Ex Parte Eder

Patent Trial and Appeal Board

Sep 7, 2016

13126649 (P.T.A.B. Sep. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/126,649 07/06/2011
20151 7590 09/09/2016
HENRY M FEIEREISEN, LLC
HENRY M FEIEREISEN
708 THIRD A VENUE
SUITE 1501
NEW YORK, NY 10017
FIRST NAMED INVENTOR
Klaus Eder
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.
EDER-2 4726
EXAMINER
JACKSON, GARY
ART UNIT PAPER NUMBER
3769
NOTIFICATION DATE DELIVERY MODE
09/09/2016 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):
INFO@FEIEREISENLLC.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte KLAUS EDER
Appeal2016-007241
Application 13/126,649
Technology Center 3700
Before JILL D. HILL, LISA M. GUIJT, and JASON W. MEL VIN,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Klaus Elder ("Appellant") appeals under 35 U.S.C. § 134(a) from the
Examiner's decision to reject claims 23-25, 29, and 31-36. 1 We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Claims 43--48 are withdrawn from consideration. Final Act. 1. Claims
26-28 and 30 are indicated as containing allowable subject matter. Id. at 10.
Appeal2016-007241
Application 13/126,649
CLAIMED SUBJECT MATTER
Sole independent claim 23, reproduced below, represents the subject
matter on appeal, with key disputed limitations italicized.
23. A device for penetratingly extending a blind hole
introduced into hard tissue, particularly a jawbone, comprising:
a tubular body having a distal working opening and an
inlet opposite the working opening, wherein the tubular body is
either constructed to be sealingly inserted into a bone bore or
wherein the tubular body comprises means for sealing insertion
into the bone bore,
a sealing element in cooperation with a shaft of a rotatably
driven milling cutter said shaft penetrating the sealing element,
closing the inlet of the tubular body, while allowing at least a
feed motion, a drive motion and a steering motion of the rotatably
driven milling cutter,
a connection disposed on the tubular body and opening
into the tubular body at a proximal end of the tubular body for
applying a pressure above atmospheric pressure in the tubular
body; and
a pressure control device connected to the tubular body'
via the connection, said pressure control device constructed to
generate the pressure above atmospheric pressure.
Appeal Br. 6 (Claims App.).
REJECTIONS2
I. Claims 23 and 33 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Muschler (US 2004/0191897 Al, pub. Sept. 30, 2004). Final
Act. 5.
2 The rejection of claims 23-36 under 35 U.S.C. § 112, second paragraph,
has been withdrawn. Final Act. 3; Ans. 8.
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Application 13/126,649
II. Claims 24 and 25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Muschler and Miller (US 2007/0016100 Al; pub. Jan. 18,
2007). Id. at 7.
III. Claim 29 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Muschler and Stednitz (US 5,098,435; iss. Mar. 24, 1992).
Id.
IV. Claims 31 and 32 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Muschler and Boock (US 2005/0059905 Al; pub. Mar.
17, 2005). Id. at 8.
V. Claims 34--36 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Muschler and Krag (US 2007/0265491 Al; pub. Nov. 15,
2007). Id.
VI. Claims 34--36 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Muschler and David (US 6,716,215 Bl; iss. Apr. 6, 2004).
Id. at 9. 3
ANALYSIS
The dispositive issue in this case is whether Muschler's device
includes a connection at a proximal end of a tubular body that is inherently
capable of applying a pressure above atmospheric pressure in its tubular
body/cannula 60.
The Examiner initially finds that Muschler discloses, inter alia, an
irrigation control 142 connected to the cannula 60 for delivering fluids to a
3 Although the Examiner omits claim 3 6 from the listing of the claims
rejected pursuant to this rejection, analysis for the rejection of claim 36 is
included. Final Act. 9-10.
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Application 13/126,649
distal end of the cannula via shaft 30. Final Act. 5. The Examiner equates
the irrigation control 142 with the claimed pressure control device, the shaft
30 with the claimed connection, and the cannula 60 with the claimed tubular
body. Id.
The Examiner also finds that Muschler discloses, as an alternative
pressure source, an anticoagulant fluid control 132 connected via a suction
line 126 to a proximal end of the cannula 60. Id. at 5-6. The Examiner
equates the anticoagulant fluid control 126 with the claimed pressure control
device, the suction line 126 with the claimed connection, and the cannula 60
with the claimed tubular body. Id.
Regarding the initial finding, Appellant argues that Muschler' s shaft
30 traverses the cannula 60, rather than opening into the cannula 60 at a
