BONE FOAM, LLC

Patent Trials and Appeals Board

May 29, 2020

13766063 - (D) (P.T.A.B. May. 29, 2020)

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.
13/766,063 02/13/2013 Doug Parsell 19757.2 2492
22913 7590 05/29/2020
Workman Nydegger
60 East South Temple
Suite 1000
Salt Lake City, UT 84111
EXAMINER
HICKS, VICTORIA J
ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
05/29/2020 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):
Docketing@wnlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DOUG PARSELL and CHAD ROBRAN
____________

Appeal 2019-006225
Application 13/766,063
Technology Center 3700
____________

Before HUBERT C. LORIN, NINA L. MEDLOCK, and
MATTHEW S. MEYERS, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellant1 seeks our review under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 3, 8–18, and 21–27, which are all the pending claims
in the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
We AFFIRM-IN-PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Bone Foam, Inc., as the real party in interest.
Appeal Br. 3.
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THE INVENTION
The claimed subject matter relates to “devices and methods for use in
removing biological debris from patient extremities” (Spec. para. 2). The
independent claims are claims 1, 17, and 21. Claim 1 is illustrative, and is
reproduced below:
1. An apparatus for supporting an extremity during tissue
debridement and capturing fluid and tissue resulting from tissue
irrigation and debridement, comprising:
[(a)] an extremity-supporting base configured to support an
extremity of a patient during tissue irrigation and debridement,
said extremity-supporting base having
[(a1)] a proximal end positioned nearest a patient’s body
during use,
[(a2)] a distal end opposite said proximal end,
[(a3)] a bottom surface,
[(a4)] a support surface, and
[(a5)] a total of two opposing sidewalls extending above
the support surface and longitudinally along sides of the
support surface,
[(b)] the support surface and the two opposing sidewalls
forming a trough of fixed length longitudinally extending from
a point near the proximal end of the extremity-supporting base
to the distal end of the extremity-supporting base and being
adapted for placement and support of the extremity thereon,
[(c)] said extremity-supporting base having a height that
decreases from a point near said proximal end to said distal end
so that said trough slopes downwardly between said proximal
end and said distal end,
[(d)] the extremity-supporting base being open at the proximal
end and open at the distal end to enable fluid to move distally
along the trough toward and beyond the distal end of the
trough;
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[(e)] a barrier shroud positionable and adapted so as to at least
partially enclose an extremity supported by said support
surface; and
[(f)] a drainage opening disposed in said barrier shroud that
provides controlled drainage of fluid during tissue irrigation
and debridement, the drainage opening being positioned to
receive fluid passing distally beyond a distal end of the trough.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Morris US 4,974,604 Dec. 4, 1990
Holloway US 5,381,562 Jan. 17, 1995
Bowman US 5,439,008 Aug. 8, 1995
Walle US 5,584,303 Dec. 17, 1996
Harty US 6,405,389 B1 June 18, 2002
Matloub US 7,678,092 B2 Mar. 16, 2010
Strauch US 2011/0297164 A1 Dec. 8, 2011

THE REJECTIONS2
The following rejections are before us for review:
1. Claims 1, 3, 9, 11–14, and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Holloway and Harty.
2. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Holloway, Harty, and Morris.
3. Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Holloway, Harty, and Matloub.
4. Claims 15, 17, 18, and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Holloway, Harty, and Walle.

2 The rejections under 35 U.S.C. § 112, first paragraph, are withdrawn.
Ans. 23–24.
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5. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Holloway, Harty, Walle, and Bowman.
6. Claims 21, 22, 25, and 27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Holloway, Harty, Walle, and Strauch.
7. Claim 24 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Holloway, Harty, and Strauch.
8. Claim 27 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.

