Ex Parte Uflacker et al

Patent Trial and Appeal Board

Dec 21, 2016

11325977 (P.T.A.B. Dec. 21, 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.
11/325,977 01/05/2006 Renan Uflacker 8627-1117 (PA-5632-RFB) 1260
48003 7590 12/21/2016
ROT JCnnk - PTiiraan EXAMINER
PO BOX 10395
CHICAGO, IL 60610
YABUT, DIANE D
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
12/21/2016 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 RENAN UFLACKER and KIAN OLSEN
Appeal 2014-009675
Application 11/325,977
Technology Center 3700
Before MICHELLE R. OSINSKI, JILL D. HILL, and
THOMAS F. SMEGAL, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Renan Uflacker and Kian Olsen (Appellants)1 appeal under 35 U.S.C.
§ 134 from the Examiner’s final decision rejecting claims 1—6, 8—13, 15—19,
and 21 under 35 U.S.C. § 103(a) as unpatentable over Meyer (US
2003/0153870 Al, pub. Aug. 14, 2003) and Konstantino (US 2005/0021071
Al, pub. Jan. 27, 2005). Final Act. 2—5. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Cook Incorporated. Appeal
Br. 2.
Appeal 2014-009675
Application 11/325,977
THE CLAIMED SUBJECT MATTER
Claims 1,11, and 18 are independent. Claim 11, reproduced below, is
illustrative of the claimed subject matter on appeal.
11. An atherosclerosis cutting device coaxially adaptable about
an expandable balloon having a distal end and proximal end for
angioplasty of a stenotic lesion in a body vessel, the device
comprising:
a distal ring, a proximal ring, and a cutting body extending
therebetween, the cutting body including a plurality of stmts,
each strut having a first portion and a second portion, each first
portion being attached to the distal ring and non-helically
extending longitudinally therefrom to the second portion
attached to the proximal ring;
wherein the distal ring is configured to immovably attach
onto the distal end of the balloon when the balloon is
unexpanded, and the proximal ring is configured to immovably
attach onto the proximal end of the balloon when the balloon is
unexpanded, such that the cutting body extending between the
distal and proximal rings is disposed about the entire balloon, the
cutting body being radially expandable with the balloon to
engage the stenotic lesion for dilatation of the body vessel during
angioplasty.
OPINION
The Examiner finds that Meyer teaches most of the limitations of the
independent claims, except for “the balloon 103 proximal end [being]
immovably attached onto the proximal ring 111 of the device when the
balloon is unexpanded, and the distal end of the balloon [being] immovably
attached onto the distal ring 112 of the device when the balloon is
unexpanded.” Final Act. 4 (emphasis omitted). The Examiner turns to
Konstantino to teach this limitation, finding that Konstantino teaches “an
angioplasty cutting device with a balloon 12 having a proximal end
immovably attached (‘thermally bonded’) onto a proximal ring 15 of the
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Application 11/325,977
device when the balloon is unexpanded, and a distal end immovably
attached (‘thermally bonded’) onto a distal ring 16 of the device when the
balloon is unexpanded.” Id. at 4—5 (citing Konstantino 1 88) (emphasis
omitted). The Examiner concludes that it would have been obvious to one
of ordinary skill in the art
to immovably attach or bond the distal and proximal rings of
Meyer ... to the distal [a]nd proximal ends of the balloon,
respectively, as taught by Konstantino ... to allow the cutting
body rings and struts to securely move along with the balloon
and “allow rotation” and increased torque to facilitate cutting.
Id. at 5 (citing Konstantino 124).
Appellants argue that Meyer teaches away from combining the
elements of Meyer and Konstantino to arrive at the claimed invention.
Appeal Br. 7—11. To the extent Appellants are relying on the fact that “none
of the four embodiments described in Meyer show mounting or securing
anything to the balloon” {id. at 9), we note that prior art does not teach away
from claimed subject matter merely by disclosing a different solution to a
similar problem unless the prior art also criticizes, discredits, or otherwise
discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004).2 For similar reasons, Appellants’ reliance on the fact that
Meyer “discloses spacing the cutting structure ‘away from the outer surface
of the balloon to permit expansion of the balloon” or sizing the rings “so that
they can slip over the balloon 103 when it is in a deflated condition” {id. at
2 Moreover, we call attention to Meyer’s disclosure of an embodiment
including a “securement or attachment means [that] can take the form of. . .
heating the [flexible elongate] elements to soften the plastic of the balloon so
that they will be embedded in the plastic and retained on the outer surface 44
of the balloon.” Meyer 130.
