KBIDC INVESTMENTS, LLC

Patent Trials and Appeals Board

Aug 19, 2021

2020004672 (P.T.A.B. Aug. 19, 2021)

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