Ex Parte Tilson et alDownload PDFPatent Trial and Appeal BoardJun 13, 201612477077 (P.T.A.B. Jun. 13, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/477,077 0610212009 79990 7590 06/15/2016 C R Bard, Inc, Bard Peripheral Vascular, Inc. 1415 W. 3rd Street P.O. Box 1740 Tempe, AZ 85280-1740 FIRST NAMED INVENTOR Alexander Quillin TILSON 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 758-PDD-13-03 US 8 6665 EXAMINER WEISBERG, AMY REGINA ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 06/15/2016 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): BPVIP.Docket@crbard.com Charles.Runyan@crbard.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALEXANDER QUILLIN TILSON, MARK CHRISTOPHER SCHEEFF, ROLAND J. DOWNS, CHRISTOPHER MICHAEL ADAMS, and JON MICHAEL HOLWEGER Appeal 2014-005127 1'2 Application 12/477,077 Technology Center 3700 Before HUBERT C. LORIN, PHILIP J. HOFFMANN, and CYNTHIA L. MURPHY, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 1, 4--7, 9-13, 15, 16, 19, 21, 25, 26, and 32. We have jurisdiction under 35 U.S.C. § 6(b). 1 Our decision references Appellants' Specification ("Spec.," filed June 2, 2009), Appeal Brief ("Appeal Br.," filed Dec. 19, 2013), and Reply Brief ("Reply Br.," filed Mar. 14, 2014), as well as the Final Office Action ("Final Action," mailed July 8, 2013) and the Examiner's Answer ("Answer," mailed Jan. 16, 2014). 2 The real party in interest is Loma Vista Medical, Inc. Appeal Br. 3. Appeal2014-005127 Application 12/477,077 We REVERSE. According to Appellants, "[the] invention relates to inflatable structures for use in medicine and other applications, and methods of manufacture and use of the same." Spec. ,-r 2. We reproduce, below, independent claims 1, 7, and 15 as representative of the appealed claims. 1. An inflatable device for use in a biological body, compnsmg: a balloon defining a longitudinal axis having a longitudinal axis length, the balloon comprising a fiber having a fiber length, wherein the fiber length is from about 17 5% to about 300% of the longitudinal axis length, wherein the fiber is parallel with the longitudinal axis, and wherein the balloon has a closed longitudinal end. 7. An inflatable device for use in a biological body, compnsmg: a balloon comprising a wall comprising a reinforcement fiber, wherein the balloon has a distal terminal end having a distal-most point oriented substantially along a longitudinal axis of the balloon, and \x1herein the balloon has no longitudinal through-lumen extending through the proximal terminal end and through the distal terminal end, and wherein the reinforcement fiber is in a matrix, wherein the reinforcement fiber is oriented parallel with the longitudinal axis of the balloon, and wherein the reinforcement fiber extends around the distalmost point of the distal terminal end of the balloon. 15. An inflatable device for use in a biological body compnsmg: a balloon comprising a wall comprising a plurality of fiber tape strips; wherein the balloon has a closed distal end, and wherein the plurality of fiber tape strips overlay one another such that the fibers therein meet at regular angles at the closed distal end. Appeal Br., Claims App. 2 Appeal2014-005127 Application 12/477,077 REJECTIONS AND PRIOR ART The Examiner rejects the claims as follows: claim 1 under 35 U.S.C. § 103(a) as unpatentable over Reiley (US 5,827,289, iss. Oct. 27, 1998), Chen (US 6,905,743 Bl, iss. June 14, 2005), and Kuslich (US 2008/0086133 Al, pub. Apr. 10, 2008); claims 4, 5, 7, and 9-13 under 35 U.S.C. § 103(a) as unpatentable over Reiley, Chen, Kuslich, and Izuchukwu (US 6,651,659 B2, iss. Nov. 25, 2003); claim 6 under 35 U.S.C. § 103(a) as unpatentable over Reiley, Chen, Kuslich, and Scholten (US 5, 108,404, iss. Apr. 28, 1992); claims 15, 16, 19, 21, 25, 26, and 32 under 35 U.S.C. § 103(a) as unpatentable over Reiley and Hayes (US 2007/0213760 Al, pub. Sept. 13, 2007); and claims 15, 16, 19, 21, 25, 26, and 32 under 35 U.S.C. § 103(a) as unpatentable over Reiley and Lesh (US 3,533,578, iss. Oct. 13, 1970). Answer 2-3; Final Action 2-12. ANALYSIS Obviousness rejection