11157833 (B.P.A.I. Mar. 26, 2012)

Ex Parte Palumbo et al

Board of Patent Appeals and InterferencesMar 26, 2012

11157833 (B.P.A.I. Mar. 26, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/157,833 06/22/2005 Gino Palumbo PALU3004 9743 23364 7590 03/26/2012 BACON & THOMAS, PLLC 625 SLATERS LANE FOURTH FLOOR ALEXANDRIA, VA 22314-1176 EXAMINER LANG, AMY T ART UNIT PAPER NUMBER 3731 MAIL DATE DELIVERY MODE 03/26/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte GINO PALUMBO, PETER KENG-YU LIN, KLAUS TOMANTSCHGER, and FRED SMITH __________ Appeal 2010-012104 Application 11/157,833 Technology Center 3700 __________ Before LORA M. GREEN, MELANIE L. McCOLLUM, and ERICA A. FRANKLIN, Administrative Patent Judges. McCOLLUM, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a tube manufacturing method. The Examiner has rejected the claims as anticipated. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2010-012104 Application 11/157,833 2 STATEMENT OF THE CASE Claims 17 and 31 are pending and on appeal (App. Br. 2). We will focus on claim 17, the only independent claim on appeal, which is set forth in the Claims Appendix to the Appeal Brief (id. at 8). Claims 17 and 31 stand rejected under 35 U.S.C. § 102(e) as anticipated by Gregorich et al. (US 7,344,560 B2, Mar. 18, 2008) (Ans. 3). In particular, the Examiner found that “Gregorich teaches providing a metal tube or bar, a bulk metal block” (id.). Appellants argue: GREGORICH does not disclose or suggest a bulk metal block. Rather, GREGORICH processes materials that are hollow. . . . Thus, GREGORICH does not (a) provide a bulk metal block that is quasi-isotropic in all directions, or (b) machine a quasi- isotropic bulk metal block by cutting and hollowing out the bulk metal block material to provide a precursor tube, as claimed. (App. Br. 4.) ANALYSIS Gregorich discloses processing “a hollow metallic member (e.g., a rod or a bar)” (Gregorich, col. 8, ll. 45-46). Even if we assume that the term “block” can encompass a hollow member, we do not find that a skilled artisan would consider the term “bulk metal block” to encompass a hollow metallic member, when the term is read in light of the Specification and claims. In particular, claim 17 recites “hollowing out” the bulk metal block to provide a tube. In addition, the Specification describes manufacturing stents “by a process for machining . . . tubular members from bulk metal blocks,” stating that the “stent precursor is cut from the metal feedstock and Appeal 2010-012104 Application 11/157,833 3 suitably hollowed out” (Spec. 12-13). Thus, in the context of the present Specification and claims, we agree with Appellants that the “bulk metal block” suggests a solid material and does not encompass Gregorich’s hollow metallic member. We therefore reverse the anticipation rejection. REVERSED dm