Ex Parte Eidenschink et al

Patent Trial and Appeal BoardMar 12, 2019

11296680 (P.T.A.B. Mar. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 11/296,680 12/07/2005 11050 7590 03/14/2019 SEAGER, TUFTE & WICKHEM, LLP 100 South 5th Street Suite 600 Minneapolis, MN 55402 FIRST NAMED INVENTOR Tracee Eidenschink 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. 2001.1376101 2285 EXAMINER SIMPSON, SARAH A ART UNIT PAPER NUMBER 3771 NOTIFICATION DATE DELIVERY MODE 03/14/2019 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): BSC.USPTO@stwiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TRACEE EIDENSCHINK, RAED RIZQ, DAVID ELIZONDO, JAN WEBER, and KEVIN BARRY Appeal2017-007467 Application 11/296,680 Technology Center 3700 Before JENNIFER D. BAHR, LISA M. GUIJT, and JEFFREY A. STEPHENS, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 seek our review under 35 U.S.C. Â§ 134(a) from the Examiner's Final Office Action ("Final Act.") rejecting claims 1-12 and 19- 22, which are all the claims pending in the application. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b ). 1 The real party in interest is identified as Boston Scientific Scimed, Inc. Appeal Br. 3. 2 The Final Office Action ( dated Apr. 8, 2016) is supplemented by an Advisory Action ( dated June 24, 2016). Appeal2017-007467 Application 11/296,680 For the reasons explained below, Appellants do not inform us of error in the rejection. Accordingly, we AFFIRM. Claimed Subject Matter Claims 1 and 19 are independent. Claim 1, reproduced below, illustrates the claimed subject matter. 1. An expandable medical balloon comprising: a balloon having a longitudinal axis, an outer surface, an inner surface, the inner surface defining a balloon lumen; the balloon further having a first deflated folded configuration comprising at least two folded wings each of the at least two folded wings-having an unexposed outer surface portion and an exposed outer surface portion, the unexposed outer surface portion of each of the at least two folded wings being located radially inward relative to the longitudinal axis and the exposed outer surface portion being located radially outward relative to the longitudinal axis and to the unexposed outer surface portion, in the first deflated folded configuration a lubricious surface treatment is selectively disposed on at least a portion of the unexposed outer surface portion of each of the at least two folded wings and not disposed on the exposed outer surface portion of each of the at least two folded wings, an unfolded inflated configuration in which the unexposed outer surface portion and the exposed outer surface portion are both located radially outward from the longitudinal axis and radially outward relative to the exposed outer surface portion in the first deflated folded configuration such that the unexposed outer surface portion is no longer unexposed in the unfolded inflated configuration, and a second deflated folded configuration that is different than the first deflated folded configuration, in the second deflated configuration the lubricious surface treatment is exposed on the outer surface of the balloon. 2 Appeal2017-007467 Application 11/296,680 Rejection3 Claims 1-12 and 19-22 stand rejected under pre-AIA 35 U.S.C. Â§ I03(a) as unpatentable over Wang (US 5,496,276, issued Mar. 5, 1996), Sydney (US 2002/0022849 Al, published Feb. 21, 2002), Fan (US 5,509,899, issued Apr. 23, 1996), andDeuss (US 5,049,131, issued Sept. 17, 1991). Final Act. 3-8. DISCUSSION The Board previously sustained a rejection of similar claims in this Application as unpatentable over the same prior art references at issue here. Ex parte Eidenschink, Appeal 2012-012524 (PTAB July 8, 2015). Among other amendments, claim 1 has been amended to include "a second deflated folded configuration that is different than the first deflated folded configuration, in the second deflated configuration the lubricious surface treatment is exposed on the outer surface of the balloon." Independent claim 19 was similarly amended. We consider Appellants' arguments in light of the amended claims, but we note that Appellants' arguments in the present 3 The Final Office Action rejects claims 1-12 and 19-22 under 35 U.S.C. Â§ 112, second paragraph, because certain claims recited terms lacking antecedent basis. Final Act. 2-3. In an Amendment After Final (filed June 7, 2016), Appellants amended the claims identified as lacking antecedent basis and state that the claims were amended as agreed during an interview with the Examiner. Although the Advisory Action indicates the amendment will be entered, the Advisory Action does not expressly withdraw the rejection under 35 U.S.C. Â§ 112, second paragraph. And although the Examiner's Answer states that every rejection set forth in the Final Office Action is maintained, Ans. 2, the Answer does not address the rejection underÂ§ 112, second paragraph. In the circumstances of this case, we consider the rejection underÂ§ 112 to be withdrawn. 