Ex Parte Frantzen

Board of Patent Appeals and Interferences

Jun 28, 2002

09072605 (B.P.A.I. Jun. 28, 2002)

1Claim 9 was amended after the final rejection.
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN J. FRANTZEN
____________
Appeal No. 2001-1939
Application No. 09/072,605
____________
ON BRIEF
____________
Before ABRAMS, FRANKFORT, and STAAB, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1, 2, 7
and 9-23, which are all of the claims pending in this application.1
We AFFIRM-IN-PART.
Appeal No. 2001-1939
Application No. 09/072,605
Page 2
BACKGROUND
The appellant's invention relates to a method for polishing surfaces of a surgical
stent. An understanding of the invention can be derived from a reading of exemplary
claim 1, which has been reproduced below.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Suzuki et al. (Suzuki) 4,319,435 Mar. 16, 1982
Sawyer 5,108,417 Apr. 28, 1992
Frantzen 5,746,691 May 5, 1998
Klein 5,788,558 Aug. 4, 1998
Claims 1, 2, 7 and 10 stand rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claims 1-5 of U.S.
Patent No. 5,746,691 in view of Suzuki.
Claims 14, 18, 19 and 21 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Klein.
Claims 14, 18, 19 and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Klein in view of Sawyer.
Claims 15 and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Klein in view of Sawyer.
Claims 1, 2, 7, 9, 10, 11, 16, 17 and 20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Klein in view of Suzuki.
Appeal No. 2001-1939
Application No. 09/072,605
Page 3
Claims 12, 13 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Klein in view of Suzuki and Sawyer.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the Answer
(Paper No. 14) for the examiner's complete reasoning in support of the rejections, and
to the Brief (Paper No. 13) and Reply Brief (Paper No. 15) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
Claim 1
A method for polishing surfaces of a cylindrical radially expandable
surgical stent including the steps of:
selecting an abrasiveness for particles within a fluid abrasive
media;
providing a source of the fluid abrasive media;
orienting the radially expandable surgical stent with a central axis
thereof extending in an axial direction;
subjecting the fluid abrasive media to elevated pressure
substantially between 300 and 800 p.s.i.; and
Appeal No. 2001-1939
Application No. 09/072,605
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flowing the abrasive media past the radially expandable surgical
stent in an axial direction with the abrasive media coming into physical
contact with the surfaces of the radially expandable surgical stent.
The Double Patenting Rejection
It is the examiner’s view that all of the subject matter recited in claim 1 is finds
correspondence in claims 1-5 of Frantzen except for the step of subjecting the abrasive
fluid media to an elevated pressure of between 300 and 800 psi. However, according
to the examiner, Suzuki teaches subjecting a workpiece to blasting with abrasive media
at a pressure of 450 psi, which falls within the claimed range, and it would have been
obvious to utilize this pressure in the Frantzen method. The appellant argues in reply
that Suzuki is directed to “blasting,” which is different from “polishing,” and that one of
ordinary skill in the art of manufacturing fragile items such as medical stents would not
seek to utilize the teachings of Suzuki because they would be destructive of the stent
(Brief, pages 4 and 5; Reply Brief, pages 1 and 2). As support for this position, the
appellant has submitted excerpts from a technical dictionary stating that “blasting”
means cleaning materials by a blast of air that blows small abrasive particles against
the surface, and “polishing” means smoothing and brightening a surface such as a
metal or rock through the use of abrasive materials (appendix to Reply Brief).
The Frantzen claims are directed to a method for polishing surfaces of a
cylindrical radially expandable stent. Claim 5 includes the step of “pressurizing the
abrasive media to a pressure above atmospheric pressure” while it flows past the stent,
Appeal No. 2001-1939
Application No. 09/072,605
Page 5
2See, for example, the definition of burrs in Webster’s New Collegiate Dictionary, 1973, page 148.
but does not specify the pressure or a range thereof. Applying the definition of
“polishing” provided by the appellant, one of ordinary skill in the art would understand
that the inventive method recited in Frantzen’s claim 5 is for the purpose of “smoothing
and brightening” the surface of the stent.
