Ex Parte Coleman

Patent Trial and Appeal Board

Jul 20, 2018

13492058 (P.T.A.B. Jul. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/492,058 06/08/2012 Stuart Coleman
154825 7590 07/23/2018
KS - Whitmyer IP Group LLC
600 Summer Street
3rd Floor
Stamford, CT 06901
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.
04182-P0019A 9822
EXAMINER
BOUTSIKARIS, SOCRATES L
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
07/23/2018 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
Ex parte STUART COLEMAN
Appeal2016-007338 1
Application 13/492,0582
Technology Center 3700
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1 and 4--13, which constitute all the claims pending in
this application. Claims 2 and 3 have been cancelled. We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM.
1 Our decision references the Appeal Brief ("Appeal Br.," filed Jan. 8, 2016),
the Reply Brief ("Reply Br.," filed July 22, 2016), the Examiner's Answer
("Ans.," mailed May 25, 2016), and the Non-Final Office Action ("Non-
Final Act.," mailed July 8, 2015). The record includes a transcript of the
hearing held on July 10, 2018.
2 According to Appellant, "[t]he real party in interest is University of
Dundee, of Perth Road, GB-Dundee DDl 4HN, Great Britain, of the present
patent application." Appeal Br. 2.
Appeal 2016-007338
Application 13/492,058
BACKGROUND
According to Appellant, "[ t ]he invention generally relates to medical
instruments, especially to medical instruments having a shaft which has at
least one bent portion between the distal and the proximal end of the shaft."
Spec. ,r 2.
CLAIMS
Claims 1 and 10 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. A medical instrument, comprising:
an elongated shaft having a distal end, a proximal end, a
longitudinal axis, and at least one bent portion between the
distal end and the proximal end;
a working part arranged at the distal end of the shaft;
a handle arranged at the proximal end of the shaft; and
an elongated element extending through the shaft and
having a distal end connected to the working part and a
proximal end connected to the handle, the elongated element
connecting the working part to the handle through the elongated
element, the elongated element being removable from the
handle and having a connecting portion for connection with the
handle, and the handle having a receiving portion, into which
the connecting portion is inserted and held rotationally fixed
with respect to the handle,
the elongated element being configured for rotationally
fixed connection with the handle in at least two different
angular orientations about the longitudinal axis, and the shaft
being rotatable relative to the handle about the longitudinal axis
of the shaft, the shaft further being rotatable relative to the
working part and to the elongated element, and the working part
and the elongated element being rotationally fixed relative to
the handle.
Appeal Br. 11.
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Appeal 2016-007338
Application 13/492,058
REJECTIONS
1. The Examiner rejects claims 10-13 under 35 U.S.C. § 112, second
paragraph, as indefinite.
2. The Examiner rejects claims 1, 4--7, and 10-13 under 35 U.S.C. § I03(a)
as unpatentable over Azarbarzin3 in view ofRaus. 4
3. The Examiner rejects claims 8 and 9 under 35 U.S.C. § I03(a) as
unpatentable over Azarbarzin in view of Raus and Wolf. 5
DISCUSSION
Indefiniteness
The Examiner finds that the phrase "an actuating element for
actuating the rotation," in claim 10 lacks antecedent bases with respect to
"the rotation." Non-Final Act. 2. The Examiner also indicates that claims
11-13 are rejected based on their dependence from claim 10. Id. Appellant
does not respond to this rejection. We agree with the Examiner, and thus,
we sustain this rejection of claims 10-13.
Obviousness
With respect to claim 1, the Examiner finds that Azarbarzin teaches a
medical instrument including an elongated shaft, a working part, a handle,
an actuating element, and an elongated element as claimed, except that
"Azarbarzin is silent regarding the elongated element being removable from
the handle and configured for rotationally fixed connection with the handle
in at least two different angular orientation about the longitudinal axis."
Non-Final Act. 3--4 (citing Azarbarzin Figs. 8a, 8b; ,r,r 11, 19, and 92). The
3 Azarbarzin et al., US 2010/0234687 Al, pub. Sept. 16, 2010.
4 Raus et al., US 2008/0027448 Al, pub. Jan. 31, 2008.
5 Wolf, DE 9404423 Ul, May 11, 1994.
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Appeal 2016-007338
Application 13/492,058
Examiner finds that Raus teaches a medical instrument with an elongated
element that is removable from a handle and configured such that the
elongated element can be rearranged in at least two different angular
orientations about the longitudinal axis of the device. Id. at 4--5 (citing Raus
Figs. 3, 5; ,r,r 3, 5, and 6). The Examiner also finds that Raus teaches that
the elongated element is connected to the handle via a connection portion
and the handle has a receiving portion for receiving the connecting portion.
Id. at 5. The Examiner concludes that it would have been obvious to modify
the elongated element of Azarbarzin such that the elongated element can be
attached via a connecting portion to the receiving portion of the handle with
two different angular orientations, as taught by Raus, "in order to allow for a
quick, easy and safe switch between different instruments." Id. (citing Raus
As discussed below, we are not persuaded of reversible error in the
rejection of claim 1.
Appellant first argues that "the Examiner's analysis would have
actually led one skilled in the art away from" the combination proposed and
that Raus teaches away from the claimed invention because Raus teaches
that shaft 18 and handle 12 do no rotate with respect to one another. Appeal
Br. 7-8. We are not persuaded of error. Appellant points only to Raus's
