Ex Parte Isham

Patent Trial and Appeal Board

Apr 27, 2017

13313449 (P.T.A.B. Apr. 27, 2017)

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.
13/313,449 12/07/2011 John ISHAM RAD:000003 9602
11132 7590 05/01/2017
Rmilware Rr Valnir
EXAMINER
Three Riverway, Suite 950
Houston, TX 77056
NGUYEN, TIN DUC
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
05/01/2017 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 @ boulwarevaloir.com
nseigel @ boulwarevaloir.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN ISHAM
Appeal 2015-000275
Application 13/313,449
Technology Center 3700
Before GEORGE R. HOSKINS, LISA M. GUIJT, and
PAUL J. KORNICZKY, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John Isham (“Appellant”)1 appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 21, 22, and 24 in this application.2 The
Board has jurisdiction over the appeal under 35 U.S.C. § 6(b). An oral
hearing was held on April 14, 2017.
We REVERSE.
1 The Appeal Brief identifies RadiaDyne, LLC as the real party in interest.
Appeal Br. 1.
2 Claims 1—20 were canceled, and claims 21—24 were added, via a
Preliminary Amendment filed with the application on December 7, 2011.
Claim 23 was later canceled via an Amendment filed April 8, 2014.
Appeal 2015-000275
Application 13/313,449
CLAIMED SUBJECT MATTER
Each claim 21, 22, and 24 is an independent claim. Claim 21
illustrates the claimed subject matter, and it recites:
21. A medical balloon device, comprising:
a first layer, wherein the first layer includes a first edge;
a second layer, wherein the second layer includes a second
edge joined to the first edge to form a bottom inflatable portion
between the first and the second layers;
a third layer including proximal and distal portions and
wherein the third layer includes a third edge joined to the second
edge to form a top inflatable portion between the second and the
third layers;
an opening in said bottom inflatable portion to receive a
lumen, wherein the bottom inflatable portion is in fluid
communication with the top inflatable portion; and
wherein the second and the third layers are secured
intermediate said second and said third edges so that the distal
portion of the third layer bulges upwardly relative to the proximal
portion upon inflation.
Appeal Br. 19 (Claims App.) (emphases added).
REJECTIONS ON APPEAL
Claims 21, 22, and 24 stand rejected under 35U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 21, 22, and 24 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Shah (US 7,976,497 B2, issued July 12, 2011). See Ans. 5
(“claims 21, 22 and 24 should be rejected as anticipated under 35 U.S.C.
§ 102(e). . . instead of. . . § 102(b)”).
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Appeal 2015-000275
Application 13/313,449
ANALYSIS
A. Written Description
In rejecting claim 21 for lack of written description, the Examiner
focuses on the limitations reciting “the third layer includes a third edge
joined to the second edge to form a top inflatable portion between the
second and the third layers,” and “the second and the third layers are
secured intermediate said second and said third edges.” Final Act. 2—3
(underlining omitted). The Examiner determines those “limitation(s) is/are
nowhere to be found in the” Specification of the application presently on
appeal. Id. at 3. The Examiner particularly focuses on paragraph 47 of the
Specification, which describes Figure 8. Id. at 3^4. We reproduce here
Figure 8 and paragraph 47, including the Examiner’s emphasis of certain
portions in the written description:
[0047] FIGURE 8 is a cross-sectional side view of the
balloon 14, showing the plurality of layers which form the
balloon 14. A bottom layer 76 forms the bottom portion 44 of
the balloon 14. A top layer 78 forms the upper portion, including
central seating area 46 and the groove 52, of the balloon 14.
A middle layer 80 extends between the bottom layer 76 and the
top layer 78. The middle layer 80 is connected to the top
layer 78 at the groove 52.
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Appeal 2015-000275
Application 13/313,449
See id. at 4. According to the Examiner, because paragraph 47 describes
element 80 as “[a] middle layer,” element 80 “cannot be interpreted as a
weld or join,” which are terms not found in paragraph 47. Id. Thus, the
Examiner determines element 80 cannot be a weld or join between any two
of the three layers 76, 78, and 80 of the balloon illustrated in Figure 8. Id.
The Examiner further determines the Specification’s description of middle
layer 80 being “connected to” top layer 78 at groove 52 “does not provide
support for an edge of middle layer 80 is connect/attach/weld/join to an
edge of ton layer 78.” Id.
Appellant argues the Examiner’s written description rejection is in
error because Appellant’s U.S. Patent Application No. 11/933,018 (“the
’018 application) — to which the application presently on appeal claims
priority3 — provides the requisite written description support. See Appeal
Br. 6—7, 11—14. We note, initially, that these arguments miss the mark by
failing to address the disclosure of the application on appeal. That is, the
written description requirement of 35 U.S.C. § 112 requires the specification
of the present application to provide the requisite support, not the
specification of one or more parent applications. See 35 U.S.C. § 112,11.
