Ex Parte Echeverri

Patent Trial and Appeal Board

Feb 26, 2013

10565002 (P.T.A.B. Feb. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SANTIAGO ECHEVERRI
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Appeal 2011-003642
Application 10/565,002
Technology Center 3700
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Before DONALD E. ADAMS, LORA M. GREEN, and
MELANIE L. McCOLLUM, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claim 1 (App. Br. 4; Ans.
2). We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE CASE
Claim 1 is directed to a guide for an acetabular prosthetic cup
instrument and is reproduced in the Claims Appendix of Appellant’s Brief.
Appeal 2011-003642
Application 10/565,002

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Claim 1 stands rejected under 35 U.S.C. § 102(e) as being anticipated
by Subba Rao.
1

We affirm.

ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding that Subba Rao teaches Appellant’s claimed invention?

FACTUAL FINDINGS (FF)
FF 1. Subba Rao’s Figure 1 is reproduced below:

“FIG. 1 is an exploded side sectional view of a modular instrument for
positioning an acetabular prosthetic socket incorporating … [Subba Rao’s]
invention” (Subba Rao, col. 6, ll. 5-7).

1
Subba Rao, US 6,743,235 B2, issued June 1, 2004.
Appeal 2011-003642
Application 10/565,002

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FF 2. The guide of Subba Rao’s instrument, comprises: (1) a shaft 80; (2)
an instrument fixing means 62 for fixing the guide to a surgical instrument
10; (3) a pointing means 90 situated at the distal end 84 or shaft 80; and (4)
an orientation means comprising: (a) a pillar 60 and (b) a bubble level 40
(Ans. 3-4; see FF 1).
FF 3. Subba Rao’s Figures 6 and 7 are reproduced below:

FIG. 6 is a sectional view illustrating the level bit
member incorporating … [Subba Rao’s] invention, wherein the
air bubble [is] migrating towards [the] proximal end of [the]
level bit.
FIG. 7 is a sectional view illustrating the level bit
member incorporating … [Subba Rao’s] invention, wherein the
air bubble [is] migrating towards the center of [the] level bit.
The orientation pillar member standing vertical.

(Subba Rao, col. 6, ll. 19-26.)
Appeal 2011-003642
Application 10/565,002

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FF 4. Examiner finds that Subba Rao’s orientation means defines a
reference plane (Ans. 4; see Spec. 3: 14-16 (“the orientation means are of the
dual-axis type, namely they allow the definition of the instrument orientation
along two directions, defining thereby one plane”)).
FF 5. Examiner finds that Subba Rao’s “bubble level 40 serves to orient
the device in one direction … [and] the pillar [60] serves to orient the device
in a second direction” (Ans. 4; see also Subba Rao, col. 7, ll. 59-63 (“the
sensitive index of air bubble member 55, in the levelling [sic] apparatus 40
cooperate with orientation pillar 60 in order to align the alignment shaft 20
to position [the] acetabular prosthetic socket into [a] correct angle of
abduction”); Subba Rao, col. 8, ll. 24-26 (“multiple sensitive parameters and
indexes are used to position an acetabular prosthetic into correct position”).

ANALYSIS
We are not persuaded by Appellant’s contention that Subba Rao “is
limited to and expressly teaches the use of a single-axis type orientation
means (bubble level 40)” and therefore “actually teaches away from the
claimed invention” (App. Br. 9; FF 5). Appellant fails to identify a
disclosure in Subba Rao that supports the foregoing contention.
Appellant’s claim does not require the device to comprise two bubble
levels (see Claim 1). Therefore, we are not persuaded by Appellant’s
contentions regarding a device that “includes two bubble levels” (id. at 10
(emphasis removed)).
For the foregoing reasons, we are not persuaded by Appellant’s
unsupported contention that Subba Rao “does not appreciate or even attempt
to define a single reference plane” (id. at 11 (emphasis removed); Cf. FF 4).
Appeal 2011-003642
Application 10/565,002

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CONCLUSION OF LAW
The preponderance of evidence on this record supports Examiner’s
finding that Subba Rao teaches Appellant’s claimed invention. The rejection
of claim 1 under 35 U.S.C. § 102(e) as being anticipated by Subba Rao is
affirmed.

TIME PERIOD FOR RESPONSE
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

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