Ex Parte Saunders

Patent Trial and Appeal Board

Jun 10, 2013

11830598 (P.T.A.B. Jun. 10, 2013)

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.
11/830,598 07/30/2007 Richard J. Saunders ACS 75632 (G1021USC2) 3092
68919 7590 06/10/2013
FULWIDER PATTON, LLP (ABBOTT)
John S. Nagy, Esq.
6060 CENTER DRIVE
10TH FLOOR
LOS ANGELES, CA 90045
EXAMINER
ELVE, MARIA ALEXANDRA
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
06/10/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RICHARD J. SAUNDERS
____________________

Appeal 2011-001695
Application 11/830,598
Technology Center 3700
____________________

Before: WILLIAM V. SAINDON, NEIL T. POWELL, and
JEREMY M. PLENZLER, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-001695
Application 11/830,598
2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 20-34 and 37-39. We have jurisdiction under 35
U.S.C. § 6(b).

The Claimed Subject Matter
Claim 20, reproduced below, is illustrative of the claimed subject
matter.
20. A method of manufacturing a stent, comprising:
providing a length of thin wall tubing having and outer
surface and an inner surface;
focusing a laser beam on said outer surface while
rotationally and axially shifting said tubing to cut a pattern
therein defining a stent;
preventing any portion of said laser beam that passes
through said cut pattern from impinging on said inner surface of
said tubing.

References
The Examiner relies upon the following prior art references:
Muncy
Tihon
Kitani
US 4,931,615
US 5,356,423
JP 61-169188
Jun. 5, 1990
Oct. 18, 1994
Jul. 30, 1986

Rejections
I. Claims 20-34 and 37-39 are rejected under 35 U.S.C. § 101 for lack of
utility. Ans. 3.
II. Claim 31 is rejected under 35 U.S.C. § 112, second paragraph, as
indefinite. Ans. 3.
III. Claims 20-34 and 37-39 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tihon, Muncy, and Kitani. Ans. 4.
Appeal 2011-001695
Application 11/830,598
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SUMMARY OF DECISION
We AFFIRM.

OPINION
Utility Rejection
The Examiner finds that “[i]t is not clear what is meant by an inside
surface,” such that the disclosed invention is inoperative and lacks utility.
Ans. 3. The Examiner adds that in order to remove material in one side of
the tube to form an aperture, one must necessarily remove a portion of the
inside surface. Ans. 6. Thus, the Examiner reasons, one cannot both cut a
pattern into (form an aperture through the inner surface), yet prevent
impingement on, the inner surface. Id.
Appellant takes issue with the Examiner’s assertion that the disclosed
(versus claimed) invention is inoperative (App. Br. 5) and the Examiner’s
discussion of multiple inner surfaces when it is apparent that a tube has only
one inner surface (App. Br. 5-7; Reply Br. 2-3).
The Examiner’s position is clear, even with the unfortunate choice of
using the word “surface” to mean both the inner surface of the tube (a claim
element) as well as a particular location on the inner surface of the tube. We
agree with the Examiner that the claims potentially require something that is
impossible. To cut a hole through a tube requires removal of both the inner
and outer surfaces of the tube. Appellant’s position is that the inner surface
that is not to be impinged is that portion of the inner surface remaining after
the first hole has been cut. Given that claims are not read in a vacuum, but
rather in light of the specification as would be interpreted by one of ordinary
skill in the art, we agree with Appellant’s interpretation.
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The disclosed invention is a stent having apertures resulting from laser
cuts. Spec. 5. While the Examiner’s interpretation is a strictly logical
reading of the claim, it makes little sense to claim a process that fails to
produce the very object of the invention.1 Accordingly, on these facts, one
of ordinary skill in the art would disregard such an unusual interpretation.2
In light of the above, we are persuaded that the Examiner’s rejection
is in error because the claims do not encompass the Examiner’s identified
inoperability.

Indefiniteness Rejection
Claim 31 recites a step of “removing a tail of molten material formed
by said jet of gas exiting said thin wall tubing.” The Examiner finds the
claim indefinite because of an alleged impropriety of a tail of molten
material (presumably, very hot) being formed by a cooling jet (presumably,
much less hot). Ans. 3, 6.
Appellant argues, in essence, that what the claim recites is what the
claim intends. See Ans. 4; Reply Br. 2. Indeed, like Appellant, we do not
see any issue with a cooling jet forming a molten tail. In our reading of the
claims, the material is being melted by the laser, and the cooling jet blows