Suzuki is directed to removing burrs from a workpiece, that is, removing thin
ridges or areas of roughness produced in cutting or shaping metal areas,2 by impacting
the workpiece with a pressurized stream of abrasive particle-water slurry. Suzuki
teaches that 450 psi is an effective pressure for performing this operation. From our
perspective, deburring falls within the definition of “polishing” since, in the absence of
evidence to the contrary, the effect of removing the roughness produced in cutting or
shaping the metal by the action of the abrasive stream upon the surfaces of the
workpiece would make them smoother and brighter than they were prior thereto. Since
radially expandable surgical stents are formed of metal, we agree with the examiner
that one of ordinary skill in the art would have found it obvious to utilize Suzuki’s
suggested pressure of 450 psi in the Frantzen system, suggestion being found in
Suzuki’s explicit teaching that this would remove ridges and areas of roughness
resulting from shaping processes.
Appeal No. 2001-1939
Application No. 09/072,605
Page 6
3In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
Moreover, the artisan is presumed to have skill, rather than the lack thereof,3 and
once having been taught by Frantzen that the surfaces of a surgical stent can be
polished by subjecting it to abrasive media at a pressure above atmospheric pressure,
could be expected to determine whether a particular level of pressure would be
applicable to a particular workpiece, be it more or less delicate. It is our view that the
pressure utilized to impact the abrasive against the stent in the Frantzen method recited
in claim 5 thus would have been considered by one of ordinary skill in the art to be a
result-effective variable, in that it would have more or less effect upon the surface
thereof and could inflict damage thereon, and optimization of a variable recognized in
the art as a result-effective variable normally is considered to be within the skill of the
art. In re Antonie, 559 F.2d 618, 62, 195 USPQ 6, 8 (CCPA 1977).
We do not agree with the appellant that Suzuki constitutes nonanalogous art.
The test for analogous art is first whether the art is within the field of the inventor's
endeavor and, if not, whether it is reasonably pertinent to the problem with which the
inventor was involved. See In re Wood, 599 F.2d 1032, 1036, 202 USPQ 171, 174
(CCPA 1979). A reference is reasonably pertinent if, even though it may be in a
different field of endeavor, it logically would have commended itself to an inventor's
attention in considering his problem because of the matter with which it deals. See In
re Clay, 966 F.2d 656, 659, 23 USPQ2d 1058, 1061 (Fed. Cir. 1992). It is our view
Appeal No. 2001-1939
Application No. 09/072,605
Page 7
that, at the very least, Suzuki would have commended itself to the attention of one of
ordinary skill in the art who is attempting to solve the problem of polishing the surface of
a surgical stent in view of the fact that it is directed to smoothing the surface of a
workpiece. With regard to the argument that the only suggestion to combine the
teachings of Suzuki with those of Frantzen is found in hindsight, we wish to note that
any judgment on obviousness is in a sense necessarily a reconstruction based upon
hindsight reasoning, but so long as it takes into account only knowledge which was
within the level of ordinary skill at the time the claimed invention was made, and does
not include knowledge gleaned only from the applicant's disclosure, such a
reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209,
212 (CCPA 1971). It is our opinion that proper suggestion to combine exists in this
case.
On the basis of the reasoning set forth above, we conclude that the subject
matter recited in claim 1 would have been obvious in view of claims 1-5 of Frantzen and
the teachings of Suzuki, and we will sustain the obviousness-type double patenting
rejection of claim 1 of the present application. Since the appellant has grouped claims
2, 7 and 10 with independent claim 1, from which they depend, they fall therewith.
The Rejection Under Section 102
Claims 14, 18, 19 and 20 stand rejected as being anticipated by Klein.
