Ex Parte PallazzaDownload PDFPatent Trial and Appeal BoardMay 23, 201613495247 (P.T.A.B. May. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/495,247 06/13/2012 11050 7590 05/25/2016 SEAGER, TUFTE & WICKHEM, LLP 100 South 5th Street Suite 600 Minneapolis, MN 55402 FIRST NAMED INVENTOR Stefan M. Pallazza 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. 2001.1386102 8530 EXAMINER HOUSTON, ELIZABETH ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 05/25/2016 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): BSC.USPTO@stwiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte STEFAN M. PALLAZZA Appeal2014-001088 Application 13/495,247 1 Technology Center 3700 Before THOMAS F. SMEGAL, LISA M. GUIJT, and MARK A. GEIER, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Stefan M. Pallazza (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner's final rejection of claims 1-16.2 We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. 1 According to Appellant, the real party in interest is Boston Scientific Scimed, Inc. Appeal Br. 3. 2 Claims 17-20 have been withdrawn. See Non-Final Action mailed Dec. 6, 2012. Appeal2014-001088 Application 13/495,247 CLAIMED SUBJECT MATTER Claim 1, the sole independent claim, is reproduced below and illustrates the claimed subject matter, with disputed limitations emphasized. 1. A catheter assembly comprising: at least one catheter shaft having a proximal end and a distal end; and a multilayer expandable medical balloon, the multilayer expandable medical balloon comprising at least one continuous inner layer, the inner layer having an inner surface and an outer surface, and at least one outer layer, the at least one outer layer comprising a cavity which extends through the at least one outer layer, the at least one continuous inner layer comprising a polymer material having a first compliance and the at least one outer layer comprising a polymer material having a second compliance that is less than the first, the balloon having at least one unexpanded state and at least one expanded state, in the expanded state during use, the at least one continuous inner layer is exposed at the cavity. REJECTIONS The following Examiner's rejections are before us for review3. 1. Claims 1-5, 7, 13, and 16 are rejected under 35 U.S.C. § 102(b) as anticipated by Crocker (US 2003/0028211 Al, pub. Feb. 6, 2003). 3 In a Non-Final Action mailed December 6, 2012, the Examiner rejected claims 1-12 and 14--16 on the ground of nonstatutory obviousness-type double patenting over claims 1, 4--7, 10, 11, and 15 of U.S. Patent 8,216,267 and Davidson, and claim 13 on the ground of nonstatutory obviousness-type double patenting over claims 1, 4--7, 10, 11, and 15 of U.S. Patent 8,216,267, Davidson, and Williams. See Non-Final Act. 3---6; see also Amendment 6-7, dated Feb. 4, 2013. Although these rejections appear not to have been either withdrawn or overcome, they are not restated in the Final Action mailed February 15, 2013, from which this appeal is taken. Therefore, they are not before us for review. 2 Appeal2014-001088 Application 13/495,247 2. Claims 1-3, 14, and 16 are rejected under 35 U.S.C. § 102(b) as anticipated by Ben-Muvhar (WO 2005/041810 A2, pub. May 12, 2005). 3. Claims 6, 8, and 12 are rejected under 35 U.S.C. § 103(a) as unpatentable over Crocker and Dusbabek (US 2001/0007082 Al, pub. July 5,2001). 4. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over Crocker and Gahara (US 4,950,239, iss. Aug. 21, 1990). 5. Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over Crocker, Dusbabek, and Gahara. 6. Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over Crocker and Coyle (US 2004/0039409 Al, pub. Feb. 26, 2004). 7. Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over Ben-Muvhar and Davidson (US 2004/0267352 Al, pub. Dec. 30, 2004). ANALYSIS Anticipation of claims 1-5, 7, 13, and 16 by Crocker We are persuaded by Appellant's arguments that the Examiner fails to establish a prima facie showing of anticipation in rejecting claims 1-5, 7, 13, and 16 over Crocker. See Appeal Br. 9-11 and Reply Br. 2--4. The Examiner finds that Crocker anticipates independent claim 1 by disclosing, inter alia, an inner layer 18 having a first compliance and an outer layer (expansion limiting bands) 40 having a second compliance less than the first compliance, where "the inner layer extends through the proximal and distal open ends (the at least one cavity [which extends through the at least one outer layer]) in the at least one expanded state (and 3 Appeal2014-001088 Application 13/495,247 the unexpanded state), exposing the inner layer at the cavity." Final Act. 3 (citing Crocker paras. 42, 46). In contesting the rejection, Appellant submits that "the expansion limiting bands disclosed by Crocker [] do not form a cavity within the meaning of the present application," because "[ c ]laim 1 specifically recites that the cavity extends through the outer layer exposing the underlying inner layer at the cavity," which "makes clear ... that the cavity (as claimed) provides a clear structural limitation ( e. g., it must extend through the outer layer etc.) that is simply not shown or described in the Crocker[] reference." Appeal Br. 9-11 (emphasis omitted). Thus, Appellant contends that Crocker "simply cannot be interpreted to have a cavity extending through the expansion limiting band and exposing the underlying balloon layer." Id. at 11. The Examiner responds that "the open ends leading into the lumen of the 'bands' can clearly be considered a cavity (i.e. 