10885509 (B.P.A.I. Jul. 27, 2012)

Ex Parte Bushko et al

Board of Patent Appeals and InterferencesJul 27, 2012

10885509 (B.P.A.I. Jul. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte DARIUSZ ANTONI BUSCHKO, MEHDI KAVEH, JOHN P. VOCCIO, DAVID D MADURA, and ALEXANDER PEREZ ____________ Appeal 2010-004330 Application 10/885,509 Technology Center 2800 ____________ Before LANCE LEONARD BARRY, THU A. DANG, and GREGORY J. GONSALVES, Administrative Patent Judges. GONSALVES, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004330 Application 10/885,509 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the rejection of claims 1-17 (App. Br. 1). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The Invention Exemplary Claim 1 follows: 1. A coil comprising: a pair of distal end portions; and a center portion positioned between the pair of distal portions, the average mechanical density of the center portion being substantially equal to the average mechanical density of the distal end portions. The Examiner rejected claims 1-3, 9, and 15-17 under 35 U.S.C. § 102(b) as being anticipated by the Joshi ’772 patent (U.S. 5,585,772) (Ans. 4-5). The Examiner rejected claim 8 under 35 U.S.C. §103(a) as being unpatentable over the Joshi ’772 patent and the Joshi ’919 patent (U.S. 5,482,919) (Ans. 5-6). The Examiner rejected claims 11-13 under 35 U.S.C. §103(a) as being unpatentable over the Joshi ’772 patent and Meyer (U.S. 4,747,668) (Ans. 6). FACTUAL FINDINGS We adopt the Examiner’s factual findings as set forth in the Answer (Ans. 3, et seq.). Appeal 2010-004330 Application 10/885,509 3 ISSUE Appellants’ responses to the Examiner’s positions present the following issue: Did the Examiner err in ruling that the Joshi ’772 patent discloses a coil having “the average mechanical density of the center portion being substantially equal to the average mechanical density of the distal end portions,” as recited in independent claim 1? ANALYSIS We disagree with Appellants’ assertions regarding the Examiner’s rejection of the claims set forth in the Appeal Brief (App. Br. 6-9). We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Answer (Ans. 3-11) in response to arguments made in Appellants’ Appeal Brief. We concur with the conclusion reached by the Examiner that claims 1-3, 9, and 15-17 are anticipated, and claims 8 and 11- 13 are obvious. We highlight and address certain findings and arguments below. Appellants contend that the Examiner erred in rejecting independent claim 1 as anticipated because the Joshi ’772 patent does not disclose “a coil including ‘a center portion positioned between the pair of distal portions, the average mechanical density of the center portion being substantially equal to the average mechanical density of the distal end portions’ . . .” (App. Br. 6). In support of their contention, Appellants argue that “[t]here is no indication that the mandrel of the ’772 patent is configured so as to limit the variation Appeal 2010-004330 Application 10/885,509 4 of compressive forces and mechanical density between portions of the disclosed coils” (Id. at 7). Appellants’ arguments, however, are not commensurate in scope with claim 1 because claim 1 does not require a configuration to limit the variation of compressive forces and mechanical density between coil portions. Indeed, although Appellants’ Specification discloses various coil configurations to achieve average mechanical densities for the center and end portions of the coil that are substantially equal, claim 1 does not require any of these particular configurations. In other words, any prior art coil configuration having two end portions and a center portion that have substantially equal average mechanical densities satisfies the claim limitation in dispute. And as explained by the Examiner, the coil configuration disclosed in the Joshi ’722 patent satisfies the disputed claim limitation because it has the same size and material throughout (Ans. 9). Accordingly, we find no error in the Examiner’s anticipation rejection of independent claim 1. We also find no error in the Examiner’s anticipation and obviousness rejections of the claims dependent from claim 1 because Appellants did not set forth any separate patentability arguments for the dependent claims (See App. Br. 8-9).1 1 Appellants also state that the Examiner should withdraw the double patenting rejections of claims 4-7, 10, and 14 because they filed a terminal disclaimer and should withdraw the 112 rejection of claim 1 because they amended claim 1 to address the rejection (App. Br. 9). But these issues relate to petitionable matters and not to appealable matters, because they relate to the manner in which examination has been conducted. See In re Schneider, 481 F.2d 1350, 1356-57 (CCPA 1973) and In re Mindick, 371 F.2d 892, 894 (CCPA 1967). See also MPEP § 1003 (“All unusual Appeal 2010-004330 Application 10/885,509 5 DECISION We affirm the Examiner’s decision rejecting claims 1-3, 9, and 15-17 as anticipated and claims 8 and 11-13 as obvious. 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 pc questions of practice may be referred to the Technology Center Directors”) and 1201. Accordingly, we will not consider these issues.