Anticipation under 35 U.S.C. § 102 is established only when a single prior art reference
Appeal No. 2001-1939
Application No. 09/072,605
Page 8
4See, for example, Webster’s New Collegiate Dictionary, 1973, page 1151.
discloses, either expressly or under the principles of inherency, each and every element
of the claimed invention. See, for example, In re Paulsen, 30 F.3d 1475, 1480-1481,
31 USPQ2d 1671, 1675 (Fed. Cir. 1994).
Claim 14 is directed to a method of polishing surfaces of a surgical stent
comprising the steps of providing a source of fluid abrasive media, flowing the abrasive
media in an axial direction and maintaining the flow past an inner stent surface for a
length of time “sufficient to abrade the edges of the inner stent surface until said edges
are streamlined in shape.” At this juncture, we should point out that the common
definition of “streamlined” is “contoured to reduce resistance to motion through a fluid
(as air).”4
The Klein patent discloses an apparatus and method for polishing stents by
flowing an abrasive slurry through the stent. It provides a source of fluid abrasive
media and flows it past the stent in an axial direction with the media coming into contact
with the surfaces of the stent. In the course of the disclosed polishing method the
abrasive particles “round edges and corners” (column 4, line 28). As is explained in
column 9, lines 19-65, “[t]he method for polishing the surfaces 28, 29, 32 and deburring
and rounding edges 34, 36 of stent 2" (emphasis added) is accomplished by holding the
stent in a passage in a fixture and causing abrasive material to flow axially past the
inner and outer surfaces of the stent as well as to be extruded through the openings in
Appeal No. 2001-1939
Application No. 09/072,605
Page 9
the side walls of the stent. With reference to Figure 2, it can be seen that rounding
edges 34 and 36 will result in contouring them, which clearly will reduce resistance to
motion through a fluid as compared to the perpendicular shape of the corners prior to
such treatment, that is, streamline the flow. Thus, Klein flows the abrasive past the
inner surfaces of the stent for a length of time sufficient to abrade the edges of the inner
stent surface until the edges are rounded and thus are “streamlined”, as is required by
claim 14.
While we have carefully considered the arguments offered by the appellant with
regard to this rejection, they have failed to persuade us that the rejection should not be
sustained, for they are based on a definition of streamlined which is more restrictive
than the common definition. In this regard, we note that the appellant has explained in
the specification that the prior art was “not sufficiently streamlined” (page 3) while his
invention is “extensively streamlined” (page 6), which lends credence to our position
that “streamlined” is a broad term that includes rounding the edges.
The Section 102 rejection of claim 14 is sustained, as is the like rejection of
dependent claims 19 and 21, the separate patentability of which were not argued.
The patentability of claim 18 has been argued. Claim 18 adds to claim 14 the
requirement that the fluid abrasive media “contains particles having a size substantially
between 0.008 and 0.0003 inches.” Klein discloses that “[t]ypically, abrasive particle
size ranges from 0.005 mm to 1.5 mm” (column 9, lines 10 and 11), which is between
Appeal No. 2001-1939
Application No. 09/072,605
Page 10
0.06 and 0.0002 inches. The Klein range encompasses the claimed range, and thus
clearly “contains” particles that are within the claimed range, which is all that claim 18
requires. The Section 102 rejection of claim 18 also is sustained.
The Rejections Under Section 103
The initial burden of establishing a basis for denying patentability to a claimed
invention rests upon the examiner. See In re Piasecki. 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984). The question under 35 U.S.C. §103 is not merely
what the references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made. See Merck & Co. v. Biotech
Labs., Inc. 874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir.), cert. denied,
493 U.S. 975 (1989) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981). While there must be some suggestion or motivation for one of ordinary skill in
the art to combine the teachings of references, it is not necessary that such be found
within the four corners of the references themselves; a conclusion of obviousness may
be made from common knowledge and common sense of the person of ordinary skill in
the art without any specific hint or suggestion in a particular reference. See In re
Bozak, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Further, in an
obviousness assessment, skill is presumed on the part of the artisan, rather than the
lack thereof. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
Insofar as the references themselves are concerned, we are bound to consider the
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Application No. 09/072,605
Page 11
disclosure of each for what it fairly teaches one of ordinary skill in the art, including not
only the specific teachings, but also the inferences which one of ordinary skill in the art