proximal end thereof, and delivers pressurized fluid beyond the distal end of
the cannula 60. Appeal Br. 4. Appellant thus appears to argue that
Muschler's shaft 30 is not a connection "opening into the tubular body at a
proximal end [thereof]," and that the Muschler's shaft 30 cannot deliver
irrigation fluid into the cannula 60 to "apply a pressure above atmospheric
pressure in the tubular body." We agree with the Appellant, and the
Examiner does not repeat these findings in the Answer. Ans. 2-3.
Regarding the additional/alternative finding, Appellant argues that the
Examiner fails to establish that Muschler' s anticoagulant control is capable
of applying pressure "above atmospheric pressure in the tubular body" 60.
Appeal Br. 4. According to Appellant, Muschler discloses neither "the
amount of pressure of the anticoagulant nor that the control permits
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Application 13/126,649
anticoagulant fluid to enter the suction line 126 when the aspiration control
is turned off." Id.
The Examiner responds that Appellant's argument is "contrary to the
notion that the anticoagulant control [(132)] provides fluid into the suction
line (126)," because the suction line 126 is connected to the cannula 60.
Ans. 8. According to the Examiner, claim 23 only requires a pressure
control device "capable of providing a positive pressure that is fluidly
connected to the cannula," which "satisfies a broadest reasonable
interpretation." Id. at 8-9.
Appellant has the better argument. In the embodiment of Muschler's
Figure 3, although the anticoagulant may be pressurized for injection into
harvested material, it is injected into material that has left the cannula 60 and
entered the suction line 126. Muschler i-f 72. The Examiner's finding that
such an injection in a suction line 126 would be capable of applying a
pressure above atmospheric pressure in Muschler' s cannula 60 is at best
speculative.
As a third alternative, the Examiner finds that, in Muschler's Figure
11, the anticoagulant control 130 is connected to the cannula 60 via an
external port 414, which is "near the proximal end of the cannula." Ans. 9.
According to the Examiner, the embodiment of Muschler' s Figure 11
introduces anticoagulant fluid into the harvested material sooner, and can
"provide positive pressure directly to the cannula." Id. at 10. The Examiner
equates Muschler's external port 414 with the claimed connector.
Regarding the embodiment of Muschler's Figure 11, Appellant
responds that the port 414 does not connect to a proximal end of the cannula
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Application 13/126,649
60; rather, the port 414 "connects to the annular lumen 410 and only opens
into the cannula 60 at the nozzles 412 located at the distal end of the --
cannula." Reply Br. 3; Muschler i-fi-1 92-93.
The Examiner's findings regarding the third alternative are also
unsupported. Claim 23 recites the connection "opening into the tubular
body at a proximal end of the tubular body for applying a pressure above
atmospheric pressure in the tubular body." The Examiner resorts to
speculation at least in finding that Muschler's port 414, the lumen 410, and
the nozzles 412, which inject anticoagulant into a vacuumed/aspirated
stream of harvested materials at a distal end of the cannula 60, will apply
pressure above atmospheric pressure in the cannula 60. Given that the
cannula 60 may be in a vacuum state (i.e., below atmospheric pressure)
during aspiration, and the injection pressure is unknown, it is not necessarily
true that anticoagulant injection via the nozzles 412 can increase the pressure
at any part of Muschler's cannula 60 above atmospheric pressure at any
point in time.
For the reasons set forth above, we do not sustain the rejection of
independent claim 23. The Examiner does not find that any of Miller,
Stednitz, Boock, Krag, or David cures the deficiencies of Muschler. We
therefore do not sustain the rejections of the remaining dependent claims.
DECISION
We REVERSE the rejection of claims 23 and 33 under 35 U.S.C.
§ 102(b) as anticipated by Muschler.
We REVERSE the rejection of claims 24 and 25 under 35 U.S.C.
§ 103(a) as unpatentable over Muschler and Miller.
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Application 13/126,649
We REVERSE the rejection of claim 29 under 35 U.S.C. § 103(a) as
unpatentable over Muschler and Stednitz.
We REVERSE the rejection of claims 31 and 32 under 35 U.S.C.
§ 103(a) as unpatentable over Muschler and Boock.
We REVERSE the rejection of claims 34--36 under 35 U.S.C.
§ 103(a) as unpatentable over Muschler and Krag.
We REVERSE the rejection of claims 34 and 35 under 35 U.S.C.
§ 103(a) as unpatentable over Muschler and David.
REVERSED
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