Ex Parte Saunders

Patent Trial and Appeal Board

May 24, 2013

11831626 (P.T.A.B. May. 24, 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.
11/831,626 07/31/2007 Richard J. Saunders ACS 77360 (G3979USD1) 4722
68919 7590 05/24/2013
FULWIDER PATTON, LLP (ABBOTT)
John S. Nagy, Esq.
6060 CENTER DRIVE
10TH FLOOR
LOS ANGELES, CA 90045
EXAMINER
HEINRICH, SAMUEL M
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
05/24/2013 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 2010-007363
Application 11/831,626
Technology Center 3700
____________________

Before STEFAN STAICOVICI, JOHN W. MORRISON, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-007363
Application 11/831,626

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 11-14. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The independent claims on appeal are claims 11 and 14. Claim 11,
reproduced below, is illustrative of the appealed subject matter:
11. A system for forming a stent having one or more drug
reservoirs incorporated therein, comprising:
a computer controlled movable positioning table;
a rotatable collet mounted on the positioning table, the
collet configured to receive and hold a tubular member; the
rotation of the collet also controlled by a computer;
a first diode pumped Q-switched Nd/YAG laser assembly
emitting a light beam for machining at least one channel into a
portion of an outer surface of the tubular member; and
a second laser assembly emitting a light beam capable of
cutting a stent pattern into the tubular member after said
machining of said at least one channel so as to form a stent;
wherein the feed table is movable relative to the first and
second laser light beams.

REJECTIONS
Appellant seeks review of the following rejections:
(1) claims 11 and 14 under 35 U.S.C. § 103(a) as unpatentable over
Sakura (US 5,239,160, iss. Aug. 24, 1993), Chryssolouris (US 4,625,093,
iss. Nov. 25, 1986), and Flanagan (US 6,696,667 B1, iss. Feb. 24, 2004)
(Ans. 3-4);

1 Appellant identifies the real party in interest Abbott Cardiovascular
Systems, Inc. App. Br. 2.
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Application 11/831,626

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(2) claims 12 and 13 under 35 U.S.C. § 103(a) as unpatentable over
Sakura, Chryssolouris, Flanagan, and Zheng (US 6,613,161 B2, iss. Sep. 2,
2003) (Ans. 4);
(3) claims 11 and 14 under 35 U.S.C. § 103(a) as unpatentable over
Hopkins (US 6,862,794 B2, iss. Mar. 8, 2005), Chryssolouris, and Flanagan
(Ans. 4-5); and
(4) claims 12 and 13 under 35 U.S.C. § 103(a) as unpatentable over
Hopkins, Chryssolouris, Flanagan, and Zheng (Ans. 5).

ANALYSIS
Rejection (1)
The Examiner found that Sakura teaches collet/chuck 45/46, laser
head 170, moving table 22, and computer control. Ans. 3 (citing Sakura, fig.
1, col. 8, ll. 3-9). The Examiner also found that Chryssolouris teaches “a
laser lathe with two laser heads” and that Flanagan teaches a “well known
Nd:YAG diode laser with Q-switching suitable for stent cutting.” Id. at 4
(citing Chryssolouris, fig. 4). The Examiner concluded that “[t]he
substitution of two laser heads in Sakura et al and using particular Nd:YAG
lasers would have been obvious . . . to a person having ordinary skill in the
art because it provides more versatile machining capability.” Id.
Appellant contends that the Examiner’s rejection lacks sufficient
articulated reasoning for combining the references. App. Br. 7-8. However,
the articulated reasoning is to “provide more versatile machining capability”
as set forth by the Examiner. Ans. 4, 5. Appellant also contends that “the
claimed sequence of the method require[s] the stent pattern to be cut after
the machining of the channels into the tubular member,” which is not taught
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Application 11/831,626