would reasonably have been expected to draw therefrom. See In re Boe, 355 F.2d
961, 965, 148 USPQ 507, 510 (CCPA 1966) and In re Preda, 401 F.2d 825, 826,
159 USPQ 342, 344 (CCPA 1968).
The Rejections On The Basis Of Klein And Sawyer
The first of these rejections is that, as an alternative to the rejection of being
anticipated by Klein, claims 14, 18, 19 and 21 are unpatentable over Klein in view of
Sawyer. We have discussed Klein above, the result being that we agreed with the
examiner that these claims were anticipated by Klein (the appellant argued the separate
patentability only of dependent claim 18). On the basis that anticipation is the epitome
of obviousness (In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982),
the Section 103 rejection of claims 14, 18, 19 and 21 also can be sustained, with
Sawyer being considered to be merely confirmatory of the position we took in Klein
regarding “streamlined).” In this regard, Sawyer seeks to reduce turbulent flow through
a stent, and does so by providing the inner surface of the stent with an “airfoil”
configuration (column 4, lines 2-13; column 5, line 17) which, as shown in Figure 2,
includes rounding corners of the segments that comprise the stent, a result that also is
accomplished by practicing the Klein abrading process.
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Application No. 09/072,605
Page 12
Also rejected on the basis of Klein and Sawyer are dependent claims 15 and 22.
Claim 15 adds to claim 14 the requirement that the flow of abrasive media past an outer
stent surface be maintained for a time “sufficient only to polish the outer stent surface.”
Since claim 14 requires that the abrasive be flowed until the edges of the inner stent
surface are streamlined, we interpret claim 15 to mean that the time sufficient to polish
the outer stent surface is less than that required to streamline the inner tent surface. In
any event, the examiner admits Klein does not streamline the edges of the inner stent
surface while only polishing the outer stent surface, and looks to Sawyer for this
teaching. However, while Sawyer does disclose streamlining the inner stent surfaces, it
is accomplished by bending, cold forming or machining (column 5, lines 17-20). It is our
view that the combined teachings of the two references would not have suggested to
one of ordinary skill in the art that the edges of the inner stent surfaces be exposed to
flowing abrasive media until the corners of the edges are streamlined while the outer
stent surfaces are exposed “only” until they are polished. Therefore, a prima facie case
of obviousness has not been established by the teachings of Klein and Sawyer with
regard to the subject matter of claim 15, and we will not sustain the rejection.
Claim 22 adds to claim 14 the requirement that the flowing step include
maintaining the flowing “for a length of time sufficient to abrade the edges of the inner
stent surface until said edges have a greater radii of curvature than radii of the outer
edges bordering an outer surface of the stent.” There is no teaching in either of the
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Application No. 09/072,605
Page 13
applied references that the inner surface edges should be abraded more than the outer
ones. This being the case, we will not sustain the rejection of claim 22.
The Rejection On The Basis Of Klein And Suzuki
This rejection is directed to claims 1, 2, 7, 9, 11, 16, 17 and 20. It is the
examiner’s position that Klein discloses all of the subject matter recited in independent
claim 1 except for disclosing a specific pressure for the abrasive media (between 300
and 800 psi), but that Suzuki’s disclosure of 450 psi would have suggested to one of
ordinary skill in the art that this is suitable for use in the Klein method, thus rendering
the claim obvious. The appellant argues that Klein teaches away from the method
recited in claim 1, and that no suggestion exists for combining the teachings of the
references in the manner proposed by the examiner.
