Ex Parte Farrar et al

Patent Trial and Appeal Board

Mar 21, 2013

10524800 (P.T.A.B. Mar. 21, 2013)

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.
10/524,800 01/17/2006 INV001Richard Farrar 1781-0017 5890
28078 7590 03/22/2013
MAGINOT, MOORE & BECK, LLP
One Indiana Square, Suite 2200
INDIANAPOLIS, IN 46204
EXAMINER
WOODALL, NICHOLAS W
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
03/22/2013 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 RICHARD FARRAR and CALLUM COLQUHOUN
__________

Appeal 2011-006632
Application 10/524,800
Technology Center 3700
__________

Before DONALD E. ADAMS, STEPHEN WALSH, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a surgical
assembly. The Examiner has rejected the claims as anticipated, as obvious
and for lacking written description. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.

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Application 10/524,800

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STATEMENT OF THE CASE
Appellants‟ invention relates to a “guide block for use in surgery to
locate a surgical tool accurately relative to an anatomical feature”
(Specification, Abstract). The following passage of the Specification is
informative:
The guide block of the invention finds particular [use] in
orthopaedic surgery where accurate positioning of instruments
used in surgery, and of prosthesis components, is vitally
important. For example, the guide block of the invention can be
used to locate a saw relative to anatomical features, especially
on a bone, for a resection step. For example, it can be used to
locate the plane for the resection of the tibia in the implantation
of a knee joint prosthesis. In this procedure, a guide block will
have a surface against which a saw blade can be positioned,
especially a pair of surfaces which define a slot. The guide
block is fastened to the tibia in approximately the correct
location relative to previously identified anatomical landmarks,
for example by three bone screws which pass through fixation
holes in the fixation part of the block. The guide block will
include three drives by which the location of the guide part can
be adjusted relative to the fixation part.

(Id. at 5.)
To facilitate accurate positioning of instruments used in surgery, “the
guide block includes at least one position indicator which is fixed relative to
the guide part, and at least one position monitor for tracking the location of
the position indicator, so that the position of the guide part relative to a
reference point can be determined” (id. at 4).
Claims 1-13 are on appeal. Claim 1, the only independent claim on
appeal, is representative and reads as follows (emphasis added):

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1. A surgical assembly comprising:
a guide block which comprises:
a. a fixation part configured to be fastened directly
to a patient‟s tissue, and
b. a guide part having at least one tool engagement
guide surface, the guide part being mounted in relation to
the fixation part,
c. at least two drives configured to adjust the
position of the guide part relative to the fixation part, so
that the position of the guide part relative to the fixation
part can be adjusted in at least two degrees of freedom,
and
d. at least one position indicator which is
supported by and fixed relative to the guide part,
at least one position monitor configured to track the
location of the position indicator, so that the position of the
guide part relative to a reference point can be determined,
a signal generator which is connected to the drives and
configured to generate position signals which are transmitted to
the drives to cause the guide part to be moved relative to the
fixation part to a desired position relative to the reference point;
and
a surgical tool having a bone contacting cutting structure
positioned in engagement with the tool engagement guide
surface of the guide part during use of the surgical tool.

The claims stand rejected as follows:
I. Claims 1-13 were rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
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II. Claims 1 and 3-9 were rejected under 35 U.S.C. § 102 as being
anticipated by Hauri.
1

III. Claims 1, 2, 4-6, 8, and 10-13 under 35 U.S.C. § 103 as being
unpatentable over the combination of DeOrio
2
and Hauri.
I.
Issue
The Examiner rejected claims 1-13 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
The Examiner finds that “[t]he disclosure as originally filed never positively
recites the invention including the surgical tools” (Ans. 4). The Examiner
finds that “the disclosure states that the guide block is capable of being used
with a cutting blade or a drill bit,” however, this disclosure fails to
adequately support the bone contacting cutting structure of the claims
because “a bone contacting cutting structure is broader than the support for a
cutting blade or a drill bit” provided in the Specification as filed (id. at 7).
Appellants identify several passages that disclose, for example, that “a
guide surface which can be engaged by a cutting tool such as a blade”
and argues “[t]he public was clearly put in possession of the invention of
claim 1 by the teachings contained in Appellants‟ patent specification” (App.
Br.11, citing, inter alia, Specification 6, ll. 17-20).

