CLEARSTREAM TECHNOLOGIES LIMITED

Patent Trials and Appeals Board

Jun 26, 2020

2019004449 (P.T.A.B. Jun. 26, 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.
14/383,754 09/08/2014 Sean Wall P-18266.US02 / 1626A-048 7367
138315 7590 06/26/2020
C. R. Bard, Inc./ClearStream/K&S
KING & SCHICKLI, PLLC
800 CORPORATE DRIVE
SUITE 200
LEXINGTON, KY 40503
EXAMINER
NGUYEN, HIEN NGOC
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
06/26/2020 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):
laura@iplaw1.net
uspto@iplaw1.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte SEAN WALL
__________

Appeal 2019-004449
Application 14/383,754
Technology Center 3700
__________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
LISA M. GUIJT, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Appellant1 filed a Request for Rehearing (“Req. Reh’g”) dated April
14, 2020 of the Decision on Appeal mailed February 14, 2020 (“Decision”).
This Decision affirmed the Examiner’s rejections of claims 1, 2, 4–9, 11, 12,
14–16, 19, 20, 24–27, and 29–32. See Decision 12.
Upon consideration of Appellant’s Request, we do not modify our
opinion.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Clearstream
Technologies Limited. Appeal Br. 2.
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A REQUEST FOR REHEARING
A request for rehearing “must state with particularity the points
believed to have been misapprehended or overlooked by the [Patent Trial
and Appeal Board, hereinafter ‘Board’].” See 37 C.F.R. § 41.52(a)(1). This
section also states that arguments not raised in the briefs before the Board
and evidence not previously relied upon in the briefs “are not permitted in
the request for rehearing except as permitted by paragraphs (a)(2) through
(a)(4) of this section.” In addition, a request for rehearing is not an
opportunity to express disagreement with a decision without setting forth
points believed to have been misapprehended or overlooked by the Board in
rendering its Decision. The proper course for an Appellant dissatisfied with
a Board decision is to seek judicial review, not to file a request for rehearing
to reargue issues that have already been decided. See 35 U.S.C. §§ 141, 145.
ANALYSIS
“Appellant believes a review of the respective burdens of proof in
rejecting a patent claim is in order.” Req. Reh’g 1. “If the Examiner fails to
establish a prima facie case, then applicant need not provide any rebuttal
evidence and is entitled to a patent barring other grounds for
unpatentability.” Req. Reh’g 1 (citations omitted). Appellant also contends,
“[f]ocusing the § 103 inquiry on a particular aspect of the invention that
differs from the prior art improperly disregards the ‘as a whole’ statutory
mandate.” Req. Reh’g 2 (citations omitted).
Claim 1 recites a balloon having “first and second ends and a
cylindrical portion between the first and second ends that, when inflated,
provides a working surface on the cylindrical portion” of the balloon.
Appeal Br. 8 (Claims App.). Claim 1 also recites a wire having different
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radiopacity that extends between these first and second balloon ends “for
identifying an end of the working surface of the balloon.” Id.
Appellant contends that the “working surface ‘end’ is clearly not the
same as the first and second ends of the balloon.” Req. Reh’g 2.2 As an
initial matter, Appellant does not appear to raise this contention in the
Appeal Brief or the Reply Brief other than in reference to Appellant’s
arguments about Solar where Appellant states that Solar “fails to describe
identifying the ends of the balloon working surface (which by the claim
language itself are clearly different structures from the first and second ends
of the balloon).” See Appeal Br. 4; see also generally, Reply Br. Indeed,
the Examiner does not construe claim 1 such that the end of the balloon’s
working surface is the same as the ends of the balloon itself. See Final Act.
5–6, 8–9; see also Ans. 9–10; id. at 11 (The Examiner’s annotated version of
Tu’s Figure 3.).
Appellant also contends that none of the references (Tu, Spencer, or
Solar) disclose both a wire having portions of different radiopacity and using
the differences in radiopacity to identify an end of a working surface of a
balloon. See Req. Reh’g 2 (“[N]o substantial evidence cited by the
Examiner or the Board indicates that there is any wire with a different
radiopacity for identifying an end of the working surface of a balloon in
Solar.”); see also id. at 3 (“[A]bsolutely nothing identified in Tu establishes
that there is any wire with a different radiopacity for identifying an end of
the working surface of a balloon.”); id. at 4 (Spencer “does not disclose any