1 We note that “cut pattern” can refer to a shape that is to be cut (Spec.
12:28-31 “...it is preferred to cut the tubing in the desired pattern by …
laser”) as well as a shape resulting from a cut (Spec. 13:30-32 “The laser
selectively removes the material … and a pattern is cut into the tube”).
Accordingly, this limitation does not resolve the claim construction issue.
Cf. Reply Br. 2 (“the Examiner is correct in pointing out that a cut pattern
entails a ‘through cut’ or ‘through hole’”).
2 We hasten to add that we do not hold that just because there is a plausible
claim construction the Examiner’s rejection fails, but rather that the rejection
is based solely on an improper claim construction.
Appeal 2011-001695
Application 11/830,598
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the molten material away, which may cause it to form a tail. The claim does
not require the material to be melted by the cooling jet but rather that the jet
merely forms the tail.
In light of the above, we are persuaded that the Examiner’s rejection
is in error.

Obviousness Rejection
Appellant does not separately argue the claims of this rejection; we
select claim 20 as representative. Claim 20 requires a step of focusing a
laser beam on a tube to cut a pattern into the tube as well as a step of
preventing the laser from impinging on the inner surface of the tube. In
rejecting claim 20, the Examiner found that Tihon describes the formation of
a stent using a laser.3 Ans. 4. The Examiner found Muncy describes laser
cutting thin walled tubes under an inert gas and positioning the tubes with
rotary positioners and a mandrel4. Ans. 4, 7. Lastly, the Examiner finds that
Kitani describes laser cutting and using an iron plate (mandrel) to prevent
damage to the pipe (i.e., the other side of the pipe). Ans. 5. The Examiner
concluded that it would have been obvious to utilize the inert gas system
(gas and vacuum mandrel) of Muncy to negate oxidation and surface
reactions during processing. Ans. 5. The Examiner concluded that it would

3 The Examiner also finds that Tihon does not describe a mandrel (Ans. 4),
but this is incorrect, as Tihon explicitly states: “Prototypes [of the invention]
have been produced by appropriately mounting a solid tube of plastic on a
mandrel and then, using a laser, the fenestrations or apertures are cut through
the thickness dimension of the wall.” Tihon, col. 4, ll. 51-54.
4 The Examiner’s findings with respect to Muncy are not required for the
rejection of claim 20 but the rejection nevertheless is based on Muncy.
These findings are required for limitations found in other claims.
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Application 11/830,598
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also have been obvious to prevent damage to the inside of the pipe (i.e., the
inner surface) as taught in Kitani.
Appellant takes issue with the Examiner’s use of the Kitani reference.
Appellant argues that rotation of the Kitani work piece would cause the iron
plate to shift out of position. App. Br. 7; Reply Br. 4. Appellant adds that
the rectangular cross section of the iron plate means it is incapable of
performing the claimed step. App. Br. 7.
Reviewing Appellant’s arguments, we are not apprised of error in the
Examiner’s rejection. First, the Examiner is not proposing to bodily
incorporate Kitani’s iron plate in place of the madrel of Tihon (as modified
by Muncy to have vacuum and rotational capabilities). While Appellant
appears to be correct that Muncy is silent as to the mandrel preventing laser
impingement (App. Br. 4; Reply Br. 4),5 such an observation ignores the
Examiner’s rejection, which seeks to utilize the teachings of Kitani (the use
of a damage-preventing mandrel) for Tihon. See In re Nievelt, 482 F.2d 965,
968 (CCPA 1973) (“Combining the teachings of references does not involve
an ability to combine their specific structures”). As such, Kitani stands for
the rather unsurprising notion that, when cutting holes in objects with a void,
one must be careful not to continue cutting the opposite side after cutting the
hole. In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is proper to take
into account not only specific teachings of the references but also the

5 Tihon and Muncy’s silence on this note is, in our opinion, merely because
references often leave out that which would be plainly understood by one of
ordinary skill in the art. Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802
F.2d 1367, 1384 (Fed. Cir. 1986) (“a patent need not teach, and preferably
omits, what is well known in the art.”) (citing Lindemann Maschinenfabrik
GMBH v. Am. Hoist & Derrick, 730 F.2d 1452, 1463 (Fed. Cir. 1984)). We
need not reach such an issue, however, because the Examiner has provided
evidence of such an understanding, by way of Kitani.
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Application 11/830,598
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inferences which one skilled in the art would reasonably be expected to draw
therefrom”).
Having reviewed Appellant’s arguments in both Briefs, we are not
apprised of error in the Examiner’s findings and conclusions with regard to
claim 20. Claims 21-34 and 37-39 fall therewith.

DECISION
We AFFIRM the Examiner’s decision regarding claims 20-34 and 37-
39.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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