Robert Farnan

Patent Trials and Appeals Board

Sep 21, 2020

2020002229 (P.T.A.B. Sep. 21, 2020)

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.
13/489,250 06/05/2012 Robert C. Farnan 2001P03250 US03 9023
24737 7590 09/21/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
COLELLO, ERIN L
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
09/21/2020 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT C. FARNAN
__________

Appeal 2020-002229
Application 13/489,250
Technology Center 3700
____________

Before PHILIP J. HOFFMANN, BRADLEY B. BAYAT, and
TARA L. HUTCHINGS, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Robert C. Farnan (Appellant)1 appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision to reject claims 1–3, 5, 6, 8–15, and 21–27, which
constitute all the claims pending in the application.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies “Koninklijke Philips N.V.” as the real party
in interest. Appeal Br. 2.
2 Claims 4, 7, and 16–20 are canceled. Id., Claims App.
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CLAIMED SUBJECT MATTER
To understand the claimed invention, claim 1 is reproduced below and
illustrative of the subject matter on appeal. See Appeal Br. Claims
Appendix (emphasis added).
1. A system for performing angioplasty, said system comprising:
a catheter shaft having a distal end and an inflatable balloon
disposed adjacent the distal end, wherein the inflatable balloon
comprises a working length; and
an expandable constraining structure disposed over the
inflatable balloon, wherein the expandable constraining structure
comprises a plurality of axial struts and at least one ring, wherein
each of the axials struts comprise a central portion, wherein the
ring is disposed over the working length of the inflatable balloon
and intersects the central portions of the axial struts, said
expandable constraining structure having a non-expanded
configuration and an expanded configuration, wherein the non-
expanded configuration comprises the expandable constraining
structure lying closely over the inflatable balloon prior to inflation
of the inflatable balloon, wherein the expanded configuration
comprises the expandable constraining structure being smaller
than an unconstrained size of the expandable balloon upon
inflation of the inflatable balloon so that the expandable
constraining structure restrains the inflatable balloon along a
plurality of crossing channel lines and portions of the inflatable
balloon protrude through openings in the expandable
constraining structure.
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REJECTION
Claims 1–3, 5, 6, 8–15, and 21–27 are rejected under 35 U.S.C. § 112
(Pre-AIA), first paragraph, as failing to comply with the written description
requirement.
OPINION
The purpose of the written description requirement is to convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
applicant was in possession of the invention as now claimed. Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991). The written
description requirement prevents an applicant from claiming subject matter
that was not adequately described in the specification as filed. New or
amended claims that introduce elements or limitations that are not supported
by the as-filed disclosure violate the written-description requirement. See,
e.g., In re Lukach, 442 F.2d 967, 968–69 (CCPA 1971).
In rejecting claims 1–3, 5, 6, 8–15, and 21–27 under 35 U.S.C. § 112,
first paragraph, the Examiner finds that the original disclosure fails to
provide adequate written description support for independent claims 1, 13,
and 22. Final Act. 5. In particular, the Examiner finds the Specification
does not sufficiently support the amended limitation “portions of the
inflatable balloon protrude through openings in the expandable constraining
structure,” as recited in independent claims 1, 13, and 22. Id. According to
the Examiner, “there is nothing in the original disclosure that shows or
describes that portions of the inflatable balloon protrude through openings in
the expandable constraining structure.” Id.
Appellant disagrees and asserts that one having ordinary skill in the
art would recognize, upon viewing Figure 5, that portions of the inflatable
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balloon protrude through openings in the expandable constraining structure,
as an inherent function of the device in the originally-filed Application.
Appeal Br. 5–9. In support of inherency, Appellant relies on a Declaration
by Mr. Jefferey Bleam, which states, in part, “that ‘upon inflating the
balloon 1 within the non-deployable stent as shown Fig. 5 of the ̀ 119
Patent,[3] the structure 2 necessarily result[s] in constraining the balloon
along a plurality of crossing channel lines while the balloon protrudes
through the openings between the rings 7 and the struts 5.’” Id. at 10
(quoting Bleam Declaration ¶ 11, filed November 21, 2016).
The Examiner considers Mr. Bleam’s Declaration, but maintains that
there is insufficient evidence to overcome the rejection. See Ans. 4–6.
To determine whether the written-description requirement is met, we
consider “whether the disclosure of the [earlier] application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of that earlier filing
date.” Hologic, Inc. v. Smith & Nephew, Inc., 884 F.3d 1357, 1361 (Fed.
Cir. 2018) (bracketed material in original quote) (quotes and citation
omitted).
We agree with the Examiner that the disclosure of the originally-filed
application does not support the amended claim limitation “portions of the
inflatable balloon protrude through openings in the expandable constraining
structure.” We have viewed Figure 5 of the `119 Patent, which is a drawing
of the non-deployable stent associated with an angioplasty balloon, but we
find nothing that suggests to an artisan when the balloon is inflated it

