Ex Parte Weber et al

Patent Trial and Appeal Board

Jun 1, 2016

11355392 (P.T.A.B. Jun. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111355,392 02/16/2006
11050 7590 06/03/2016
SEAGER, TUFTE & WICKHEM, LLP
100 South 5th Street
Suite 600
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Jan Weber
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.
2001.1381101 1321
EXAMINER
HOUSTON, ELIZABETH
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
06/03/2016 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 JAN WEBER, LILIANA ATANASOSKA, and
ALEXEY KONDYURIN
Appeal2014-000745
Application 11/355,392
Technology Center 3700
Before: CHARLES N. GREENHUT, LISAM. GUIJT, and
ERIC C. JESCHKE, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner's Final
rejection of claims 1-3, 5-11, 13-26, 36-43, and 45--47. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal2014-000745
Application 11/355,392
The claims are directed to a medical balloon. Claims 1 and 20,
reproduced below, are illustrative of the claimed subject matter:
1. A medical balloon, comprising:
a balloon wall having a base polymer system comprising
a base polymer material with an integral modified region
including a region of crosslinked base polymer material adjacent
the base polymer material and a carbonized region of base
polymer material adjacent the crosslinked region, the crosslinked
region is thicker than the carbonized region, the integral modified
region having a surface with a fractured surface morphology
such that non-fractured islands defined by fracture lines in the
surface and said non-fractured islands have an area not more than
about 20 µm2.
20. A medical balloon comprising a modified organic polymer
material comprising a modified region exhibiting a D peak, the
modified region including a base polymer system comprising a base
polymer material, a region of crosslinked base polymer material
adjacent the base polymer material and a carbonized region of base
polymer material adjacent the crosslinked region, the crosslinked
region is thicker than the carbonized region.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kimock
Trotta
Wang
Woo
Massler
Rathenow
us 5,190,807
us 5,290,306
US 6,171,278 Bl
US 6,761,736 Bl
US 2004/0219294 Al
US 2005/0079201 Al
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Mar. 2, 1993
Mar. 1, 1994
Jan.9,2001
July 13, 2004
Nov. 4, 2004
Apr. 14, 2005
Appeal2014-000745
Application 11/355,392
REJECTIONS 1
Claims 1-3, 5, 7-11, 20-24, and 41--43 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable under Woo, Massler, and Kimock. Final Act.
3.
Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable
under Woo, Massler, Kimock, and Rathenow. Final Act. 7.
Claims 13, 14, 25, 26, and 45--47 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable under Woo, Massler, Kimock, and Trotta.
Final Act. 7.
Claim 15 is rejected under 35 U.SC. § 103(a) as being unpatentable
under Woo, Massler, Kimock, and Wang. Final. Act. 9.
Claims 16-19 and 36--40 are rejected under 35 U.S.C. § 103(a) as
being unpatentable under Trotta, Woo, Massler, and Kimock. Final Act. 8.
OPINION
Regarding independent claims 1, 16, 36, 41, and 46, the Examiner
found, inter alia, Massler taught a diamond-like carbon surface having non-
fractured surface islands less than 1 OOnm. Final Act. 4, 11. The Examiner
concluded that it would have been obvious to one having ordinary skill in
the art at the time the invention was made to form the surface with a surface
density of20 µm2 (Final Act. 4, 9, and 11) and fracture lines having a width
of less than 10 µm (Final Act. 5, 9) because discovering the optimum or
workable ranges involves only routine skill in the art. Final Act. 4--5, 9, and
1 The Examiner entered an After Final amendment (Adv. Act. 1) to the
Claims and withdrew a rejection under 35 U.S.C. § 112, second paragraph.
Ans. 2.
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Application 11/355,392
11 (citing Jn re Aller, 220 F.2d 454 (CCPA 1955)). The Examiner further
found that Massler disclosed varying the specific dimensions of the fractures
for optimization. Ans. 7-8.
Although Massler discloses varying a grain size (Massler, para. 29),
the Examiner has not established where Massler recognizes area of the
grains or width of the fracture between the grains as variables to be
optimized. Optimization of area or fracture width does not necessarily lead
to the same beneficial outcome as optimization of grain size, and the
Examiner has not articulated reasoning as to why a teaching of modification
of grain size would lead a person of ordinary skill in the art to also modify
both area of the grains and the fracture width. The Examiner further
concluded that it would have been obvious to "avoid cracking the entire
surface and utilize the proper distribution of cracks in order to maximize the
material strength of the DLC." Ans. 7-8. However, the Examiner has again
failed to explain how "proper distribution of cracks" would have motivated a
person of ordinary skill in the art to optimize the surface area and fracture
width. Id.
The Examiner also found that the claimed area was not defined as a