ANALYSIS
The rejection of claims 1, 3, 9, 11–14, and 23 under 35 U.S.C. § 103(a) as
unpatentable over Holloway and Harty.
Independent claim 1 recites an “extremity-supporting base being . . .
open at the distal end to enable fluid to move distally along the trough
toward and beyond the distal end of the trough.”
The Examiner’s position is that Holloway’s rectangular basin 10
meets this limitation because it enables fluid to move through hose 46 and
“hose 46 is taught to extend beyond” the distal end of the basin. Final
Act. 10. The Examiner provides an annotated version of Figure 5 of
Holloway to show how Holloway’s basin and hose meets the disputed
limitation.
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Examiner’s annotated version of Figure 5 of Holloway. Final Act. 11.
The Examiner has identified hose 46 as the location in Figure 5 that is
an “open distal end.” See id. at 3 (“the distal end (as defined in the
annotated copy of Figure 5 provided below) is open at the location defined
‘open distal end’ in the annotated copy of Figure 5.”)
Appellant argues, inter alia, that Holloway’s rectangular basin is not
“open at the distal end” as required by claim 1. Appeal Br. 11. According
to Appellant, the Examiner has construed this limitation unreasonably
broadly, and under a proper interpretation “open at the distal end” excludes a
base having a sidewall at the distal end, such as Holloway’s basin. Id.; see
also Reply Br. 8–9.
We agree with Appellant.
The Specification discloses two embodiments of an extremity-
supporting base. Spec. paras. 16–17. In the embodiment of Figure 1, the
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extremity-supporting base includes “a downward sloping concave trough
with a dam and drainage opening at a distal end.” Id. paras. 16, 29–33. In
this embodiment, “base dam 19 is positioned at distal end 12 in close
proximity to base drainage opening 18” as shown in Figure 1. Id. para. 31.
By contrast, “Figure 2 is an alternative embodiment of an extremity-
supporting base having a downward sloping concave trough and being open
at a distal end.” Id. para. 17 (emphasis added).3
In light of the Specification’s description of an extremity-supporting
base being open at a distal end by way of contradistinction to a base having a
base dam at the distal end, we agree with Appellant that the claim 1
limitation “the extremity-supporting base being . . . open at the distal end”
excludes a base having a dam or sidewall at the distal end.
Holloway describes rectangular basin 10 as “a generally open-top pan
having a contoured bottom 14 and having its interior and exterior surfaces
defined by a substantially continuous sidewall 12 which describes the four
side panels 70, 72, 74 and 76.” Holloway 4:66–5:2. Holloway further
discloses:
As seen in FIGS. 1 and 2 the sidewall 12 describes a front end
panel 70, an opposing back end panel 72 and a pair of opposing
longitudinal side panels 74, 76. Each of the panels 70, 72, 74
and 76 are in continuous relationship with one another, with the
bottom 14 and with the sidewall 12.

3 In the embodiment of Figure 2, base 20 does not have a base dam or a base
drainage opening at the distal end, which allows base 20 to “be used with
and support a barrier shroud having a shroud dam and a shroud drainage
opening that are positioned beyond distal end 22 of base 20.” Id. para. 35.
This is also reflected in claim 1, which recites “a drainage opening disposed
in said barrier shroud.”
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Id. at 5:11–16.
We agree with Appellant that the Examiner has unreasonably broadly
construed the limitation “open at the distal end” in claim 1 as encompassing
Holloway’s rectangular basin having sidewalls on each side. In particular,
instead of being open at the distal end, Holloway’s basin 10 includes back
end panel 72. The Examiner’s position – that the presence of hose 46 at the
distal end implies that Holloway’s basin 10 is “open at the distal end” – is
unreasonably broad in light of the Specification and the language of claim 1.
Although Holloway’s hose 46 may “enable fluid to move distally . . .” as the
Examiner finds, Holloway’s basin does not meet the claimed structural
limitation of the extremity-supporting base being “open at the distal end.”
For the foregoing reasons, the rejection of claim 1 and claims 3, 9,
11–14, and 23 depending therefrom is not sustained.

The rejection of claims 15, 17, 18, and 26 under 35 U.S.C. § 103(a) as
unpatentable over Holloway, Harty, and Walle.
Claim 17 recites an extremity-supporting base forming a trough, and
“wherein the trough includes a high point disposed near the proximal end of
the extremity-supporting base and a low point at the distal end of the
extremity-supporting base, the trough sloping downward from the high point
to the low point at a constant angle of decline.” The Examiner finds that
Holloway discloses this limitation as shown in the Examiner’s annotated
version of Figure 5 of Holloway, reproduced below:
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Examiner’s annotated version of Figure 5 of Holloway. Final Act. 19.
Appellant argues, inter alia, that “[i]t is questionable whether the ‘low
point’ as pointed to by the Examiner could reasonably be said to be ‘near’
the distal end, but it is unreasonable to interpret it as being ‘at the distal
end.’” Appeal Br. 12.
Responding to Appellant’s argument in the Answer, the Examiner
states:
While Appellant argues that the low point of Holloway cannot
reasonably be said to be “near” the distal end, the examiner
asserts that the low point (as defined in the annotated copy of
Figure 5 provided below) of Holloway is actually positioned
within (and therefore, must be “near”) the distal end (as defined
in the annotated copy of Figure 5 provided below). The
examiner again emphasizes that an end is defined to mean “the
part of an area that lies at the boundary” (https://www.merriam-
webster.com/dictionary/end). Therefore, the claimed “distal
end” does not have to be a terminal point (as Appellant argues)
but instead, can constitute an area (consistent with the “distal
end” defined by the examiner in the annotated copy of Figure 5
below).
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Ans. 28–29 (reproducing the same annotated version of Holloway’s
Figure 5) (emphasis omitted).
The difficulty with the Examiner’s position is that claim 17 recites “a
low point at the distal end” of the base and not merely “near” the distal end.
Holloway’s sloping surface 22 of platform 20 clearly does not reach the
distal end of Holloway’s base 10. The low point of Holloway’s elevated
platform portion 20 is separated from the distal end by the width of channel
40, which includes sump 44. This is more easily seen in Figure 2 of
Holloway, reproduced below:

Figure 2 of Holloway.

