Ex Parte Edwards et al

Patent Trial and Appeal Board

Apr 6, 2018

13785287 (P.T.A.B. Apr. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
131785,287 03/05/2013 Jon M. Edwards
23643 7590 04/10/2018
Barnes & Thornburg LLP (IN)
11 S. Meridian Street
Indianapolis, IN 46204
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.
265280-222666 4715
EXAMINER
WEISS, JESSICA
ART UNIT PAPER NUMBER
3776
NOTIFICATION DATE DELIVERY MODE
04/10/2018 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):
INDocket@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JON M. EDWARDS and MICHAEL J. ROCK
Appeal2017-005087
Application 13/785,287
Technology Center 3700
Before RICHARD M. LEBOVITZ, JEFFREY N. FRED MAN, and
ELIZABETH A. LA VIER, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to an
orthopaedic surgical instrument. The Examiner rejected the claims as
indefinite, as anticipated, and as obvious. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.
Statement of the Case
Background
"Joint arthroplasty is a well-known surgical procedure by which a
diseased and/or damaged natural joint is replaced by a prosthetic joint"
(Spec. i-f 2). "To facilitate the replacement of the natural joint with the
1 Appellants identify the Real Party in Interest as DePuy Synthes Products,
Inc., a subsidiary of Johnson & Johnson Company (see App. Br. 2).
Appeal2017-005087
Application 13/785,287
prosthesis, orthopaedic surgeons use a variety of orthopaedic surgical
instruments" (Spec. i-f 2).
The Claims
Claims 1-19 are on appeal. Claims 1 and 1 7 are representative and
read as follows:
1. An orthopaedic surgical instrument comprising:
a polymer 4-in-l femoral cutting block having a sidewall
that partially defines a chamfer cutting slot having a slot section
between a first opening defined in a first surface of the sidewall
and a second opening defined in a second surface of the
sidewall,
a first metallic planar cutting guide secured within the
chamfer cutting slot of the polymer 4-in-l femoral cutting
block,
a second metallic planar cutting guide secured within the
chamfer cutting slot of the polymer 4-in-l femoral cutting
block, the second metallic planar cutting guide being arranged
at an oblique angle relative to, and spaced apart from, the first
metallic planar cutting guide,
a first metallic bushing secured within the chamfer
cutting slot of the polymer 4-in-l femoral cutting block, an outer
surface of the first metallic bushing being positioned at a lateral
end of each of the first and second metallic planar cutting
guides, the first metallic bushing extending along the slot
section of the chamfer cutting slot, wherein the first metallic
bushing is configured to prevent a blade from engaging the
polymer 4-in-l femoral cutting block, and
a second metallic bushing secured within the chamfer
cutting slot of the polymer 4-in-l femoral cutting block, an outer
surface of the second metallic bushing being positioned at a
medial end of each of the first and second metallic planar
cutting guides, the second metallic bushing extending along the
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slot section of the chamfer cutting slot, wherein the second
metallic bushing is configured to prevent the blade from
engaging the polymer 4-in-l femoral cutting block.
17. An orthopaedic surgical instrument comprising:
a polymer cutting block having a cutting slot defined
therein, the cutting slot having a straight section extending
between a medial end and a lateral end, and
a metallic captured cutting guide assembly secured
within the cutting slot, the captured metallic chamfer cutting
guide assembly comprising: (i) a first metallic planar cutting
guide, (ii) a second metallic planar cutting guide spaced apart
from the first metallic planar cutting guide, (iii) a first metallic
bushing having an outer surface thereof positioned at a first end
of each of the first and second metallic planar cutting guides,
the first metallic bushing positioned at the medial end of the
cutting slot between the polymer cutting block and the straight
section of the cutting slot, and (iv) a second metallic bushing
having an outer surface thereof positioned at a second end of
each of the first and second metallic planar cutting guides, the
second metallic bushing positioned at the lateral end of the
cutting slot between the polymer cutting block and the straight
section of the cutting slot.
The issues
A. The Examiner rejected claims 17-19 under 35 U.S.C. § 112, second
paragraph (Ans. 2).
