Ex Parte Merdan

Board of Patent Appeals and Interferences

Jun 15, 2009

10190975 (B.P.A.I. Jun. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENNETH M. MERDAN
____________

Appeal 2009-000638
Application 10/190,975
Technology Center 1700
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Decided:1 June 16, 2009
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Before EDWARD C. KIMLIN, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-000638
Application 10/190,975

I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-12, 16-18, 22, and 25-28. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE and ENTER A NEW GROUND OF REJECTION.
The invention relates to a “system.” Claim 1 is illustrative:
1. A system for manufacturing a stent, the invention comprising
manufacturing the stent from a metallic tubular member by removing
material from the metallic tubular member to form a plurality of holes
therethrough according to a predetermined pattern;

wherein the metallic tubular member is in a substantially longitudinal
vertical position during removal of the material,

wherein a first end of the metallic tubular member is an upper end and
a second end of the metallic tubular member is a lower end,

wherein the upper end of the metallic tubular member is mounted to a
securement device,

further comprising a media flow, the media flow being a fluid, the
flow of which is directed through a lumen defined by the metallic tubular
member from the upper end to the lower end.

The Examiner rejects claims 1-4, 10-12, 16-18, 22, and 25-27 as
obvious 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).

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Appeal 2009-000638
Application 10/190,975

II. ISSUE
The main dispute between the Examiner and Appellant centers on the
question of whether there is a reason to combine the teachings of Tessier and
Schell to obtain a “system” as recited in the claims. In order to answer this
question, it is necessary to understand the scope of what is claimed. Because
the claims do not particularly point out and distinctly claim the subject
matter which applicant regards as his invention, the scope of the claims
cannot be ascertained without considerable speculation and we cannot
decide the question regarding the reason to combine. Therefore, we
procedurally reverse the obviousness rejections and enter the following new
ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b).
See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962) (reversed § 103
rejection because the rejection was based on considerable speculation as to
the meaning of terms of the claims and assumptions as to their scope). We
emphasize that this is a technical reversal of the rejection under 35 U.S.C. §
103(a), and not a reversal based upon the merits of the rejection.
III. NEW GROUND OF REJECTION
We reject claims 1-12, 16-18, 22, and 25-28 under 35 U.S.C. § 112,
¶ 2 as failing to particularly point out and distinctly claim the subject matter
which the applicant regards as his invention.
A. Findings of Fact
According to the Specification, the invention is directed to a laser
cutting/processing system (Spec. 3: 1-4 and 3:17-22). It is a system for
cutting, etching and/or otherwise processing a hollow metal tube for
manufacturing a stent (Spec. 3:17-19). Appellants’ Figure 1 illustrates an
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Appeal 2009-000638
Application 10/190,975

apparatus (mechanism 10) for processing and/or cutting the hollow tubular
body 12 (Spec. 5:26-29).
Figure 1 is reproduced below:

Figure 1 depicts a side view of an embodiment of mechanism 10
(Spec. 5:7).

In mechanism 10, an affixing device 16 holds the tube 12 while the
tube is cut by laser 20 (Spec. 7:8-11). A media flow 26 (a flow of fluid,
such as a gas, liquid solution, suspension or other media) may be applied to
the tube to encourage removal of debris 24 and cool the tube 12 during
processing (Spec. 7:31 to 8:3). The apparatus shown in Figure 1 also depicts
a filter 32 that collects waste particles, such as debris 24, while allowing
media flow 26 to pass through for reclamation or disposal (see unnumbered
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Application 10/190,975