Klein was discussed above with regard to claim 14, and Suzuki with regard to the
double patenting rejection. We shall sustain this rejection of claim 1 on the basis of
essentially the same reasoning as we applied above with regard to the double patenting
rejection. To reiterate, the Klein method polishes the surfaces of a stent by extruding an
abrasive slurry through the stent in an axial direction with the media coming into contact
with the inner and outer surfaces of the stent, as well as flowing perpendicularly through
the openings in the stent (column 1, lines 8 and 9). The abrasive material is under
pressure (column 6, lines 64 and 65), but the level of pressure is not disclosed. We
agree with the examiner that Klein discloses all of the subject matter recited in claim 1
Appeal No. 2001-1939
Application No. 09/072,605
Page 14
except for the recited range of pressure. Suzuki teaches that areas of roughness can
be removed from workpieces by a stream of abrasive particle water slurry at 450 psi.
As was the case above, we agree with the examiner that one of ordinary skill in the art
would have found it obvious to utilize Suzuki’s suggested pressure of 450 psi in the
Klein system. In addition, we again point out that one of ordinary skill in the art would
have known that the amount of pressure used would be a result effective variable, that
is, too much pressure would damage a stent, and would have optimized the pressure to
accomplish the desired task. See In re Antonie, supra.
The like rejection of dependent claims 2, 7 and 10 also is sustained in view of
the fact that they were grouped with claim 1 (Brief, page 4). The separate patentability
having not been argued, the rejection of claims 9, 11, 16, 17 and 20 over Klein in view
of Suzuki also is sustained.
The Rejection On The Basis Of Klein, Suzuki And Sawyer
This rejection is directed to claims 12, 13 and 23. Claim 12 adds to claim 1 the
limitation that the abrasive media is flowed past the stent for a length of time sufficient
to abrade the edges of the inner stent surface until they are streamlined in shape, and
past the outer stent surface “only” until this surface is polished. We concluded above
with regard to claim 22 that this limitation was not rendered obvious by the teachings of
Klein and Sawyer. Further consideration of Suzuki does not alter this decision, and we
therefore will not sustain the rejection of claim 12.
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Application No. 09/072,605
Page 15
We reach the same conclusion with regard to the step added to claim 1 by
dependent claim 13 concerning the differing radii of the inner and outer surface edges
of the stent, for Suzuki does not overcome the deficiencies set out above with regard to
Klein and Sawyer.
Independent claim 23 recites, inter alia, the limitations regarding streamlining the
edges of the inner stent surfaces while only polishing the outer stent surfaces. For the
reasons cited against claims 12 and 15, we also will not sustain the rejection of claim
23.
SUMMARY
The rejection of claims 1, 2, 7 and 10 under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claims 1-5 of U.S.
Patent No. 5,746,691 in view of Suzuki is sustained.
The rejection of claims 14, 18, 19 and 21 under 35 U.S.C. § 102(e) as being
anticipated by Klein is sustained.
The rejection of claims 14, 18, 19 and 21 under 35 U.S.C. § 103(a) as being
unpatentable over Klein in view of Sawyer is sustained.
The rejection of claims 15 and 22 under 35 U.S.C. § 103(a) as being
unpatentable over Klein in view of Sawyer is not sustained.
The rejection of claims 1, 2, 7, 9, 10, 11, 16, 17 and 20 under 35 U.S.C. § 103(a)
as being unpatentable over Klein in view of Suzuki is sustained.
Appeal No. 2001-1939
Application No. 09/072,605
Page 16
The rejection of claims 12, 13 and 23 under 35 U.S.C. § 103(a) as being
unpatentable over Klein in view of Suzuki and Sawyer is not sustained.
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 2001-1939
Application No. 09/072,605
Page 17
ANTON P. NESS
P. O. BOX 2269
BLOOMINGTON , IN 47402-2269
RETURN TO LESLEY
APPEAL NO. 2001-1939 - JUDGE ABRAMS
APPLICATION NO. 09/072,605
APJ ABRAMS
APJ STAAB
APJ FRANKFORT
DECISION: AFFIRMED-IN-PART
Prepared By: LESLEY BROOKS
GAU: 3700
DRAFT TYPED: 31 Jul 03
FINAL TYPED: