BOSTON SCIENTIFIC SCIMED, INC.

Patent Trials and Appeals Board

Oct 8, 2020

15175774 - (D) (P.T.A.B. Oct. 8, 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.
15/175,774 06/07/2016 BRIAN J. HANSON 1001.3878101 3918
11050 7590 10/08/2020
SEAGER, TUFTE & WICKHEM, LLP
100 South 5th Street
Suite 600
Minneapolis, MN 55402
EXAMINER
AHMED, SHAMIM
ART UNIT PAPER NUMBER
1713
NOTIFICATION DATE DELIVERY MODE
10/08/2020 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):
BSC.USPTO@stwiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN J. HANSON and STEVEN KOCH
Appeal 2019-006373
Application 15/175,774
Technology Center 1700
Before CATHERINE Q. TIMM, GEORGE C. BEST, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–15. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Boston Scientific
Scimed, Inc. Appeal Br. 3.
Appeal 2019-006373
Application 15/175,774
2
CLAIMED SUBJECT MATTER
The claims are directed to a method of manufacturing a medical
device such as guidewire to be disposed in a blood vessel. Spec. 5; Fig. 1
(guidewire 10). The method includes steps of laser cutting to remove a
portion of a thickness of the wall of a tubular member at one or more
discrete locations (claim 1) or to form one or more cavities (claim 11) and
chemically etching the one or more discrete locations (claim 1) or at the one
or more cavities (claim 11), to form a slot. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method of manufacturing a medical device, the
method comprising:
laser cutting a tubular member, the tubular member
having an inner surface, an outer surface and a tubular wall
defining a thickness extending therebetween, wherein laser
cutting the member includes removing only a portion of the
thickness of the tubular wall at one or more discrete locations
along the tubular member; and
chemically etching the one or more discrete locations to
form a slot within the tubular wall at the one or more discrete
locations along the tubular member.
Appeal Br. 8 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Merdan US 2010/0063479 A1 Mar. 11, 2010
Palmaz US 2012/0282391 A1 Nov. 8, 2012
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REJECTIONS
Claims 1, 3–11, and 13–15 are rejected under 35 U.S.C. § 102(a)(1) as
being anticipated by Merdan. Final Act. 3.
Claims 2 and 12 are rejected under 35 U.S.C. § 103 as being
unpatentable over Merdan in view of Palmaz. Final Act. 5.
OPINION
Two issues arise from Appellant’s arguments, each of which applies
to all the rejected claims.2 Appeal Br. 4–7. We select claim 1 as
representative for resolving the issues on appeal.
The first issue concerns the Examiner’s interpretation of Merdan’s
Figure 3A as depicting cuts that extend only part way through the tubular
member of that reference. Final Act. 3. The issue is whether Appellant has
identified a reversible error in that finding as it relates to the limitation in
claim 1 requiring laser cutting to remove “only a portion of the thickness of
the tubular wall.” Appeal Br. 4.
The second issue is whether the Examiner reversibly erred by
combining Merdan’s disclosures in a manner that does not support a finding
of anticipation. Appeal Br. 5–6. Ultimately, the question is whether Merdan
“describes” the method of claim 1 within the meaning of 35 U.S.C.
§ 102(a)(1).

2 The Examiner adds Palmaz to support the obviousness of the additional
limitation of dependent claims 2 and 12. Final Act. 5. Appellant adds no
arguments directed to the Examiner’s findings regarding Palmaz or the
conclusion of obviousness. Appeal Br. 7. Thus, no separate argument is
raised for the obviousness rejection.
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Application 15/175,774
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For the reasons that follow, we determine that Appellant has not
identified a reversible error in the Examiner’s finding of anticipation on
either basis.
“‘[A]nticipation,’ [is] a term of art meaning ‘the disclosure in the prior
art of a thing substantially identical with the claimed invention.’” In re
Schaumann, 572 F.2d 312, 317 (CCPA 1978) (quoting 1 A. Deller, Deller’s
Walker on Patents § 75 at 237 (2d ed. 1964)). To anticipate “[a] single
reference must describe the claimed invention with sufficient precision and
detail to establish that the subject matter existed in the prior art.” Verve, LLC
v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002). Or, put another
way, “the reference must describe the applicant’s claimed invention
sufficiently to have placed a person of ordinary skill in the field of the
invention in possession of it.” In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990). “[A] reference can anticipate a claim even if it “d[oes] not expressly
spell out” all the limitations arranged or combined as in the claim, if a
person of skill in the art, reading the reference, would ‘at once envisage’ the
claimed arrangement or combination. Kennametal, Inc. v. Ingersoll Cutting
Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (quoting In re Petering, 301
F.2d 676, 681 (1962)). The key question is: What would the reference have
described to one of ordinary skill in the art at the time of the invention?
With the above caselaw in mind, we turn to the issues.
Issue 1
To address the first issue, we must consider how the ordinary artisan
would have interpreted Merdan’s Figure 3A at the time of the invention:
Would such a person have understood it to describe cuts that extend only
part way through the wall of tubular member? The Examiner finds that it
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Application 15/175,774
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does. Appellant contends that “[w]hile Figure 3A may appear to show slots
extending only part way through the wall, in reality Figure 3A is a side view
of the tubular member and depicts the slots extending about the tube” and
“[t]he depth of the cut into the tube is not represented in this view.” Appeal
Br. 4. According to Appellant, “if Figure 3A was presented in a perspective
view, for example, Figure 3A would show that each of the slots extends fully
through the wall of the tubular member.” Id.
We disagree with Appellant. We determine that Figure 3A depicts the
depth of cut at some discrete locations that are visible from the side and
conveys that Merdan’s laser cutting step cuts remove only a portion of the
thickness of the tubular wall at those discrete locations as required by claim
1. We reproduce Figure 3A below, annotated with a gray arrow:

