DEPUY SYNTHES PRODUCTS, INC.

Patent Trials and Appeals Board

Apr 13, 2021

2020004852 (P.T.A.B. Apr. 13, 2021)

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.
15/915,991 03/08/2018 Sarah M. Anthony 265280-275780 8295
173217 7590 04/13/2021
Barnes & Thornburg LLP (DEPUY)
11 S. Meridian Street
Indianapolis, IN 46204
EXAMINER
KAMIKAWA, TRACY L
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
04/13/2021 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):
INDocket@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SARAH M. ANTHONY, CONRAD L. KLOTZ,
KYLE E. LAPPIN, VAN A. FLAMION, GABRIEL M. SURMA,
JOANNA L. SURMA, and JOSEPH P. IANNOTTI
Appeal 2020-004852
Application 15/915,991
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL J. FITZPATRICK, and
LISA M. GUIJT, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 11–19. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART AND ENTER A NEW GROUND OF
REJECTION.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as DePuy Synthes
Products, Inc., a Johnson & Johnson Company. Appeal Br. 2.
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2
CLAIMED SUBJECT MATTER
The claims are directed to a surgical instrument system for use in an
orthopaedic surgical procedure. Claim 11, reproduced below, is illustrative
of the claimed subject matter:
11. A surgical instrument system comprising:
a guide pin configured to be inserted into a glenoid of a
patient,
a surgical rasp configured to be advanced along the guide
pin, the surgical rasp having a cutting head with (i) a wedge-
shaped body extending between a base and an end, and (ii) a
cutting surface formed on the wedge-shaped body and including
a plurality of cutting teeth arranged in a geometry to surgically
prepare a wedge-shaped vault in the glenoid of the patient, and
a glenoid prosthesis having a body sized and shaped to
receive a humeral head, a keel extending from the body and
having a wedge-shape that corresponds to the wedge-shaped
body of the surgical rasp.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Katsura US 6,287,017 B1 Sept. 11, 2001
Resch US 6,379,386 B1 Apr. 30, 2002
Deffenbaugh US 2006/0069443 A1 Mar. 30, 2006
Gunther US 2006/0195194 A1 Aug. 31, 2006
Song US 2007/0233131 A1 Oct. 4, 2007
Harris US 2009/0182344 A1 July 16, 2009
Rauscher US 2011/0028977 A1 Feb. 3, 2011

REJECTIONS
Claims 11, 12, 14, 18, and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Resch, Rauscher, and Gunther. Final Act. 4.
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3
Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Resch, Rauscher, Gunther, and Katsura. Final Act. 6.
Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Resch, Rauscher, Gunther, and Harris. Final Act. 7.
Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Resch, Rauscher, Gunther, Deffenbaugh, and Song. Final
Act. 7.
OPINION
Resch, Rauscher, and Gunther
Claims 11, 18, and 19
Claims 11, 18, and 19, subject to the rejection predicated on Resch,
Rauscher, and Gunther, are argued as a group (Appeal Br. 6) with claim 11
being representative under 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner relied on Resch for the surgical rasp and prosthesis of
claim 11, albeit in a system that does not include a guide pin configured for
insertion into a glenoid of a patient, at least according to the Examiner.2

