Ex Parte Collazo

Board of Patent Appeals and Interferences

Aug 25, 2010

10679569 (B.P.A.I. Aug. 25, 2010)

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.
10/679,569 10/06/2003 Carlos E. Collazo OSTEONICS 3.0-456 3144
530 7590 08/26/2010
LERNER, DAVID, LITTENBERG,
KRUMHOLZ & MENTLIK
600 SOUTH AVENUE WEST
WESTFIELD, NJ 07090
EXAMINER
CARTER, TARA ROSE E
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
08/26/2010 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 CARLOS E. COLLAZO
____________

Appeal 2009-009145
Application 10/679,569
Technology Center 3700
____________

Before: LINDA E. HORNER, JOHN C. KERINS, and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

HORNER, 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.
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Application 10/679,569
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STATEMENT OF THE CASE
Carlos E. Collazo (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 12-16, 18, and 20-24, which are
all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We
REVERSE.
THE INVENTION
Appellant’s claimed invention is a reamer bushing for progressively
enlarging a bore in a bone canal during orthopedic surgery. Spec. 1, para.
[0001]. Claim 12, reproduced below, is representative of the subject matter
on appeal.
12. A reamer bushing mounted in a fixture adapted for being
aligned with a bone canal, the bushing for use with at least two
different diameter rotatable bone reamers, the reamers each
having a plurality of longitudinal flutes extending from an inner
shaft, outer radial ends of the flutes defining the reamer
diameter, the bushing comprising:
a body with an outer bearing surface for rotatably
engaging a surface of the fixture in which the bushing is
mounted;
a longitudinal bore formed in the body for receiving the
inner shaft of the reamer; and
a plurality of recesses extending radially outward of said
bore and open thereto, each recess for receiving at least one of
said plurality of flutes of said bone reamers.
THE REJECTIONS
Appellant seeks review of the following decisions by the Examiner:
1. Rejection of claims 12-16, 18, and 20-22 under 35 U.S.C. § 102(b) as
anticipated by Cenis (US 3,981,604).
2. Rejection of claims 12-14, 18, and 20-22 under 35 U.S.C. § 102(e) as
anticipated by Ball (US 2003/0163151 A1).
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Application 10/679,569
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3. Rejection of claims 23 and 24 under 35 U.S.C. § 103(a) as unpatentable
over Cenis.
ISSUES
Does Cenis disclose a reamer bushing “body with an outer bearing
surface for rotatably engaging a surface of the fixture in which the bushing is
mounted”?
Does Ball disclose a reamer bushing mounted in a fixture capable of
use with bone reamers?
ANALYSIS
Rejection of claims 12-16, 18, and 20-22 as anticipated by Cenis
Claim 12 recites a reamer bushing mounted in a fixture, the reamer
bushing having a “body with an outer bearing surface for rotatably engaging
a surface of the fixture in which the bushing is mounted.” The Examiner
interprets this as functional language so that all that the prior art need
disclose is a reamer bushing capable of rotationally engaging a fixture.
Ans. 4-5, 8-12. Using this interpretation, the Examiner found that Cenis
discloses a reamer bushing capable of such use. Ans. 6.
Cenis discloses a liner bushing capable of two uses: one, as a bushing
11, adapted to receive and hold a slip renewable bushing 13; and two, as a
bushing 12, adapted for receiving a locating pin 15. Cenis, col. 2, ll. 59-61,
66-68; col. 3, ll. 11-14; fig. 1. Cenis discloses that liner bushing 11 is held
in a plate 14 by adhesive 14a on the outer surface of bushing 11, and liner
bushing 12 is held in plate 14 by a press fit. Cenis, col. 2, ll. 61-62, 66-67;
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Application 10/679,569
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fig. 1. Thus, both embodiments of Cenis’s liner bushing are incapable of
rotation in the fixture in which they are mounted (plate 14).2
In order for Cenis’s liner bushing 21 to be capable of rotationally
engaging plate 14, it would have to be modified, such as by not installing it
with adhesive, or by reducing the size so that it is not press fit. However,
because modification of the reference is not permissible in an anticipation
rejection, we agree with Appellant (App. Br. 7-9) that Cenis does not
anticipate claim 12. The rejection of claims 13-16, 18, and 20-22 is also in
error by virtue of their dependence from claim 12.
Rejection of claims 12-14, 18, and 20-22 as anticipated by Ball
The Examiner found that Ball discloses a reamer bushing (housing 20)
that is mounted in a fixture (end cap 60) and has recesses (plurality of
internal flutes 25) capable of receiving the flutes of at least two different
diameter rotatable bone reamers. Ans. 4-5, 10-11. Appellant contends
Ball’s reamer bushing (housing 20) that is mounted in a fixture (end cap 60)
is not capable of use with bone reamers. App. Br. 9-10.
Ball discloses a cutting device 100 that includes a housing 20 having a
plurality of internal flutes 25 in its increased diameter portion 21. Ball 2,
paras. [0034], [0036]; figs. 4, 6. Internal flutes 25 extend longitudinally
from the reduced diameter cavity 26 of housing 20 to end cap 60. Ball, fig.

2 The Examiner finds that “Cenis teaches that the bushing may, but not
shall, be press-fitted or glued to the plate”, implying that the liner may not
be secured within the aperture. Ans. 7 (citing to column 1, lines 10-13 of
Cenis). The portion of Cenis which the Examiner cites, states, “[t]he liner
may be press fitted into the aperture or held in the tooling plate by potting in
a resinous material….” Cenis, col. 1, ll. 12-14. Contrary to the Examiner’s
finding, Cenis discloses that the liner may be secured by one of two
methods, and does not disclose that the liner may be unsecured within the
aperture.
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3. Given this configuration, a bone reamer received in the recesses (internal
flutes 25) of Ball’s reamer bushing (housing 20) would be trapped internally
between reduced diameter cavity 26 and end cap 60. We fail to see, and the
Examiner has failed to explain, how a bone reamer disposed within the
assembly of Ball would be able of use as a bone reamer for reaming a bone
canal.
The rejection of claims 13-14, 18, and 20-22 is also in error by virtue
of their dependence from claim 12.
Rejection of claims 23 and 24 under 35 U.S.C. § 103(a) as unpatentable
over Cenis
Claims 23 and 24 depend indirectly from claim 12. The rejection of
claims 23 and 24, like the rejection of claim 12 as anticipated by Cenis, is
based upon the incorrect finding of fact that Cenis’s reamer bushing is
capable of rotation within the fixture in which it is mounted. Ans. 5-6. For
the reasons explained in the analysis of claim 12, supra, the rejection of
claims 23 and 24 is also in error.
CONCLUSION
Cenis does not disclose a reamer bushing mounted in a fixture capable
of rotation in that fixture as called for in claim 12.
Ball does not disclose a housing and end cap capable of use with bone
reamers.
DECISION
We REVERSE the Examiner’s decision to reject claims 12-16, 18,
and 20-24.

REVERSED
Appeal 2009-009145
Application 10/679,569
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nlk

LERNER, DAVID, LITTENBERG,
KRUMHOLZ & MENTLIK
600 SOUTH AVENUE WEST
WESTFIELD NJ 07090