Ex parte Hansen

Board of Patent Appeals and Interferences

Jul 28, 1999

08721504 (B.P.A.I. Jul. 28, 1999)

Application for patent filed September 26, 1996. 1
According to appellant, this application claims the benefit
under 35 U.S.C. § 119(e) of the filing date of Provisional
Application No. 60/005,476, filed October 16, 1995.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte PETER T. HANSEN
__________
Appeal No. 99-0228
Application 08/721,5041
__________
ON BRIEF
__________
Before MEISTER, ABRAMS, and FRANKFORT, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 99-0228
Application No. 08/721,504
2
This is an appeal from the decision of the examiner
finally rejecting claims 1-16, which constitute all of the
claims of record in the application.
The appellant's invention is directed to a hole cutting
apparatus (claims 1-12) and method (claims 13-16). The
invention is illustrated by reference to claims 1 and 13,
which read as follow:
1. A hole cutting apparatus, comprising:
a hollow tube having:
a distal end terminating in a cutting edge;
a proximal end;
a lumen, extending between said distal and proximal
ends, said lumen being of smaller diameter near said
distal end than at said proximal end; and
ejection means constructed and arranged for urging a
slug of material cut by said hollow tube from a piece of
said material and lodged in said distal end towards said
proximal end.
13. In the method of cutting a hole in material having a
thickness by forcing the distal end of a hollow cutting tube
having distal and proximal ends through said material to
remove a discard slug having said thickness of said material,
removing said tube from said material, and ejecting said slug
from said tube, the improvement comprising:
providing said cutting tube in the form of a hollow tube
having a lumen, extending between said distal and proximal
ends, said lumen being of smaller diameter near said distal
end than at said proximal end; and
Appeal No. 99-0228
Application No. 08/721,504
3
ejecting slugs of material from said proximal end.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
MacGregor 2,424,474 Jul.
22, 1947
Dann 2,463,455 Mar.
1, 1949
THE REJECTION
Claims 1-16 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Dann in view of MacGregor.
OPINION
Rather than reiterate the examiner’s explanation of the
rejection and the appellant’s arguments in response thereto,
we refer to the Examiner’s Answer (Paper No. 10) and the
Appeal Brief (Paper No. 7).
Appeal No. 99-0228
Application No. 08/721,504
4
The test for obviousness is what the combined teachings
of the prior art would have suggested to one of ordinary skill
in the art. See, for example, In re Keller, 642 F.2d 413,
425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima
facie case of obviousness, it is incumbent upon the examiner
to provide a reason why one of ordinary skill in the art would
have been led to modify a prior art reference or to combine
reference teachings to arrive at the claimed invention. See
Ex parte Clapp, 227 USPQ 972, 973 (Bd. Pat. App. & Int. 1985).
To this end, the requisite motivation must stem from some
teaching, suggestion or inference in the prior art as a whole
or from the knowledge generally available to one of ordinary
skill in the art and not from the appellant's disclosure.
See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert.
denied, 488 U.S. 825 (1988).
The appellant’s invention is directed to hollow punches
and hole cutters, and focuses on the problem of removing the
cut-out portion of a substrate (the slug) from the substrate,
especially when the substrate is a medical catheter or the
like. The invention is manifested in independent apparatus
Appeal No. 99-0228
Application No. 08/721,504
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claim 1 by the recitation of a hollow tube terminating at its
distal end in a cutting surface and being of a smaller
diameter near the distal end than at the proximal end, and
ejection means for urging the slug cut by the hollow tube and
lodged in the distal end of the tube toward the proximal end.
Independent method claim 13 contains the same limitation.
Dann, the primary reference, discloses a punch for
cutting slugs from a semisolid material such as bacterial
culture media and forming them into cups into which liquid can
be placed. The apparatus for accomplishing this comprises
coaxial inner (1) and outer (4) hollow tubes, each of which
terminates at its distal end in a cutting edge (2 and 6). Air
inlet holes (7) are provided in the outer tube at a point
adjacent to the cutting edge, and a source of vacuum is
connected to the proximal end of the inner tube to pull the
slug through the inner tube. In operation, the cutting edge
of the outer tube creates a disc-shaped slug form the
semisolid media which, when pulled through the inner tube by
the vacuum, is formed into a cup-like configuration inasmuch
as the distal opening in the inner tube is of a lesser
diameter than the slug. Dann does not disclose a single
Appeal No. 99-0228
