2020004121 (P.T.A.B. Apr. 29, 2021)

CLEARSTREAM TECHNOLOGIES LIMITED

Patent Trials and Appeals BoardApr 29, 2021

2020004121 (P.T.A.B. Apr. 29, 2021)

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. 14/383,767 09/08/2014 Pat Byrne P-17030.US02 / 1626A-051 2412 138315 7590 04/29/2021 C. R. Bard, Inc./ClearStream/K&S KING & SCHICKLI, PLLC 800 CORPORATE DRIVE SUITE 200 LEXINGTON, KY 40503 EXAMINER BOSWORTH, KAMI A ART UNIT PAPER NUMBER 3783 NOTIFICATION DATE DELIVERY MODE 04/29/2021 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): uspto@iplaw1.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PAT BYRNE, PAUL ANDERS FILLMORE, JUSTIN HALL, and MARGO SHANNON UNDERWOOD Appeal 2020-004121 Application 14/383,767 Technology Center 3700 Before STEFAN STAICOVICI, WILLIAM A. CAPP, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Pursuant to 37 C.F.R. § 41.52(a), Appellant1 filed a Request for Rehearing on April 12, 2021 (“Req. Reh’g”) seeking reconsideration of our Decision on Appeal mailed February 10, 2021 (“Dec.”). We have jurisdiction under 35 U.S.C. § 6(b). Except for any portion specifically withdrawn on rehearing, this Decision on Request for Rehearing 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Clearstream Technologies Limited. Appeal Br. 2. Appeal 2020-004121 Application 14/383,767 2 incorporates the Decision on Appeal, including any abbreviations defined therein for citations to the record, in accordance with 37 C.F.R. § 41.52(a)(1). We DENY Appellant’s Request. OPINION A request for rehearing is limited to matters overlooked or misapprehended by the Panel in rendering the original decision. See 37 C.F.R. § 41.52. Appellant’s Request is based on a disagreement with our Decision, which is not a basis for rehearing. The Request questions our findings and support for the ultimate determination of obviousness, but never alleges that anything was misapprehended or overlooked. For that reason, we deny Appellant’s request. Nevertheless, we provide explanation below, briefly addressing the alleged evidentiary shortcomings and alleged lacking rationale, so that those issues are clear for the upcoming appeal to the Court of Appeals for the Federal Circuit noted in Appellant’s Request. Appellant’s primary contention centers on the evidence provided to support the Examiner’s finding that Becker teaches its inner radiopaque material is “for identifying an end of a working surface of the balloon,” as required by claim 1. See Req. Reh’g 1–5. This is a functional limitation. A patent applicant is free to recite features of an apparatus either structurally or functionally. See In re Swinehart, 439 F.2d 210, 212 (CCPA 1971) (there is nothing intrinsically wrong with drafting claims that define something by what it does rather than what it is). Yet, choosing to define an element functionally, i.e., by what it does, carries with it a risk: Appeal 2020-004121 Application 14/383,767 3 where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. Swinehart, 439 F.2d at 213. As noted in our Decision (see Dec. 4–5), the Examiner provides a reasonable basis to believe that Becker’s balloon provides the recited functionality, explaining that “the radiopaque material will ‘identify an end of the working surface of the balloon’ because a physician will be able to see the curved outline of the balloon and will therefore be able to identify where the conical end meet the working length” (Final Act. 4). In particular, as noted in our Decision, “[c]laim 1 does not require any particular extent for the ‘radiopaque material,’ just that it is [employed] ‘for identifying an end of a working surface of the balloon.” Dec. 5. Appellant offers no persuasive explanation, let alone proof, that the subject matter shown to be in the prior art does not possess the characteristic relied on. See, e.g., Req. Reh’g 4 (Appellant simply “challenged the Examiner’s contention”). With respect to the alleged deficiency in the rejection of claim 10, Appellant simply disagrees with the findings made with respect to that rejection. See Req. Reh’g 7–8; Dec. 10–11. As for the alleged deficiencies in rationale provided by the Examiner, Appellant again simply alleges that the Examiner’s rationales are not good enough, without meaningful explanation as to what is missing. See Req. Reh’g 5 (addressing the modification based on Durcan with respect to claim 1), 8–9 (addressing the modifications based on Drasler and Sahatjian in connection with claims 15 and 19, respectively). To be clear, the Appeal 2020-004121 Application 14/383,767 4 Examiner cites express teachings from various references for each disputed rationale provided. For example, our Decision explains that “[t]he Examiner finds that ‘Durcan teaches that coextrusion provides for ease of manufacture of a multilayered balloon (Para 9).’” Dec. 6 (citing Final Act. 4). Paragraph 9 of Durcan states: “A multilayered balloon of the invention is preferably formed in whole or in part of coextruded polymeric tubular layers, and provides for ease of manufacture of the balloon and balloon catheter formed therefrom.” Emphasis added. The Decision also explains “the Examiner[’s] reason[ing] that ‘it would have been obvious . . . to modify Becker/Durcan to include the balloon such that an outer surface thereof is etched, as taught by Dr[a]sler, for the purpose of making the balloon more compliant in the etched location (Para 97).” Dec. 12 (citing Final Act. 14). The Decision further explains “the Examiner[’s] reason[ing] that ‘it would have been obvious . . . to modify Becker/Durcan to include a drug on the balloon, as taught by Sahatjian, for the purpose of reducing and/or preventing clotting, restenosis or platelet deposition at the stent site (Col 1, Lines 48-53, Col 2, Lines 20-22 and Col 4, Lines 44-55).’” Id. To the extent any additional explanation is required as to why one skilled in the art would have followed the express teachings of the prior art, the Examiner provides further explanation in the Answer. See, e.g., Ans. 7–8 (addressing Durcan), 13–14 (addressing Drasler), 14–15 (addressing Sahatjian). Appellant does not dispute the teachings noted above. Rather, Appellant contends, for example, that “a teaching of the . . . reference . . . simply cannot qualify as a reason with a rational underpinning that would Appeal 2020-004121 Application 14/383,767 5 motivate a skilled artisan to combine the reference teachings.” Req. Reh’g 8 (emphasis omitted). Appellant is mistaken. It has long been held that “[t]he reason, suggestion, or motivation to combine may be found explicitly or implicitly . . . in the prior art references themselves.” Ruiz v. A.B. Chance Co., 234 F.3d 654, 665 (Fed. Cir. 2000). CONCLUSION We deny Appellant’s request for rehearing. DECISION SUMMARY Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 1, 2, 4–10, 16, 17, 28–33 103 Becker, Durcan 1, 2, 4–10, 16, 17, 28–33 15 103 Becker, Durcan, Drasler 15 19 103 Becker, Durcan, Sahatjian 19 Overall Outcome 1, 2, 4–10, 15–17, 19, 28–33 Appeal 2020-004121 Application 14/383,767 6 Final Outcome of Appeal After Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4–10, 16, 17, 28–33 103 Becker, Durcan 1, 2, 4–10, 16, 17, 28–33 15 103 Becker, Durcan, Drasler 15 19 103 Becker, Durcan, Sahatjian 19 Overall Outcome 1, 2, 4–10, 15–17, 19, 28–33 TIME PERIOD FOR RESPONSE 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)(1)(iv). DENIED