3 U.S. 7,691,119 issued April 6, 2010, to which the present application
claims priority (“`119 Patent”).
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protrudes through the openings between the rings 7 and the struts 5.
Appellant does not directly cite to any portion of the original disclosure for
written-description support, but instead relies on attorney argument and a
supporting declaration.
We have considered the supporting Declaration of Mr. Bleam, but the
information provided therein does not convince us that the original
disclosure provides the necessary support to satisfy the written-description
requirement for the limitation at issue. Mr. Bleam’s Declaration does not
affirmatively state that by viewing Figure 5 of the ̀ 119 Patent, a person of
ordinary skill in the art would understand that the inventors were in
possession of the amended limitation at the time of filing. And contrary to
Appellant’s contention, Mr. Bleam’s Declaration does not state that “one
having ordinary skill in the art observing Fig. 5 of the Specification would
know an inflatable balloon that is inflated to a pressure disclosed in the
Specification would protrude through openings in the constraining
structure.” Appeal Br. 9.
The statement upon which Appellant relies as supporting the doctrine
of inherent disclosure4 is not attributed to Mr. Bleam and his understanding
of what would be encompassed by the disclosure in Figure 5 of the `119
Patent. Instead, that statement is attributed to the results of an evaluation
from a prototype model created with modifications to the design from Figure

4 Under the doctrine of inherent disclosure an amendment that recites a
property inherent in a device or material described in the original
specification does not introduce prohibited new matter. In re Reynolds, 443
F.2d 384 (CCPA 1971); In re Smythe, 480 F.2d 1376 (CCPA 1973); Yeda
Research & Dev. Co. v. Abbott GmbH, 837 F.3d 1341 (Fed. Cir. 2016)).

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6 of the `119 Patent. See Bleam Declaration ¶¶ 6–11. That statement in full
provides: “The outcome of this evaluation demonstrated that upon inflating
the balloon l within the non-deployable stent as shown Fig. 5 of the '119
Patent, the structure 2 necessarily result [sic] in constraining the balloon
along a plurality of crossing channel lines while the balloon protrudes
through the openings between the rings 7 and the struts 5.” Bleam
Declaration ¶ 11 (emphasis added). Not only is that evaluation modified
from the original disclosure, but it is unclear how an evaluation that entails
many variables, which were altered from the relied-upon written description,
demonstrates to an artisan an inherent property of the device. Further, the
Declaration was signed by Mr. Bleam on October 26, 2016, and the original
application lists a filing date of 2003. The Declaration does not indicate
whether the statements comprise Mr. Bleam’s personal understanding as of
2016, or whether the statements support what a person of ordinary skill in
the art would have understood as of the time of filing, more than a decade
earlier.
We are not persuaded that Appellant’s amended claim limitation
recites a function inherent in the device of the originally-filed application,
because the extrinsic evidence does not make clear that the functional
limitation is necessarily present and would be recognized by persons of
ordinary skill at the time of filing. We have fully considered Mr. Bleam’s
Declaration as part of the record before us, but the preponderance of the
evidence weighs in favor of the Examiner’s position that the disclosure of
the earlier application does not reasonably convey to those skilled in the art
that Appellant had possession of the claimed subject matter as of that earlier
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filing date. Accordingly, we sustain the rejection of claims 1–3, 5, 6, 8–15,
and 21–27 as failing to comply with the written description requirement.

CONCLUSION
The Examiner’s rejection under 35 U.S.C. § 112, first paragraph, is
affirmed.

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5, 6, 8–
15, 21–27
112, first
paragraph
Written Description 1–3, 5, 6,
8–15, 21–
27

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED