Ex Parte Merdan

Board of Patent Appeals and Interferences

Aug 31, 2010

10190975 (B.P.A.I. Aug. 31, 2010)

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.
10/190,975 07/08/2002 Kenneth M. Merdan 1001.1757101 3995
28075 7590 08/31/2010
CROMPTON, SEAGER & TUFTE, LLC
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EXAMINER
KERNS, KEVIN P
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
08/31/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KENNETH M. MERDAN
____________________

Appeal 2010-009279
Application 10/190,975
Technology Center 1700
____________________

Before ADRIENE LEPIANE HANLON, CHARLES F. WARREN, and
CATHERINE Q. TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL1
I. STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-10, 12, 16-18, 22, 25, 26, and 28. We have
jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 10/190,975

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We REVERSE AND ENTER A NEW GROUND OF REJECTION.
Appellant’s invention relates to a system. Claim 1 is illustrative:
1. A system for removing material from a wall of a
tubular member to form a plurality of holes therethrough
according to a predetermined pattern, the system comprising:
an optical system including a laser, said optical system
adapted to form a cutting spot on a wall of a tubular member,
said spot having sufficient energy to penetrate the wall of the
tubular member, and to modulate the laser energy according to
a predetermined pattern thereby forming a plurality of holes
through the tubular member;
a securement device adapted to mount the tubular
member, wherein the tubular member is held by its uppermost
end with a cylindrical axis of the tubular member in a vertical
orientation while leaving its lowermost end unobstructed;
a mechanism adapted to move at least one of the optical
system and the securement device while maintaining the cutting
spot on the wall of the tubular member thereby moving the
cutting spot over at least a portion of the wall of the tubular
member in both vertical and circumferential directions; and
a media flow, the media flow being a fluid, the flow of
which is directed through a lumen defined by the tubular
member from the uppermost end to the lowermost end.

The Examiner rejects claims 1-4, 10, 12, 16-18, 22, 25, 26, and 28
under 35 U.S.C. § 103(a), relying upon Tessier (US 5,073,694, issued Dec.
17, 1991) and Schell (US 6,586,705 B1, issued Jul. 1, 2003) as evidence of
obviousness. To reject claims 5-9, the Examiner further relies upon Wright
(US 5,267,381, issued Dec. 07, 1993).
II. ISSUE
A central issue in this appeal is whether the evidence supports the
Examiner’s finding that Tessier describes an apparatus including:
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“a mechanism adapted to move at least one of the optical system and
the securement device while maintaining the cutting spot on the wall of the
tubular member thereby moving the cutting spot over at least a portion of the
wall of the tubular member in both vertical and circumferential directions,”
as required by claim 1; and
“a mechanism adapted to move at least one of the laser apparatus and
the securement device whereby the laser system removes material from at
least a portion of the wall of the tubular member in both vertical and
circumferential directions,” as required by claim 22.
In order to determine whether the claimed mechanism is taught by
Tessier, it is necessary to understand the scope of what is claimed.
However, we determine that the claims do not particularly point out and
distinctly claim the subject matter which applicant regards as his invention
as required by 35 U.S.C. §112, ¶ 2. For this reason, we procedurally reverse
the obviousness rejections and enter the following new ground of rejection
per our authority under 37 C.F.R. § 41.50(b).

III. NEW GROUNDS OF REJECTION
We reject claims 1-10, 12, 16-18, 22, 25, 26, and 28 under 35 U.S.C.
§ 112, ¶ 2 as failing to particularly point our and distinctly claim the subject
matter which applicant regards as his invention.
The clauses at issue use the generic term “mechanism” and otherwise
recite the function of the “mechanism.”
We note that our reviewing court has held that generic terms such as
“mechanism,” “means,” “element,” and “device,” typically do not connote
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Application 10/190,975

