KBIDC INVESTMENTS, LLCDownload PDFPatent Trials and Appeals BoardAug 19, 20212020004672 (P.T.A.B. Aug. 19, 2021) Copy Citation 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. 15/706,120 09/15/2017 Kendall D. Harter 7092-00109 3310 35690 7590 08/19/2021 KOWERT, HOOD, MUNYON, RANKIN & GOETZEL, P.C. 1120 S. Capital of Texas Hwy Building 2, Suite 300 Austin, TX 78746 EXAMINER DAVISON, LAURA L ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 08/19/2021 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): patent_docketing@intprop.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KENDALL D. HARTER, JON Y. YAMAMOTO, and A. SCOTT GOODWIN ____________ Appeal 2020-004672 Application 15/706,120 Technology Center 3700 ____________ Before JOHN C. KERINS, EDWARD A. BROWN, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 33, 34, 39, and 41–43, which constitute all the pending claims2. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as KBIDC INVESTMENTS, LLC. Appeal Br. 3. 2 Claim 40 has been cancelled. Advisory Act. 1. Appeal 2020-004672 Application 15/706,120 2 CLAIMED SUBJECT MATTER Claim 33 is representative of the subject matter on appeal. 33. A self-sealing balloon produced by a process comprising: immersing a mold in a body of liquid elastomer material, wherein the mold comprises a body portion and a neck region that includes: a first cylindrical portion adjacent to the body portion, a shoulder portion adjacent to the first cylindrical portion, and a second cylindrical portion adjacent to the shoulder portion, wherein: the shoulder portion includes a first shoulder transition curve adjacent to the first cylindrical portion, a second shoulder transition curve adjacent to the second cylindrical portion, and a concave portion between the first and second shoulder transition curves; the concave portion has a diameter that is smaller than a diameter of the first cylindrical portion and a diameter of the second cylindrical portion; the first cylindrical portion has the same diameter over its length and its length is at least a third of its diameter; and respective outer surfaces of the first shoulder transition curve and the second shoulder transition curve are convex; withdrawing the mold from the body of liquid elastomer material such that at least a portion of the self-sealing balloon formed on the shoulder portion has a greater thickness of elastomer material relative to other portions of the self-sealing balloon; rolling a portion of the elastomer material formed by the second cylindrical portion to form a lip region; removing the self-sealing balloon from the mold; and inserting an oblong gel capsule into an internal volume of the self-sealing balloon that is formed on the body portion of the mold, wherein the oblong gel capsule is configured to seal against at least the portion of the balloon formed by the shoulder portion and having the greater thickness to enclose the internal volume in response to the self-sealing balloon being filled with liquid. Appeal Br. 32 (Claims App.). Appeal 2020-004672 Application 15/706,120 3 REJECTIONS ON APPEAL Claims 33, 34, 39, and 41–43 are rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Final Act. 2. Claims 33, 34, 39, and 41–43 are rejected under 35 U.S.C. § 103 as being unpatentable over Durst (US 2014/0212074 A1, published July 31, 2014), Temple (US 560,444, issued May 19, 1896), Annis (US 2,617,624, issued Nov. 11, 1952), and Chen (US 2007/0238835 A1, published Oct. 11, 2007). Final Act. 5. ANALYSIS Written Description The test for sufficiency under the written description requirement of 35 U.S.C. § 112(a) “is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). This test “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. To have “possession,” “the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. The Examiner finds that the following subject matter recited in claim 33 is not supported by the original disclosure:3 3 The present application is a continuation of US Application No. 13/974,888, filed August 23, 2013 (hereinafter, “parent application”). Appeal 2020-004672 Application 15/706,120 4 a balloon produced by “withdrawing the mold from the body of liquid elastomer material such that at least a portion of the self- sealing balloon formed on the shoulder portion has a greater thickness of elastomer material relative to other portions of the self-sealing balloon.” Final Act. 3. The Examiner finds that the original disclosure does not describe the mold, as recited in claim 33, “being withdrawn in such a way as to produce a balloon with a greater thickness of elastomer material formed on the shoulder portion.” Id. The Examiner finds that the recited mold corresponds to mold stem 1800 shown in Figures 18 and 19 and described in paragraphs 85 and 86 of the Specification.4 Id. The Examiner finds that the Specification discloses “withdrawing a mold stem to produce a greater thickness at a shoulder portion,” but finds that this disclosure pertains to the different mold