B. The Examiner rejected claims 17-19 under 35 U.S.C. § 102(b) as
anticipated by Edwards2 (Ans. 3--4).
C. The Examiner rejected claims 1-16 under 35 U.S.C. § 103(a) as
obvious over Edwards and Grimm3 (Ans. 4--7).
2 Edwards, US 2010/0168752 Al, published July 1, 2010.
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Application 13/785,287
A. 35US.C.§112, second paragraph
The Examiner finds the claim 1 7 limitation of a "bushing positioned
at the medial/lateral end of the cutting slot between the polymer cutting
block and the straight section of the cutting slot" indefinite because the
"cutting slot is located within and is thus an integral component of the
cutting block, and therefore it is unclear how the bushing could be
positioned between the cutting block and any portion of the cutting slot"
(Ans. 2, 8).
Appellants respond:
Claim 17 recites that the first/second metallic bushing
positioned at the medial/lateral end of the cutting slot "between
the polymer cutting block and the straight section of the cutting
slot." In other words, the first/second metallic bushing is
positioned between the polymer cutting block and a part of the
cutting slot. In making the rejection, the Examiner completely
ignores the "straight section" element of the claims.
(App. Br. 6-7).
Appellants 'position is consistent with claim language. Claim 1 7
defines "a polymer cutting block having a cutting slot defined therein, the
cutting slot having a straight section extending between a medial end and a
lateral end." Thus, within the cutting block is a cutting slot, and this slot has
a straight section. The bushing locations at the "medial end" and the "lateral
end" of the cutting slots and between the "polymer cutting block" and "the
straight section of the cutting slot" as recited in claim 17 are reasonably
interpreted as locating the bushings between a side of the polymer cutting
3 Grimm et al., US 2005/0209605 Al, published Sept. 22, 2005.
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Application 13/785,287
block and the straight section of the cutting slot, consistent with the
understanding of the Examiner (Ans. 2) and Appellants (App. Br. 7).
B. 35 US.C. § 102(b) over Edwards
The Examiner finds:
Edwards discloses an orthopaedic surgical instrument
(200, Fig. 5) comprising: a polymer (Paragraph [0003]) cutting
block (204, Fig. 5) having a cutting slot (208, Paragraphs
[0045] - [0046]) defined therein, the cutting slot having a
straight section (Fig. 5) extending between a medial end (left
side) and a lateral end (right side), and a metallic captured
cutting guide assembly (224, bearing insert on upper tapered
wall (not shown), 230, 228) secured within the cutting slot, the
captured metallic chamfer cutting guide assembly comprising:
(i) a first metallic planar cutting guide (224), (ii) a second
metallic planar cutting guide (bearing insert on upper tapered
wall (not shown)) spaced apart from the first metallic planar
cutting guide, (iii) a first metallic bushing (lateral 218,
Paragraph [0043] - [0045]) having an outer surface thereof
positioned at a first end of each of the first and second metallic
planar cutting guides (Fig. 5), the first metallic bushing
positioned at the medial end of the cutting slot between "a side
of' the polymer cutting block and the straight section of the
cutting slot (Fig. 5), and (iv) a second metallic bushing (medial
218, Paragraph [0043] - [0045]) having an outer surface thereof
positioned at a second end of each of the first and second
metallic planar cutting guides (Fig. 5), the second metallic
bushing positioned at the lateral end of the cutting slot between
"a side of' the polymer cutting block and the straight section of
the cutting slot (Fig. 5).
(Ans. 3).
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Application 13/785,287
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that Edwards anticipates claim
17?
Findings of Fact
1. Figure 5 of Edwards is reproduced below:
2::-0
I
FIG,5
Figure 5 illustrates "an orthopaedic cutting block 200 designed to function as
an anterior/posterior/chamfer cutting guide, also known in the art as a 4-in-1
cutting block, for use by a surgeon with a surgical bone saw. The
orthopaedic cutting block 200 includes several metallic bearing inserts 218-
226" (Edwards i-f 43).
