Ex Parte Wang et al

Patent Trial and Appeal Board

Jun 14, 2017

13593756 (P.T.A.B. Jun. 14, 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.
13/593,756 08/24/2012 Lixiao Wang 2001.1360103 5470
11050 7590 06/16/2017
SEAGER, TUFTE & WICKHEM, LLP
100 South 5th Street
Suite 600
Minneapolis, MN 55402
EXAMINER
WEISBERG, AMY REGINA
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
06/16/2017 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):
BSC.USPTO@stwiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LIXIAO WANG, JOHN JIANHUA CHEN,
JEFFREY S. LINDQUIST, NAO PAO LEE, and DOUGLAS A. DEVENS
Appeal 2015-007444
Application 13/593,756
Technology Center 3700
Before JILL D. HILL, JEFFREY A. STEPHENS, and ERIC C. JESCHKE,
Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Lixiao Wang et al. (“Appellants”) seek review under 35 U.S.C.
§ 134(a) of the Examiner’s decision, as set forth in the Final Office Action
dated December 1, 2014 (“Final Act.”), and as further explained in the
Advisory Action dated January 27, 2015 (“Adv. Act.”), rejecting claims 1—9.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal 2015-007444
Application 13/593,756
BACKGROUND
The disclosed subject matter “is directed to methods of forming
balloons and parisons therefor.” Spec. 3,11. 6—7. Claims 1 and 9 are
independent. Both claim 1 and claim 9 are reproduced below:
1. A medical device balloon formed of a
thermoplastic elastomer polymeric material and
having a tensile wall strength in excess of 34,000
psi in pre-sterilized condition.
9. A medical device balloon formed of a
thermoplastic elastomer polymeric material and
having a tensile wall strength, in post-sterilized
condition, of 32,000 psi or more.
REJECTIONS
1. Claims 1—3, 5, 7, and 9 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Anderson (US 5,500,180, issued Mar. 19, 1996).
2. Claims 4 and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Anderson and Reinhardt (US 5,833,657, issued Nov. 10,
1998).
3. Claim 6 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Anderson and Saab (US 5,358,486, issued Oct. 25, 1994).
DISCUSSION
Rejection 1 — Claims 1—3, 5, 7, and 9
For claim 1, the Examiner found that “Anderson teaches a medical
device balloon comprising of a thermoplastic elastomer polymeric material
(column 8 lines 20-42) and having a tensile wall strength in excess of
34,000 psi (column 7 lines 27—38).” Final Act. 3. For claim 9, the
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Examiner stated the same, except with “32,000 psi” instead of “34,000 psi.”
Id. at 5.
Appellants argue that “while it is true that Pellethane is a
thermoplastic polyurethane, Andersonf’s] disclosure is not limited to
Pellethane, nor is it limited to thermoplastic elastomers” and, “[i]n fact,
nowhere in Andersonf’s] disclosure is the term ‘elastomer’ even employed.”
Appeal Br. 9. To the extent Appellants argue that PELLETHANE, as
disclosed in Anderson, is not a “thermoplastic elastomer polymeric
material,” as recited in claims 1 and 9, we disagree. Although Appellants
are correct that Anderson does not use the term “elastomer” to refer to
PELLETHANE, as noted by the Examiner (Final Act. 3, 5—6), Appellants
identify “PELLETHANE 2363-75D” as an exemplary “high strength
thermoplastic elastomer,” the preferred material class for the recited
“balloon.” See Spec. 4,11. 24—30; see also Anderson, col. 8, lines 43—45
(“An example of the most preferred polyurethane is manufactured by The
Dow Chemical Company and marketed under the trade name
PELLETHANE 2363-75D.”).
We turn now to the properties recited in claims 1 and 9. Appellants
argue that Anderson “disclosefs] the genus of block copolymers” but that
“not all block copolymers are elastomers.” Appeal Br. 10. According to
Appellants, “[ejlastomers are a subgenus of block copolymers and their
properties are dependent on the type of repeating units employed in each of
the polymer blocks.” Id. Appellants “agree[] with the Examiner as to the
general range of tensile wall strengths disclosed by Anderson as being at
least about 14,000 psi, broadly 15,000-40,000, and preferably 16,000-
30,000, however, this range again is not limited to thermoplastic elastomers
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Application 13/593,756
but is disclosed for the genus of block copolymers.” Id. We agree with
Appellants’ understanding of the relied-upon aspects of Anderson.
In column 8, Anderson discloses: (1) “block copolymers” as one
example of polymeric materials that “may be used in forming the balloons
and balloon catheters of this invention” (col. 8,11. 20—24); (2) that
“polyurethane block copolymers” are the preferred “block copolymer” (col.
8,11. 24—31); and (3) PELLETHANE is the “most preferred polyurethane”
(col. 8,11. 43—45). In column 7, Anderson discloses that “[t]he present
invention” provides balloons with “wall tensile strength of at least about
14,000 psi, preferably in the range of about 15,000 to about 40,000 psi and
most preferably in the range of about 16,000 to about 30,000 psi.”
Anderson, col. 7,11. 26—38.
Although the Examiner is correct that Anderson teaches the use of
various materials in the invention, and also teaches a range of wall tensile
strengths in the balloons made from the disclosed materials, the Examiner
has not provided an adequate basis—based on evidence or scientific
reasoning—to support the finding that Anderson discloses a balloon made of
PELLETHANE that necessarily possesses a wall tensile strength in a
specific portion of the disclosed range (i.e., “in excess of 34,000 psi” as to
claim 1 and “32,000 psi or more” as to claim 9). See Ans. 3 (“Anderson
teaches a plethora of materials which may be used and that the balloon may
have a tensile strength 15,000-40,000 psi (column 7 lines 27-40).”).
Stated differently, we agree with Appellants that:
merely because Anderson discloses balloons having a tensile
wall strength of between 15,000-40,000 psi and made from a
variety of materials, it is not the case that Anderson necessarily
discloses that balloons made from each of the variety of disclosed
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Application 13/593,756
materials may have tensile wall strengths anywhere in the range
of 15,000-40,000 psi.
Reply Br. 3; see also id. at 5 (arguing that “while it is true that Anderson had
realized forming balloons with tensile wall strengths of up to 40,000 psi, it is
not the case that Anderson had realized forming such balloons from a
thermoplastic elastomer” and that “[t]he broad range of tensile wall strengths
that Anderson discloses is related generally to balloons formed from any
block copolymer, many of those which are disclosed by Anderson would not
result in elastomeric properties”). Instead, as argued by Appellants, “the
specific type of material chosen for the balloon, in part, determines the
tensile strength of the balloon wall.” Id. at 3; see also id. at 5 (“different
materials used to form the balloons of Anderson result in different tensile
wall strengths”).
For these reasons, we do not sustain the rejection of independent
claims 1 and 9, and also do not sustain the rejection of claims 2, 3, 5, and 7
(which depend from claim 1).
Rejection 2 and 3 — Claim 4, 6, and 8
Claims 4, 6, and 8 depend from claim 1. Appeal Br. 18 (Claims
App.). The Examiner’s added reliance on Reinhardt (for Rejection 2) and
Saab (for Rejection 3) does not remedy the deficiencies in Anderson
discussed above (see supra Rejection 1). Thus, for the same reasons
discussed above, we do not sustain the rejection of claims 4, 6, and 8.
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DECISION
We reverse the decision to reject claims 1—9.
REVERSED
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