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sufficiently definite structure to avoid means-plus-function treatment.
Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1096 (Fed. Cir. 2008).
Where the claim merely uses the word “mechanism” as a replacement
for “means,” and the claim provides no structural context for determining
the characteristics of the “mechanism,” one of ordinary skill in the art has no
resource but to turn to the specification to derive a structural connotation of
the generically claimed “mechanism.” Welker Bearing, at 1096. This is
precisely the situation 35 U.S.C. § 112, ¶ 6 was meant to address. In
litigation, our reviewing court applies 35 U.S.C. § 112, ¶ 6 requirements to
such claims. Id. However, the absence of the “means” language required by
35 U.S.C. § 112, ¶ 6 introduces an ambiguity into the claim. Specifically, it
is not clear whether § 112, ¶ 6 applies. “When an applicant has not given
notice to the public that his or her purely functional claim element is to be
limited by the application of 35 U.S.C. § 112, sixth paragraph, a first
USPTO concern is that the claim is indefinite under 35 U.S.C. § 112, second
paragraph.” Ex parte Miyazaki, 2008 WL 5105055 at *14, 89 USPQ2d
1207, 1217 (BPAI 2008) (precedential).
Moreover, even assuming 35 U.S.C. § 112, ¶ 6 applies, in consulting
the Specification, we find no structure corresponding to the function of
moving the optical system and/or the securement device as claimed.
Appellant identifies page 7, lines 16-21 as disclosing the required
mechanism adapted to move the optical system and/or securement device
(Br. 5 and 8). At page 7, lines 16-21, the only reference to the function of
moving is the sentence reading “[a]s the tube 12 is moved via the
predetermined movement pattern of shaft 18 the laser energy 22 cuts a
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Application 10/190,975

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corresponding pattern into the tube 12.” Previous paragraphs on page 7
disclose that the shaft 18 may be rotated as well as moved vertically in an
upwards and/or downwards direction according to a predetermined pattern
and, in some embodiments, the laser may be capable of directing laser
energy to the tube from multiple angles and/or directions. These recitations
merely describe the moving function, they do not identify the specific
mechanisms or structures that impart the disclosed movements. For this
additional reason, the claims are indefinite under 35 U.S.C. § 112, ¶ 2. See
In re Donaldson Co., 16 F.3d 1189, 1195 (Fed.Cir.1994) (en banc) (If an
adequate disclosure with respect to the corresponding structure of a means-
plus-function limitation is not set forth in the specification, then the claim
fails to “particularly point[ ] out and distinctly claim[ ] the subject matter
which the applicant regards as his invention,” as required by § 112, ¶ 2.)
35 U.S.C. § 112, ¶ 2 places the burden of precise claim drafting on the
applicant. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). And it is the
Examiner’s duty to enforce the requirement of § 112, ¶ 2. As stated in
Halliburton Energy Servs. v. M-L LLC, “it is highly desirable that patent
examiners demand that applicants do so [resolve the ambiguity] in
appropriate circumstances so that the patent can be amended during
prosecution rather than attempting to resolve the ambiguity in litigation.”
514 F.3d 1244, 1255 (Fed. Cir. 2008); see also Enzo Biochem Inc. v.
Applera Corp., 605 F.3d 1347, 1349 (Fed. Cir. 2010) (J. Plagar dissenting
from denial of rehearing) (The focus should be shifted from litigation over
claim construction to clarity in claim drafting.). By using purely functional
language in the “mechanism” clause of claims 1 and 22, Appellant has failed
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to particularly point out and distinctly claim the structure which that the
applicant regards as the “mechanism.”
IV. CONCLUSION
On the record before us, we procedurally reverse the Examiner’s
decision to reject the claims under 35 U.S.C. § 103(a). However, we enter
new grounds of rejection under 35 U.S.C. § 112, ¶ 2.

V. DECISION
The decision of the Examiner is reversed and new grounds of
rejection entered.
VI. TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .

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(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .

REVERSED
NEW GROUND OF REJECTION (37 C.F.R. § 41.50(b))

cam

CROMPTON, SEAGER & TUFTE, LLC
1221 NICOLLET AVENUE
SUITE 800
MINNEAPOLIS MN 55403-2420