collection basin), and a guide 40 that prevents excessive horizontal
movement of the tube 12 (Spec. 8:7-10; 24-31).
Appellant’s claims are directed to a “system for manufacturing.”
The system of claim 1 manufactures a stent from a metallic tubular member.
The system of claim 22, the only other independent claim, manufactures a
metallic tubular member.
The “metallic tubular member” is the article worked upon by
mechanism 10.
The Specification equates the word “system” with a “mechanism”
(Spec. 5:27-29).
Claim 1 states that the invention comprises a manufacturing method,
i.e., “the invention comprising manufacturing the stent from a metallic
tubular member by removing material from the metallic tubular member to
form a plurality of holes there through according to a predetermined
pattern.”
Claim 1 recites that the “system” further comprises a media flow, i.e.,
a flow of fluid.
Claim 22 recites that the “system” comprises, among other things, the
metallic tubular member, i.e., the article worked upon by the laser apparatus.
B. Principles of Law
As stated in All Dental prodx,
The primary purpose of the definiteness requirement is
to ensure that the claims are written in such a way that they
give notice to the public of the extent of the legal protection
afforded by the patent, so that interested members of the
public, e.g., competitors of the patent owner, can determine
whether or not they infringe.

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Appeal 2009-000638
Application 10/190,975

All Dental Prodx, LLC v. Advantage Dental Products, Inc., 309 F.3d 774,
779-80 (Fed. Cir. 2002).
As stated in IPXL Holdings,
The Board of Patent Appeals and Interferences (“Board”) of the
PTO . . . has made it clear that reciting both an apparatus and a
method of using that apparatus renders a claim indefinite under
section 112, paragraph 2. Ex parte Lyell, 17 USPQ2d 1548
(1990). As the Board noted in Lyell, “the statutory class of
invention is important in determining patentability and
infringement.” Id. at 1550 (citing In re Kuehl, 475 F.2d 658,
665 (1973); Rubber Co. v. Goodyear, 9 Wall. 788, 76 U.S. 788,
796, 19 L.Ed. 566 (1869)). The Board correctly surmised that,
as a result of the combination of two separate statutory classes
of invention, a manufacturer or seller of the claimed apparatus
would not know from the claim whether it might also be liable
for contributory infringement because a buyer or user of the
apparatus later performs the claimed method of using the
apparatus. Id. Thus, such a claim “is not sufficiently precise to
provide competitors with an accurate determination of the
‘metes and bounds' of protection involved” and is “ambiguous
and properly rejected” under section 112, paragraph 2. Id. at
1550-51.
IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir.
2005).
35 U.S.C. § 101 delineates four categories of statutory subject matter:
"processes," "machines," "manufactures" or "compositions of matter." A
claim is indefinite if it does not reasonably apprise those skilled in the art of
the statutory class of invention the claim is directed to or if the claim
attempts to bridge more than one statutory class of invention. See IPXL
Holdings, 430 F.3d at 1384 (claim attempting to claim both a system and a
method of using that system held indefinite); In re Rishoi, 197 F.2d 342, 345
(CCPA 1952)("[T]here is no patentable combination between a device and
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Appeal 2009-000638
Application 10/190,975

the material upon which it works."); In re Smith, 36 F.2d 302, 303 (CCPA
1929)(“It will be borne in mind that it has been long established that a
person may not patent a combination of device and material upon which the
device works, nor limit other persons from the use of similar material by
claiming a device patent.”).
C. Analysis
Appellant’s claims are directed to a “system,” which the Specification
seems to indicate is a “mechanism” or apparatus, but the claims
ambiguously refer to the “invention” as a method of manufacturing (claim 1)
and also recite that the article worked upon (metallic tubular member) by the
apparatus is part of the “system” (claim 22). Claim 1 further recites a media
flow as part of the “system.” The claims appear to mix statutory classes of
invention in such a way that prevents interested members of the public, such
as competitors, from accurately determining the “‘metes and bounds’ of
protection involved.” IPXL Holdings, 430 F.3d at 1384 (quoting Ex parte
Lyell, 17 USPQ2d 1548, 1550-51 (1990).).
D. Conclusion
Because we cannot determine the metes and bounds of the claimed
subject matter, we enter a new ground of rejection under 35 U.S.C. § 112, ¶
2. Because deciding the issues relevant to the obviousness rejections would
require improper speculation with regard to the meaning of the claims, we
do not sustain the rejections under 35 U.S.C. § 103(a) over Tessier and
Schell and Tessier, Schell, and Wright.
VII. DECISION
The decision of the Examiner is reversed and a new ground of
rejection entered with regard to all the claims on appeal.
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Appeal 2009-000638
Application 10/190,975

VIII. 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. . . .
(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))

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