2 As discussed in the Examiner’s Answer (p. 10) Resch does, in fact, include
in its system a guide post 76, which would seem to reasonably be regarded
as a “guide pin” within the meaning of this phrase as it is used in claim 11.
Resch’s post 76 is clearly “configured to be inserted into a glenoid of a
patient” (see Resch col. 4, l. 44; col. 5, ll. 40–41) which is all claim 11
requires with respect to the recited “guide pin.” Although we affirm or
reverse rejections on the grounds set forth by the Examiner (37 C.F.R.
§ 41.50(a)(1)), it would not appear that Resch does actually lack this subject
matter of independent claim 11. See Final Act. 4–5. Although the Board is
authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should
be drawn when the Board elects not to do so. See The Manual of Patent
Examining Procedure (“MPEP”) § 1213.02 (9th ed. Rev. 10.2019, rev. June
2020).
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4
Final Act. 4–5. The Examiner correctly and undisputedly found that
Rauscher demonstrates that it was known in the art to employ guide pins in
glenoid shaping procedures. The Examiner concluded it would have been
obvious to include a guide pin like that of Rauscher in Resch’s system to
enable more accurate positioning of the rasp. Final Act. 5. We have carefully
considered Appellant’s arguments on this point but ultimately we agree with
the Examiner’s reasoning and conclusion in this regard.
Appellant first contends that by discussing improvements to U.S.
Patent Number 5,489,310 to Mikhail, Resch demonstrated an awareness of
systems employing guide pins and in choosing not to use them effectively
taught away from such systems. Appeal Br. 3, 9, 11 (citing Resch col. 1, ll.
20–62). The Examiner correctly explains (Ans. 9–10) that according to the
portion of Resch cited by Appellant it was the stability and strength of the
prosthesis, and not guide pins per se, that Resch sought to improve upon,
and Resch made no remarks critical of the guide pin aspect of Mikhail, as
required to demonstrate a “teaching away.” In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). Appellant does not apprise us of any technical reason
oneof Resch’s holes, presumably the middle pilot hole, could not
accommodate a guide pin like that of Rauscher and benefit in the manner
stated by the Examiner. Resch already uses a guide post 76 to align drill
guide 70 with the pilot hole (not shown). Contrary to Appellant’s argument
(Reply Br. 5), broach 80 does not include such an aligner, and we see no
reason it would not also benefit from one as proposed by the Examiner. Ans.
11. Whether the post and the bore receiving it are respectively arranged on
the tool and the glenoid as in Resch, or vice versa, would seem of minimal
significance to the skilled artisan. Unlike Appellant (Appeal Br. 5), we have
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no difficulty envisioning such a simple modification as proposed by the
Examiner.
Appellant repeatedly makes an essentially generic argument that,
because a prior-art device performs a particular function or achieves a
particular result, it is nonobvious to use alternatives for performing that
function or achieving that result. Appeal Br. 8; Reply Br. 3–4. Appellant’s
argument is inconsistent with the standards of an obviousness analysis. Just
because a prior art product functions satisfactorily does not mean that a
skilled artisan would not try to improve it. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007) (explaining that if a technique has been used to
improve one device and a person of ordinary skill in the art would recognize
that it would improve a similar device in the same way, using the technique
is obvious unless its actual application is beyond his or her skill). In that
regard, a reason to modify a prior art reference may be found explicitly or
implicitly in market forces; design incentives; the “interrelated teachings of
multiple patents”; “any need or problem known in the field of endeavor at
the time of invention and addressed by the patent”; and the background
knowledge, creativity, and common sense of the person of ordinary skill.
Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–29 (Fed. Cir.
2009) (quoting KSR, 550 U.S. at 418–21). Obviousness “does not require
that the motivation be the best option, only that it be a suitable option from
which the prior art did not teach away.” Par Pharm., Inc. v. TWI Pharms.,
Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014).
Appellant attempts to draw some distinction between reamers (like
those of Rauscher) and rasps (like those of Resch) (Appeal Br. 9), but this
argument is not well developed. Both tools, whether rotary or reciprocating
in nature, serve to remove material and both references emphasize the
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criticality of properly locating the cutting components to shape the glenoid
for receipt of a prosthesis. Resch col. 1, ll. 58–62; Rauscher para. 6. If there
is a distinction between a rasp and a reamer with a meaningful difference, it
is not made clear on the record presently before us. See, e.g., Gunther para.
75 (cited at Final Act. 5) (“glenoid cavity (G) is reamed using a glenoid
surface rasp”); Ans. 13–14.
Appellant’s final argument regarding claim 11 is that because
Gunther3 does not disclose a keel it cannot provide any motivation for
combining references to yield subject matter including a keel (Appeal Br.
16) and teaches away from keels (Reply Br. 7). First, the notion that the
Examiner’s rejection is necessarily demonstrated erroneous because of the
absence of a keel in Gunther is fundamentally flawed, as the Examiner relies
on Resch for disclosing a glenoid prosthesis having a keel, andobviousness
is considered in light of the totality of evidence. See Final Act. 4. We are
not apprised of any reason each and every reference cited by the Examiner
must disclose a keel in order for it to be relevant to that inquiry. Ans. 15.
Second, for the reasons stated above (i.e., that “teaching away” requires
actual criticism, not merely silence), the argument that because Gunther does
not disclose a keel it teaches away from keels is self-defeating.
For the foregoing reasons, we sustain the rejection of claim 11, and
that of claims 18 and 19 argued therewith.

3 The Examiner grouped claims 11, 12, 14, 18, and 19 in the rejection. It is
not clear why Gunther was included by the Examiner for purposes of claim
11, or for that matter, any of these claims other than claim 14. Clarification
should be considered in any further prosecution.
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Claim 12
Claim 12 adds the limitation that the rasp has a bore sized to receive
the guide pin. Although this claim is separately argued, we are unable to
discern any arguments different from those presented with regard to claim
11. Appeal Br. 13–14 (“For reasons similar to those discussed in Section
II.A above . . .”). Indeed, it is difficult to imagine how, were we to sustain
the Examiner’s reasoning regarding the obviousness of incorporating
Rauscher’s guide pin into Resch, we would not also sustain the Examiner’s
conclusion that it would also have been obvious to incorporate Rauscher’s
bore, as would seemingly be necessary to accommodate Rauscher’s guide
pin. Accordingly, we sustain the rejection of claim 12.

Claim 14
Claim 14 requires “an elongated bore extending through a shaft and
having a longitudinal axis that extends along a longitudinal axis of the bore
in the cutting head.” The Examiner relies on Figures 13–15 of Gunther as
teaching that cutting tools with cutting heads inline (Figure 13) and offset
(Figures 14–15) from their respective handle sections were known
alternatives in the art. Final Act. 5. Appellant does not address, and leaves
uncontested, the Examiner’s position in this regard. Instead, Appellant
reiterates the arguments concerning the absence of a keel in Gunther which
we deemed misdirected above. Appeal Br. 16. Arguments must address the
Examiner’s action. 37 C.F.R. § 41.37(c)(1)(iv) (“The arguments shall
explain why the examiner erred as to each ground of rejection contested by
appellant.”). Appellant’s arguments concerning claim 14 do not do so.
Accordingly, we sustain the rejection of claim 14.

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The Rejection of Claim 13 Based on Resch, Rauscher, Gunther, and Katsura
Our reviewing court’s predecessor has stated:
“Section 103 requires us to presume full knowledge by the
inventor of the prior art in the field of his endeavor” (emphasis,
except of ‘prior,’ added), but it does not require us to presume
full knowledge by the inventor of prior art outside the field of his
endeavor”, i.e., of “non-analagous” art. In that respect, it only
requires us to presume that the inventor would have that ability
to select and utilize knowledge from other arts reasonably
pertinent to his particular problem which would be expected of a
man of ordinary skill in the art to which the subject matter
pertains.

