Ex Parte Agbodoe et al

Patent Trial and Appeal Board

May 24, 2016

11926815 (P.T.A.B. May. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111926,815 10/29/2007
27777 7590 05/26/2016
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
FIRST NAMED INVENTOR
Victor B. Agbodoe
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
COD5186USNP 5067
EXAMINER
ARAJ, MICHAEL J
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
05/26/2016 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):
jnjuspatent@corus.jnj.com
lhowd@its.jnj.com
pairjnj@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VICTOR B. AGBODOE, RICHARD DENSMAN,
and KENNETH HA YES
Appeal2014-003519
Application 11/926,815
Technology Center 3700
Before LINDA E. HORNER, ANNETTE R. REIMERS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Victor B. Agbodoe et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's decision to reject under 35 U.S.C. § 103(a) claims 1, 3,
and 5-11 as unpatentable over Baker (US 4,699,550; iss. Oct. 13, 1987). 1
1 The Examiner correctly identifies Baker in the heading of the rejection. See
Final Act. 2 (mailed Apr. 12, 2013). However, the initial paragraph of the
body of the rejection states, "Marcucci discloses a perforator." See id. The
Examiner's findings are directed to the Baker reference. See id. at 2-4. We
consider this an inadvertent and harmless error by the Examiner. See Br. 3
(filed Sept. 12, 2013).
Appeal2014-003519
Application 11/926,815
Claims 2 and 4 have been canceled. Br. 2. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to devices for drilling holes in the
cranium." Spec. para. 1; Fig. 2.
Claim 1, the sole independent claim, is representative of the claimed
subject matter and recites:
1. A cranial perforator comprising:
a generally cylindrical driver;
a generally cylindrical drill member;
a sleeve having a proximal end and a distal end; said driver
being connected to said sleeve proximal end, said drill member
being connected to said sleeve distal end, said sleeve having an
internal clutch to selectively transfer rotational movement from
said driver to said drill member;
\"/herein said drill member having an inner drill and an
outer drill disposed about said inner drill, said inner drill having
a distal end having only two drilling flutes adapted to cut human
cranial bone, said outer drill having a proximal end and a distal
end, said proximal end of said outer drill having a first
predetermined diameter, said distal end of said outer drill having
a second predetermined diameter, said first predetermined
diameter being greater than said second predetermined diameter,
a transition from said first predetermined diameter to said second
predetermined diameter being a smooth radiused concave curve,
the transition is disposed proximate to said proximal end of said
outer drill.
2
Appeal2014-003519
Application 11/926,815
ANALYSIS
Appellants argue the claims subject to this ground of rejection (i.e.,
claims 1, 3, and 5-11) as a group. Br. 3--4. We select claim 1 as
representative. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). Claims 3 and 5-11
stand or fall with claim 1.
Independent claim 1 recites, in relevant part, "a transition from said
first predetermined diameter to said second predetermined diameter being a
smooth radiused concave curve, the transition is disposed proximate to said
proximal end of said outer drill." Br. 5, Claims App. The Examiner finds,
with reference to an annotated version of Figure 1 of Baker, that Baker
discloses the above cited limitation. See Final Act. 2-3 (citing the
Examiner's annotated version of Figure 1 of Baker at Final Act. 3). A copy
of the Examiner's annotated Figure is reproduced below.
The figure above (labeled "Figure A" by the Examiner) is an annotated copy
of Figure 1 of Baker showing where the Examiner found the distal and
proximal ends, the first and second predetermined diameters, and the smooth
3
Appeal2014-003519
Application 11/926,815
radiused concave curve in the transition between the first and second
diameters in Baker's drill. Final Act. 3.
Appellants contend that "[t]he portion of outer drill 104 [of Baker]
that the Examiner marked up [in] the Office Action as being the recited
smooth curved transition is not a radiused curve, it is not concave, and it is
not disposed proximate to the proximal end of the outer drill, as
[]recited." Br. 3-4; see also Final Act. 3--4 (explaining that Baker's Figure
1 "has been edited to show how a transition from said first to said second
predetermined diameter is a smooth radiused concave curve"). 2
When claim terminology is construed in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
At the outset, Appellants' Specification does not explicitly define the
term "radiused curve." See Spec. para. 18. Appellants' disclosure merely
states that "[t]he transition 38 from first predetermined diameter Dl to
second predetermined diameter D2 is a smooth curve, and preferably a
radiused curve." See id.; see also id. at Figs. 2, 3.3 Based on Appellants'
2 Appellants argue that "Baker fails to anticipate claims 1, 3 and 5-11" (Br. 4);
however, the Examiner's rejection is based on obviousness and not
anticipation. See Br. 3; Final Act. 2; Ans. 2
3 We note that only a portion of transition 38 from first predetermined
diameter D 1 to second predetermined diameter D2 is "a smooth radiused
concave curve." See Spec. Figs. 1, 2 (showing that the distalmost portion of
transition 38 flattens out and is no longer curved).
4
Appeal2014-003519
Application 11/926,815
disclosure, we consider a "radiused curve" is a curve having a radius. We
agree with the Examiner that the cited portion of the Examiner's annotated
version of Figure 1 of Baker "is considered to be a radiused curve." See
Ans. 4 (citing the Examiner's annotated version of Figure 1 of Baker at Ans.
3); see also Final Act. 3. We further agree with the Examiner that the cited
curve (1) "is concave because [it is] rounded inward"; and (2) "is proximate
[next] to the [cited] proximal end." See Ans. 4-5 (citing the Examiner's
annotated version of Figure 1 of Baker at Ans. 3); see also Final Act. 3.4
Appellants do not apprise us of Examiner error.
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of independent claim 1 as unpatentable over Baker. We further
sustain the Examiner's rejection of dependent claims 3 and 5-11, which fall
with claim 1.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1, 3, and
5-11.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l )(iv).
AFFIRMED
4 Appellants' Specification describes that "[t]ransition 38 is disposed
proximate to the proximal end 34 of outer drill 26." Spec. para. 18; see also
id. at Fig. 2.
5