of claim 1 Independent claim 1 recites an inflatable device comprising a balloon defining a longitudinal axis having a longitudinal axis length, the balloon comprising a fiber having a fiber length, wherein the fiber length is from about 175% to about 300% of the longitudinal axis length, wherein the fiber is parallel with the longitudinal axis, and wherein the balloon has a closed longitudinal end. Appeal Br., Claims App. Appellants argue that, contrary to the Examiner's determinations (see, e.g., Final Action 2-3), it would not have been obvious 3 Appeal2014-005127 Application 12/477,077 to modify any of the reference, taken alone or in combination, to provide a fiber having a fiber length that is from about 175% to about 300% of a longitudinal axis length and which is parallel with the balloon longitudinal axis (see, e.g., Appeal Br. 10-13; see also, e.g., Reply Br. 1-3). Based on our review of the record, for the reasons discussed below, we conclude that the Examiner does not provide sufficient reasons for combining and modifying the references to provide the claimed fiber length, and, thus, we do not sustain the rejection of claim 1. The Examiner does not find that any of Reiley, Chen, and Kuslich discloses the fiber with the claimed fiber length discussed above, and, in fact, finds that Reiley does not disclose a fiber as long as the claimed length. See, e.g., Final Action 2-3; see also, e.g., Answer 3-5. However, the Examiner determines that there are a limited number of obvious methods in which to manufacture this device. One of which being without seams, thus resulting in linearly aligned threads nmning down and back the length of the balloon resulting in the fiber length would be from about 175% to about 300% of the longitudinal axis length as a simple back and forth would be about 200%. Thus, it would have been obvious ... for the fibers to run down and back the length of the balloon as this is an obvious means of manufacture. Kuslich shown in [F]igure 4 longitudinally aligned fibers, thus it would have been obvious to orient the fibers of Reiley as taught by Kuslich to provide a strong balloon. Since the balloon of Reiley ... is closed at the distal end, it would have been obvious ... for the fibers to extend about the entire length down and back, . . . thus it would have been obvious . . . that the fiber length would be from about 175% to about 300% of the longitudinal axis length as a simple back and forth would be about 200%. Answer 3--4. 4 Appeal2014-005127 Application 12/477,077 We conclude, however, that the Examiner's reasons for modifying the references to provide a balloon with the claimed fiber length lacks the rational underpinnings required to support the rejection, and, therefore, we do not sustain the rejection. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). For example, even if we agree with the Examiner that "there are a limited number of ... methods in which to manufacture this device. One of which being without seams, thus resulting in linearly aligned threads running down and back the length of the balloon" (Answer 3--4), the Examiner does not establish that the existence of such a method for making a balloon would result in a balloon with the claimed fiber length, or that it would have been obvious to manufacture a balloon by this method with the claimed fiber length (see Appeal Br. 10-11; see also Reply Br. 2-3). Further, to the extent that the Examiner finds that any of the references discloses fibers, the Examiner does not find that either Reiley or Kuslich discloses any particular fiber length. See, e.g., Final Action 2-3; see also, e.g., Answer 3--4. Chen appears to show extremely short length fibers. See, e.g., Chen Figs. 1-3; see also Appeal Br. 13. Thus, we determine that there is nothing in the references that discloses or suggests that fibers "run[] down and back the length of the balloon resulting in the fiber length ... from about 175% to about 300% of the longitudinal axis length[,] as a simple back and forth would be about 200%." Answer 4. Based on the foregoing, we do not sustain the rejection of independent