Ex Parte 7344541 et al

Patent Trial and Appeal Board

Dec 2, 2014

95001469 (P.T.A.B. Dec. 2, 2014)

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.
95/001,469 10/15/2010 7344541 BIOMET1 7743
7590 12/02/2014
BRAD PEDERSEN
PATTERSON, THUENTE, SKAAR & CHRISTENSEN, P.A.
4800 IDS CENTER
80 SOUTH 8TH STREET
MINNEAPOLIS, MN 55402-2100
EXAMINER
REIP, DAVID OWEN
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
12/02/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

BIOMET ORTHOPEDICS, LLC and
BIOMET MANUFACTURING CORPORATION
Third Party Requester, Cross-Appellant

v.

HUDSON SURGICAL DESIGN, INC.
Patent Owner, Appellant

____________________

Appeal 2014-001731
Reexamination Control 95/001,469
US Patent No. 7,344,541 B2
1

Technology Center 3900
____________________

Before: STEVEN D.A. McCARTHY, DANIEL S. SONG, and
BRETT C. MARTIN, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1
Issued to Haines et al. on March 18, 2008 (hereinafter referred to as "the
'541 patent").
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US Patent No. 7,344,541 B2

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STATEMENT OF THE CASE
The Third Party Requester ("Requester") and the Patent Owner ("PO")
each filed a Request for Rehearing (hereinafter "Req's. Rhrg. Req." and
"PO's Rhrg. Req.," respectively) under 37 C.F.R. § 41.79 seeking rehearing
of our Decision mailed April 30, 2014 (hereinafter "Decision" or "Dec."),
which affirmed-in-part various rejections by the Examiner. The Requester
asserts that the Board overlooked various points and requests modification
of the Decision relating to claims 35-38 and 49-52. Req's. Rhrg. Req., cover
page. The Patent Owner asserts that the Board overlooked various points
and requests modification of the Decision relating to dependent claims 31,
33, 39, 40, 45, 47, 53, and 54. PO's Rhrg. Req. 1.
We grant Requester's Rehearing Request to the extent that we
consider the Requester's arguments infra, but DENY the request to modify
the Decision. We GRANT the Patent Owner's Rehearing Request and
amend our original Decision to REVERSE the Examiner's decision to reject
claims 31, 33, 39, 40, 45, 47, 53, and 54.
Requester's Rehearing Request
Requester asserts that the Board "misapprehended or overlooked
certain limitations of Claims 35-38 and 49-52 that it found patentable."
Req's. Rhrg. Req. 1. Requester's next sentence belies this alleged
misapprehension and/or overlooking by stating that "the Board improperly
found that these claims require 'a single guide placed on one side or the other
and used to cut into the other side (i.e., from the lateral side into the medial
side or vice versa).'" Id., citing Dec. 8. This argument implies disagreement
with the Board’s claim interpretation, not misapprehension by the Board.
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First, the portion of a sentence quoted by the Requester does not
completely convey the Board's claim construction. The Decision makes
clear, by way of the affirmed rejections, that the claims do not preclude
additional guides or guide surfaces. See Dec. 7. It is only the language of
the claims subject to the reversed rejections that specifically requires using a
single guide to cut into the other side. The "single guide" language above is
not meant to limit the claims to the presence of a single guide, but merely to
the use of that guide to cut both sides.
Second, Requester's statement amounts to mere disagreement with the
Board's Decision rather than meeting the standard that something was
misapprehended or overlooked. In fact, the Board explained in the Decision
why it accepted the Patent Owner's construction and rejected the Requester's
position (Dec. 8-9). In its Rehearing Request, the Requester merely restates
its original arguments. Contrary to Requester's assertion, the Board directly
dealt with the issues raised in Requester's Rehearing Request. The result
was simply not the one argued for by Requester. This is not a proper use of
a Rehearing Request and is merely an attempt to have the Board reconsider
its previous Decision. Accordingly, we deny Requester's Rehearing Request
to the extent that the Rehearing Request asks us to modify the original
Decision.
Patent Owner's Rehearing Request
Unlike Requester, the Patent Owner points to an actual instance of the
Board overlooking arguments. As the Patent Owner notes, the Board
sustained the rejection of dependent claims 31, 33, 39, 40, 45, 47, 53, and
54, among others, because of an understanding that the Patent Owner merely
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argued the rejections of these claims in a fashion similar to that in which the
Patent Owner unsuccessfully argued the rejections of the independent claims
from which these claims ultimately depend. PO's Rhrg. Req. 3. The Patent
Owner states that it did argue the aforementioned dependent claims for
different reasons, namely that the claims should be allowable for the same
reasons as claims 35-38 and 49-52. Id. Patent Owner specifically points out
that these arguments were made in Patent Owner's Rebuttal Brief at page 7.
Id. We note that the Patent Owner also made these arguments in its opening
brief. See PO's App. Br. 22-23. Accordingly, Patent Owner has made a
proper showing that the Board overlooked pertinent arguments relating to
the claims at issue.
Turning to the merits of Patent Owner's arguments, each of the claims
at issue recites similar, and in some cases identical, language further limiting
the various independent claims from which they depend (31 from 9, 33 from
32, 39 from 16, 40 from 19, 45 from 24, 47 from 46, 53 from 26, and 54
from 26). Each of the dependent claims at issue recites language that
conveys that the cut guide is used on one side of the bone to cut the other
side as part of the resection in the same way that we determined was the case
for claims 35-38 and 40-52 in our original decision.
Requester disagrees and asserts, for example, with respect to claim 31,
its independent claim, claim 9, "only limits the position of 'the slot' such that
'at least a portion of the slot…fac[es] the end of the… femur….'"
Requester's Comments on PO's Rhrg. Req. 3. Requester goes on to assert
that claim 31 "does not mean that both a medial portion and a lateral portion
of the knee be cut." Id at 5. We disagree. Claim 31 specifically recites
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"plunging the saw blade through the slot to create the resected surface on
both a medial portion or
2
a lateral portion" (emphasis added), i.e., this
language cannot refer to other portions of the cutting guide as is the case
with the independent claim, but requires the cut through both sides to be
made through the same slot regardless of what other slots may be present as
allowed by the broader claim 9.
Requester, with respect to claim 39, also asserts that the claim
language "does not require 'both sides' of the knee be cut" and that the Patent
Owner "misrepresents that the claim requires a 'contralateral side' to be cut."
Requester's Comments on PO's Rhrg. Req. 9. Requester attempts to assert
that a side is different from a compartment and that because there are three
compartments – medial, central, and lateral – that the claims could include
cutting into the central compartment. Id. Again, we disagree. The context
of claim 39 describes cutting a contralateral compartment "relative to the
one of the medial side or the lateral side of the femur." We think this
language is clear that the contralateral compartment is not merely any
compartment besides the lateral compartment, but that it is the opposite or
"contra" compartment, which would be the medial compartment in relation
to the lateral compartment or vice versa. As such, we agree with the Patent
Owner that we should have reversed the Examiner's rejection as to claim 39
and the other claims with similar language.