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Application 11/325,977
9, 10 (citing Meyer || 24, 37, 41, 42, Figs. 6, 12, 15) (emphasis omitted)), is
not persuasive of teaching away.
To the extent Appellants are asserting that “Meyer discourages
securing cutting structures directly to an expandable balloon,” we are not
persuaded that one of ordinary skill in the art would be discouraged by
Meyer’s disclosure. Appeal Br. 8. In particular, Appellants assert that
Meyer teaches that balloon catheters having knives mounted on the balloon
have “disadvantages .. ., such as requiring ‘special mounting’ to secure the
knives to the balloon . . . [and] ‘ . . . decreasing] the flexibility of the
balloon.’” Id. at 8—9 (citing Meyer 12) (emphasis omitted). Appellants
point out that one of the references disparaged by Meyer is U.S. Patent No.
5,797,935 to Barath (hereinafter referred to as “Barath”) in which “the
cutting assembly (10) is mounted on the angioplasty balloon (34), through
the aid of circular bands (40), (42).” Id. at 9 (citing Barath, 4:31—41).
Appellants take the position that “[i]t is this attachment that Meyer
discourages because such approach requires ‘special mounting’ and
‘decreases the flexibility of the balloon.’” Id. (citing Meyer 12).
As an initial matter, Meyer might be more properly characterized as
discouraging the attachment of rigid cutting blades to the balloon (see
Barath, 3:63^4:2), as opposed to discouraging any and all attachment of
cutting structures to a balloon. This is because Meyer itself discloses at least
one embodiment in which flexible elongate elements apparently can be
embedded in the plastic of the balloon. See Meyer 130.
Moreover, “[although a reference that teaches away is a significant
factor to be considered in determining unobviousness, the nature of the
teaching is highly relevant, and must be weighed in substance.” In re
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Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). “Where the prior art contains
‘apparently conflicting’ teachings (i.e., where some references teach the
combination and others teach away from it) each reference must be
considered ‘for its power to suggest solutions to an artisan of ordinary skill.
. . considering] the degree to which one reference might accurately discredit
another.’” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir.
2006) (quoting In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991)).
Here, an artisan seeking to improve the art of angioplasty cutting
devices, on learning from Meyer that balloon catheters having knives
mounted on the balloon may suffer from increased costs of construction and
reduced balloon flexibility (Meyer 12), might well be led to search beyond
well known balloon-mounted cutting devices. However, Meyer also teaches
that balloon-mounted cutting devices are usable and have been used for
Appellants’ purpose.3 Appellants do not distinguish their balloon-mounted
cutting device from prior art balloon-mounted cutting devices disclosed in
the background section of Meyer, nor explain how their claimed invention
3 A known or obvious system does not become patentable simply because it
has been described as somewhat inferior to some other system for the same
use. See Gurley, 27 F.3d at 553. In Gurley, the invention was a printed
circuit material that included a substrate material made of a nonwoven web
impregnated with epoxy and that was bendable and shape retaining. Id. at
552. The Yamaguchi reference disclosed a printed circuit material having a
fibrous substrate impregnated with a polyester-imide resin (rather than
epoxy), noting that epoxy-impregnated fibrous substrate were inferior to
circuit boards made with the polyester-imide resins. Id. at 552—53. The
court noted that Yamaguchi taught that epoxy had been used for Gurley’s
purpose, that Gurley did not distinguish his epoxy product from that
described by Yamaguchi, and that Gurley did not offer specific epoxies or
improved properties. Id. at 553. The court stated that “Gurley asserted no
discovery beyond what was known to the art.” Id.
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goes beyond what was already known to the art of angioplasty cutting
devices as acknowledged in Meyer and further described in Konstantino.
On these facts, Appellants’ teaching away argument is insufficient to
establish patentability. Even reading Meyer’s description as discouraging
use of well-known balloon-mounted cutting devices, Appellants’ claims
recite no discovery beyond what was known to the art. See Gurley, 27 F.3d
at 553.