2 Appellant acknowledges that “[c]laim 29 is similar in this respect.” Req.
Reh’g 2.
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wire with a different radiopacity for identifying an end of the working surf
ace of a balloon.”).
Appellant’s argument essentially vitiates obviousness as a valid basis
for rejection because it would require a single reference to teach all the
aspects of the claim to be valid. There is no requirement that motivation or
discussion of a missing element be contained within a reference in order for
an Examiner to combine a secondary reference to supply that missing
element. As pointed out in the Decision, the Examiner relies on the
teachings of Tu or Spencer for disclosing a balloon having a known,
identifiable working surface and a wire for identifying an end of the working
surface of the balloon and on the teachings of Solar for disclosing a wire
using different radiopacities. See Decision 4; see also Final Act. 5–6, 8–9;
Ans. 9–10 (“[T]he rejection states that Solar – not Tu – discloses wire with
different radiopacity.”) (emphasis added). The Examiner then provides a
reason with rational underpinnings for making the combination, namely, by
determining that it would have been obvious to one skilled in the art to
modify the wire of Tu or Spencer to include different radiopaque portions, as
taught by Solar, “in order to allow for locating the wire, different regions of
the wire as well as different regions of the balloon such as proximal and
distal ends and to provide an area of focused force for cracking or breaking
up hard or difficult lesions.” See Final Act. 5–6, 8–9; see also Decision 6.
Appellant’s statements do not apprise us of error in the Examiner’s findings
regarding the combined teachings of Tu and Solar or Spencer and Solar or of
any points misapprehended or overlooked in our Decision.
Appellant thereafter addresses Tu’s “marker band 33” stating that this
marker “does not qualify as a wire.” Req. Reh’g 3. However, this argument
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is not persuasive because, in the Answer, the Examiner points out that Tu
discloses “the wire for identifying an end of the working surface of the
balloon.” Ans. 10; see also Decision 8. The Examiner correctly notes that
“element 31 [of Tu] is the wire and element 33 is the radiopaque [marker
band]”3 and explains that “when imaging[,] the radiopaque band/marker
shows up in contrast to the surrounding image[,] which enables the viewer to
identify the radiopaque band/marker location from the image.” Ans. 10.
The Examiner further correctly notes that “the two locations of radiopaque
‘marker band 33’ in [Figure 3 of Tu are] located at the two ends of the
working surface.” Ans. 10; see also id. at 11 (The Examiner’s annotated
version of Figure 3 of Tu, which illustrates radiopaque marker band 33
located at (i.e., identifying) the two ends of the working surface of balloon
10 of Tu); Tu Fig. 3; Decision 7–8; In re Mraz, 455 F.2d 1069, 1072 (CCPA
1972) (“[T]hings patent drawings show clearly are [not] to be disregarded.”)
(emphasis in original).
As discussed above, the Examiner relies on the teachings of Solar
“merely” for disclosing a wire having a first portion with a different
radiopacity than a second portion of the wire. See Final Act. 5; see also
Ans. 9–10; Decision 4. As further discussed above, the Examiner provides a
reason with rational underpinnings for modifying Tu’s wire to include
different radiopaque portions, as taught by Solar, namely, “in order to allow
for locating the wire, different regions of the wire as well as different
regions of the balloon such as proximal and distal ends and to provide an