3 Appeal2017-007467 Application 11/296,680 case present similar issues considered in the prior appeal and do not inform us of error in the current rejection for essentially the same reasons discussed in the prior appeal. The Examiner finds that Wang discloses much of the subject matter of independent claims 1 and 19, except that Wang fails to disclose a lubricious surface treatment that is selectively disposed on at least a portion of the unexposed outer surface portion of each of the at least two folded wings and not disposed on the exposed outer surface portion of the wings. Final Act. 5---6. The Examiner finds that Sydney discloses an expandable medical balloon with a stent and also discloses that a lubricious coating may be selectively applied to the balloon surface. Id. at 6 ( citing Sydney ,r,r 6, 9). The Examiner finds that Sidney teaches "the balloon may also have specific areas of the outer surface of the balloon coated, while leaving others uncoated to provide suitable contact with the stent." Id. ( citing Sydney i1 12). The Examiner finds Fan teaches that "it is advantageous to coat the outer surfaces of [ a medical] balloon that come in contact with one another with a lubricious coating." Id. (citing Fan Abstract). This coating prevents abutting surfaces from sticking together, which could impede proper inflation of the balloon. Id. The Examiner further finds that Deuss teaches that a coating may be applied solely on an inner surface of a fold of a medical balloon. Id.; see Deuss col. 2, 11. 67-68, Fig. 4. The Examiner concludes that, given the teachings of Sydney, Fan, and Deuss, it would have been obvious to one of ordinary skill in the art to modify the balloon of Wang with a hydrophilic polymer and hydro gel lubricious coating only on the unexposed outer surface portion of each of the 4 Appeal2017-007467 Application 11/296,680 folded wings of the balloon and not disposed on the exposed outer surface portion of each of the folded wings. Final Act. 6. The Examiner reasons: Deuss teaches that [ the recited] configuration of the balloon and its [lubricious] coating is possible, as only the unexposed outer surface portion of the fold of the balloon is coated. This particular coating configuration applied to the balloon of Wang would prevent abutting surfaces of the balloon from sticking together, as disclosed by Fan, as well as provide a stent with a suitable stent retention mechanism as disclosed by Sydney. The addition of a stent to the balloon of Wang would allow the device to be used for additional treatments such as improving a blocked or narrowed vessel and/or artery. Id. at 6-7. Appellants argue all claims together as a group. Appeal Br. 10-20. We select claim 1 as representative. 37 C.F.R. Â§ 4I.37(c)(l)(iv). Appellants argue Wang, Sydney, Fan, and Deuss, taken alone or in combination, fail to disclose or suggest a balloon having a first deflated folded configuration wherein a lubricious surface treatment is selectively disposed on at least a portion of the unexposed outer surface portion of each of the at least two folded wings and not disposed on the exposed outer surface portion of each of the at least two folded wings, and a second deflated folded configuration that is different than the first deflated folded configuration so that the lubricous surface treatment is exposed on the outer surface of the balloon in the second deflated configuration. Appeal Br. 11; Reply Br. 2. Appellants argue Wang teaches a balloon having a coating over the entirety of balloon wall 13, and that there is no coating that would be unexposed. Appeal Br. 11; Reply Br. 4. Appellants also argue Wang's teaching that "coverage of the coating can be limited to balloon 14, or just 5 Appeal2017-007467 