'an unfilled space within a mass')," again reasoning that "the outer layer (one or more of the bands 40) extends over the inner layer (balloon 18) without covering the entire surface of the inner layer." Ans. 4. Appellant replies by explaining that the Examiner's definition of cavity "does not support the Examiner's position that the expansion limiting bands of the [Crocker] balloon comprise a cavity, i.e. an unfilled space within the mass of the expansion limiting bands," because "the lumen of the expansion limiting[] [bands] is entirely covered by the inner layer that forms the balloon." Reply Br. 3. As Appellant also explains, for that reason "the expansion limiting bands cannot be found to have a cavity which exposes the underlayer of the balloon." Id. We agree with Appellant that Crocker 4 Appeal2014-001088 Application 13/495,247 does not disclose a cavity as recited by claim 1 and find the determination made by the Examiner to be an arbitrary (and therefore unreasonable) interpretation of the disclosure in Crocker. [U]nless a reference discloses within the four comers of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc., v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). For the foregoing reasons, we do not sustain the Examiner's rejection of independent claim 1 and claims 2-5, 7, 13, and 16 depending therefrom as anticipated by Crocker. Anticipation of claims 1-3, 14, and 16 by Ben-Muvhar We are persuaded by Appellant's arguments that the Examiner fails to establish a prima facie showing of anticipation in rejecting claims 1-3, 14, and 16 over Ben-Muvhar. See Appeal Br. 12-14 and Reply Br. 5-10. The Examiner finds that Ben-Muvhar anticipates independent claim 1 by disclosing, inter alia, multilayer balloon 50 including "at least one continuous inner layer 52 ... and at least one outer layer 54 comprising a cavity which extends through the outer layer, the inner layer comprising a polymer material more compliant [than] the outer layer," where "the outer layer of the inner layer is exposed at the cavity when the balloon is in the expanded state." Final Act. 4 (citing Ben-Muvhar, Figs. 7 and 8, pages 10, 11. 11-13 and 13, 11. 7-16). Appellant contends that Ben-Muvhar merely discloses "a single layer balloon" having a portion that "can be both inverted into the interior of the balloon and radially protruded to the exterior of the balloon as illustrated in 5 Appeal2014-001088 Application 13/495,247 FIG. 8." Appeal Br. 12. Appellant also submits that "[i]n the expanded state, the Ben-Muvhar et al. balloon is [still] clearly a single layer." Id. at 13. The Examiner responds that "[i]n the collapsed configuration as depicted in Fig 8, [each of] the inner layer and the outer layer of Ben- Muvhar can clearly be considered a 'thickness' that is 'lying over or under another', forming a multilayer balloon as claimed," reasoning that even though there is space depicted between the inner layer and the outer layer of Ben-Muvhar, one of ordinary skill in the art would understand that [] the air would be removed such that the outer layer would be collapsed directly onto the inner layer to reduce the profile and facilitate passage through the vasculature. 4 Ans. 5-6 (emphases omitted). However, Appellant correctly determines that Ben-Muvhar "fails to disclose or suggest that there is a cavity in the outer layer of the balloon that exposes an inner layer in an inflated state," because Ben-Muvhar's "balloon in an expanded state is still a single layer balloon, not a multilayer balloon as recited by claim 1." Reply Br. 7. Thus, we agree with Appellant that Ben- Muvhar does not disclose a multilayered balloon with a cavity in an outer layer through which an inner layer is exposed when the balloon is in an inflated state, as recited by claim 1 and find the determination made by the Examiner to be an arbitrary (and therefore unreasonable) interpretation of the disclosure in Ben-Muvhar. See Net Money!N, 545 F.3d at 1371. 4The Examiner's finding appears to be that the inverted portion of Ben- Muvhar' s balloon is a separate inner layer because of having a "thickness." 6 Appeal2014-001088 Application 13/495,247 For the foregoing reasons, we do not sustain the Examiner's rejection of independent claim 1 and claims 2-3, 14, and 16 depending therefrom as anticipated by Ben-Muvhar. Obviousness of claims 6, 8, and 12 over Crocker and Dusbabek; of claim 9 over Crocker and Gahara; of claim 10 over Crocker, Dusbabek and Gahara; of claim 11 over Crocker and Coyle; and of claim 15 over Ben- Muvhar and Davidson Regarding the claims 1, 8-12, and 15, each of the Examiner's rejections is based on the same unsupported findings discussed above with respect to the disclosure of Crocker or Ben-Muvhar. See generally Final Act. 5-8. The addition ofDusbabek, Gahara, Coyle, and/or Davidson does not remedy the deficiencies of either Crocker or Ben-Muvhar, as discussed supra. Accordingly, for similar reasons as discussed above for claim 1, we do not sustain the Examiner's decisions rejecting claims 6, 8, and 12 over Crocker and Dusbabek; claim 9 over Crocker and Gahara; claim 10 over Crocker, Dusbabek, and Gahara; claim 11 over Crocker and Coyle; and claim 15 over Ben-Muvhar and Davidson. DECISION The Examiner's prior-art rejections are reversed. REVERSED 7 Copy with citationCopy as parenthetical citation