Ex Parte Bonutti

Board of Patent Appeals and Interferences

Jan 16, 2009

10743192 (B.P.A.I. Jan. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte PETER M. BONUTTI
__________

Appeal 2008-5877
Application 10/743,192
Technology Center 3700
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Decided: January 16, 2009
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Before TONI R. SCHEINER, DEMETRA J. MILLS and
LORA M. GREEN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-4 and 7. We have jurisdiction under
35 U.S.C. § 6(b).

Appeal 2008-5877
Application 10/743,192

STATEMENT OF THE CASE
The claims are directed to a fluid retractor. Claim 1 is representative
of the claims on appeal, and reads as follows:
1. An apparatus comprising:
a rigid shaft having an open first end and an open second end defining
a lumen therebetween; and
an inflatable bladder disposed at the distal end and in fluid
communication with the lumen, the inflatable bladder having the shape of a
wedge upon inflation such that the inflatable bladder separates adjacent
portions of bone tissue thereby creating a working space.
The Examiner relies on the following reference:
Sheldon US 3,417,745 Dec. 24, 1968
We affirm.

ISSUE
The Examiner concludes that claims 1-4 and 7 are anticipated under
35 U.S.C. § 102(b), or in the alternative, obvious under 35 U.S.C. § 103(a),
over Sheldon.
Appellant contends that Sheldon does not disclose or suggest a shaft
having open first and second ends defining a lumen therebetween with an
inflatable bladder disposed at the distal end of the shaft.
Thus, the issue on Appeal is: Has Appellant demonstrated that the
Examiner erred in concluding that Sheldon discloses or suggests a shaft
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having open first and second ends defining a lumen therebetween with an
inflatable bladder disposed at the distal end of the shaft?

FINDINGS OF FACT
FF1 The “present invention relates to fluid operated apparatus for use in
moving apart abutting tissues, during surgery, in order to create[ ] a space
between the tissues to improve visualization and for increased working
space during open surgery and fiberoptic assisted surgery.” (Spec. 1.)
FF2 The retractor includes a fluid operated portion, such as a bladder or
balloon, which is used to retract the tissue (id. at 3). The bladder is made of
materials “such as Kevlar or Mylar which may be reinforced with stainless
steel, nylon, or other fiber to prevent puncturing and to provide structural
shape and support as desired.” (Id. at 4.)
FF3 The Examiner rejects claims 1-4 and 7 under 35 U.S.C. § 102(b) as
being anticipated by, or in the alternative, under 35 U.S.C. § 103(a), as being
obvious over Sheldon (Ans.1 3). As Appellant does not argue claims 2-4
seperately from claim 1, those claims stand or fall with claim 1. 37 C.F.R. §
41.37(c)(1)(vii).

1 All references to the Answer are to the Examiner’s Answer dated March
27, 2006.
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Application 10/743,192

FF4 The Examiner relies on Figures 3 and 4 of Sheldon, reproduced
below.

Figures 3, 3A, and 4 show a spinescope according to Sheldon, on which an
inflatable member is provided (Sheldon, col. 2, ll. 28-31).
FF5 As shown in Figure 3, the inflatable member has an opening 50
connected to channel 56 (i.e., in fluid communication with the shaft 56) that
is attached to a fluid or gas source (id. at col. 8, ll. 62-68).
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FF6 Although not shown, the Examiner asserts that Sheldon discloses a
shaft for inflating the bladder 57 or 57a (element 56 in Figure 3), that is rigid
or reinforced by attachment to the spinescope (Ans. 3).
FF7 The Examiner further finds that bladders 57 and 57a have the shape of
a wedge upon inflation as they taper in the proximal direction, and that the
bladders would be able to separate adjacent portions of bone tissue, as they
may be constructed from mylar, which is one of the materials used by
Appellant (id. at 4-5).
FF8 As to claim 7, the Examiner finds that Sheldon discloses a needle
having a passage that receives the spinesope (id. at 7). The Examiner finds
further that Sheldon teaches that the tip of the needle does not have a closing
wall.
FF9 Moreover, Sheldon teaches that the use of an inflatable means applies
to all of the embodiments described in the patent (Sheldon, col. 9, ll. 24-25).

PRINCIPLES OF LAW
Our mandate is to give claims their broadest reasonable interpretation.
In re American Academy of Science Tech Center, 367 F.3d 1359, 1364 (Fed.
Cir. 2004). “An essential purpose of patent examination is to fashion claims
that are precise, clear, correct, and unambiguous. Only in this way can
uncertainties of claim scope be removed, as much as possible, during the
administrative process.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989).
As to anticipation, every element and limitation of the claimed
invention must be found in a single prior art reference, arranged as in the
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claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383
(Fed. Cir. 2001).
As to obviousness, the question of obviousness is resolved on the
basis of underlying factual determinations including: (1) the scope and
content of the prior art; (2) the level of ordinary skill in the art; (3) the
differences between the claimed invention and the prior art; and (4)
secondary considerations of nonobviousness, if any. Graham v. John Deere
Co., 383 U.S. 1, 17 (1966). The Supreme Court has recently emphasized
that “the [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.” KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1741
(2007). “The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Id. at 1739. Moreover, an “[e]xpress suggestion to substitute one equivalent
for another need not be present to render such substitution obvious.” In re
Fout, 675 F.2d 297, 301 (CCPA 1982).

