Ex Parte Horn et al

Patent Trial and Appeal Board

Feb 17, 2015

11406022 (P.T.A.B. Feb. 17, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte DANIEL J. HORN, JOHN JIANHUA CHEN, JOHN BLIX,
JAN WEBER, ANGELA K. VOLK, RICHARD C. GUNDERSON,
DANIEL K. TOMASCHKO, and SCOTT SCHEWE
__________

Appeal 2012-005818
Application 11/406,022
Technology Center 1600
__________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
ULRIKE W. JENKS, 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 anticipation and obviousness. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
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Application 11/406,022

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STATEMENT OF CASE
According to the Specification, page 1, the present invention relates to
medical balloons, including those that are used in balloon angioplasty. The
balloon comprises a heat set material. (Spec. 2.)

The following claim is representative.
1. A medical balloon comprising a material region that is
configured such that the balloon preferentially collapses into a
predetermined orientation upon deflation of the balloon, the
balloon comprising a plurality of wings, each of the plurality of
wings comprising wing tips and valleys between each of said
plurality of wings, at least one additional layer of said material
region is applied to the wing tips or valleys, the material region
comprises a heat-set material.

Cited References

Campbell et al., US 5,458,572 Oct. 17, 1995
(hereinafter ʼ572)
Campbell et al., US 5,456,666 Oct. 10, 1995
(hereinafter ʼ666)

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Grounds of Rejection
Claims 1–11, 19–22, 421–47, and 52–532 rejected under 35 U.S.C.
§ 102(b) as being anticipated by, or alternatively as obvious under 35 U.S.C.
§ 103(a) as being unpatentable over Campbell ʼ572.

FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages
5–7. The following facts are highlighted.
1. The Specification, pages 10–11, discloses that balloon and balloon
layering materials may be made of organic polymers such as
nylon, polyamides, polyethylene terephthalate (PET).
2. Campbell ’572 discloses that the balloons may be made of nylon,
polyamides and polyethylene terephthalate (PET). (Campbell, col.
3, ll. 1-35; Ans. 5, 10.)

1 According to the amendment filed Dec. 17, 2010, claim 42 is cancelled.
(Amendment, page 12; Br. 5.) Claims 12–18, 23-41 and 48–51 have been
withdrawn from consideration as being directed to a non-elected
invention(s).
2 Restriction has been made between the following species and sub-species
(Restriction Requirement dated June 24, 2010).
Species 1: FI, Species 2: F5, Species 3: F7, Species 4: F8, Species 5: F12C,
Species 6: F15, Species 7: F16. And sub-species: 1. charged particles, 2.
magnetic region, 3. heat set region, 4. ceramic component, 5. sol-gel layer.
In response, Applicants provisionally elected species 2, figure 5 of which
claims 1–53, are readable thereon. Applicants provisionally elected sub-
species 3, heat set region. (Amendment filed July 22, 2010.)

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Discussion
ISSUE
The issue is: Does the cited prior art support the Examiner’s finding
that the claimed subject matter is obvious?

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). To anticipate, every
element and limitation of the claimed invention must be found in a single
prior art reference, arranged as in the claim. Karsten Mfg. Corp. v.
Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).
“When the claimed compositions are not novel they are not rendered
patentable by recitation of properties, whether or not these properties are
shown or suggested in the prior art.” In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990).
“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.
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Cir. 1993) (citations omitted). In order to determine whether a prima facie
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).
When the examiner has required the applicant to elect single chemical
species for examination, the issue on appeal is the patentability of the single
elected species. It is appropriate to limit discussion to that single issue and
take no position respecting the patentability of the broader generic claims,
including the remaining, non-elected species. See Ex parte Ohsaka, 2
USPQ2d 1461 (Bd. Pat. App. Int. 1987).

ANALYSIS
Obviousness Rejection
With respect to the elected species, 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 to
support both a prima facie case of obviousness. We provide the following
additional comment to argument set forth in the Answer.
The medical balloon of Appellants’ claimed invention comprises a
material region that comprises a heat-set material (see Appellants’ Claim 1).
Campbell suggests a balloon that comprises “a heat set material, such as
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Nylon or polyamide, or a PET,” which are “well known to be used for
making a medical balloon” (Ans. 6). Notwithstanding Appellants’
contention to the contrary, Appellants’ claim 1 does not require this heat-set
material to be processed in any particular way, e.g., heat set (see e.g., Br. 9
(“The dispute in this case turns on whether or not the term “heat set” as used
in the balloon forming art can be understood to include any process during
which the balloon might be heated such as molding and extrusion molding
as proposed by the Examiner.”) Therefore, we are not persuaded by
Appellants’ arguments, or cited prior art, relating to a process limitation,
heat setting, which could, under circumstances not required by Appellants’
claim 1, be used to heat set a heat set material. (see Br. 9–11.)
Our mandate is to give claims their broadest reasonable interpretation.
In re American Academy of Science Tech Center, 367 F.3d 1359, 1364, (Fed.
Cir. 2004). “An essential purpose of patent examination is to fashion claims
that are precise, clear, correct, and unambiguous. Only in this way can
uncertainties of claim scope be removed, as much as possible, during the
administrative process.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). On
this record, Appellants claims are not limited to a particular product formed
by a specific heat-set process.
It is during prosecution that applicants have “the opportunity to amend
the claims to obtain more precise claim coverage.” In re American Academy
Of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004). If
Appellants required a specific definition, or heat set process in the pending
claims, the claims should have been amended to reflect that requirement.
We read the term “heat set” material in claim 1, as a material capable
of being heat set. (Compare, Ans. 5, 10.) Both the Specification and
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Campbell ’572 disclose the exact same balloon materials. (FF 1, 2.) These
materials are capable of being heat set and thus are “heat set materials.” We
read no process limitation, i.e., that the materials have been heated, into the
claim.
In sum, Appellants have failed to show a structural difference between
the claimed medical balloon and that of Campbell ʼ572. The obviousness
rejection is affirmed. We do not reach the anticipation rejection.

CONCLUSION OF LAW
The cited reference supports the Examiner’s obviousness rejection of
the elected species, which is affirmed. We do not reach the anticipation
rejection.

AFFIRMED

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