2. Edwards teaches the
body component 204 further includes an elongated opening 208,
generally parallel to an imaginary line drawn between the medial and
lateral sides of the body component 204. The elongated opening 208
is defined by a first pair of tapered walls 210 which open toward the
distal side of the body component 204 and by a second pair of tapered
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walls (not shown) which open toward the proximal side of the body
component 204.
(Edwards i-f 44).
3. Edwards teaches "[ o ]pposite the interface surface 236, each
bearing insert also includes a guide surface 228-232 (and others not shown),
which is configured to support a bone cutting tool" (Edwards i-f 45).
4. Edwards teaches "[ e Jach bearing insert 218 functions as a
bushing for one of the guide holes 216" (Edwards i-f 45).
Principles of Law
The Examiner bears the initial burden of establishing a prima facie
case of anticipation. In re King, 801 F.2d 1324, 1326-27 (Fed. Cir. 1986).
Anticipation under 35 U.S.C. § 102 requires that "'each and every element
as set forth in the claim is found, either expressly or inherently described, in
a single prior art reference."' In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999).
Analysis
Appellants contend "the Examiner's assertion rests on an
unreasonably broad interpretation of the term 'end"' (App. Br. 9).
Appellants contend:
As shown in FIG. 5 of Edwards ... the outer surfaces of the
bearing inserts 218 are not positioned at an end of the metallic
planar cutting guides. Instead, the outer surfaces of the bearing
inserts 218 of Edwards are positioned inside of guide holes
216 formed in the body component 204 (identified by the
Examiner as "the polymer cutting block").
(App. Br. 10).
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The Examiner responds the "limitations of the claim recite that the
bushings are 'positioned at a first/second end'; therefore, the claim does not
require that the bushing share a specific, physical point with the cutting slot,
just that they are located at an end which Edwards discloses as stated above"
(Ans. 9).
We agree with Appellants that the plain language of claim 1 7 requires
the bushings "positioned at the medial end of the cutting slot" which is
reasonably interpreted as being within the cutting slot, not adjacent to the
cutting slot and in the body of the polymer cutting block.
This understanding is reinforced by the Specification, which discloses
that even in the spaced arrangement "the outer surface 62 of the metallic
bushings 56, 58 is slightly spaced apart from the respective medial end and
lateral end of the planar cutting guides 76, 80" (Spec. i-f 40). The
Specification indicates that this "spacing allows for capture of the blade of a
bone saw, while also providing for relief from overly tight tolerances in the
manufacturing process" (Spec. i-f 40). If the bushings were located entirely
outside the cutting slot, tolerances during the manufacturing process would
be irrelevant to their location.
The Examiner does not identify any support in the Specification for
locating the bushings outside the cutting slot. We disagree with the
Examiner's interpretation of the plain claim language requiring positioning
"at the medial end of the cutting slot" because if the bushings could be
located in the polymer cutting block rather than in the cutting slot, the claim
would instead recite a location "at the medial end of the polymer cutting
block."
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Therefore, we interpret claim 1 7 to require bushings at the end of the
cutting guides (cf App. Br. 10). The Examiner does not identify any
teaching in Edwards of bushings at these locations (FF 1--4; see Ans. 9). We
therefore agree with Appellants that "Edwards fails to disclose a
'[first/second] metallic bushing' secured within a cutting slot and having an
outer surface thereof positioned at a [first/second] end of each of the first
and second metallic planar cutting guides,' as required by claim 17" (App.
Br. 11).
Conclusion of Law
The evidence of record does not support the Examiner's conclusion
that Edwards anticipates claim 1 7.
C. 35 US.C. § 103(a) over Edwards and Grimm
The Examiner relies upon Edwards to disclose the limitations of claim
1 (Ans. 4--5) but finds
Edwards does not disclose wherein the first and second
metallic bushings are secured/positioned within the chamfer
cutting slot of the polymer 4-in-1 femoral cutting block, or
"wherein the first and second metallic bushing extend along/are
positioned inside the slot section of the chamfer cutting slot at
the lateral and medial ends abutting the inner side wall, wherein
the bushing is configured to prevent a blade from engaging the
portion of the cutting slot where the bushing is located".
