CLEARSTREAM TECHNOLOGIES LIMITED

Patent Trials and Appeals Board

Jan 28, 2022

2022000150 (P.T.A.B. Jan. 28, 2022)

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. 16/935,301 07/22/2020 Hiep DO 1626A-096 CON 7910 138315 7590 01/28/2022 Andrew D. Dorisio 300 West Vine Street Suite 1700 Lexington, KY 40507 EXAMINER HUSON, MONICA ANNE ART UNIT PAPER NUMBER 1742 NOTIFICATION DATE DELIVERY MODE 01/28/2022 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): dwpatents@dickinsonwright.com ip.docket@bd.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HIEP DO, ANDREW SCHAFFER, and PAUL FILLMORE Appeal 2022-000150 Application 16/935,301 Technology Center 1700 Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1-9.3 We have jurisdiction under 35 U.S.C. § 6(b). 1 In this Decision, we refer to the Specification filed July 22, 2020 (“Spec.”); the Final Office Action dated January 4, 2021 (“Final Act.”); the Appeal Brief filed April 15, 2021 (“Appeal Br.”); the Examiner’s Answer dated August 9, 2021 (“Ans.”); and Reply Brief filed October 11, 2021. 2 Appellant refers to “applicant” as defined in 37 C.F.R. § 1.42 (2020). Appellant identifies the real party in interest as Clearstream Technologies Limited. Appeal Br. 2. 3 Claims 10-12 are pending and withdrawn by the Examiner as directed to an invention that is independent or distinct from the invention originally claimed. Final Act. 2. Appeal 2022-000150 Application 16/935,301 2 We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed to methods for forming a medical balloon. Spec. 1, ll. 11-13. Independent claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of forming a medical balloon (12), comprising: forming the medical balloon (12) having radiopaque and non-radiopaque portions extruded using a rotating die, wherein the radiopaque portion is formed so as to identify a working surface (W) of the medical balloon ( 12), either by defining the edges of the working surface (W), extending along the working surface (W), or extending along portions of the balloon other than the working surface (W). Appeal Br. 8 (Claims App.). REJECTION The Examiner maintains the rejection of claims 1-9 under 35 U.S.C. § 103 over Tilson4 and Chen.5 Ans. 3; Final Act. 2-4. DISCUSSION After reviewing the evidence in light of the Appellant’s and the Examiner’s opposing positions, we determine that Appellant has not identified reversible error in the Examiner’s rejection. Thus, we sustain the Examiner’s rejection for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. 4 Tilson et al., US 2011/0198019 A1, published Aug. 18, 2011. 5 Chen et al., US 6,977,103 B2, issued Dec. 20, 2005. Appeal 2022-000150 Application 16/935,301 3 Appellant argues the claims as a group. Appeal Br. 3-7. We select claim 1 as representative. 37 C.F.R § 41.37(c)(1)(iv). The Examiner finds that Tilson teaches forming a medical balloon having radiopaque and non-radiopaque portions using a rotating die (e.g., mandrel). Final Act. 3 (citing Tilson ¶¶ 346-360); see also Tilson ¶¶ 69-77. The Examiner finds that Tilson teaches that the radiopaque material is applied in a variety of different ways, including patterns, panels, vanes, and marker spots. See Ans. 3; Tilson ¶¶ 346-360. The Examiner finds that one of ordinary skill in the art would reasonably infer that Tilson’s radiopaque material forms a “working space” of the medical balloon. See id.; see also Spec. 2, ll. 10-13 (defining “working surface” as “the surface along the portion of the balloon that is used to achieve the desired treatment effect, such as contacting the calcified plaque); Tilson ¶ 78. The Examiner finds that Chen teaches that it is well known in the art to extrude a parison for forming a medical balloon by using a rotating die. Final Act. 3 (citing Chen 6:10-13). The Examiner determines that it would have been obvious to one of ordinary skill in the art to use Chen’s method to form Tilson’s balloon “because there is art recognized suitability for forming a parison via this method.” Final Act. 3. Appellant argues that Tilson fails to teach a rotating die for extruding a medical balloon having radiopaque and non-radiopaque portions. Appeal Br. 4. Appellant argues that Tilson fails to teach applying the radiopaque material to form a “working surface” as recited in claim 1. Id.; see also Spec. 2, ll. 10-13 (defining “working surface” as “the surface along the portion of the balloon that is used to achieve the desired treatment effect, such as contacting the calcified plaque.”). Appellant further argues that the Appeal 2022-000150 Application 16/935,301 4 Examiner fails to identify a reason a skilled artisan would have been motivated to modify Tilson based on Chen. Id. at 5. Appellant’s arguments are not persuasive of reversible error. A combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Int’l Co. v. Teleflex Inc., 550 U. S. 398, 416 (2007). As explained in KSR: If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. KSR, 550 U.S. at 417. Appellant has not provided sufficient persuasive reasoning or evidence why one of ordinary skill in the art would not have, using no more than ordinary creativity, predictably used a known rotating die, as taught by Chen, to form a medical balloon with radiopaque and non-radiopaque portions as taught by Tilson. KSR, 550 U.S. at 418 (explaining that in making an obviousness determination one “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). Indeed, Appellant’s Specification teaches that it was known to use a rotating die, e.g., in US 2003/0100869, published May 29, 2003, to form a balloon parison with discrete radiopaque segments by extrusion. Spec. 12, ll. 2-5; see also In re Nomiya, 509 F.2d 566, 570-71 (CCPA 1975) (explaining that Appellant’s representations in their Specification may be used in determining the patentability of a claimed invention). Appellant has also not provided sufficient persuasive reasoning or evidence that the radiopaque Appeal 2022-000150 Application 16/935,301 5 portion of the resultant balloon would not identify a “working surface” of the balloon, i.e., surface along the portion of the balloon that is used to achieve the desired treatment effect, such as contacting the calcified plaque. Thus, we sustain the rejection of claims 1-9. CONCLUSION The Examiner’s decision to reject claims 1-9 is affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-9 103 Tilson, Chen 1-9 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). AFFIRMED