stem 300 shown in Figures 3 and 12, not to mold stem 1800. Id. The Examiner further finds that the Specification discloses that mold stem 300 produces “a balloon with a greater thickness at a location corresponding to a flat portion of the mold . . . adjacent to the balloon body.” Id.; see also Spec. ¶ 69. The Examiner submits that because the claimed mold does not include a flat portion, “[t]he disclosed process produces a balloon with a greater thickness of elastomeric material at a location different than what is claimed.” Final Act. 3–4. The Examiner acknowledges that Figures 1, 2, 5, and 8 show “[f]inished balloons having areas of greater thickness,” but submits that the area of greater thickness 4 Herein, citations by paragraph number to the “Specification” or “Spec.” are to the present Specification filed on September 15, 2017. The paragraph numbers cited by both the Examiner (Final Action and Examiner’s Answer) and Appellant (Appeal Brief and Reply Brief) are to the parent application. Appeal 2020-004672 Application 15/706,120 5 (i.e., seating shoulder 112 in Figs. 1 and 2, seating shoulder 512 in Fig. 5, seating shoulder 712 in Fig. 8) is at a different location than claimed. Id. at 4. The Examiner concludes that the original disclosure does not show or describe a balloon that has a greater thickness at the claimed location, or a process that would produce such a balloon. Id. Appellant contends that other portions of the Specification explain that “concave portions, such as the ‘fillet portion’ of Fig. 3 ‘tend to retain more of the liquid elastomer than other surfaces of the mold stem’ and thus ‘have a thicker cross-sectional area.’” Appeal Br. 15. Appellant asserts that the Examiner has provided no logical reason why this discussion does not apply to the similarly-shaped regions of the mold of Figures 18 and 19. Id. at 15–16 (see Figure 18 (annotated enlarged partial view of)). More particularly, Appellant references the following passages in the Specification that pertain to the withdrawal process for the mold shown in Figure 3: (a) “the ‘rate at which mold stems can be drawn from a liquid elastomer’ may be used to ‘leave a desired thickness’ on different portions of the balloon” (see Spec. ¶¶ 52–53); (b) “‘capillary forces tend to draw the liquid elastomer into capillary-like features of the mold stem’ such that the ‘fillet portions 312 might therefore tend to retain more of the liquid elastomer than other surfaces of the mold stem’ and the resulting balloons will ‘have a thicker cross-sectional area’ in those regions” (see id. ¶ 50); and (c) “more liquid elastomer can coat the fillet portions 312” (see id. ¶ 69). Appeal Br. 17. Appellant contends that Figure 3 and its description disclose a mold with concave areas that are used to produce a thicker cross-sectional area in the corresponding portion of the balloon, and that the description of Appeal 2020-004672 Application 15/706,120 6 Figures 3 and 4 provides a technique for withdrawing the mold that leads to this result. Id. Appellant further contends that Figure 18 depicts a concave portion that is similar to fillet portion 312 shown in Figure 3, and that both portions are examples of the “concave portion” recited in claim 33. Appeal Br. 17, 18. Appellant asserts, “[t]he written description issue thus turns on an unexceptional proposition: that the teachings regarding the properties of the concave part of Fig. 3—namely, that this portion may be thicker than other parts of the balloon—apply equally to the concave part of Fig. 18.” Id. at 18 (emphasis omitted). Appellant states: Appellant submits that the [S]pecification discloses a greater thickness at multiple potential locations: the fillet portion 312 of Fig. 3 (corresponding to the “concave portion” of Appellant’s shoulder region) or the flat portion 324. Therefore, to the extent that the “disclosed process produces a balloon with a greater thickness of elastomer material at a location different than what is claimed,” (e.g., flat portion 324) as asserted by the Examiner, this is irrelevant to the question of written description support, given that the [S]pecification also discusses a process that produces a balloon with a greater thickness of elastomer material at the claimed location. Appeal Br. 19 (emphasis added). Appellant’s arguments are persuasive. As recited in claim 33, the mold comprises “the shoulder portion includ[ing] a first shoulder transition curve . . . a second shoulder transition curve . . . and a concave portion between the first and second shoulder transition curves.” We construe the recitation, “at least a portion of the self-sealing balloon formed on the shoulder portion,” to mean a portion of the self-sealing balloon that is formed anywhere on the shoulder portion. Consistent with this construction, Appeal 2020-004672 Application 15/706,120 7 the portion of greater thickness of the self-sealing balloon can be formed anywhere on the shoulder portion. Appellant contends that there is support for “greater thickness in [the] shoulder portion,” and, specifically, “it is believed to be uncontested that Fig. 3 and its description disclose a mold with concave areas that are used to produce a thicker cross-sectional area in the corresponding portion of the balloon.” Appeal Br. 16, 18 (emphasis added). Regarding the Examiner’s position that claim 33 does not recite that the mold includes a “flat portion” (Final Act. 3), the Specification describes: Thus, more liquid elastomer can coat the fillet portions 312 than other portions of the mold stem 300. Moreover, if the mold stem 300 defines a flat portion 324 or shelf (to retain additional material by means of gravity, viscous forces, surface tension, etc. or a combination thereof) then additional liquid elastomer 1300 can be deposited on the mold stem 300 at that location(s). See Spec. ¶ 69 (emphasis added). First, we agree with Appellant’s position that, “if more liquid elastomer coats the fillet portions 312, one of ordinary skill would understand that this additional elastomer material would give rise to a thicker portion of the balloon in that area of the mold, particularly in combination with Fig. 2 and paragraph [0050].” Reply Br. 14 (emphasis added). This position is consistent with paragraph 50 of the Specification, which discloses: The fillet portions 312 might therefore tend to retain more of the liquid elastomer than other surfaces of the mold stent 300. As a result, when the mold stem 300 is drawn from the liquid elastomer, more elastomer remains on the fillet portions 312 than elsewhere. The resulting balloons 100 will probably therefore have a thicker cross-sectional area in the Appeal 2020-004672 Application 15/706,120 8 corresponding region (the seating shoulder 112). In other words, the meniscus that is believed to form adjacent to the fillet portion 312 gives rise to the thickness t2 of the seating shoulder 112. See Spec. ¶ 50 (emphasis added). This disclosure is sufficiently clear that the region of the balloon that corresponds to (i.e., “is adjacent to”) the outer surface of the fillet portion has a greater thickness of elastomer material than other portions of the mold stem. Second, the above-quoted passage in paragraph 69 discloses that mold stem 300 does not require a flat portion 324, but in embodiments that do include a flat portion, additional material (i.e., in addition to the “more elastomer material [that] can coat the fillet portions 312”) can be retained at the flat portion. We agree with Appellant that “the specification discloses a greater thickness [of elastomer material] at multiple potential locations: the fillet portion 312 of Fig. 3 (corresponding to the ‘concave portion’ of the Appellant’s shoulder region) or the flat portion.” Appeal Br. 19. We also agree with Appellant that it is sufficient that the Specification discloses “a process that produces a balloon with a greater thickness of elastomer material at the claimed location.” Id. Thus, we agree with Appellant that the disclosure provides sufficient written description support for forming a greater thickness of elastomer material on the concave portion of the mold by withdrawing the mold from a body of liquid elastomer material, as recited in claim 33. Therefore, we do not sustain the rejection of claims 33, 34, 39, and 41–43 under the written description requirement of 35 U.S.C. § 112(a). Appeal 2020-004672 Application 15/706,120 9 Obviousness For claim 33, the Examiner finds that Durst discloses a self-sealing balloon (balloon 110) having a body portion (“B”) and a neck region that includes a first cylindrical portion (“C1”) adjacent to the body portion and a second cylindrical portion (“C2”), and an oblong capsule (sealing device 120) inserted into an internal volume (interior volume 117) of the body portion. Final Act. 5 (citing Durst Figs. 1, 2), 6 (annotated Durst Fig. 1). The Examiner concedes that Durst does not disclose the following: “portions of the balloon that would correspond to a shoulder portion between the first and second cylindrical portions including [1] a first and second shoulder transition curves and a smaller diameter concave portion, and [2] having a greater thickness of elastomer material relative to the body portion and the first cylindrical portion,” and “[3] the oblong capsule is a gel capsule,” as claimed. Id. at 6. The Examiner finds that Temple teaches a container including a neck portion (neck A1) including a first cylindrical portion (lower chamber a2) adjacent to a body portion (bottle A), a shoulder portion adjacent to the first cylindrical portion, and a second cylindrical portion (upper chamber a1) adjacent to the shoulder portion, wherein the shoulder portion includes a first shoulder transition curve (between a2 and a), a second shoulder transition curve (between a1 and a) adjacent to the second cylindrical portion, and a concave portion (a) between the first and second shoulder transition curves. Final Act. 7 (citing Temple, Fig. 3). As explained by the Examiner, “Temple has been relied upon only to teach the claimed shape of the neck region.” Ans. 11. The Examiner further finds that Annis teaches an elastomeric self-sealing balloon which provides a thickened shoulder portion Appeal 2020-004672 Application 15/706,120 10 (valve seat 6) against which a sealing object (ball valve 5) is seated so that the shoulder portion will not easily deform. Final Act. 7 (citing Annis col. 1, ll. 57–60, Fig. 3). The Examiner concludes that it would have been obvious to one of ordinary skill in the art to modify Durst’s balloon by (a) providing a shoulder portion having a shape, as taught by Temple, between the first and second cylindrical portions, to retain the oblong capsule in sealing position within the neck portion; and (b) including a greater thickness of elastomeric material, as taught by Annis, on at least a portion of the shoulder portion, “to limit deformation of the elastomeric material of the shoulder portion . . . to ensure that the sealing object is retained within the balloon when the balloon is expanded when being filled.” Final Act. 7–8 (citing Temple 2, ll. 1–9; Annis 1, ll. 57–60). The Examiner relies on Chen as teaching the use of gel material in the balloon and toy art and for performing a sealing function. Final Act. 8. Appellant contends that Temple is non-analogous art. Appeal Br. 21. A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor, regardless of the problem it addresses; or (2) if the reference is not within the same field of endeavor, it is still reasonably pertinent to the particular problem faced by the inventor. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Appellant contends that Temple is not in the same field of endeavor as the claimed invention. Appeal Br. 21. In the Examiner’s Answer, the Examiner does not address this contention. See Ans. 11–13. Appellant also contends that Temple is not reasonably pertinent to the problem that Appellant solved. Appeal Br. 21. Appellant asserts that “the Appeal 2020-004672 Application 15/706,120 11 problem faced by the inventors was to create a better seal for a flexible container that self-seals when filled.” Id. In contrast, Appellant contends, “Temple’s bottle is not flexible. Rather Temple is directed to ‘sealing- stopper’ for a bottle that prevents refilling or allows detection of fraudulent refilling.” Id. at 22 (citing Temple 1, ll. 10–17). Appellant contends that Temple’s bottle does not self-seal when filled, but rather the stopper is pulled upward into place by pulling wire strands 16 as shown in Figure 5. Id. In response, the Examiner maintains that the problem of sealing a bottle is reasonably pertinent to the problem of sealing a balloon with a stopper. Ans. 11. We do not necessarily agree with the Examiner that Temple is analogous prior art. But even if it were, we agree with Appellant that the Examiner has not provided an adequate reason to combine the above- discussed teachings of Temple with Durst and Annis at least because Durst already performs the function that the Examiner relies on Temple for teaching. Durst discloses an elastic balloon 100 including an interior surface 113 and an opening 115. See Durst ¶ 16, Fig. 2. Sealing device 120 provides a fluid-tight seal when balloon 100 is filled with a fluid. Id. ¶¶ 17– 18. Sealing device 120 can be spheroid-shaped, and its outer surface 121 is adapted to seat against interior surface 113 to provide the seal. Id. ¶ 18. We agree with Appellant that the Examiner’s rationale for combining Temple and Durst and Annis—i.e., “‘to retain the oblong gel capsule in sealing position within the neck portion’ and ‘ensure that the sealing object is retained’”—lacks a rational underpinning. Appeal Br 23; see also Final Act. 7–8. As noted by Appellant, Durst does not appear to have a problem retaining the sealing device inside the balloon, or in a sealing position. Appeal 2020-004672 Application 15/706,120 12 Appeal Br. 23. Rather, Durst discloses that the sealing device forms a fluid- tight seal with the flexible balloon at such sealing position. And, as explained by Appellant, Durst’s sealing object 120 is retained in place by internal pressure, and as the sealing object appears to be sized much larger than the neck of the balloon, there is not a problem with the sealing object exiting the balloon, or staying in the sealing position. Id. at 26. In light of this disclosure in Durst, we agree with the Appellant that the Examiner’s rationale for combining the teachings of Temple with Durst is flawed. Accordingly, we do not sustain the rejection of claim 33, and claims 34, 39, 41–43 depending therefrom, as unpatentable over Durst, Temple, Annis, and Chen. CONCLUSION The Examiner’s rejections are reversed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 33, 34, 39, 41–43 112(a) Written Description 33, 34, 39, 41–43 33, 34, 39, 41–43 103 Durst, Temple, Annis, Chen 33, 34, 39, 41–43 Overall Outcome 33, 34, 39, 41–43 REVERSED Copy with citationCopy as parenthetical citation