(Ans. 5).
The Examiner finds Grimm teaches "an orthopedic cutting block (Fig.
3) having a cutting slot (66) with medial and lateral guide holes (74) located
within the slot and at each end of the slot that are capable of receiving a
bushing for insertion of a drill pin" (Ans. 5). The Examiner finds it obvious
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Application 13/785,287
to modify the device of Edwards with a chamfer cutting slot
having integrated medial and lateral drill guide holes within the
cutting slot for the insertion of a bushing and drill pin as taught
by Grimm et al. in order to provide the device with one
common area that allows sawing and pin or drill insertion
without needing additional locations for each individual
instrument.
(Ans. 5---6).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that Edwards and Grimm render
claim 1 obvious?
Findings of Fact
5. Figure 3 of Grimm is reproduced below:
4
Fig. 3
[I]n FIG. 3, a femoral cut guide 50 includes holes 52, 54, and
56 for receiving datum pins set using the orthopaedic guide 20.
. . . A plurality of slots 64, 66, 68, 70, 72 are formed through
the cut guide 50 from the front surface 60 to the back surface 62
to guide a cutter to shape the end of the femur 2 to receive a
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femoral knee implant. ... In addition, drill guide holes 74 may
guide a drill bit to form post holes in the femur for receiving a
fixation post of a femoral implant.
(Grimm if 2 5).
Principles of Law
A prima facie case for obviousness require "a reason that would have
prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does." KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
Analysis
Appellants contend "Examiner conceded on page 7 of the Office
Action that Edwards does not disclose 'the bushing [] configured to prevent
a blade from engaging the portion of the cutting slot where the bushing is
located"' (App. Br. 16; emphasis omitted; cf Final Act. 7). Appellants
contend "the addition of Grimm does not cure the deficiencies of Edwards
because Grimm does not disclose or teach an orthopaedic cutting block
having a first/second 'metallic bushing' which 'prevent[s] a blade from
engaging the polymer 4-in-l femoral cutting block' as required by the
claims" (id.). Appellants contend the Examiner does not provide "sufficient
reasons or desire to modify the position of the first/second metallic bushing
to the '[lateral/medial] end of each of the first and second metallic planar
cutting guides' as required by claim 1" (App. Br. 19).
The Examiner responds that it would have been obvious
to modify the device of Edwards with a chamfer cutting slot
having integrated medial and lateral drill guide holes within the
cutting slot for the insertion of a bushing and drill pin as taught
by Grimm et al. in order to provide the device with one
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common area that allows sawing and pin or drill insertion
with[ out] needing additional locations for each individual
instrument.
(Ans. 12-13).
We find Appellants have the better position. The reason given by the
Examiner to modify Edwards to put the bushing within the chamfer cutting
slot is to have a common area for pin, saw, or drill insertions (see Ans. 5,
13). However, the Examiner provides no underlying logic explaining why
there is any benefit to having such a common area. While the reason to
combine need not be found in the prior art, and implicit reasons that make a
combination faster, cheaper, more durable or provide other benefits may
provide basis for combining references, the Examiner provides neither a
specific advantage due to a "common area" nor an implicit benefit of such a
"common area." See, e.g., DyStar Textilfarben GmbH & Co. v. CH Patrick
Co., 464 F.3d 1356, 1366-68 (Fed. Cir. 2006). In the absence of any reason
to make the modification proposed by the Examiner, we reverse this
rejection. Independent claim 9 also includes a requirement for a "bushing
being positioned inside the chamfer cutting slot" and claims 2-8 and 10-16
dependent from either claims 1 or 9.
Conclusion of Law
The evidence of record does not support the Examiner's conclusion
that Edwards and Grimm render claim 1 obvious.
SUMMARY
In summary, we reverse the rejection of claims 17-19 under 35 U.S.C.
§ 112, second paragraph.
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We reverse the rejection of claims 17-19 under 35 U.S.C. § 102(b) as
anticipated by Edwards.
We reverse the rejection of claims 1-16 under 35 U.S.C. § 103(a) as
obvious over Edwards and Grimm.
REVERSED
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