Yamada, Kanai, Julien, Bekele, and Mueller
Claim 34 depends from claim 30. App. Br. 53—54 (Claims App’x).
The Examiner deems this claim to be unpatentable over Yamada, Kanai,
Julien, Bekele, and Mueller, relying on the same findings and determinations
regarding Yamada and Kanai as discussed above with respect to claim 30.
Final Act. 23—24. The Examiner does not rely on Julien, Bekele, or Mueller
in any manner that would remedy the deficiencies of Yamada and Kanai
noted above.
We additionally find that the Examiner’s rationale for modifying
Yamada’s catheter in view of Mueller lacks a rational underpinning. The
Examiner has not set forth any reason why a person of ordinary skill in the
art would use Mueller’s adhesive in place of Yamada’s fluororesin adhering
layer 13 (assuming it to be added to Yamada’s catheter)—the fact that
Mueller’s adhesive can be used “to adhere two layers together” {id. at 24)
does not provide a reason why the modification would be made.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claim 34 as being unpatentable over Yamada, Kanai, Julien, Bekele, and
Mueller.
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DECISION
The Examiner’s decision to reject claims 15, 16, and 18 under 35
U.S.C. § 112, second paragraph, is reversed.
The Examiner’s decision to reject claims 1—25 and 30—34 under 35
U.S.C. § 103 is reversed.
We do not reach the Examiner’s provisional obviousness-type double
patenting rejection.
REVERSED
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