Application 11/296,680 parts of balloon 14, by covering portions of the catheter and balloon which are not to be coated," Wang col. 5, 11., 56-59, still results in coating central body portion 24 of the balloon and will not result in a balloon having a coating selectively disposed only in the locations recited in claim 1. See Appeal Br. 12-14; Reply Br. 4--5. Appellants further contend that one of ordinary skill in the art would not interpret Wang to teach only partially coating the balloon body because this would not result in Wang's desired predetermined low profile configuration. Appeal Br. 14 (citing Wang Abstract). Appellants' arguments about Wang's coating do not inform us of error in the rejection because, as noted above, the Examiner finds Sydney and Fan provide reasons for selectively coating Wang's balloon as claimed. As to Sydney, Appellants contend Sydney teaches that the entirety of balloon body 30 is either left uncoated or coated with a less lubricious coating. Id. at 15- 17; Reply Br. 6-8. As to Fan, Appellants argue "[i]t would appear that the entirety of the Fan et al. balloon is coated with the hydro gel coating 1 and the biocompatible anti-blocking agent 12." Appeal Br. 17-18; Reply Br. 8- 10. Appellants contend one of ordinary skill in the art would be led to coat the entire balloon body of Wang, which fails to lead one of skill in the art to the selective coating disposition as recited in claims 1 and 19. Appeal Br. 18. As with Wang, Appellants' contentions that Sydney and Fan individually do not teach the claimed locations of the coating do not address the Examiner's rejection. As noted above, the Examiner finds Sydney's teaching of coating some areas of the balloon while leaving other areas uncoated to provide suitable contact with the stent, and Fan's teaching that a 6 Appeal2017-007467 Application 11/296,680 lubricious coating on abutting surfaces of a folded balloon can prevent those surfaces from adhering during inflation, provide reasons that one of ordinary skill in the art would have modified Wang to selectively coat the balloon in the manner claimed. See Final Act. 6-7; Ans. 5-6. As to Deuss, Appellants argue the reference does not teach a lubricious coating, "nor would one of ordinary skill in the art look to a disclosure of a therapeutic agent when providing solutions for stent retention and balloon withdrawal," concluding that "Deuss therefore too does not cure the deficiency" of Wang, Sydney, and Fan. Appeal Br. 18; Reply Br. 3. Deuss is relied on in the rejection for the limited purpose of showing that the claimed "configuration of the balloon and its coating is possible." Final Act. 6. In other words, Deuss is relied on as evidence that one of ordinary skill in the art who wanted to modify Wang by leaving uncoated outer portions of the balloon in contact with the stent, as suggested by Sydney, while coating the inner folds of the balloon, as suggested by Fan, would have known how to do so. Appellants do not inform us of error in the Examiner's reliance on Deuss for this purpose. Appellants argue the rejection is "based on impermissible hindsight reconstruction because the only disclosure of providing a balloon" with a coating in the claimed locations "is found only in Applicant's disclosure." Appeal Br. 19. To the extent Appellants argue the rejection is based on impermissible hindsight because no individual reference teaches the entirety of the limitations recited by Appellants, such is not required by the law of obviousness. See In re Keller, 642 F.2d 413,426 (CCPA 1981) ("[O]ne cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references."). Appellants' 7 Appeal2017-007467 Application 11/296,680 argument does not explain why the Examiner's findings or reasoning regarding modification of Wang in light of the teachings of Sydney, Fan, and Deuss is incorrect. Accordingly, for the reasons discussed above and by the Examiner, we are not informed of error in the Examiner's rejection of representative claim 1 under 35 U.S.C. Â§ 103(a) as unpatentable over Wang, Sydney, Fan, and Deuss. For the same reasons, we sustain the rejection of claims 2-12 and 19-22, which are rejected on the same ground and not argued separately. DECISION We affirm the Examiner's decision to reject claims 1-12 and 19-22 under 35 U.S.C. Â§ 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 8