1
Hauri et al., International Publication WO 00/00093, published Jan. 6,
2000. Reference is made to US 6,554,837 B1 (issued Apr. 29, 2003), the
English equivalent of WO 00/00093.
2
DeOrio et al., US 5,681,316, issued Oct. 28, 1997.
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The issue presented is whether the Examiner established that a person
of ordinary skill in the art would not credit Appellants with possession of the
claimed invention.
Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
FF1. The Specification discloses a slot that “extends through the
guide part so that a blade inserted into the slot can extend through it and be
used to cut a bone to which the guide block is fixed” (Specification 6).
FF2. The Specification discloses as follows:
Accurate location of a tool can be achieved by means of a
guide block. This can include one or more structural features
which can be engaged by the tool. The guide block is fastened
to the patient's bone, so that the tool can be positioned against
the structural features which can provide a point of reference
for locating the tool. For example, when the tool is a saw, the
structural feature can be a surface, or a pair of surfaces which
define a slot, against which the saw blade is moved. When the
tool is a drill, the structural feature can comprise an opening in
which a drill bit can be inserted.

(Id. at 1.)
Principles of Law
In order to satisfy the written description requirement, “the applicant
must … convey with reasonable clarity to those skilled in the art that, as of
the filing date sought, he or she was in possession of the invention.” Vas-
Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).
However, the written description requirement does not require the applicants
to describe in exactly the same words the subject matter claimed in the
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original application. Instead, the description must clearly allow persons of
ordinary skill in the art to recognize that the applicants invented what is
claimed. In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983) (“The test for
determining compliance with the written description requirement is whether
the disclosure of the application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal support in the
specification for the claim language.”).
Analysis
We conclude that the Appellants have the better position. Although
the Specification may not specifically use the phrase “bone contacting
cutting structure” or include an embodiment where a cutting structure is
actively engaged with the guide block, we agree with Appellants that the
Specification clearly conveys that the inventor was in possession of a
surgical assembly containing these components. For example, the
Specification discloses two alternative cutting structures, a blade and a drill,
and discloses how the cutting structure would be used with the guide block
(see, e.g., FF1 and FF2). We therefore reverse the written description
rejection.
Conclusion of Law
The Examiner has not established that a person of ordinary skill in the
art would not credit Appellants with possession of the claimed invention.
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II. & III.
Issue
The Examiner rejected claims 1 and 3-9 under 35 U.S.C. § 102 as
being anticipated by Hauri.

The Examiner finds that “Hauri discloses a
device comprising a guide block, at least one position monitor (17f) for
tracking the location of the position indicator [10g] to position the guide part
[11] relative to a reference point” (Ans. 5.)
Appellants contend that, “even if the base bar 10g of Hauri can
somehow be interpreted to be the „at least one position indicator,‟ the base
bar 10g is not „supported by‟ a guide part (equated with Hauri‟s saw jig 11 -
see Fig. 12) as called for in claim 1” (App. Br. 13). That is, “[a]n object that
hangs from or depends from a component does not support the component
from which it hangs or depends” (id.). “Thus, Hauri does not disclose at
least one position indicator supported by the guide part as called for in claim
1” (id.).
The Examiner responds as follows:
[T]he term “support” is not only directed to physical support.
The term “support” also includes functional support and the
examiner is using this interpretation of the term “support”. The
positioning indicator has a function of properly positioning a
cutting tool, such as a cutting blade, to cut the knee at proper
angles and positions. The guide part supports the position
indicator by guiding the cutting tool along a proper angle and
position during the cutting procedure.