claim 1. Obviousness rejection of claims 4, 5, 7, and 9-13 Claims 4 and 5 Claims 4 and 5 depend from independent claim 1, whose rejection we do not sustain. Further, the Examiner does not establish, for example, that 5 Appeal2014-005127 Application 12/477,077 Izuchukwu remedies the deficiency in the rejection of claim 1. Thus, we do not sustain the rejection of claims 4 and 5. Claims 7 and 9-13 Independent claim 7, from which claims 9-13 depend, recites "the reinforcement fiber extends around the distalmost point of the distal terminal end of the balloon." Appeal Br., Claims App. The Examiner does not find that any reference discloses the claimed fiber, but, instead, determines that because "the balloon of Reiley ... is closed at the distal end, it would be obvious for the fibers to extend about the entire length down and back and extend around the distal-most point of the balloon, which is discussed in claim 1." Answer 7. As discussed above, we do not agree with the Examiner that claim 1 is obvious. Further, even if we agree with the Examiner's finding that "the balloon of Reiley ... is closed at the distal end," this is insufficient by itself to support the conclusion that, as a result, "it would be obvious for the fibers to extend" around the balloon's distal terminal end. Answer 7. Based on the foregoing, we do not sustain the rejection of claims 7 and 9-13. Obviousness rejection of claim 6 Claim 6 depends from independent claim 1, whose rejection we do not sustain. Further, the Examiner does not establish, for example, that Scholten remedies the deficiency in the rejection of claim 1. Thus, we do not sustain the rejection of claims 6. Obviousness rejections of claims 15, 16, 19, 21, 25, 26, and 32 Independent claim 15, on which claims 16, 19, 21, 25, 26, and 32 depend, recites "the plurality of fiber tape strips overlay one another such that the fibers therein meet at regular angles at the closed distal end." 6 Appeal2014-005127 Application 12/477,077 Appeal Br., Claims App. The Examiner alternately finds that Hayes and Lesh disclose the claimed fiber tape strips. See, e.g., Answer 7-11. For the reasons discussed in detail below, we do not sustain either obviousness rejection. Specifically, the Examiner finds that Hayes's Figure 5 and paragraphs 59----67 to disclose the claimed fiber tape strips. See Answer 7-8. However, we agree with Appellants that "the cited excerpts from Hayes do not disclose [fiber tape] strips whatsoever. . . . Instead, these portions of Hay[ e] s only disclose laying individual fibers 13 over a mandrel." Reply Br. 3. Inasmuch as it is not apparent to us, and the Examiner does not explain, how Hayes's "thin inelastic fibers 13" (Hayes i-f 49) teach the claimed fiber tape strip (Appeal Br., Claims App.), we conclude that the Examiner's finding regarding Hayes is not supported by a preponderance of the evidence. Thus, we do not sustain the rejection of claims 15, 16, 19, 21, 25, 26, and 32 based on Hayes. Further, with respect to the rejection based on Lesh, the Examiner finds that Lesh's Figure 6 and column 2, lines 42-58 disclose the claimed fiber tape strips. See Answer 10. The identified portions of Lesh show and describe curtain tape 16, but do not show or describe that curtain tape 16 is a fiber tape strip, for example. Further, to the extent that the Examine relies on Lesh's guy wires 15, which Lesh describes as "preferably of woven fiber glass tape covered with epoxy resin ... [, and] fixed to the cell wall or bulkhead" of the lighter-than-air craft (Lesh, col. 2, 11. 56-58), the Examiner's reasoning for modifying Reiley's medical device so as to be constructed from fiber take strips, based on the arrangement of guy wires in Lesh's aircraft, lacks the requisite rational underpinnings (see KSR at 418 7 Appeal2014-005127 Application 12/477,077 (2007)). Therefore, we do not sustain the rejection of claims 15, 16, 19, 21, 25, 26, and 32 based on Lesh. DECISION We REVERSE the Examiner's obviousness rejections of claims 1, 4--7, 9-13, 15, 16, 19, 21, 25, 26, and 32. REVERSED 8 Copy with citationCopy as parenthetical citation