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by the references. App. Br. 8. (emphasis added). However, claims 11 and
14 are system (apparatus) claims, not method claims. Claim 11 recites “[a]
system . . . comprising . . . a second laser assembly emitting a light beam
capable of cutting a stent pattern into the tubular member after said
machining of said at least one channel,” and claim 14 recites “[a] system . . .
comprising . . . the rotatable collet and movable positioning table operable to
move in response to commands from the computer to move the tubular
member relative to the light beam of the laser to machine at least one
channel . . . and subsequent thereto to cut a stent pattern . . . .” Clms. App’x.
(emphasis added). The Examiner found that Chryssolouris teaches first and
second lasers can be operated simultaneously or sequentially. Ans. 6 (citing
to col. 4, l. 44). As such, the Examiner had a sufficient basis for finding that
Sakura’s assembly, after substitution of Chryssolouris’ two laser heads, was
capable of cutting a stent pattern after machining a channel as recited in
claim 11 or operable to machine at least one channel and subsequently cut a
stent pattern as recited in claim 14. Appellant provides no persuasive
evidence or reasoning that Sakura’s device as modified does not teach the
claimed structure or would not inherently possess the capability or
operability of first machining a channel and secondly machining a stent
pattern. Appellant’s contention regarding the failure of the cited references
to specifically teach cutting the stent pattern after machining the channels is
not convincing because the claimed system structure is already known. See
In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.1997). While features of an
apparatus may be recited either structurally or functionally, claims directed
to an apparatus must be distinguished from the prior art in terms of structure
rather than function. Id. at 1477-78; see also Ans. 6. “[A]pparatus claims
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cover what a device is, not what a device does.” Hewlett-Packard Co. v.
Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990).
Appellant additionally contends that Sakura and Chryssolouris are
“directed to heavy laser machine tools for machining substantial work
pieces,” not “extremely fine features such as channels of an implantable
stent” (App. Br. 7) and that “combining the references is improper because
the result would be unsuitable and unpredictable due to heat build up.”
Reply Br. 5; see also id. at 4-5; App. Br. 9-10. In particular, Appellant
explains that subjecting a tubular member to two lasers would generate a
large quantity of heat, and while Chryssolouris suggests that heat build up
can be addressed by dissipation of energy throughout the volume of removed
material, this type of energy dissipation cannot occur where there is no
significant removed material in which to dissipate the energy. App. Br. 9-
10. Appellant further contends that the Examiner’s proposed combination
ignores Chryssolouris’ express teaching to rely on material removal for heat
dissipation (Reply Br. 5) and renders the prior art “[u]nsatisfactory for [i]ts
[i]ntended [p]urpose” (App. Br. 10).
We do not find the arguments convincing as the Examiner’s rejection
relies on Sakura as modified by both Chryssolouris and Flanagan. Although
Sakura was modified to include two laser heads as taught by Chryssolouris,
the Examiner further modified Sakura to use Flanagan’s Nd:YAG lasers
suitable for stent cutting. Ans. 4. It is well settled that nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Thus, Sakura and
Chryssolouris cannot be read in isolation, but for what they fairly teach
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when combined with Flanagan as set forth in the Examiner’s rejection. In
this case, we agree with the Examiner that Flanagan discloses a relationship
between pulse time and heat affected zone (HAZ) size. Ans. 6 (citing to col.
1, ll. 21-29). Moreover, we note that Flanagan discloses the same type of
laser, namely, a Nd:YAG diode laser with Q-switching, used for the same
purpose as Appellant, that is, to manufacture a stent. We thus do not agree
with Appellant that “the combination would not be suitable for the intended
purpose of the invention.” App. Br. 10.
For the foregoing reasons, we find that the Examiner did not err in
concluding that the subject matter of claims 11 and 14 would have been
obvious from the combination of Sakura, Chryssolouris, and Flanagan, and
we sustain the rejection of claims 11 and 14 under 35 U.S.C. § 103(a).
Rejection (2)
Claim 12 recites that the Nd/YAG laser has “a primary wavelength of
approximately 1060 nanometers emitting a light beam having a wavelength
equivalent to a third harmonic of the primary wavelength,” and claim 13
recites that “the third harmonic wavelength is about 355 nanometers.” Clms.
App’x. The Examiner found that Zheng describes well known primary
wavelength and harmonic for lasers. Ans. 4 (citing Zheng, col. 3, ll. 1-35);
see e.g., Zheng, col. 3, ll. 8-9 (“a 3rd harmonic Nd:YAG laser of wavelength
355 nm”). The Examiner concluded that it would have been obvious to use
Zheng’s disclosed primary wavelength and harmonic “because the features
are conventional for use with suitable workpieces.” Ans. 4.
Appellant contends that “the Zheng reference is not concerned with
the problems associated with simultaneously laser machining a channel . . .
and then cutting the stent pattern . . . with the concomitant heat distortion
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problems, unwanted hot working of the work piece, and like problems.”
App. Br. 11. Although we appreciate that Zheng is not concerned with the
problems stated by Appellant, it is well settled that in determining whether
the subject matter of a claim is obvious, “neither the particular motivation
nor the avowed purpose of the [applicant] controls.” See KSR Int'l Co. v.
Teleflex, Inc., 550 U.S. 398, 419 (2007). Appellant does not offer persuasive
technical reasoning or evidence that Zheng’s wavelength and harmonic are
not conventional for use with suitable workpieces, as stated by the
Examiner, to persuasively contend that the Examiner’s articulated reasoning
lacks rational underpinning. See id. at 416 (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”).
For the foregoing reasons and since we have found no deficiencies in
the combination of Sakura, Chryssolouris, and Flanagan as described supra,
we find that the Examiner did not err in concluding that the subject matter of
claims 12 and 13 would have been obvious from the combination of Sakura,
Chryssolouris, Flanagan, and Zheng, and we sustain the rejection of claims
12 and 13 under 35 U.S.C. § 103(a).
Rejection (3)
The Examiner found that Hopkins teaches a rotatable collet fixture
(Hopkins, fig. 7), laser 71, X-Y table 73, and computer control. Ans. 4
(citing Hopkins, col. 5, l. 61 – col. 6, l. 22). Based on these teachings and
the previously identified teachings of Chryssolouris and Flanagan, the
Examiner concluded that “[t]he substitution of two laser heads in Hopkins
and using particular Nd:YAG lasers would have been obvious . . . because it
provides more versatile machining capability.” Id. at 5.
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Application 11/831,626

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Appellant advances the same arguments as with the first ground of
rejection. App. Br. 11-12. For the same reasons discussed supra, we find
that the Examiner did not err in concluding that the subject matter of claims
11 and 14 would have been obvious from the combination of Hopkins,
Chryssolouris, and Flanagan, and we sustain the rejection of claims 11 and
14 under 35 U.S.C. § 103(a).
Rejection (4)
Appellant advances the same arguments as with the second ground of
rejection. App. Br. 12. For the same reasons discussed supra, we find that
the Examiner did not err in concluding that the subject matter of claims 12
and 13 would have been obvious from the combination of Hopkins,
Chryssolouris, Flanagan, and Zheng and we sustain the rejection of claims
12 and 13 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s rejections of claims 11-14 under 35 U.S.C. § 103(a)
are AFFIRMED.
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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