Ex parte Merdan
Appeal 2010009279, Appl. No. 10/190,975, Tech. Center 1700
Decided August 31, 2010
The subject matter of the application was a system for manufacturing a stent, including a laser system 20 which cut out a pattern from a tube 12 mounted on a movable shaft 18. According to the Applicant, the inventive features included securing the tube in a vertical orientation, and a liquid flow 26, both of which assisted in removing debris during the cutting process.
The claims on appeal were rejected under § 103, but the Board did not reach the merits of the rejection. Instead, the Board raised a new ground of rejection under § 112, ¶ 2, finding that the "mechanism" limitation in each independent claim was indefinite.
The two limitations are issue were:
- 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;
- 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;
When an applicant has not given notice to the public [by using the phrase 'means for'] that his or her purely functional claim element is to be limited to the application of § 112, sixth paragraph, a first USPTO concern is that the claim is indefinite.
The Board then used an alternative rationale to reject under In re Donaldson:
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. 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)
In the Appeal Brief, the Applicant pointed to a section of the spec as disclosing the structure. However, the Board found the spec merely stated the function ("the tube 12 is moved via the predetermined movement pattern of shaft 18"), and did not "identify the specific mechanisms or structures that impart the disclosed movements."
My two cents: A straightforward application of § 112, ¶ 6. No structure = indefinite. I see a lot of means-plus-function claims shot down in computer and electronics applications, but this was one of the few times I've seen that happen in a mechanical case.
The interesting aspect to me is how to draft a claim that avoids this rejection. The claim recited "an optical system including a laser, said optical system adapted to form a cutting spot on a wall of a tubular member ... and to modulate the laser energy according to a predetermined pattern." The second independent claim included a whereby clause that captured the important aspect of vertical removal: "whereby the laser system removes material from at least a portion of the wall of the tubular member in both vertical and circumferential directions."
Could you just tack the whereby clause onto the end of the claim, to capture the inventive vertical removal aspect while avoiding explicitly claiming the movement?
What about a method claim with the step "moving the optical system or the securement device"? Could you get away with that, or would it be vulnerable to an § 112, 1st rejection? I think you have a better chance of overcoming enablement because you can rely on the knowledge of a POSITA. Perhaps you could successfully argue that even though you didn't disclose a computer-controlled motor for moving the shaft in a pattern, a POSITA would know how to do that.
One more interesting tidbit about this case. This is the second appeal for this case, and the Applicant still doesn't have a Board decision on the prior art rejections. In the first appeal, the merits weren't reached because the Board rejected the hybrid method/system claims as indefinite under IPXL Holdings v. Amazon.com. On return from the first appeal, the Applicant amended the claims to clearly claim a system rather than a method, by reciting the "optical system," the "securement device" and the "mechanism adapted to move." The Applicant appealed at the Examiner's prior art rejections at the first opportunity. But the § 112, ¶ 6 rejection raised by the Board once again prevented a decision on the prior art rejection.