2
Although the claim recites "both" and "or" here, which may appear
confusing, we understand this language to refer to the fact that, in claim 9,
one of the medial or lateral sides is originally cut. Claim 31 then adds that
the other, which was not originally cut, is also cut using the same slot. So,
the "or" is attempting to convey that the other of what was not cut in claim 9
is now also cut, while also that both the medial and lateral sides are cut.
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Requester further argues that "[a]nother problem with the Owner's
description of Samuelson is that in order for a two-sided surgical resection to
not invalidate these claims, a surgeon would need to stop cutting from each
side at exactly the midline of the knee." Requester's Comments on PO's
Rhrg. Req. 12. We disagree. In construing the claims, the claim language as
a whole must be interpreted in light of the Specification, not simply looking
at each phrase in a vacuum and divorced from the Specification. See e.g., In
re NTP, 654 F. 3d 1279, 1288 (Fed. Cir. 2011). With regard to claims 35-38
and 49-52 as well as the claims at issue in this rehearing, we construe them
as referring to the resection of the bone and not just the specific portion
being cut. When taking the claims at issue in context, it is not merely the
fact that the surgeon's blade passes the midline of the bone, but that the
entire resection is being done using a guide on one side to complete the
resection.
Even if part of the opposite side is cut into (but not in a manner that
completes the resection) as argued by the Requester, the surgeon must still
remove the blade and complete the resection using a different cutting guide.
We think the claims at issue sufficiently convey that, in each instance, the
resection is completed by using a single cut guide to cut from one side to the
other. In other words, the Patent Owner's claims describe a complete
resection, whereas the Requester's proposition that cutting into the other side
falls within the scope of the claims only describes a partial resection that
must then be completed using a different cutting guide, which is not the
same as what is claimed. We think this distinction is made clear in each of
dependent claims 31, 33, 39, 40, 45, 47, 53, and 54 and thus are persuaded
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that we should have also reversed the rejections of these claims for the same
or similar reasons as we reversed the rejections of claims 35-38 and 49-52.
REHEARING DECISION
We have considered the Decision in light of the Requests for
Rehearing. As explained above, Requester's basis for requesting rehearing is
not based upon anything misapprehended or overlooked, but amounts to an
explanation as to why Requester disagrees with the Board's Decision, which
is not a proper use for Requests for Rehearing. Patent Owner, however, has
shown that the language recited in each of the claims at issue is of a similar
nature as that in claims 35-38 and 49-52 and thus we revise our original
decision to add reversal of the Examiner's rejections of claims 31, 33, 39, 40,
45, 47, 53, and 54 as requested by the Patent Owner.
Pursuant to 37 C.F.R. § 41.79(d), this Decision is final for the purpose
of judicial review. A party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See
37 C.F.R. §§ 90.1 and 1.983.

GRANTED as to PATENT OWNER, DENIED as to REQUESTER.

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8
alw

Patent Owner:
Brad Pedersen
Patterson, Thuente, Skaar & Christensen, P.A.
4800 IDS Center
80 South 8
th
Street
Minneapolis, MN 55402-2100

Third Party Requester:

Troutman Sanders, LLP
5200 Bank of America Plaza
600 Peachtree Street, N.E.
Suite 5200
Atlanta, GA 30308-2216