Ex Parte Mizokami

Patent Trial and Appeal Board

Oct 31, 2018

14124384 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/124,384 12/06/2013
127226 7590 11/02/2018
BIRCH, STEW ART, KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
Y asuhiro Mizokami
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.
1489-0114 PUS 1 1006
EXAMINER
ZHANG, JENNA
ART UNIT PAPER NUMBER
3783
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte Y ASUHIRO MIZOKAMI
Appeal 2018-003118
Application 14/124,384
Technology Center 3700
Before JAMES P. CAL VE, BRETT C. MARTIN, and
BRANDON J. WARNER, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2018-003118
Application 14/124,3 84
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-7 and 10-15. Claims 8 and 9 were cancelled during
prosecution and claims 16 and 17 were withdrawn from consideration. Final
Act. 2. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
THE INVENTION
Appellant's claimed invention "generally relates ... to a balloon
catheter used in percutaneous transluminal coronary angioplasty." Spec. ,r 1.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A balloon catheter comprising:
a balloon; and
a balloon inside tube passing through an inner lumen of
the balloon, the balloon inside tube including an inner layer, an
outer layer, and a support body,
wherein the balloon, the inner layer, and the outer layer are
formed of thermoplastic polymers that can be heat-welded to
each other, and a thermoplastic polymer forming the inner layer
has a higher melting point than a thermoplastic polymer forming
the outer layer,
the support body is disposed between the inner layer and
the outer layer or embedded in the outer layer,
the support body extends at least over a part of the balloon
inside tube, the part being positioned within the inner lumen of
the balloon, and extends throughout the entire circumferential
direction of the balloon inside tube, and
the support body is a coil-shaped support body.
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Appeal 2018-003118
Application 14/124,3 84
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Fukaya
Pal
US 6,960,186 Bl Nov. 1, 2005
US 2006/0263145 Al Nov. 23, 2006
REJECTION
The Examiner made the following rejection:
Claims 1-7 and 10-15 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Fukaya and Pal. Final Act. 5.
ANALYSIS
Appellant first argues that the Examiner failed to present a "proper
rationale and/or reasonable expectation of success based on the combination
of the cited references." Br. 5. Appellant's main contention in support of
this argument is that the Examiner's modification of Fukaya would render it
unsatisfactory for its intended purpose because the "flexibility of the balloon
portion is decreased." Id. Appellant provides no threshold of flexibility at
which Fukaya would no longer operate for its intended purpose, nor any
evidence supporting the assertion that Fukaya would no longer be suitable
for its intended purpose. Furthermore, the Examiner found that the proposed
modification would "provide sufficient flexibility for the operation of the
catheter of Fukaya" because Fukaya and Pal are drawn to medical flexible
catheters. Ans. 3; see Pal ,r,r 22, 84, 86.
Modifications often provide a benefit in one characteristic at the cost
of another. Although the Examiner's modification may reduce flexibility, it
does have other benefits of increased radial rigidity. Ans. 3. We are not
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Appeal 2018-003118
Application 14/124,3 84
persuaded, however, that this reduction in flexibility rises to the level so as
to no longer make Fukaya suitable for its intended purpose.
The remainder of Appellant's arguments can be characterized as
attacking the references individually rather than addressing the Examiner's
proposed combination. For example, Appellant argues that Fukaya
"discloses that the 'support body' (20) is an intervening binder layer
provided to bind the 'outer layer' (18) to the 'inner layer (19)" and that "the
flat ribbon shaped wire coil (43) of Pal US '145 is 'compression fitted or
wound around the inner layer 44' and does not provide a binding of an inner
and outer layer." Br. 5. As the Examiner states, however, she "is not
proposing the replacement of the support body of Fukaya with coil 43 of
Pal," but rather is "modifying the shape of binder layer 20, 23 ... of Fukaya
with a coil shape of Pal." Ans. 3. As such, the Examiner is not relying on
the placement from Pal, merely the support body shape that is then imported
into the location already disclosed in Fukaya.
Appellant also asserts that Pal's middle section delivery device is
separate from the distal portion and therefore is not located as claimed. Br.
6. Again, the Examiner responds that the modification being made is to
Fukaya's general structure, which does meet the claim language at issue.
Ans. 5. As such, we are not apprised of error in the Examiner's proposed
modification of Fukaya because Fukaya teaches the limitation for which
Appellant attacks Pal.
Likewise, Appellant argues that "the coil shaped support member ( 43)
[of Pal] is located in an outer sheath ... , which does not correspond to the
claimed balloon inside tube." Br. 6. As the Examiner states, however,
"Fukaya is relied upon for disclosing the relative position of the layers of the
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Appeal 2018-003118
Application 14/124,3 84
balloon inside tube." Ans. 6. Accordingly, Appellant attacks Pal for lacking
a feature for which the Examiner relied upon Fukaya.
In general, we find that the Examiner has adequately addressed all of
Appellant's arguments and are not persuaded of Examiner error.
DECISION
For the above reasons, we AFFIRM the Examiner's decision to reject
claims 1-7 and 10-15.
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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