Douglas Raymond et al.

Patent Trials and Appeals Board

May 19, 2020

2019002594 (P.T.A.B. May. 19, 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.
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.
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Application 14/072,211

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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.
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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.
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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
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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.
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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,
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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
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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
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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.

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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