3 Tu disclose “stiffening wire 31” and “at least one radiopaque marker band
33.” Tu 8:29–44, Fig. 3; see also Ans. 10 (citing Tu 8:28–45, Fig. 3).
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area of focused force for cracking or breaking up hard or difficult lesions.”
See Final Act. 5–6, 8–9; see also Decision 6. Appellant’s statements do not
apprise us of error in the Examiner’s findings regarding the combined
teachings of Tu and Solar or any points misapprehended or overlooked in
our Decision.
Regarding Appellant’s argument that the Board erroneously shifted
the burden of proof to Appellant (see Req. Reh’g 3, 6, 7), we disagree. As
discussed in the Decision and reiterated supra, the Examiner recognizes that
Solar does not disclose a wire with a different radiopacity for identifying an
end of the working surface, as claimed, but rather that Solar discloses that it
is known to use a different radiopacity along a wire to identify optimal
locations, for example, the ends of the balloon. See, e.g., Decision 4–5; see
also Final Act. 5–6, 9; Ans. 10. As is also discussed in the Decision, the
Examiner reasons that it would have been obvious to have selected an end of
a balloon’s working surfaces as disclosed in Tu or Spencer as another
example of an optimal location for a radiopaque marker along the wire of a
balloon to allow for locating different regions of the balloon. Decision 4;
see also Final Act. 5–6, 9; Ans. 10. Notably, the Examiner refers to the
motivation as stated in Solar: “to provide an area of focused force for
cracking or breaking up hard or difficult lesions.” Final Act. 5–6 (citing
Solar ¶ 47). Thus, the Examiner has stated a prima facie case of
obviousness. The PTO bears the initial burden of showing a prima facie
case of obviousness. In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014).
When a prima facie case of obviousness is made, the burden then shifts to
the applicant to come forward with evidence and/or argument supporting
patentability. Id.
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Accordingly, it is Appellant’s burden to apprise us of error in the
Examiner’s findings or reasoning. In other words, we are not persuaded by
Appellant’s argument that the Board erroneously shifted the burden of
persuasion to Appellant. Here, Appellant has not identified any error in the
Examiner’s prima facie finding of obviousness. See Req. Reh’g 1, 3, 6, 7.
In sum, Appellant has not explained how this matter has been
misapprehended or overlooked by the Board.
Appellant contends that “Solar does not provide the necessary missing
teaching to describe the inventions of claims 1 and 29 ‘as a whole’” and
directs the Board’s attention to “the Examiner’s own admission of the same
in the final Office Action, page 10, paragraph 11: ‘Spencer and Solar . . . do
not disclose identifying an end of the working surface of the balloon.’
(emphasis added).” Req. Reh’g 2; see also id. at 4. However, page 10 of the
Final Office Action addresses the rejection of claims 19 and 30–32, not the
rejection of claims 1 and 29. See Final Act. 10.
To the extent Appellant focuses on “the problem addressed by
Appellant,” (Req. Reh’g 3), the Supreme Court stated, “[i]n determining
whether the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls. What matters is
the objective reach of the claim.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 419 (2007); see also In re Kahn, 441 F.3d 977, 987–88 (Fed. Cir.
2006). Hence, we must look to the claim language, not Appellant’s avowed
purpose or problem addressed.
In the Request for Rehearing, Appellant contends that the subject
invention “resolves a need completely unaddressed by the cited references”
and directs the Board’s attention to the Specification, in particular page 3,
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lines 3–13, of the Specification, which discusses “avoiding [a] geographic
miss [(i.e., a misalignment)] between a working surface . . . and a lesion by
identifying a specific location on the balloon - an end of the working surface
- using a wire with a differential radiopacity.” See Req. Reh’g 3–4; see also
Spec. 3:3–13.4 However, claim 1 broadly recites a wire extending
longitudinally from a first end to a second end of a balloon, the wire
including a first portion with a different radiopacity from a second portion of
the wire for identifying an end of the working surface of the balloon. See
Appeal Br. 8 (Claims App.). There is no recitation in claim 1 of
misalignment, let alone, avoidance of a geographic miss (i.e., a
misalignment) between a working surface and a lesion by identifying a
specific location on the balloon. See id. “[L]imitations are not to be read
into the claims from the specification.” In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993). See also In re Self, 671 F.2d 1344, 1348 (CCPA
1982) (“[A]ppellant’s arguments fail from the outset because . . . they are
not based on limitations appearing in the claims.”). As such, on this point,
and as addressed in the Decision, Appellant is not persuasive that the cited
art fails to disclose the recited limitations. See generally, Decision.
Consequently, even should the Board have failed to focus on “[t]he
problems addressed by Appellant,” as asserted above, such failure is not
indicative the Board misapprehended or overlooked this matter.
Appellant additionally asserts that “the Board never discusses [the
Spencer] reference, which also does not disclose any wire with a different

4 Appellant cites to paragraph 6 of the Specification. Req. Reh’g 3–4. The
Specification before the Board does not contain paragraphs.
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radiopacity for identifying an end of the working surface of a balloon.” Req.
Reh’g 4. Such an assertion by Appellant is not understood in view of the
many references to the teachings of Spencer in the Decision. See, e.g.,
Decision 4, 6–9. Further, as discussed above, Appellant’s argument
essentially vitiates obviousness as a valid basis for rejection because it
would require a single reference to teach all of the aspects of the claim to be
valid. As pointed out in the Decision, the Examiner relies on the teachings
of Spencer for disclosing a balloon having a known, identifiable working
surface and a wire for identifying an end of the working surface of the
balloon and on the teachings of Solar for disclosing a wire using different
radiopacities. See Decision 4; see also Final Act. 8–9. Appellant again
directs the Board’s attention to page 10 of the Final Office Action. Req.
Reh’g 4. However, as discussed above, page 10 of the Final Office Action
addresses the rejection of claims 19 and 30–32, not the rejection of claims 1
and 29. See Final Act. 10.
Appellant further contends that making the combination capable as
per the above discussion, would require “substantial reconstruction and
redesign.” Req. Reh’g 4–5. However, Appellant does not explain how
modifying the radiopaque markers of Tu or Spencer to have different
radiopacities, as taught by Solar, requires “substantial reconstruction.” See
id.; see also Decision 4–6; Final Act. 5–6, 8–9; Ans. 9–10. As such,
Appellant is not persuasive the Board misapprehended or overlooked this
point.
Specific to claim 30, Appellant argues that “the Examiner in rejecting
claim 30 never identifies the corresponding structure in Appellant’s
specification.” Req. Reh’g 6; see also id. at 7. This argument is
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unpersuasive because the Board’s Decision clearly identifies where the
Examiner addressed Appellant’s “means for identifying an end of the
working surface of the balloon” and correlated such end identification to
similar ends of Burgmeier’s radiopaque portion 40. See Decision 9–10; see
also Final Act. 10, Ans. 13–16, Burgmeier Fig. 2.5 Based on the above, it is
not clear how the Board has misapprehended or overlooked this argument.
“Appellant further challenged the alleged reason for the combination
of references as lacking any rational underpinning.” Req. Reh’g 7 (referring
to Appeal Br. 6). This matter was discussed at page 11 of the Decision. In
short, Appellant’s contentions are not persuasive that the Examiner’s
motivation to combine the cited references is in error. Again, Appellant has
not explained how this matter has been misapprehended or overlooked by
the Board.
Appellant additionally contends that the Examiner’s proposed
modification “cannot be done without using improper hindsight reasoning.”
Req. Reh’g 8. We disagree. The Examiner’s sound reasoning dispenses
with Appellant’s hindsight argument. See In re Cree, Inc., 818 F.3d 694,

5 We note Burgmeier discloses that “[t]he balloon assembly 14 can include
an expandable balloon portion 28, a proximal balloon waist 30 and a distal
balloon waist 32” and that as shown in Figure 2, “the radiopaque portion 40
is positioned such that the location of substantially the entire length of the
expandable member 28 can be determined using a suitable imaging
technique.” Burgmeier ¶¶ 31, 45 (emphasis added), Fig. 2. As Burgmeier’s
radiopaque marker 40 covers the entire length of expandable balloon
portion/working surface 28 of balloon assembly 14, it stands to reason that
radiopaque marker 40 identifies the two ends of expandable balloon
portion/working surface 28 of balloon assembly 14. See id.; see also Ans.
14–15; id. at 15 (The Examiner’s annotated version of Burgmeier’s Figure
2.).
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702 n.3 (Fed. Cir. 2016) (explaining that a hindsight argument is of no
moment where the Examiner provides a sufficient, non-hindsight reason to
combine the references). See also Decision 4–7, 9–11.
Thus, in view of Appellant’s request “for rehearing of the Board’s
decision to affirm the rejections, which lack prima facie support” (Req.
Reh’g 8), we are not in agreement with Appellant’s conclusion for the
reasons expressed. In other words, we are not in agreement that the
Examiner and/or the Board improperly shifted the burden to Appellant. See
also Decision 4; Req. Reh’g. 1, 3, 6, 7. As a consequence, Appellant fails to
provide persuasive argument or evidence to rebut the Examiner’s prima
facie case of obviousness. See generally, Decision. In summation, and for
the reasons expressed, Appellant’s contention that the Board
misapprehended or overlooked certain points made by Appellant is not
persuasive.
DECISION
Appellant’s Request for Rehearing has been granted to the extent that
the Board reconsidered its Decision in light of the statements made in this
Request, but is denied with respect to the Board making any modification to
the Decision.
DENIED
Outcome of Decision on Rehearing:
Claims 35 U.S.C.
§
Reference(s)/Basis Denied Granted
1, 2, 4, 6–8,
11, 12, 14,
15, 24–27, 29
103(a) Tu, Solar 1, 2, 4, 6-8,
11, 12, 14,
15, 24–27,
29

16 103(a) Tu, Solar, Dror 16
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1, 2, 5, 6, 9,
14
103(a) Spencer, Solar 1, 2, 5, 6, 9,
14

19, 30–32 103(a) Spencer, Solar,
Burgmeier
19, 30–32
20 103(a) Spencer, Solar,
Burgmeier, Aita
20
Overall
Outcome
1, 2, 4–9,
11, 12, 14–
16, 19, 20,
24–27, 29–
32

Final Outcome of Appeal after Rehearing:
Claims 35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 2, 4, 6–8,
11, 12, 14,
15, 24–27,
29
103(a) Tu, Solar 1, 2, 4, 6–8,
11, 12, 14,
15, 24–27,
29

16 103(a) Tu, Solar, Dror 16
1, 2, 5, 6, 9,
14
103(a) Spencer, Solar 1, 2, 5, 6, 9,
14

19, 30–32 103(a) Spencer, Solar,
Burgmeier
19, 30–32
20 103(a) Spencer, Solar,
Burgmeier, Aita
20
Overall
Outcome
1, 2, 4–9, 11,
12, 14–16,
19, 20, 24–
27, 29–32