(Ans. 8.)
The issue presented is:
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Does the evidence of record support the Examiner‟s findings that
Hauri discloses a surgical assembly having “at least one position indicator
which is supported by and fixed relative to the guide part” as required by
claim 1?

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Additional Findings of Fact
FF3. Figure 12 of Hauri is reproduced below.

Figure 12 “shows a view of a sawing jig secured on the base bar”
(Hauri, col. 4, ll. 5-6).
FF4. Hauri discloses that “[i]n order to perform the resection of the
femur and of the tibia, a sawing jig 11, as is illustrated in FIG. 12, is secured
on the base bar 10g of the adjustment device 10, which sawing jig 11 has
slots 11a extending at different angles in order to guide the saw blade 12
with saw teeth 12a exactly at the angles predetermined by the implant” (id.
at col. 9, ll. 12-17).
FF5. Hauri discloses that “[t]he base bar 10g is then moved until the
probe tip 10n of the measurement probe 10l comes to bear on the femur” (id.
at col. 10, ll. 34-36).
FF6. Hauri discloses as follows:
The sawing jig 11 can be brought into the required position by
manually turning the knurled screws 5v, 10f. The sawing jig 11
is moved exactly parallel, so that exactly parallel resection
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surfaces can be produced on femur 1 and tibia 2. The toothed
rods 10a, 10c could have a scale, for example a scale engraved
on the surface, from which scale the distance traveled can be
read off. This is advantageous particularly in the case of manual
movement or manual actuation of the knurled screws 5v, 10f.

(Id. at col. 9, ll. 24-33.)
Principles of Law
Claim terms are not interpreted in a vacuum, devoid of the context of
the claim as a whole. See Hockerson-Halberstadt, Inc. v. Converse Inc., 183
F.3d 1369, 1374 (Fed. Cir. 1999) (“[p]roper claim construction … demands
interpretation of the entire claim in context, not a single element in
isolation.”); ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir.
2003) (“While certain terms may be at the center of the claim construction
debate, the context of the surrounding words of the claim also must be
considered.…”).
“[U]nless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of the
limitations arranged or combined in the same way as recited in the claim, it
cannot be said to prove prior invention of the thing claimed and, thus, cannot
anticipate under 35 U.S.C. § 102. ” Net MoneyIN, Inc. v. VeriSign, Inc.,
545 F.3d 1359, 1371 (Fed. Cir. 2008).
Analysis
The dispute centers on the meaning of the phrase “supported by” in
claim 1. Since the Specification does not define these terms, the phrase may
be interpreted according to the ordinary meaning of the terms as they would
be interpreted by the ordinary artisan. Here, the Examiner finds that the
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phrase “supported by” is reasonably interpreted in the functional sense of the
term (Ans. 8). We disagree. When read in the context of the claim as a
whole, the combined use of phrases “supported by” and “fixed relative to”
suggest to us that the phrase “supported by” should be read to have a
structural meaning. We therefore agree with Appellants that the phrase is a
structural element requiring the position indicator to be supported by and
fixed relative to the guide part (App. Br. 12-13).
Having determined the scope of the claims, we further agree with
Appellants that Hauri‟s base bar (position indicator) provides structural
support of the sawing jig (guide part) for the reasons of record (see, e.g.,
App. Br. 12-13; see also, FF3-FF5). As the Examiner has not adequately
explained how the sawing jig (guide part) provides structural support for the
base bar (position indicator) as recited in claim 1, we find that Hauri fails to
anticipate claim 1.
The obviousness rejection relies on the Examiner‟s finding that Hauri
identically discloses “at least one position indicator which is supported by
and fixed relative to the guide part” as recited in claim 1, and therefore
suffers from the same deficiency.
Conclusion of Law
The preponderance of evidence on this record fails to support the
Examiner‟s findings that Hauri discloses a surgical assembly having “at least
one position indicator which is supported by and fixed relative to the guide
part” as required by claim 1.

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SUMMARY
We reverse all rejections on appeal.
REVERSED

cdc