Holloway’s Figure 2 depicts the same embodiment as Figure 5, on which the
Examiner relies, and clearly shows that Holloway’s elevated platform 20
does not extend to the distal end of basin 10 (top of Figure 2). See Holloway
6:48–52 (“The top surface of the elevated platform portion 22 preferably
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slopes downwardly from the seat 36 toward the channel 40 to direct liquid
flowing from the elevated platform portion 20 during usage to the channel.”)
For the foregoing reasons, the rejection of claim 17 and claims 18 and
26 depending therefrom is not sustained.
Claim 15 depends directly from independent claim 1. The Examiner
does not rely on the additional reference (Walle) in any way that would cure
the deficiency in the rejection of independent claim 1 discussed above.
Thus, the rejection of claim 15 is not sustained for the reasons given above
for not sustaining the rejection of independent claim 1 from which claim 15
depends.
The rejection of claims 21, 22, 25, and 27 under 35 U.S.C. § 103(a) as
unpatentable over Holloway, Harty, Walle, and Strauch.
Appellant argues that “Strauch’s surgical drape includes open top and
bottom ends through which portions of the operating table and the patient
extend” and therefore does not “fully enclose the extremity-supporting base,
including the entire bottom surface of the extremity-supporting base” as
required by independent claim 21. Appeal Br. 13–14.
Responding to Appellant’s argument in the Answer, the Examiner
states:
Strauch clearly teaches in Figure 1C that the barrier shroud
(surgical drape 2) is adapted to fully enclose the extremity-
supporting base (operating table), including the entire bottom
surface (as shown in Figure 1C) of the extremity-supporting
base (operating table). Figures 1C clearly shows the barrier
shroud (surgical drape 2) extending around all sides of, and
therefore fully enclosing, the extremity-supporting base
(operating table).
Ans. 30 (emphasis omitted).
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As Appellant points out, “Claim 21 requires that the shroud ‘fully
enclose the extremity-supporting base, including the entire bottom surface
of the extremity-supporting base.’” Reply Br. 11. “Figure 1A, which is
simply a side view of the same embodiment of Figures 1B and 1C, clearly
shows that the drape 2 does not enclose the entire bottom surface of the
operating table.” Id. (emphasis omitted).
For the reasons set forth by Appellant, the rejection of claim 21 and
claim 22 depending therefrom is not sustained.
Claims 25 and 27 depend directly or indirectly from independent
claim 17. The Examiner does not rely on the additional reference (Strauch)
in any way that would cure the deficiency in the rejection of independent
claim 17 discussed above. Thus, the rejection of claims 25 and 27 is not
sustained for the reasons given above for not sustaining the rejection of
independent claim 17 from which claims 25 and 27 depend.

The rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable over
Holloway, Harty, and Morris.
The rejection of claim 10 under 35 U.S.C. § 103(a) as unpatentable over
Holloway, Harty, and Matloub.
The rejection of claim 16 under 35 U.S.C. § 103(a) as unpatentable over
Holloway, Harty, Walle, and Bowman.
The rejection of claim 24 under 35 U.S.C. § 103(a) as unpatentable over
Holloway, Harty, and Strauch.
With regard to these rejections, the Examiner does not rely on the
additional references (Morris, Matloub, Walle, Bowman, and Strauch) to
cure the deficiencies discussed above. Thus, the rejections of claims 8, 10,
16, and 24 are not sustained for the reasons given above for not sustaining
the rejections of independent claims 1 and 17 from which they depend.
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The rejection of claim 27 under 35 U.S.C. § 112, second paragraph, as
being indefinite.
The Examiner rejected claim 27 under 35 U.S.C. § 112, second
paragraph, as being indefinite. Final Act. 8. Appellant does not argue the
rejection, and instead “notes that the remaining issues with claim 27 appear
to be mostly formal in nature and readily resolvable through future
discussion and/or amendment.” Reply Br. 12.
Accordingly, the rejection is sustained.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 9,
11–14, 23
103(a) Holloway, Harty 1, 3, 9,
11–14, 23
8 103(a) Holloway, Harty,
Morris
8
10 103(a) Holloway, Harty,
Matloub
10
15, 17, 18,
26
103(a) Holloway, Harty,
Walle
15, 17, 18,
26
16 103(a) Holloway, Harty,
Walle, Bowman
16
21, 22, 25,
27
103(a) Holloway, Harty,
Walle, Strauch
21, 22, 25,
27
24 103(a) Holloway, Harty,
Strauch
24
27 112, 2nd
paragraph
Indefiniteness 27
Overall
Outcome
27 1, 3, 8–18,
21–26

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART