Douglas Raymond et al.Download PDFPatent Trials and Appeals BoardMay 19, 202014072211 - (D) (P.T.A.B. May. 19, 2020) Copy Citation 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. 14/072,211 11/05/2013 Douglas Raymond 101896-1358 DEP5180USCNT3 8956 21125 7590 05/19/2020 NUTTER MCCLENNEN & FISH LLP SEAPORT WEST 155 SEAPORT BOULEVARD BOSTON, MA 02210-2604 EXAMINER SUMMITT, LYNNSY M ART UNIT PAPER NUMBER 3773 NOTIFICATION DATE DELIVERY MODE 05/19/2020 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): docket@nutter.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DOUGLAS RAYMOND, CONNIE MARCHEK, THOMAS W. HIGGINBOTHAM, ANTHONY R. CARLONE, KATHERINE HERARD RAY, and TIMOTHY BEARDSLEY Appeal 2019-002594 Application 14/072,211 Technology Center 3700 Before JENNIFER D. BAHR, JOHN C. KERINS, and ARTHUR M. PESLAK, Administrative Patent Judges. BAHR, 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 1–5 and 7–18. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing in accordance with 37 C.F.R. § 41.47 was held on May 6, 2020. 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 the real party in interest as Depuy Synthes Products, Inc. Appeal Br. 1. Appeal 2019-002594 Application 14/072,211 2 CLAIMED SUBJECT MATTER The claims are directed to “methods and devices that improve surgical procedures by, for example, creating a working space for the procedure and improving the surgical conditions for a practitioner of the procedure.” Spec. 2:13–15. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A surgical retractor, comprising: a frame including a first base component, a second base component, and a first connector that connects the first base component and the second base component, wherein at least one of the first base component and the second base component is moveable along a length of the first connector, and upon movement of the first connector relative to the first base component or second base component, the frame moves from a first position to a second position and causes a distance between the first base component and the second base component to change; and at least two retractor blades attached to the frame; wherein the first connector passes through a body of the second base component, and a locking element on the second base component selectively locks the position of the second base component with respect to the first connector; and wherein the frame further includes: a second connector, a third base component attached to the second connector, and a fourth base component attached to the second connector, wherein at least one of the third base component and the fourth base component is moveable along a length of the second connector and causes a distance between the third base component and the fourth base component to change, and wherein the first base component and the second base component are in moveable relation to the third base component and the fourth base component. Appeal 2019-002594 Application 14/072,211 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Clough US 447,761 Mar. 10, 1891 Santilli US 4,726,356 Feb. 23, 1988 Fakhrai US 5,088,472 Feb. 18, 1992 Koros ’291 US 5,795,291 Aug. 18, 1998 Koros ’493 US 6,139,493 Oct. 31, 2000 REJECTIONS I. Claims 1, 2, 5, 7, and 9–14 stand rejected under 35 U.S.C. § 102(b) as anticipated by Koros ’291. II. Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Koros ’291 and Koros ’493. III. Claims 1, 3, 5, 7, and 9–12 stand rejected under 35 U.S.C. § 102(b) as anticipated by Santilli. IV. Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Santilli and Fakhrai. V. Claims 15–18 stand rejected under 35 U.S.C. § 102(b) as anticipated by Clough. OPINION Anticipation—Koros ’291 The Examiner finds that Koros ’291 discloses a surgical retractor comprising a frame including a first base component (stationary segment 16), a second base component (housing 30), a first connector (toothed rack 20), a third base component (stationary arm 115), a fourth base component (movable arm 100), and a second connector (toothed rack 120). Ans. 3–4. Appeal 2019-002594 Application 14/072,211 4 Appellant contests the Examiner’s finding of anticipation because, according to Appellant, “Koros [’291] does not have a single frame including the required features”; rather, “Koros [’291] discloses two separate frames, with each frame including two base components and a single connector.” Appeal Br. 9. In essence, Appellant takes issue with the fact that the Examiner relies on a first base component (stationary segment 16), a second base component (housing 30), and a first connector (toothed rack 20) from Koros ’291’s right retractor frame 5 and a third base component (stationary arm 115), a fourth base component (movable arm 100), and a second connector (toothed rack 120) from Koros ’291’s offset retractor frame 105 to comprise the four base components and two connectors of the “frame” of claim 1. The retractor system of Koros ’291 includes right retractor frame 5 and offset retractor frame 105 “that are positioned at right angles to and overlay one another during the surgery,” as illustrated in Figure 6. Koros ’291 2:56–59; see id. 7:51–8:6 (describing the use of right retractor frame 5 and offset retractor frame 105 together). Koros ’291 does not disclose connecting, or attaching, the elements of right retractor frame 5 to the elements of offset retractor frame 105 to form a single integral frame. However, claim 1 does not recite that the frame is an integral frame or that the first base component, second base component, and first connector are positively attached/connected to the second connector, third base component, and fourth base component. The Examiner proffers two definitions of the term “frame,” namely, “‘an open structure that gives shape and support to something’ or ‘an enclosing case or border into which something is fitted.’” Ans. 15. The Appeal 2019-002594 Application 14/072,211 5 Examiner states that “[t]he definition of ‘frame’ does not require each of the elements that forms the frame to be mechanically interconnected or fixed relative to one another” (id.), and Appellant’s arguments on pages 3–4 of the Reply Brief2 do not persuade us that the Examiner’s statement is incorrect. We appreciate that Koros ’291 characterizes the structure on which the Examiner reads the claimed “frame” as comprising right retractor frame 5 and offset retractor frame 105, rather than as a single frame. However, this does not undermine the Examiner’s finding of anticipation. Anticipation “is not an ‘ipsissimis verbis’ test.” In re Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990) (citing Akzo N.V. v. U. S. Int'l Trade Comm'n, 808 F.2d 1471, 1479 n.11 (Fed. Cir. 1986)). “An anticipatory reference . . . need not duplicate word for word what is in the claims.” Standard Havens Prods. v. Gencor Indus., 953 F.2d 1360, 1369 (Fed. Cir. 1991). Appellant also argues that the frame of Koros ’291 does not satisfy the limitation in claim 1 that “the first base component and the second base component are in moveable relation to the third base component and the fourth base component.” Appeal Br. 10. According to Appellant, “Koros [’291] has no relation between the first and second base components with respect to the third and fourth base components because the first and second base components are on one retractor and the third and fourth base components are on a different retractor.” Id. This argument is predicated on Appellant’s position that the Examiner errs in reading components of right 2 The pages of the Reply Brief are not numbered. Our reference to pages of the Reply Brief herein treat the pages as chronologically numbered beginning with the page bearing the heading “REPLY BRIEF” as page 1. Appeal 2019-002594 Application 14/072,211 6 retractor frame 5 and offset retractor frame 105 on the claimed “frame” and is unpersuasive for the reasons discussed above. The Examiner observes that arms 100, 115 overlie arms 10, 15 of Koros ’291, and that “[c]omponents 10 and 15[, as well as elements 30 and 16 attached thereto,] can slide relative to base components 100, 115 in order to change the size of the surgical field,” and, “[t]herefore, the first and second base components of Koros [’291] are in movable relation to the third and fourth base components of Koros [’291].” Ans. 18. Appellant does not dispute that elements 10/30 and 15/16 can slide relative to elements 100 and 115, nor does Appellant persuasively explain why this is insufficient to satisfy the “in movable relation” limitation of claim 1. See Reply Br. 3–4. For the above reasons, Appellant does not apprise us of error in the rejection of claim 1 as anticipated by Koros ’291. Accordingly, we sustain the rejection of claim 1, as well as of claims 2, 5, 7, and 9–14, which depend from claim 1 and for which Appellant does not present any separate arguments, as anticipated by Koros ’291. Obviousness—Koros ’291 and Koros ’493 Appellant does not present any arguments directed specifically to the rejection of claim 4 as unpatentable over Koros ’291 and Koros ’493. See Appeal Br. 2–12. Thus, we understand Appellant to be relying on the arguments presented against the rejection of claim 1 as anticipated by Koros ’291 in contesting the rejection of claim 4. For the reasons discussed above, these arguments do not apprise us of error in the rejection of claim 1 and, likewise, fail to apprise us of error in the rejection of claim 4. Accordingly, Appeal 2019-002594 Application 14/072,211 7 we sustain the rejection of claim 4 as unpatentable over Koros ’291 and Koros ’493. Anticipation—Santilli The Examiner finds that Santilli discloses a surgical retractor comprising a frame including a first base component (distal portion 25), a second base component (distal portion 27), a first connector (toothed crossbar 23), a second connector (rod 55), a third base component (clamp 53), and a fourth base component (clamp 53). Ans. 5–6. The Examiner also finds that “the first base component 25 and the second base component 27 are in moveable relation to the third base component 53 and the fourth base component 53 (col. 4, lines 20-49).” Id. at 6. Appellant contests the Examiner’s finding that the first base component (distal portion 25) and the second base component (distal portion 27) of Santilli are in moveable relation to the third base component (clamp 53) and the fourth base component (clamp 53). Appeal Br. 12. According to Appellant, “[b]ecause the third and fourth base components are mounted on the second base component, moving the first and second base components necessarily moves the third and fourth base components along with . . . them.” Id. In response, the Examiner explains that the Examiner’s finding is supported in column 4, lines 20–29 of Santilli, “which states that base components 53 may be slid along the axis of rod 55,” and that, “[a]dditionally, the second base component is moveable relative to the third and fourth base components due to its sliding engagement with connector 23.” Ans. 18–19. Appellant does not dispute that Santilli’s clamps 53 are slidable along rod 55, and thus slidable relative to distal portion 25, or that distal portion 27 is slidable along toothed crossbar 23 relative to rod 55 and Appeal 2019-002594 Application 14/072,211 8 clamps 53, nor does Appellant persuasively explain why this is not sufficient to satisfy the limitation in claim 1 that “the first base component and the second base component are in moveable relation to the third base component and the fourth base component.” For the above reasons, Appellant does not apprise us of error in the rejection of claim 1 as anticipated by Santilli. Accordingly, we sustain the rejection of claim 1, as well as of claims 3, 5, 7, and 9–12, which depend from claim 1 and for which Appellant does not make any separate arguments, as anticipated by Santilli. Obviousness—Santilli and Fakhrai Appellant does not present any arguments directed specifically to the rejection of claim 8 as unpatentable over Santilli and Fakhrai. See Appeal Br. 2–12. Thus, we understand Appellant to be relying on the arguments presented against the rejection of claim 1 as anticipated by Santilli in contesting the rejection of claim 8. For the reasons discussed above, these arguments do not apprise us of error in the rejection of claim 1 and, likewise, fail to apprise us of error in the rejection of claim 8. Accordingly, we sustain the rejection of claim 8 as unpatentable over Santilli and Fakhrai. Anticipation—Clough The Examiner finds that Clough discloses a surgical retractor satisfying all of the limitations of claim 15, including, in pertinent part, a first connector (section 10), a second connector (section 12), and four retractor blades 14. Ans. 7–8. Appellant argues that, even assuming that screw 15 allows relative movement between section 10 and section 11, moving section 11 with respect to section 10 would move the second retractor blade 14 (the blade attached to section 11) relative to the first Appeal 2019-002594 Application 14/072,211 9 retractor blade (the blade attached to section 10) around a quadrant of a circle; thus, “the second blade certainly does not move along a line that is parallel to the first connector.” Appeal Br. 6. The Examiner provides an annotated version of Figure 2 on page 12 of the Answer to illustrate the “line along which [the] second blade is movable.” However, the path of movement the Examiner identifies as the “line along which second blade is movable” is not a line, but, rather, is an arc. Thus, the Examiner errs in finding that Clough discloses a surgical retractor “wherein at least the first retractor blade or the second retractor blade is movable along a line that is parallel to a length of the first connector” as recited in claim 15. Accordingly, we do not sustain the rejection of claim 15, or of claims 16–18 depending from claim 15, as anticipated by Clough. Appeal 2019-002594 Application 14/072,211 10 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 5, 7, 9– 14 102(b) Koros ’291 1, 2, 5, 7, 9– 14 4 103(a) Koros ’291, Koros ’493 4 1, 3, 5, 7, 9– 12 102(b) Santilli 1, 3, 5, 7, 9– 12 8 103(a) Santilli, Fakhrai 8 15–18 102(b) Clough 15–18 Overall Outcome 1–5, 7–14 15–18 TIME PERIOD FOR RESPONSE 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 Copy with citationCopy as parenthetical citation