Nonetheless, because the majority of Appellant’s arguments are easily
applied to the context of the present application’s Specification rather than
3 The application presently on appeal is a continuation of U.S. Patent
Application No. 12/034,470, which is a continuation-in-part of U.S. Patent
Application No. 11/966,544, which is a continuation-in-part of the
’018 application. See Preliminary Amendment (filed Dec. 7, 2011), at 2.
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Appeal 2015-000275
Application 13/313,449
the ’018 application specification,4 we will re-cast them to the proper
context.
Appellant relies on Figure 8 and the accompanying description in
paragraphs 17, 35, and 47 of the present application as providing written
description support for the challenged subject matter. See Appeal Br. 6—7,
11—17. Appellant concedes “[ejdges are not discussed,” but maintains
“every layer will inherently have an edge.” Id. at 6. In Appellant’s view,
the illustration of Figure 8 is sufficient to establish possession of the claimed
second layer (i.e., middle layer 80) including a second edge, the claimed
third layer (i.e., top layer 78) including a third edge, with the second and
third edges being joined at two locations identified by the arrows in Figure 8
we have added to the figure, as reproduced below:
Id. at 6—7, 11—12 (providing arrows to equivalent areas within informal
Figure 8 of the ’018 application).
The Examiner answers that Appellant’s annotation arrows and related
text were “newly imported” and “added” to the Specification, and therefore
4 There are exceptions. For example, as discussed more fully below,
Figure 8 of the present application is a formal drawing, whereas Figure 8 of
the ’018 application was initially filed as an informal drawing. Also,
Appellant relies in part on paragraph 23 of the ’018 application, which was
not carried over into the present application. See Appeal Br. 6.
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Appeal 2015-000275
Application 13/313,449
improperly introduce new matter. Ans. 2. The Examiner further construes
the claimed edge joinings to require “two side-by-side layers being joined at
their edges.” Id. at 4—5 (providing drawings to illustrate claim construction).
The test for whether the written description requirement of § 112 is
satisfied may be expressed in various ways, such as whether the
application’s original disclosure “reasonably conveys to the artisan that the
inventor had possession at that time of the later claimed subject matter.” In
re Daniels, 144 F.3d 1452, 1456 (Fed. Cir. 1998) (quoting In re Kaslow, 707
F.2d 1366, 1375 (Fed. Cir. 1983)). An applicant need not “describe exactly
the subject matter claimed,” but “the description must clearly allow persons
of ordinary skill in the art to recognize that [the applicant] invented what is
claimed.” Id. (quoting In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)).
We agree with Appellant’s argument that Figure 8 of the present
application demonstrates that the inventor had possession of the subject
matter recited in claim 21 at the time the present application was filed. First,
it is important that Appellant’s Specification describes Figure 8 as showing a
“plurality of layers,” including bottom layer 76, top layer 78, and middle
layer 80. Spec. 147. In other words, those elements are different respective
layers. A person of ordinary skill would understand each layer necessarily
has an “edge” as claimed, because the layers would not be infinite.
Further, the layers 76, 78, and 80 form balloon 14, which is inflated
by air. Id. ]ff[ 46-47. A person of ordinary skill in the art would understand
the layers 76, 78, and 80 — or, at least layers 76 and 78 — would need to be
joined together in order to form a sealed enclosure, thereby permitting such
inflation to occur.
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Appeal 2015-000275
Application 13/313,449
Given that such a joining is necessary, we agree with Appellant’s
argument that Figure 8 demonstrates the three layers 76, 78, and 80 are
joined at their respective edges, at least on the right side of the figure where
the three layers 76, 78, and 80 come together at an apex. The Examiner fails
to offer a plausible alternative interpretation of what is shown at that portion
of Figure 8. The arrows and accompanying text provided in Appellant’s
argument merely explain Appellant’s position in this regard, and do not
inject new matter into the disclosure of the application. For example,
Appellant does not seek to amend the application to include the arrows and
accompanying text.
Further — although not discussed by either Appellant or the
Examiner — claim 21 as originally presented via a Preliminary Amendment
on the filing date of the present application (December 7, 2011), provided:
21. A medical balloon device, comprising:
a first film layer, wherein the first layer includes a first
edge;
a second film layer, wherein the second layer includes a
second edge joined to the first edge to form a bottom inflatable
compartment between the first and second layer;
a third film layer including proximal and distal portions
and wherein the third layer includes a third edge joined to the
second edge to form a top inflatable compartment between the
second and third layer;
an opening in said bottom inflatable compartment to
receive a lumen, wherein the bottom inflatable compartment is
in fluid communication with the top inflatable compartment; and
wherein the second and third layers are secured
intermediate said second and third edges so that the distal portion
of the third layer bulges upwardly upon inflation.