Furthermore, it has been held that “[t]he fact that the motivating
benefit comes at the expense of another benefit, however, should not nullity
its use as a basis to modify the disclosure of one reference with the teachings
of another. Instead, the benefits, both lost and gained, should be weighed
against one another.” Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340,
1349 n. 8 (Fed. Cir. 2000); see also Medichem, 437 F.3d at 1165 (“a given
course of action often has simultaneous advantages and disadvantages, and
this does not necessarily obviate motivation to combine”) (citation omitted).
Here, that the benefit gained from immovably attaching the rings of a cutting
body to a balloon—e.g., allowing the cutting body to securely move along
with the balloon—may come at the expense of construction costs and/or
balloon flexibility should not nullify its use as the basis to modify Meyer.
One of ordinary skill in the art could see benefit in attaching the
cutting device to the balloon—e.g., “facilitating] advancement of the
flexible elongate elements into the lesion or stenosis in the vessel being
treated without danger from the flexible elongate elements becoming
separated from the balloon”—as recognized by Meyer itself. Meyer 145.4
4 We have also considered Appellants’ argument that the immovable
attachment of the rings to the balloon as recited in the claims “is the exact
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This benefit could outweigh the potential disadvantages of increased
construction cost and/or a decrease in balloon flexibility in the minds of at
least some artisans. It would have been obvious to a person of ordinary skill
in the art to choose which advantage to pursue given the known tradeoffs
stemming from these choices. Therefore, the Examiner has provided a
reason with rational underpinning for modifying Meyer in view of
Konstantino (Final Act. 5), resulting in known tradeoffs.
Appellants also argue that modifying Meyer in accordance with the
teachings of Konstantino would change Meyer’s principle of operation.
Appeal Br. 11—13. Appellants identity Meyer’s principle of operation as
“slidability.” Id. at 13. Appellants add that “Meyer’s slidability is the
antithesis of Konstantino’s attachment.” Id. We are not persuaded by
Appellants’ argument in that it too narrowly defines the principle of
operation of Meyer. The “principle of operation” referred to by Appellants
relates to the “basic principles” under which the prior art device was
designed to operate. In re Ratti, 270 F.2d at 813 (“This suggested
combination of references would require a substantial reconstruction and
redesign of the elements shown in [the primary reference] as well as a
change in the basic principles under which the [primary reference]
construction was designed to operate.”) (emphasis added). Under Ratti, “a
opposite function of Meyer” which teaches that rings should be movable
over the balloon. Appeal Br. 10 (citing Spoilage Cutter Co. v. World
Kitchen, LLC, No. 08-1263, 2010 U.S. Dist. FEXIS 86561 (N. D. 111. 2010).
We are not persuaded of Examiner error in modifying Meyer with the
teachings of Konstantino in that Meyer itself recognizes the benefit of
preventing separation between the flexible elongate elements and the
balloon, rather than requiring movement between the elongate elements and
the balloon as alleged by Appellants.
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Application 11/325,977
change in the basic principles” refers to change that is fundamental in scope
so as to relate to scientific or technical principles under which the invention
is designed to operate. It cannot be said that a “change in basic principles”
occurs by attaching rings to the balloon as taught by Konstantino because
Meyer’s balloon catheter, even as modified by Konstantino, can still be
positioned near a lesion in a blood vessel and its balloon inflated to allow
cutting struts to form channels in the lesion. Ans. 3 (citing Meyer 144).
Finally, we have also considered Appellants’ argument that the final
rejection is based on improper hindsight. Appeal Br. 13—14. The Court
requires that we look to whether the Examiner has provided “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(citation omitted) (cited with approval in KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007)). We are not persuaded that the Examiner’s reasoning,
namely, to allow the cutting body rings and struts to securely move along
with the balloon (Final Act. 5), lacks a rational underpinning. Accordingly,
we are not persuaded that the combination is based on impermissible
hindsight as argued by Appellants, but rather is based on the Examiner’s
stated reasoning.
For the foregoing reasons, we are not persuaded that the Examiner
erred in concluding that Meyer and Konstantino renders obvious the subject
matter of independent claims 1,11, and 18, and we sustain the rejection of
independent claims 1,11, and 18 under 35 U.S.C. § 103(a) as unpatentable
over Meyer and Konstantino. We also sustain the rejection of claims 2—6,
8—10, 12, 13, 15—17, 19, and 21 which rely on the same arguments and
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reasoning we found unpersuasive in connection with the independent claims.
See Appeal Br. 14—15.
DECISION
The Examiner’s decision to reject claims 1—6, 8—13, 15—19, and 21
under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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