In re Antle, 444 F.2d 1168 (Fed. Cir. 1971) (citation omitted).
Although framed with slightly modified terminology, our reviewing
court has endorsed this position:
A prerequisite to [determining the scope and content of the prior
art] is determining what is “prior art,” in order to consider
whether “the differences between the subject matter sought to be
patented and the prior art are such that the subject matter as a
whole would have been obvious at the time the invention was
made to a person having ordinary skill in the art.” 35 U.S.C.
§ 103. Although § 103 does not, by its terms, define the “art to
which [the] subject matter [sought to be patented] pertains,” this
determination is frequently couched in terms of whether the art
is analogous or not, i.e., whether the art is “too remote to be
treated as prior art.”
. . . .
Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is
not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem
with which the inventor is involved.
In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citations omitted).
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9
Our reviewing court has further held that “references [are] within the
same field of endeavor where they have essentially the same function and
structure.” In re Bigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004)) (citations and
internal quotations omitted).
Here, the “Examiner respectfully submits that Katsura and Rauscher
are in the same field of endeavor.” Ans. 18. Although Katsura provides a
very detailed explanation of why one would want to make what seems to be
a rather simple and perhaps widely useful modification to taper a pin-
receiving hole to accommodate some degree of initial misalignment (Final
Act. 6; Ans. 18; Katsura Figs. 3A–4B, col. 6, l. 25 et seq.), the Examiner
does not articulate a sufficient basis to establish that Katsura and Rauscher
are in the same field of endeavor as the Examiner asserts. The field of
endeavor prong of the analogous art test, as we understand it, focuses on the
structure and function of the subject matter claimed and that of a prior art
reference, considered as a whole. As Appellant correctly points out “Katsura
is concerned with connectors for optical fibers, while Rauscher is concerned
with an orthopaedic instrument.” Appeal Br. 9 (citation omitted). We are not
apprised by the Examiner as to how one could regard these devices to be of
similar structure and function. Accordingly, on the grounds presently set
forth for our review, we do not sustain the Examiner’s rejection of claim 13.

The Rejection of Claims 16 and 17 Based on Resch, Rauscher, Gunther,
Deffenbaugh, and Song
Claims 16 and 17 are argued as a group (Appeal Br. 19–20), and we
select claim 16 as representative. Claim 16 adds the limitations that the rasp
includes “a lead cutting section” for which the Examiner relies on Song
(Final Act. 8 (citing front surface teeth 62 depicted in Song Figure 13 but
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10
applicable to any embodiment according to Song paragraph 38)) and
respective pairs of curved and planar cuttings sections, for which the
Examiner relies on Deffenbaugh (Final Act. 8 (citing Deffenbaugh Figs. 10,
10A)). Appellant makes the following remarks:
[the] Examiner failed to expressly identify the additional
limitation of claims 16 and 17, but instead relied on additionally
proposed modifications that purportedly would have been
motivated by the teachings of Resch.

. . . In the Examiner’s view the proposed modification of
the rasp is provided by Resch’s own teachings (i.e., that the shape
of the rasp matches the shape of the keel of the prosthesis).
Appeal Br. 21. It is not clear what Appellant is attempting to argue with the
remarks above. Page 8 of the Final Action mapped the limitations of claim
16 to Deffenbaugh and Song in a manner consistent with the standards
discussed in In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011) (The
Examiner’s rejections were set forth in sufficiently articulate and
informative manner as to meet the notice requirement of 35 U.S.C. § 132.).
Appellant does not appear to take issue with any of the Examiner’s findings,
reasoning, or conclusions in those respects. Both Song and Deffenbaugh
teach at least one embodiment involving a tool (e.g., Song Fig. 9) or
prosthesis vault fixation portion or “keel” (Deffenbaugh Figs. 10, 10A)
reasonably consistent with the “substantially triangular or trapezoidal in
shape” language of Resch regarding the keel shape. Final Act. 8; Appeal Br.
21 (quoting Resch col. 4, ll. 10–11). We are not apprised by Appellant of
any technical or logical reasons why the fact that Deffenbaugh’s vault
fixation portion includes a central frustoconical region (unlabeled) between
anti-rotation pins 482, which otherwise exhibits a generally trapezoidal
profile (as viewed from the side in Figure 10), renders Deffenbaugh’s
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11
teachings somehow irrelevant to the teachings of Resch. The Examiner
indicates that choosing from known shape modifications would be obvious
based on the particularities of the patient’s pathologies (Final Act. 8), and
the Examiner’s reasoning and conclusion in this regard stands
uncontroverted. Accordingly, we sustain the Examiner’s rejection of claims
16 and 17.