Prelim. Amend, (filed Dec. 7, 2011), at 3 (emphases added). Original
claim 21 reasonably conveys to a person of ordinary skill in the art that the
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Application 13/313,449
inventor had possession at the time the present application was filed of three
layers joined at their respective edges, as similarly recited in claim 21 now
presented on appeal. See Crown Packaging Tech., Inc. v. Ball Metal
Beverage Container Corp., 635 F.3d 1373, 1380 (Fed. Cir. 2011) (“Original
claims are part of the specification and in many cases will satisfy the written
description requirement.”).
For the foregoing reasons, we do not sustain the rejection of claim 21
for lack of written description. The written description rejection of
claims 22 and 24 is based solely on common subject matter with claim 21 as
already discussed above (see Final Act. 2—3), and we, therefore, likewise do
not sustain the rejection of claims 22 and 24 for lack of written description.
B. Anticipation by Shah
Appellant does not dispute the Examiner’s findings in support of
determining that Shah discloses each and every limitation of claims 21, 22,
and 24. See Appeal Br. 17. Instead, Appellant states: “Because the priority
document of [the ’018 application] clearly supports the language ‘a second
edge joined to the first edge’ and ‘a third edge joined to the second edge,”’
the present application should be accorded priority back to October 31,
2007, the filing date of the ’018 application. Id. With such priority,
according to Appellant, “Shah is no longer prior art and cannot anticipate”
the claims on appeal. Id.
The Examiner’s only response is to take the position that Appellant’s
parent applications do not provide written description support for the joined
edges recited in the claims, as discussed in detail above, so there is no
priority to the filing date of the ’018 application. See Final Act. 5
(discussing parent U.S. Patent Application No. 12/034,470), 11—12; Ans. 5
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Appeal 2015-000275
Application 13/313,449
(“the main focus of this appeal would still be the rejections under 35 U.S.C.
§112, first paragraph, as having new matter”).5
The’018 application has a substantially similar disclosure as the
present application in relation to the description of joined layer edges. That
is, the’018 application contains paragraph 44, which is substantially identical
to paragraph 47 of the present application, discussed above. The respective
Figures being thereby described are different, as shown here:
Figure 8 of Present Application Figure 8 of ’018 application
5 The anticipation rejection relies on 35 U.S.C. § 102(e), so Shah’s effective
date as a prior art reference is its filing date. Shah issued from U.S. Patent
Application No. 12/237,897, which was filed on September 25, 2008 —
after the October 31, 2007 filing date of the ’018 application. However,
Shah also asserted priority to a provisional application filed on
September 25, 2007, which precedes the filing date of the ’018 application.
See In re Giacomini, 612 F.3d 1380, 1382—83 (Fed. Cir. 2010) (under
§ 102(e)(2), patents have “patent-defeating effect as of the filing date” of an
earlier U.S. provisional application, if “the provisional application . . .
provide[s] support for the claimed invention”); Ex parte Yamaguchi,
88 USPQ2d 1606 (BPAI 2008) (precedential). The present record does not
contain a copy of Shah’s provisional application, and the Examiner has not
established that Shah’s provisional application provides the requisite written
description support to extend Shah’s patent-defeating effect back to before
the ’018 application. Therefore, on the record presently before us, it appears
that if Appellant can establish written description support for the present
claims within the disclosure of the ’018 application, then Shah’s effect as
prior art is thereby nullified.
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Appeal 2015-000275
Application 13/313,449
As can be seen, both Figures illustrate a balloon composed of three
layers 76, 78, and 80. Both Figures also illustrate the three layers 76, 78,
and 80 being joined at their respective edges, at least on the right side where
the three layers 76, 78, and 80 come together at an apex. The
’018 application did not contain the original claim 21 as presently in the
present application. Nonetheless, we determine the written description and
illustration of Figure 8 in the ’018 application is sufficient, even without
such a claim, to demonstrate possession of three layers joined at their
respective edges. Thus, we agree with Appellant’s argument that the present
application is entitled to priority back to the filing date of the
’018 application, thereby nullifying Shah as available prior art.
Accordingly, we do not sustain the rejection of claims 21, 22, and 24 as
anticipated by Shah.
DECISION
The rejection of claims 21, 22, and 24 for lack of written description
is reversed.
The rejection of claims 21, 22, and 24 as anticipated by Shah is
reversed.
REVERSED
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