Ex Parte Bittenson

Patent Trial and Appeal Board

Jun 25, 2018

13435644 (P.T.A.B. Jun. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/435,644 03/30/2012
27777 7590 06/27/2018
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
FIRST NAMED INVENTOR
Steven N. Bittenson
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.
MIT5161USNP 9128
EXAMINER
SIPP,AMYR.
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
06/27/2018 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 STEVEN N. BITTENSON
Appeal2017-006148
Application 13/435,644
Technology Center 3700
Before DEMETRA J. MILLS, FRANCISCO C. PRATS, and
RYAN H. FLAX, Administrative Patent Judges.
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a). The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
STATEMENT OF CASE
The following claim is representative.
1. A surgical hammer comprising:
a housing having an exterior surface, an interior surface,
and a wall forming a hermetic seal between the interior surface
and the exterior surface and defining an interior volume, the
housing having a distal end and a proximal end;
an electrically powered impactor disposed within the
interior volume and configured for generating an impact at an
impact-receiving portion of the interior surface;
Appeal2017-006148
Application 13/435,644
a surgical impact head coupled to the housing exterior
surface adjacent the impact-receiving portion of the interior
surface whereby to receive the impact;
an electrical energy storage unit disposed within the
interior volume and rechargeable from outside the housing
without violating the hermetic seal; and
a controller disposed within the interior volume and
configured for delivering electrical energy from the storage unit
to the impactor for generating the impact upon receipt of a
control signal, the controller configured to receive the control
signal through the wall without violating the hermetic seal.
Grounds of Rejection
1. Claims 1-5, 7, 9, 19, 20, 22, and 23 are rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Spiegelberg et al. (US
6,884,264 B2, issued Apr. 26, 2005) in view of Kesler.
2. Claim 6 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Spiegelberg and Kesler et al. (US 2012/0235501
Al, published Sept. 20, 2012) in view ofYedlicka et al. (US
2007/0282344 Al, published Dec. 6, 2007).
3. Claims 8, 10-12, and 21 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Spiegelberg and Kesler in
view of Patel et al. (US 2008/0294142 Al, published Nov. 27,
2008).
FINDINGS OF FACT
The Examiner's findings of fact are set forth in the Final Action at
pages 2-9. The following facts are highlighted.
1. Figure 10 of Spiegel berg is reproduced below.
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Application 13/435,644
Fig. 10 shows that Spiegelberg's includes a hand-held device
300 that includes an oscillation actuator 310, a stem component
recess 320 defined by a cap 322, a heating element 324 and a
retaining ring 326, and electronic circuitry 328. The oscillation
actuator 310 is mechanically coupled to a force transducer 312
that is in tum is mechanically coupled to an oscillation member
318. Suitable bearings 314 and 316 restrict the lateral
movement of the oscillation member 318.
Col. 12, 11. 14--23. The oscillation actuator with the coupler has an internal
oscillator which oscillates and actuator pin/member to insert a prosthetic
stem at a prescribed frequency and amplitude, and in a specific direction.
Col. 11, 11. 5-11.
2. Figure 9B of Spiegelberg is reproduced below.
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Application 13/435,644
220
)
METALLIC STEM
"'-222
CEMSNT-f!LLEO CAVITY
.. 22$
226
FIG. 98
Figure 9B shows a three dimensional schematic view of an
insertion apparatus being used for an orthopedic implant in
accordance with a preferred embodiment of Spiegelberg.
3. Spiegelberg discloses that:
The entire hand-held insertion device 240 is contained in a
hermetic bag 246 that is connected to the metallic stem
component 244 and the oscillation member through sterile pass-
through ports, such as 248. The flexible sterile sheath or bag is
shown with a schematic cut-out 250. The device is placed in
the bag through a hermetic zip-lock mechanism 252. The
conformable bag 246 allows easy handling of the apparatus,
and can be sterilized or can be made disposable.
Col. 12, 11. 6-13.
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Appeal2017-006148
Application 13/435,644
PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Obviousness Rejection
The Examiner finds that Speigelberg teaches each element claimed
except Spiegelberg is silent with respect to a wall comprising a hermetic seal
between the interior surface and the exterior surface, and defining an interior
volume, and having an electrical energy storage unit being rechargeable
from outside the housing without violating the hermetic seal. Final Act. 6.
However, the Examiner determined that Speigelberg teaches a housing in the
form of a shell or casing, the hermetic bag 246 as shown in Fig. 9C, which
provides a hermetic seal, so as to render obvious the wall element as
claimed. Id. The Examiner relies on Kesler for the disclosure of "an
electrical energy storage unit being rechargeable from outside the housing
without violating the hermetic seal (abstract)." Id. at 7.
Appellant contends that:
The plastic bag cannot equate the hermitically sealed
housing as the impact is not delivered through it by impact
delivered upon an interior surface being delivered to its exterior
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Appeal2017-006148
Application 13/435,644
surface as in Spiegelberg et al.' s bag the impact hammer
extends out of the bag through a port.
App. Br. 4 (italicized emphasis added).
The issue is: Does Spiegelberg disclose a surgical hammer having "a
wall forming a hermetic seal between the interior surface and the exterior
surface [of a housing]," as claimed?
ANALYSIS
We conclude that the Examiner has not provided evidence to support
a prima facie case of obviousness. We provide the following additional
comment to the Examiner's argument set forth in the Final Rejection and
Answer.
Claim Interpretation
Claim 1, in relevant part claims, "a housing having an exterior
surface, an interior surface, and a wall forming a hermetic seal between the
interior surface and the exterior surface and defining an interior volume, the
housing having a distal end and a proximal end." (italicized emphasis
added).
The Examiner has not provided sufficient evidence to establish the
cited prior art teaches or suggests a "wall forming a hermetic seal between
the interior surface and the exterior surface and defining an interior volume"
so as to render such an element obvious in the context of the remainder of
the claimed subject matter.
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Appeal2017-006148
Application 13/435,644
Spiegelberg discloses an orthopedic prosthesis which oscillates at a
particular frequency and amplitude. The device is typically held by the hand
of the surgeon, who guides the vibrating prosthesis into the cement-filled
medullary cavity. Spiegelberg Abstract. The device for implanting a
prosthesis of Spiegelberg includes a housing having a transducer coupled to
the prosthesis to actuate movement of the prosthesis. Id. at col. 19, claim 1.
Control circuitry may be found within the housing. Id. at claim 3. The
device of Sprigelberg is placed in a flexible sterile sheath or bag. Id. at col.
12, 11. 9-13. The device is placed in the bag through a hermetic zip-lock
mechanism. Id. The conformable bag allows easy handling of the
apparatus, and can be sterilized or can be made disposable. Id.
We are unconvinced hermetic sheath or bag of Spiegelberg meets the
claimed limitation of a "wall forming a hermetic seal between the interior
surface and the exterior surface." The claim requires that the housing has an
exterior surface and an interior surface and that the hermetic seal is between
these two surfaces. Thus, we interpret the wall of the claim to be a wall in
the housing between the interior and exterior surfaces. The hermetic bag or
sheath of Spiegel berg does not form a hermetic seal between an interior
surface and an exterior surface of a housing. Instead, it is a container into
which the housing is placed and sealed (to some degree).
For the reasons above, we conclude a prima facie case for obviousness
has not been made and reverse each obviousness rejections.
CONCLUSION OF LAW
The cited references do not support the Examiner's obviousness
rejections, which are reversed.
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Application 13/435,644
REVERSED
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