Ex Parte Shedlov et al

Patent Trial and Appeal Board

Jul 29, 2013

11240148 (P.T.A.B. Jul. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MATTHEW S. SHEDLOV and KEN MERDAN
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Appeal 2011-006435
Application 11/240,148
Technology Center 3700
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Before CHARLES N. GREENHUT, BRETT C. MARTIN, and
BARRY L. GROSSMAN, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-48. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We affirm the decision of the Examiner.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to techniques that employ a pulsed
beam of radiation or particles having an adjustable pulse frequency to cut,
weld or coat medical devices such as stents. (Spec., para. [0001].) Claims 1
and 18, each directed to a method, are independent claims. Claim 1 is
illustrative of the subject matter on appeal, and recites:
1. A method of manufacturing a medical device
from a workpiece, comprising:
generating a pulsed beam of radiation from a
radiation source, said pulsed radiation beam being
characterized by a prescribed pulse frequency;
directing the pulsed radiation beam onto the
workpiece;
moving the workpiece relative to the radiation
source so that a prescribed pattern is cut in the
workpiece by the pulsed radiation beam; and
adjusting the prescribed pulse frequency based on
a change in a parameter pertaining to the relative
motion of the workpiece.

REFERENCES
The Examiner relied upon the following prior art references:

Kimbara US 4,56815 Feb. 4, 1986
Momma US 6,160,240 Dec. 12, 2000
Kleine US 6,927,359 B1 Aug. 9, 2005
Diaz US 2004/0073294 A1 Apr. 15, 2004
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REJECTIONS
The following rejections are before us on review:
1. Claims 1-29 and 32-48 rejected under 35 U.S.C. § 103(a) as
unpatentable over Kleine or Momma in view of Kimbara; and
2. Claims 30 and 31 rejected under 35 U.S.C. § 103(a) as
unpatentable over Kleine or Momma in view of Kimbara and Diaz.
ANALYSIS
Claims 1-29 and 32-48
Appellants argue claims 1-29 and 32-48 as a group. App. Br. 4. We
select independent claim 1 as representative. Claims 2-29 and 32-48 stand
or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii)(2011).
Appellants make a single argument against the rejection: “Kimbara
teaches away from the approach employed by both Kleine and Momma
since it specifically teaches the use of a uniform power level while the cut is
being made to form the hole, which is precisely the opposite approach taken
by Kleine and Momma.” App. Br. 5-6. Appellants conclude that “it is
improper to combine references where the references teach away from their
combination.” Id. at 6.
The Examiner found this argument not persuasive of any error in the
rejection (Ans. 6) and we agree. We adopt the findings and conclusions of
the Examiner as our own. We write below to further explain our analysis
and decision.
Appellants’ do not argue that the combination of references proposed
by the Examiner does not meet any limitation of claim 1. They argue only
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that the references should not be combined because Kimbara “teaches away”
from being combined with Kleine or Momma. App. Br. 5-6.
Whether or not a reference teaches away from a claimed invention is a
question of fact. In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012). Thus,
the emphasis is on the facts and the claimed invention.
In relevant part, claim 1 merely calls for a “pulsed beam” directed
onto a workpiece, with a prescribed pattern cut in the work piece “by the
pulsed radiation beam.” There is no requirement for the pulsed beam to
have a specific pulse duration, frequency, length, profile, power, or any
other parameter during any portion of the method claimed. The only
limitation stated in the claim is that the beam is pulsed and the pulse
frequency is adjusted based on relative motion of the workpiece. Thus, the
assertion that the pulsed beam in Kimbara is not pulsed while cutting (App.
Br. 5) does not teach away from the claimed invention because the claims
make no such requirement.
In In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994), the Court stated
the general rule to determine whether a reference “teaches away”: “[a]
reference may be said to teach away when a person of ordinary skill, upon
reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that
was taken by the applicant.” The Court, however, further explained its
holding:
The degree of teaching away will of course depend on the
particular facts; in general, a reference will teach away if it
suggests that the line of development flowing from the
reference's disclosure is unlikely to be productive of the result
sought by the applicant. Id.
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Appellants provide no evidence or argument that the combination of
references proposed by the Examiner is unlikely to be productive.
Appellants also mischaracterize or misconstrue the combination of
references proposed by the Examiner. The Examiner recognized that Klein
and Momma do not explicitly show that the pulse frequency is adjusted
based on the change in the relative motion of the workpiece. Ans. 4. The
Examiner found that Kimbara discloses “that the laser pulse output is
adjusted based on the relative speed or velocity of a moving planar
workpiece.” Id. Appellant acknowledges that Kimbara uses a pulsed beam
and “adjusts the frequency of the laser pulses in response to changes in the
travel speed of the workpiece.” App. Br. 5. The specific combination of the
references that the Examiner concluded would have been obvious is “to
adapt Kleine or Momma with the recited step of adjusting the frequency of
the laser pulse based on the change in the velocity or the distance traveled by
the workpiece to provide uniform irradiation of the laser beam onto the
moving workpiece.” Ans. 4. This proposed combination merely adapts the
concept of adjusting the frequency of the laser pulses in response to changes
in the travel speed of the workpiece to the system in Kleine or Momma.
Ans. 6. There is no evidence that Kimbara teaches away from this proposed
modification of Kleine or Momma.
As found by the Examiner, Klein, Momma, and Kimbara “are in the
same field of endeavor” and “all the applied art discloses an importance of
controlling the laser parameters and the velocity or motion of the workpiece.
Ans. 6. There is no dispute that all the references use a pulsed laser beam to
cut a workpiece.
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Whether a patent claiming the combination of prior art elements is
obvious is determined by whether the improvement is more than the
predictable use of prior art elements according to their established functions.
KSR International Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). “Often, it
will be necessary for a court to look to interrelated teachings of multiple
patents; the effects of demands known to the design community or present in
the marketplace; and the background knowledge possessed by a person
having ordinary skill in the art, all in order to determine whether there was
an apparent reason to combine the known elements in the fashion claimed by
the patent at issue.” Id. at 418.
“Common sense teaches, however, that familiar items may have
obvious uses beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents together
like pieces of a puzzle.” KSR, 550 U.S. at 420. Regardless of Kimbara’s
primary purpose, the Examiner found that Kimbara discloses adjusting the
frequency of the laser pulse based on the change in the velocity or the
distance traveled by the workpiece to provide uniform irradiation of the laser
beam onto the moving workpiece. Appellants do not challenge this finding.
App. Br. 5. The idea that a person of ordinary skill in the relevant
technology would ignore Kimbara because Kimbara may use this technology
differently than the claimed invention makes little sense. “A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”
KSR, 550 U.S. at 421. It is not necessary for the prior art to serve the same
purpose as that disclosed in Appellants’ Specification in order to support the
conclusion that the claimed subject matter would have been obvious. See In
re Linter, 458 F.2d 1013, 1016 (CCPA 1972); see also, KSR 550 U.S. at 419
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(“[N]either the particular motivation nor the avowed purpose of the
[Appellants] controls” in an obviousness analysis.)
Applying these basic principles to the facts of this case, we determine
no error by the Examiner in rejecting claim 1.
Claims 2-29 and 32-48 fall with claim 1.
Claims 30 and 31
Appellants provide no specific argument directed to claims 30 and 31
separate from their “teaching away” argument discussed above. For the
same reasons as stated above, we affirm the Examiner’s decision to reject
claims 30 and 31.
DECISION
Upon consideration of the record as a whole in light of Appellants’
contentions and the preponderance of relevant evidence we affirm the
Examiner’s decision to reject claims 1-48.

AFFIRMED

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