We designate new grounds of rejection for claims 12–19 under 35 U.S.C.
§ 112, second and fourth paragraphs.
The second and fourth paragraphs of (pre-AIA) 35 U.S.C. § 112
provide:
The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention.

Subject to the following paragraph, a claim in dependent form
shall contain a reference to a claim previously set forth and then
specify a further limitation of the subject matter claimed. A claim
in dependent form shall be construed to incorporate by reference
all the limitations of the claim to which it refers.
Here, dependent claims 12–19 each contain a reference to a claim
previously set forth. However, they indicate that they are directed to “[t]he
reciprocating rasp surgical instrument” when they each depend, directly or
indirectly, from a claim, claim 11, directed not to a “reciprocating rasp
surgical instrument” per se, but such an instrument in combination with
other elements to comprise “[a] surgical instrument system.” As these
dependent claims do not, for example, call for the reciprocating rasp of
claim 11 without specifying further limitations associated with that rasp, in
some sense they do “specify a further limitation of” at least some portion of
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“the subject matter claimed” in independent claim 11. However, because
they also appear to omit limitations of the subject matter claimed in claim 11
it is not clear that claims 12–19 satisfy the requirement to “specify a further
limitation of the subject matter claimed” in independent claim 11.
MPEP § 608.01(n)(III) (citing Pfizer, Inc. v. Ranbaxy Labs., Ltd., 457
F.3d 1284, 1291–92 (Fed. Cir. 2006)) states that “a dependent claim must be
rejected under 35 U.S.C. 112(d) [or fourth paragraph] if it omits an element
from the claim upon which it depends.” That certainly would appear to be
the case with regard to claims 12–19. Accordingly, claims 12–19 are
rejected under 35 U.S.C. § 112, fourth paragraph, as being of improper
dependent form for failing to further limit the subject matter of the claim
upon which it depends, or for failing to include all the limitations of the
claim upon which it depends.
The fourth paragraph of 35 U.S.C. § 112 indicates that “[a] claim in
dependent form shall be construed to incorporate by reference all the
limitations of the claim to which it refers.” To the extent this is an obligation
imposed on those construing the claims as opposed to those drafting them,
we do not see any way to comply with this provision while at the same time
understanding the scope of claims 12–19 with sufficient certainty to deem
them in compliance with the requirement for “particularly pointing out and
distinctly claiming the subject matter” sought to be patented—the so-called
definiteness requirement of 35 U.S.C. § 112, second paragraph.
Accordingly, we also reject claims 12–19 under 35 U.S.C. § 112, 2nd
paragraph as being indefinite. See, e.g., In re Hansen, 99 USPQ 319, 321
(BPAI 1953).
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CONCLUSION
The Examiner’s rejection of claim 13 is reversed.
All of the Examiner’s other rejections are affirmed.
Pursuant to 37 C.F.R. § 41.50(b), we designate new grounds of
rejection for claims 12–19 under 35 U.S.C. § 112, second and fourth
paragraphs.
DECISION SUMMARY
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Grounds
11, 12,
14, 18,
19
103(a) Resch, Rauscher,
Gunther
11, 12,
14, 18,
19

13 103(a) Resch, Rauscher,
Gunther, Katsura
13
15 103(a) Resch, Rauscher,
Gunther, Harris
15
16, 17 103(a) Resch, Rauscher,
Gunther,
Deffenbaugh, Song
16, 17
12–19 112,
second
Indefiniteness 12–19
12–19 112,
fourth
Improper
dependency
12–19
Overall
Outcome
11, 12,
14–19
13 12–19

RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
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When the Board enters such a non-final decision, 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 the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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; 37 C.F.R. § 41.50(b)