Figure 3A is a side view of tubular member 20 before the step of
chemical etching, i.e., after the laser cutting step. Merdan ¶¶ 14, 36–42. As
shown in Figure 3A, tubular member 20 includes slots 42a, 42b, and 42c.
Merdan ¶ 45. Because the view is a side view, the hollow interior of tubular
member 20 is shown in phantom. Merdan ¶ 43; Fig. 3A (broken lines
through the center depicting a hollow interior with diameter ID1).
Appeal 2019-006373
Application 15/175,774
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We agree with Appellant that the side view of Figure 3A depicts the
slots as extending about the tube, but we do not agree that a perspective view
would show that each of the slots extends fully through the wall of tubular
member 20. The side view of Figure 3A conveys the extent of the slots at the
top and bottom of the tubular member and further conveys that at those
locations some of the slots fail to extend to the hollow interior, such as at the
portion of slot 42c annotated with the gray arrow. The portions of the slots
that do not extend fully to the hollow interior are portions where laser
cutting only removes “a portion of the thickness of the tubular wall at one or
more discrete locations along the tubular member” as required by claim 1.
Claim 1 does not exclude laser cutting fully through the wall at other
locations.
Appellant has not persuaded us that the Examiner reversibly erred in
finding that Merdan’s Figure 3A would have described to the ordinary
artisan performing laser cutting so it removes “only a portion of the
thickness of the tubular wall at one or more discrete locations along the
tubular member” as required by claim 1.
Issue 2
Appellant contends that the Examiner erred in combining “several
singular teachings of Merdan to achieve the limitations of independent
claims 1 and 11.” Appeal Br. 5.
To the contrary, we find that a preponderance of the evidence supports
the Examiner’s finding of anticipation.
There is no dispute that Merdan describes a method of manufacturing
a medical device that includes a tubular member. Compare Appeal Br. 4–6,
with Final Act. 3. And, as pointed out by Appellant, “Merdan appears to
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Application 15/175,774
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laser cut slots in a tubular member at one or more locations and utilize a
chemical etching process to vary the inner diameter, the outer diameter
and/or the slots widths of the tubular member along its overall length.”
Appeal Br. 6. Appellant contends that this process does not remove “only a
portion of the thickness of the tubular wall at a discrete location and
chemically [etch] the discrete location to form a slot within the tubular
member wall at the discrete location.” Id.
We have addressed the first prong of this argument above. A
preponderance of the evidence supports the Examiner’s finding that Figure
3A depicts a step of laser cutting tubular member 20 to remove only a
portion of the thickness of the tubular wall at one or more discrete locations
along the tubular member.
As to the limitation “chemically etching the one or more discrete
locations to form a slot within the tubular wall at the one or more discrete
locations along the tubular member” further recited in claim 1, Merdan’s
Figure 3B illustrates the change in structure due to chemical etching. Figure
3B, annotated with a gray arrow, is reproduced below to show the discrete
location we annotated in Figure 3A:

Figure 3B is a side view of tubular member 20 after chemical etching.
Merdan ¶¶ 15, 42. Comparing Figure 3B to Figure 3A above, it is apparent
that discrete portions where laser cutting did not completely penetrate the
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Application 15/175,774
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wall are penetrated by chemical etching to form slots, such as at the gray
arrow. This is due to the increase in the inner diameter of the distal end of
the hollow interior and the widening of various portions of the slots at the
discrete locations caused by chemical etching. Merdan Fig. 3B; see also
¶¶ 43, 45. Thus, Merdan’s Figure 3B, in conjunction with the description of
the chemical etching step used to produce the structure shown in Figure 3B,
placed a person of ordinary skill in the field of the invention in possession of
the chemical etching step of claim 1.
Further, we determine that the descriptions of laser cutting, chemical
etching, and the structures that result are sufficiently specific and related to
each other such that they support a finding of anticipation. Merdan
summarizes an example method for manufacturing the medical device as
including steps of providing a tubular member, laser cutting a plurality of
slots in the tubular member, and chemically etching at least a portion of the
tubular member to remove material from the tubular member. Merdan ¶ 4. In
Figures 3A and 3B, Merdan shows tubular member 20 before (Fig. 3A) and
after (Fig. 3B) the chemical etching step. Merdan ¶ 42. Merdan’s disclosure
along with the figures placed the ordinary artisan in possession of laser
cutting discrete locations and then chemically etching those locations in a
way that meets the requirements of claim 1.
CONCLUSION
The Examiner’s decision to reject claims 1–15 is AFFIRMED.
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Application 15/175,774
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–11, 13–
15
102(a)(1) Merdan 1, 3–11, 13–
15

2, 12 103 Merdan, Palmaz 2, 12
Overall
Outcome
1–15
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