Ex Parte Berg et al

Board of Patent Appeals and Interferences

Mar 3, 2011

10623179 (B.P.A.I. Mar. 3, 2011)

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.
10/623,179 07/18/2003 Christopher Lee Berg M81.12-0060 2674
27367 7590 03/03/2011
WESTMAN CHAMPLIN & KELLY, P.A.
SUITE 1400
900 SECOND AVENUE SOUTH
MINNEAPOLIS, MN 55402
EXAMINER
RAMANA, ANURADHA
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
03/03/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CHRISTOPHER LEE BERG,
TODD WILLIAM SHARRATT, and STEVEN MARK LEVAHN
____________________

Appeal 2009-008803
Application 10/623,179
Technology Center 3700
____________________

Before WILLIAM F. PATE, III, JENNIFER D. BAHR, and KEN B.
BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008803
Application 10/623,179

2
STATEMENT OF THE CASE
Christopher Lee Berg et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 9-19. We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.

THE INVENTION
Claims 9 and 19, reproduced below, are representative of the subject
matter on appeal.
9. An apparatus for use in performing a knee-joint
replacement surgery on a surgical table, the surgery involving a
tibia and femur joined at a knee joint, the apparatus comprising:
a retractor support rigidly mounted to the surgical table;
and
a plurality of retractors attached to the retractor support
and each having a retractor blade for engaging skin and flesh
layers proximate the knee-joint wherein at least one of the
retractors has a flexible portion that flexes sufficiently so that
the tibia may be moved during the surgery without having to
re-engage the retractors with the flesh and skin layers or to
reattach the retractors to the retractor support or adjust the
retractor support.

19. An apparatus for use in securing a lower leg in knee
surgery on a surgical table wherein a knee is disposed in an
elevated position, the apparatus comprising:
a retractor support mounted to the surgical table wherein
the retractor support includes first and second support arms that
are extendable along opposite sides of the knee, each support
arm having distal end portions; and
a flexible strap extending between the distal end portions
of the support arms for engaging the lower leg such that a
generally downward force is applied against the lower leg to
retain the lower leg in position.
Appeal 2009-008803
Application 10/623,179

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Whitt US 4,373,709 Feb. 15, 1983
Grieshaber US 4,813,401 Mar. 21, 1989
Fowler
(“Fowler ‘698”)
US 5,964,698 Oct. 12, 1999
Fowler, Jr.
(“Fowler, Jr. ‘312”)
US 6,190,312 B1 Feb. 20, 2001

The following Examiner’s rejections are before us for review:
1. Claim 19 is rejected under 35 U.S.C. § 102(b) as being
anticipated by Whitt;
2. Claims 9-16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fowler, Jr. ‘312, Fowler ‘698, and Grieshaber; and
3. Claims 17 and 18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Whitt.

OPINION
The rejection of claim 19 as being anticipated by Whitt
Independent claim 19 recites an apparatus for use in securing a lower
leg during knee surgery, the apparatus comprising: 1) a retractor support
having “first and second support arms that are extendable along opposite
sides of the knee,” and 2) a flexible strap extending between the support
arms “for engaging the lower leg such that a generally downward force is
applied against the lower leg to retain the lower leg in position.” As such,
Appellants have used functional language to define the apparatus, and
therefore an anticipatory prior art device must be configured so as to be
Appeal 2009-008803
Application 10/623,179

4
capable of performing the recited functions. See In re Swinehart, 439 F.2d
210, 213 (CCPA 1971).
We agree with the Examiner that Whitt’s limb holder is somewhat
adjustable. See Ans. 7 (citing Whitt, col. 1, ll. 5-22, 37-56); see also Whitt,
col. 2, ll. 27-31 (cited at Ans. 4). Although Whitt’s device is depicted in
Figure 1 as supporting a thigh (but not the lower leg portion as the Examiner
seems to have found, Ans. 7), we also recognize that the device is capable of
being used as a support for other limbs. However, we agree with Appellants
(App. Br.2 13; Reply Br. 6) that Whitt’s limb holder does not appear to be
configured so as to have arms extendable along opposite sides of the knee
while also having a strap engaging the lower leg such that the lower leg is
retained by downward force. See Whitt, fig. 1. We do not sustain the
rejection of claim 19 as anticipated by Whitt.

The rejection of claims 9-16 as being unpatentable over Fowler, Jr. ‘312,
Fowler ‘698, and Grieshaber
Appellants argue the rejected claims as a group. App. Br. 8-11
(presenting arguments regarding independent claim 9 and asserting that
claims 10-16 are allowable due to their dependency from claim 9). We
select claim 9 as the representative claim, and claims 10-16 stand or fall with
claim 9. 37 C.F.R. § 41.37(c)(1)(vii).
Claim 9 recites “[a]n apparatus for use in performing a knee-joint
replacement surgery” having a retractor support mounted to a surgical table

2 We refer to the Appeal Brief entitled “Resubmitted Brief for Appellant,”
filed Sept. 6, 2006, which is the Appeal Brief identified in the Docketing
Notice and the brief to which the Examiner responded in the Answer
(Ans. 1).
Appeal 2009-008803
Application 10/623,179

