Appeal No. 99-0228
Application No. 08/721,504
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
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