Application No. 08/721,504
6
hollow tube having a diameter that is less near the distal end
than at the proximal end.
MacGregor is directed to a hollow punch for piercing soft
materials such as leather. The punch has a sharp edge at its
distal end and the hollow opening tapers towards the cutting
edge so that the slugs can gradually move along the interior
of the punch without becoming wedged therein (column 2). It
is the examiner’s position that it would have been obvious to
one of ordinary skill in the art to provide the Dann punch
with a tapered interior opening in view of the teachings of
MacGregor,
suggestion being found in permitting the slugs to move through
the Dann interior opening without becoming wedged therein. We
do not agree.
One of the key aspects of the Dann invention is to
subject the slug to a more restricted opening as it moves away
from the cutting edge of the tube, in order to cause it to
become cup-shaped. Eliminating this feature would destroy the
Dann invention, which in our view would operate as a
disincentive to make the changes proposed by the examiner. In
addition, such a modification would appear to require a
Appeal No. 99-0228
Application No. 08/721,504
7
wholesale reconstruction of the Dann device, which constitutes
a second disincentive. The mere fact that the prior art
structure could be modified does not make such a modification
obvious unless the prior art suggests the desirability of
doing so. See In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). We fail to perceive any teaching,
suggestion or incentive in either of the applied references
which would have led one of ordinary skill in the art to
modify the Dunn punch in such a fashion as to meet the terms
of claim 1. These references fail to establish a prima facie
case of obviousness with regard to the subject matter recited
in
independent claims 1 and 13, and we therefore will not sustain
the rejection of these claims or, it follows, of claims 2-12
and 14-16, which depend therefrom.
NEW REJECTION
Pursuant to our authority under 37 CFR § 1.196(b), we
make the following new rejection:
Claims 13 and 14 are rejected under 35 U.S.C. § 102(b) as
being anticipated by MacGregor.
Appeal No. 99-0228
Application No. 08/721,504
8
The preamble of claim 13 establishes that the invention
is directed to an improvement in the method of cutting a hole
in material by forcing the distal end of a hollow cutting tube
through a material to remove a discard slug, removing the tube
from the material, and ejecting the slug from the tube. The
improvement comprises, according to the body of the claim,
providing said cutting tube in the form of a hollow
tube having a lumen, extending between said distal
and proximal ends, said lumen being of smaller
diameter near said distal end than at said proximal
end; and
ejecting slugs of material from said proximal end.
In Figures 5-8 MacGregor discloses a punch comprising a
cutting tube in the form of a hollow tube (18) having a lumen
(20) extending betwen the proximal and distal ends and being
of a smaller diameter near the distal end than at the proximal
end (column 2, lines 8-11). To the extent that the preamble
is not considered as establishing that slugs of material are
ejected from the proximal end of the prior art punches to
which the claimed method is an improvement, it is apparent
that such is the case in the MacGregor punch (column 2, lines
12-15). Thus, the method inherent in the use of the MacGregor
punch anticipates the method recited in claim 13. With regard
Appeal No. 99-0228
Application No. 08/721,504
9
to dependent claim 14, a shoulder (unnumbered) separates the
tapered first portion (21) extending from the cutting edge
from a second portion (20) extending to the proximal end. It
appears clear to us from the disclosure that the cross
sectional configuration of the first portion is “substantially
congruent” with the cross sectional shape of the slug cut by
the edge (19), and the cross sectional configuration of the
seond portion is of such increased size as to permit free
travel of the slug, which is of lesser size.
SUMMARY
The examiner’s rejection is not sustained.
The decision of the examiner is reversed.
A new rejection of claims 13 and 14 under 35 U.S.C. §
102(b) has been entered.
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR
Appeal No. 99-0228
Application No. 08/721,504
10
§ 1.196(b) provides that, “A new rejection shall not be
considered final for purposes of judicial review.”
37 CFR § 1.196(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 proceedings (§ 1.197(c)) as
to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 99-0228
Application No. 08/721,504
11
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED § 1.196(b)
James M. Meister )
Administrative Patent Judge )
)
)
)
Neal E. Abrams ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Charles E. Frankfort )
Administrative Patent Judge )
tdc
Appeal No. 99-0228
Application No. 08/721,504
12
David V. Trask
TRASK BRITT and ROSSA
P.O. Box 2550
Salt Lake City, UT 84110