5
and a plurality of retractors with each having a retractor blade, at least one of
which “has a flexible portion that flexes sufficiently so that the tibia may be
moved during the surgery without having to re-engage the retractors with the
flesh and skin layers or to reattach the retractors to the retractor support or
adjust the retractor support.” Appellants explain that it is the flexible portion
that allows the bones to be moved during surgery without repositioning the
retractor or support. Spec. 4: 24 – 5: 14. Appellants disclose “a retractor
blade 40 attached to a flexible connector 42 such as plastic cord,” and
further state that the flexible connector may be elastic or made of resilient
material. Id. at 4: 20-22, 5:9-11.
The Examiner found that Fowler, Jr. ‘312 discloses the claimed
invention – including a conventional retractor frame, or “retractor support,”
and a retractor attached to an elastic member – with the exception of a
retractor having a blade and a retractor support being mounted to a surgical
table. Ans. 4. The Examiner further found that Fowler ‘698 evidences that
retractors having paddles or “blades” attached to elastic members are well
known, and that Grieshaber teaches supporting a conventional retractor
frame on a surgical table in order to maintain the retractor frame at a desired
elevation above the incision site. Id. at 4-5, 6-7. Appellants do not appear to
contest any of these fact findings (App. Br. 9-11; Reply Br. 4-5) and we
adopt them as our own. We agree with the Examiner’s conclusion (Ans. 4-
5, 7) that the references’ combined teachings render obvious the subject
matter of Appellants’ claim 9. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 416 (2007) (“[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.”)
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Application 10/623,179

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Appellants argue that “[t]he Examiner's Answer provided no
motivation, teach [sic, teaching] or suggestion in any of the cited patents that
would lead to the combination of references.” Reply Br. 4; see also App.
Br. 9-11 (arguing that there is a lack of a clear and particular teaching,
suggestion or motivation to combine). The Supreme Court has rejected such
a rigid requirement for an obviousness analysis. See KSR Int’l Co., 550 U.S.
at 418-19. The Court noted that an obviousness analysis “need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 418. We determine
that the Examiner’s conclusion of obviousness is supported by adequate
articulated reasoning with rational underpinning. See Ans. 5, 6-7.
Appellants argue that each of the references lacks a particular
disclosure and therefore the Examiner must have utilized improper
hindsight. Reply Br. 4-5; see also App. Br. 10-11 (addressing Fowler, Jr.
‘312 and Grieshaber individually). This argument is not persuasive as
“[n]on-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
Appellants argue that “[n]either reference addresses the purpose of the
claimed invention where the tibia is moveable during a knee-joint
replacement surgery without reengaging the retractors with the flesh or
reattaching the retractors to the support.” App. Br. 11. This argument is
unavailing as “neither the particular motivation nor the avowed purpose of
the [Appellants] controls” in an obviousness analysis. KSR Int’l Co., 550
Appeal 2009-008803
Application 10/623,179

7
U.S. at 419. We acknowledge that claim 9 recites the intended use for the
apparatus and that the body of the claim contains functional language that
defines the flexible retractor portion in terms of the intended knee surgery.
The Examiner reasonably found that the device of the references’ combined
teachings “is fully capable of performing the functions recited in claim 9.”
Ans. 7. Appellants offer no persuasive argument or evidence as to why the
Examiner’s proposed combination does not result in an apparatus capable of
being used in knee-joint replacement surgery or why one of ordinary skill
would fail to see that apparatus’s applicability to knee surgery.
The rejection of claim 9 and its dependent claims 10-16 under § 103 is
affirmed.

The rejection of claims 17 and 18 as being unpatentable over Whitt
Claims 17 and 18 recite a method of holding down a lower leg
involving the steps of positioning a retractor having arms that extend along
opposite sides of the knee, and positioning a flexible strap such that it
engages the lower leg with a downward force. The Examiner maintains that
it would have been obvious to use Whitt’s “limb holder 10 to restrain the
lower leg or ‘tibia’ ….” Ans. 5, see also id. at 8-9. The Examiner’s
conclusion of obviousness appears to be based on the underlying finding,
with which we disagree, that Whitt’s device anticipates the device of claim
19. See Ans. 5 (citing to the Examiner’s discussion of claim 19); see also
our discussion above regarding the anticipation rejection. It seems that, if
Whitt’s limb holder were positioned such that the strap engages the tibia, the
device’s “arms” would extend along opposite sides of the tibia (the lower
leg) not the knee. The Examiner has not adequately articulated why the
Appeal 2009-008803
Application 10/623,179

8
claimed method including both positioning steps would have been obvious.
We do not sustain the rejection of claims 17 and 18 as unpatentable over
Whitt.

DECISION
The decision of the Examiner to reject claims 17-19 is reversed. The
decision of the Examiner to reject claims 9-16 is affirmed.
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

mls

WESTMAN CHAMPLIN & KELLY, P.A.
SUITE 1400
900 SECOND AVENUE SOUTH
MINNEAPOLIS, MN 55402