disclosure that the shaft is fixed relative to the handle to show that Raus
teaches away from the proposed combination, which is not sufficient to
show Raus teaches away. Generally, the mere teaching of an alternate way
of doing something is not enough to show that a reference teaches away.
See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314,
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Application 13/492,058
1327 (Fed. Cir. 2009) ("A reference does not teach away[ ... ] if it merely
expresses a general preference for an alternative invention[.]").
Further, we note that the rejection acknowledges that element 18 of
Raus does not rotate with respect to the handle 12 once it is attached, but the
Examiner relies on Azarbarzin as teaching an outer shaft (811 in Fig. 8a)
that is rotatable relative to the handle and elongated element. Non-Final
Act. 4--5; see also Azarbarzin Fig. 8a; ,r 19. Thus, the Examiner makes clear
that Azarbarzin is relied upon as disclosing a shaft rotatable with respect to
the handle and elongated element as claimed, and the Examiner does not rely
on Raus for this teaching. See Ans. 3--4. Also, the rejection does not rely on
the particular relationship between the shaft 18 and the handle in Raus,
regardless of whether it is fixed in relation to the handle or not. Rather, the
Examiner relies on Raus' s disclosure that angular orientation of the cutting
plate 20 and the blade 3 8 may be changed with respect to the handle. See
Non-Final Act. 4--5; see also Raus ,r 96 (disclosing that the punch may be
removed, turned, and replace within the handle such that the gap between
the cutting plate and blade is reoriented with respect to the handle).
Thus, without further explanation, we disagree with Appellant's
contention that Raus teaches away from the proposed combination.
Next, Appellant argues that
it is not conceivable to a person skilled in the art to provide the
shaft 18 of the instrument according to Raus with a curvature,
as taught by Azarbarzin, because the sliding movement of the
stamp 3 6 in Raus, which forms part of the shaft 18, would not
be possible any longer if the shaft 18 would have a curvature
along its longitudinal direction.
Appeal Br. 9. Further, Appellant asserts that "transferring the teachings of
Raus to the teachings of Azarbarzin, the instrument according to Azarbarzin
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Appeal 2016-007338
Application 13/492,058
must dispense with any curvature along the shaft and dispense with any
rotational movement of the shaft relative to the handle." Id. We are not
persuaded.
"The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference . . . . Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art." In re
Keller, 642 F.2d 413,425 (CCPA 1981). Here, the Examiner does not rely
on the specific instrument disclosed by Raus, i.e., the stamp 36, in the
proposed combination. Rather, the Examiner finds that it would have been
obvious to incorporate Raus's teachings regarding the detachability and
rearrangement of the elongated element, i.e., the distal end of Raus's device,
with respect to the handle into Azarbarzin's device. See Ans. 5. Under this
understanding of the rejection, we are not persuaded that "Azarbarzin must
dispense with any curvature along the shaft and dispense with any rotational
movement of the shaft relative to the handle." We also note that this
argument appears to be similar to the argument addressed above insofar as
Appellant asserts that Raus does not teach a shaft as claimed that is rotatable
relative to the handle. As discussed above, the rejection relies on Azarbarzin
as disclosing the elongated shaft through which the elongated element is
inserted.
Further, Appellant argues that Azarbarzin is silent regarding the
connection of the elongated element and the handle, and thus, "[t]ransferring
the connection mechanism of the shaft 18 with the handle 12 according to
Raus to the instrument according to Azarbarzin would result in an
instrument which is completely different from what is intended by the
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Application 13/492,058
teachings in Azarbarzin." Appeal Br. 9; emphasis omitted. We are not
persuaded. First, Appellant does not adequately explain why incorporating
Raus' s connection mechanism into Azarbarzin would result in a completely
different instrument. It is not clear how Appellant can be sure of this if
Azarbarzin is silent regarding this connection. Second, even if we were to
assume that Azarbarzin teaches a different connection mechanism, Appellant
does not explain adequately how this suggests that the combination proposed
would not have been obvious.
Finally, to the extent Appellant argues that the rejection is based on
impermissible hindsight because "the Examiner's interpretation is an unfair
use of Appellant's disclosure as a roadmap" Appeal Br. 10; emphasis
omitted, we are not persuaded of error. The Examiner has identified where
each element claimed is taught in the art and has provided an articulated
reason with rational underpinnings to support the conclusion that the
proposed modification of Azarbarzin would have been obvious. See KSR
Int'l. Co. v. Teleflex, Inc., 550 U.S. 398,418 (2007). Thus, we are not
persuaded the rejection relies on any information found solely in Appellant's
disclosure. See In re McLaughlin, 443 F.2d 1392, 1395, (CCPA 1971).
Based on the foregoing, we are not persuaded of reversible error in the
rejection of claim 1. Accordingly, we sustain the rejection of claim 1.
Appellant does not raise any arguments regarding any of the remaining
claims, and thus, also we sustain the rejections of claims 4--13 for the same
reasons.
CONCLUSION
We AFFIRM the rejections of claims 1 and 4--13.
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Appeal 2016-007338
Application 13/492,058
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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