ANALYSIS
Appellant argues that “Sheldon does not anticipate or render obvious
any of the claims on appeal because Sheldon fails to disclose or suggest a
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shaft having open first and second ends defining a lumen therebetween with
an inflatable bladder disposed at the distal end of the shaft.” (App. Br.2 4.)
According to Appellant, Sheldon “discloses a device having a hollow
tube with a closed distal end wherein at least one window is included in the
closed distal end,” wherein the inflatable member is attached along the
exterior of the device such that the windows are not encased (id. at 4-5).
Thus, Appellant asserts, “a separate inflation tube extends along the exterior
of Sheldon’s device and is fluidly coupled to the inflatable member.” (Id. at
5.) Appellant therefore argues that Sheldon, “[r]ather than disclosing or
suggesting a shaft having an open first end and an open second end, . . .
specifically discloses a device wherein one end of the device is closed and
the inflatable member is attached along the exterior of the device.” (Id. at
6.)
Claim 1 recites an “apparatus comprising 1) a rigid shaft having an
open first end and an open second end defining a lumen therebetween; and
2) an inflatable bladder disposed at the distal end and in fluid
communication with the lumen, the inflatable bladder having the shape of a
wedge upon inflation such that the inflatable bladder separates adjacent
portions of bone tissue thereby creating a working space.” The use of the
open transition phrase “comprising” allows for the addition of other
components. In addition, the recitation that “the inflatable bladder separates

2 All references to the Appeal Brief (App. Br.) are to the Appeal Brief dated
March 27, 2006.
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adjacent portions of bone tissue thereby creating a working space,” is merely
a statement of intended use and not a patentable limitation.
Therefore, all that is required by claim 1 is a rigid shaft having a
lumen, wherein an inflatable bladder is disposed at one end of the shaft,
wherein the bladder is in fluid communication with the lumen of the shaft,
wherein the inflatable bladder has a wedge shape upon inflation.
The channel (element 56 in Figure 3, not shown in Figure 4) that is
used to inflate the inflatable transparent member of Sheldon (see FF5 and 6)
reads on the shaft of claim 1. The fact that it may be on the outside or on the
inside of the spinescope of Sheldon is irrelevant, as all that is required by the
claim is a rigid shaft having a lumen, wherein an inflatable bladder is
disposed at one end of the shaft, wherein the bladder is in fluid
communication with the lumen of the shaft. In addition, as both Sheldon
and the instant Specification teach the use of inflatable bladders made from
mylar, the mylar bladder of Sheldon would be capable of performing the
intended use of separating adjacent portions of bone tissue.
Thus we find that Sheldon anticipates the subject matter of claim 1.
In the alternative, as the shaft is not specifically shown in Figure 4, we
conclude that it would have been prima facie obvious to the ordinary artisan
to attach a rigid shaft to the bladder of the spinescope in Figure 4 so that it
may be attached to a gas or fluid source for inflation. The rejection is thus
affirmed as to claim 1, and as claims 2-4 stand or fall with that claim, the
rejection is affirmed as to those claims as well.
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As to claim 7, Appellant argues that claim 7 “recites that the apparatus
includes a cannula having a passage that receives the shaft to deploy the
bladder at a target site in the tissue.” (App. Br. 6.) Appellant asserts that the
spinal needle of Sheldon does not meet the limitation added in claim 7, as
Sheldon specifically teaches that the disclosed device is maintained within
the spinal needle, whereas the claimed device includes “a cannula having a
passage for deploying the bladder at a target site in tissue.” (Id. at 7.)
Claim 7 recites the “apparatus as in claim 1, further comprising a
cannula having a passage which receives the shaft to deploy the bladder at a
target site in the tissue.” As noted by the Examiner, Sheldon teaches a
needle for receiving the spinescope (which would include the shaft for
inflating the bladder), wherein the tip has no closing wall (FF8). Thus, even
though the spinescope (and the shaft) remain in the needle, an inflatable
bladder could be deployed through the end of the needle as it contains no
closing wall. Thus, although not specifically exemplified, we conclude that
the Examiner has established that claim 7 is anticipated by and/or rendered
obvious by Sheldon.

CONCLUSIONS OF LAW
We conclude that Appellant has not demonstrated that the Examiner
erred in concluding that Sheldon discloses or suggests a shaft having open
first and second ends defining a lumen therebetween with an inflatable
bladder disposed at the distal end of the shaft, and we thus affirm the
rejection of claims 1-4 and 7 under 35 U.S.C. § 102(b) as being anticipated
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by, or in the alternative, under 35 U.S.C. § 103(a), as being obvious over
Sheldon.

TIME LIMITS
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

dm

KIMBERLY V. PERRY, ESQ
U.S. SURGICAL
A DIVISION OF TYCO HEALTHCARE GROUP
150 GLOVER AVENUE
NORWALK, CT 06856

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