Ex Parte Bayer et al

Patent Trial and Appeal BoardAug 9, 2017

13764267 (P.T.A.B. Aug. 9, 2017)

United States Patent and Trademark Office 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. 13/764,267 02/11/2013 Ullrich Bayer 10155-100360 7428 59538 7590 08/11/2017 Wagenknecht IP Law Group, PC 12396 WORLD TRADE DRIVE SUITE 312 SAN DIEGO, CA 92128 EXAMINER TOLAN, EDWARD THOMAS ART UNIT PAPER NUMBER 3725 NOTIFICATION DATE DELIVERY MODE 08/11/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): office @ wageniplaw. com docketing @ wageniplaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ULLRICH BAYER, BERND BLOCK, BAERBEL BECHER, and DANIEL LOOTZ (Applicant: Biotronik AG) Appeal 2016-005894 Application 13/764,267 Technology Center 3700 Before ROBERT E. NAPPI, JOSEPH P. LENTIVECH, and SCOTT B. HOWARD, Administrative Patent Judges. LENTIVECH, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1—5 and 10—15. Claims 6—9 have been canceled. See App. Br. 20 (Claims App’x). We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We reverse. Appeal 2016-005894 Application 13/764,267 STATEMENT OF THE CASE Appellant’s Invention Appellant’s invention generally relates to “a method for producing an implant, particularly an intraluminal endoprosthesis.” Spec. 1:11—12. Claim 1, which is illustrative of the claimed invention, reads as follows: 1. A method for producing an implant, particularly an intraluminal endoprosthesis, from a hollow cylindrical semifinished article, wherein the semifinished article contains magnesium or a magnesium alloy, said method comprising the following steps: a) preparing the semifinished article, and b) shaping the semifinished article at a temperature of between 250°C and 550°C using a tool, which has a metallic lubricant containing gallium and/or a gallium compound on at least a part of its surface that will come into contact with the semifinished article and diffuse into the surface of the semifinished article to become alloyed with the magnesium or magnesium alloy. References The Examiner relies on the following prior art in rejecting the claims: Buckley et al. Oishi et al. Furst et al. Stork US 3,391,080 US 2009/0032151 Al US 2009/0200177 Al US 2011/0126604 Al July 2, 1968 Feb. 5, 2009 Aug. 13, 2009 June 2, 2011 Rejections Claims 1, 2, 4, 5, 10, 11, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Stork and Oishi. Final Act. 2—3. 2 Appeal 2016-005894 Application 13/764,267 Claim 3 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Stork, Oishi, and Buckley. Final Act. 3. Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Stork, Oishi, and Furst. Final Act. 3^4. Dispositive Issue on Appeal Did the Examiner err by finding that the combination of Stork and Oishi teaches or suggests [sjhaping the semifinished article at a temperature of between 250°C and 550°C using a tool, which has a metallic lubricant containing gallium and/or a gallium compound on at least a part of its surface that will come into contact with the semifinished article and diffuse into the surface of the semifinished article to become alloyed with the magnesium or magnesium alloy, as recited in claim 1? ANALYSIS Claim 1 Regarding claim 1, the Examiner finds Stork teaches: [A] process for warm forming aluminum, magnesium and their alloys wherein a workpiece is dip coated or sputtered with a metal lubricant coating and the lubricant coating may diffuse into the workpiece. Stork sets forth a magnesium workpiece and that diffusion is desirable when the coating is not to separate from the workpiece substrate. Stork discloses diffusion of lubricant coatings and an alloy formation at the workpiece surface of about 40 to 1000 microinches. Stork discloses that tin, copper, aluminum and alloys of tin and aluminum, including Gallium are 3 Appeal 2016-005894 Application 13/764,267 chosen for warm forming applications. Stork discloses that the workpiece is a sheet material that is used in a drawing application but does not disclose a cylindrical hollow workpiece. Final Act. 2 (citing Stork || 3, 6, 10, 14—17, 28, 30) (internal citations omitted). The Examiner finds Oishi teaches “warm forming of a tubular magnesium workpiece in a drawing application with lubrication” and “that similar extruding operations of magnesium tubing are known.” Id. (citing Oishi || 44, 45, 54, 66, 72) (internal citations omitted). Based on these findings, the Examiner concludes the combination of Stork and Oishi teaches or suggests the limitations recited in claim 1. Id. Appellant contends the combination of Stork and Oishi fails to teach or suggest [sjhaping the semifinished article at a temperature of between 250°C and 550°C using a tool, which has a metallic lubricant containing gallium and/or a gallium compound on at least a part of its surface that will come into contact with the semifinished article and diffuse into the surface of the semifinished article to become alloyed with the magnesium or magnesium alloy, as recited in claim 1. App. Br. 13—17. In particular, Appellant contends neither Stork nor Oishi teaches or suggests shaping a semifinished article using a tool having a metallic lubricant containing gallium and/or a gallium compound on at least part of its surface, as required by claim 1. App. Br. 16. We find Appellant’s contention persuasive. As noted by Appellant (App. Br. 16), Stork teaches application of an alloy lubricant to the workpiece. Stork || 17, 31—33; see also Final Act. 2 (the Examiner finding Stork teaches “a process for warm forming aluminum, magnesium and their alloys wherein a workpiece is dip coated or sputtered with a metal lubricant coating” (emphasis added)). Similarly, Oishi teaches “[i]t is preferred that 4 Appeal 2016-005894 Application 13/764,267 the pipe blank is lubricated at least its front end position before drawing.” Oishi 166 (emphasis added). Accordingly, we do not sustain the Examiner’s rejection of claim 1; and claims 2, 4, 5, 10, 11, 14, and 15, which depend therefrom. Claims 3, 12, and 13 depend from claim 1 and stand rejected under 35 U.S.C. § 103(a) based on Oishi, Stork, and Buckley (claim 3) or (Furst (claims 12 and 13). The Examiner does not find Buckley or Furst cures the deficiencies in the teachings of Oishi and Stork discussed above with respect to claim 1. Accordingly, we do not sustain the Examiner’s rejection of claims 3,12, and 13 for the reasons discussed supra. Because we find this issue to be dispositive as to the rejection of claims 1—5 and 10—15, we do not reach Appellant’s remaining contentions. DECISION We reverse the Examiner’s rejection of claims 1—5 and 10—15. REVERSED 5