surface area and therefore could be construed as the cross-sectional area of
non-fractured islands. Ans. 7. Under this interpretation, the Examiner found
Massler to disclose a cross-sectional area within the claimed range of "not
more than about 20 µm2." Ans. 7.
A person of ordinary skill in the art would not have reasonably
interpreted the claim language, in light of the Specification, to refer to a
cross-sectional area of the non-fractured islands. The claims describe a
"surface morphology" and non-fractured islands "defined by fracture lines in
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Appeal2014-000745
Application 11/355,392
the surface." The Specification also refers to non-fractured islands of the
surface. Spec. 13, 11. 14--16. It is clear that Appellants are defining the
surface characteristics and not the depth or cross-sectional characteristics.
The rejections of claims 1, 16, 36, 41, and 46 are therefore reversed.
Regarding independent claim 20,2 the Examiner found Woo disclosed
a base polymer and a diamond-like carbon material (Final Act. 3) and
Kimock disclosed a region of a crosslinked base polymer material (Final
Act. 3--4), and concluded it would have been obvious to "incorporate a
region of crosslinked base polymer of siloxane between the diamond like
carbon material and base polymer of Woo ... in order to increase adhesion."
Final Act. 4. The Examiner interpreted "a cross-linked region of base
polymer material" and "a carbonized region [of] base polymer material" to
require regions made from the same base material, but not to require that the
base material itself has been modified to construct these regions. Ans. 3, 4.
Appellants argue the claims recite that it is the base polymer material
itself that is modified to have both a crosslinked region and a carbonized
region of base polymer material. Reply Br. 4. Appellants argue that neither
Woo nor Kimock teaches the base polymer material modified to form the
diamond-like carbon region or crosslinked region, respectively, and that, in
both cases, the materials are deposited on top of the base substrate. App. Br.
13, 16.
Claim 20 recites a "modified region including ... a base polymer
material, a region of crosslinked base polymer material ... and a carbonized
2 The Examiner relies upon the rejection of claim 1 (Final Act. 3--4) to
describe how Woo and Kimock meet the different regions in claim 20. Final
Act. 5. We therefore refer to the rejection of claim 1 in our discussion of
claim 20.
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Appeal2014-000745
Application 11/355,392
region of base polymer material." Each region of material, including the
base polymer material, is introduced as a separate limitation. There is no
language in the claim relating the "base polymer material" of the
subsequently recited regions ( crosslinked and carbonized) back to the initial
base polymer material. Thus, the base polymer material present in each
region need not be the same body of base polymer material, as Appellants
argue. Rather, the claims could reasonably be construed to refer to three
individual and adjacent bodies of base polymer material---one body of
material that is unchanged, one that is crosslinked, and one that is
carbonized. We therefore agree the Examiner's claim construction is
reasonable.
Appellants additionally argue the process by which the layers are
formed, contrasting the plasma-immersion ion implantation of the present
application with the deposition processes of Woo and Kimock. App. Br. 14,
16; see also Reply Br. 4--5. Appellants appear to be arguing the claimed
structure can only be obtained through this process. We note, however, that
there is no explicitly claimed process and "[ t ]he method of manufacture,
even when cited as advantageous, does not of itself convert product claims
into claims limited to a particular process." Vanguard Prods. Corp. v.
Parker Hannifin Corp., 234 F.3d 1370, 1372 (Fed. Cir. 2000).
Appellants argue Kimock teaches the diamond-like carbon layer is
adjacent an intermediate layer, not a cross-linked polymer region. App. Br.
16. The combination of Woo and Kimock, as set forth by the Examiner,
provides the diamond-like carbon region and base polymer material region
from Woo with a cross-linked region, taught by Kimock, between the two
regions of Woo. Final Act. 4; see also Ans. 5. The Examiner found the
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Application 11/355,392
addition of the cross-linked region to improve adhesion (Final Act. 4) and
provided mechanical support for the diamond-like carbon layer to reduce
crushing of the carbon layer into the substrate. Ans. 4. The Examiner has
clearly articulated a reasoning with rational underpinning to support the
combination of Woo and Kimock and Appellants have not apprised us of an
error in this reasoning. We therefore affirm the rejection of claim 20 and its
dependents.
DECISION
The Examiner's rejections of claims 1-3, 5-11, 13-19, 36-43, and
45--4 7 are reversed.
The Examiner's rejections of claim 20-26 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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