Ex Parte FELDER

Patent Trial and Appeal Board

Aug 7, 2018

14023400 (P.T.A.B. Aug. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/023,400 09/10/2013 Martin FELDER
76960 7590 08/07/2018
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
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.
10139/25004 2634
EXAMINER
GIBSON, ERIC SHANE
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
08/07/2018 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 MARTIN FELDER
Appeal2017-008553
Application 14/023,400 1
Technology Center 3700
Before DEMETRA J. MILLS, RICHARD M. LEBOVITZ, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant is the Applicant DePuy Synthes Products, Inc., which is
identified as the real party in interest. App. Br. 2.
Appeal2017-008553
Application 14/023 ,400
STATEMENT OF CASE
The following claim is representative.
1. An aiming device for bone fixation, comprising:
a handle extending from a first end to a second end along
a longitudinal axis;
a guide arm connected to the second end of the handle
and having an opening extending therethrough, the guide arm
being connected to a protection sleeve; and
a drill guide configured and dimensioned for insertion
through the opening of the guide arm, the drill guide having
first and second guide channels extending therethrough to guide
an insertion of a guide wire into a bone, wherein the drill guide
is movable between a first position wherein the drill guide is
axially and rotationally movable relative to the guide arm to a
second position wherein the drill guide is axially and
rotationally locked relative to the guide arm.
Cited References
Pepper
Vendrely
Powell
Grounds of Rejection
us 5,951,561
US 2003/0236525 Al
US 7,033,363 B2
Sept. 14, 1999
Dec. 25, 2003
Apr. 25, 2006
Claims 1-7 are rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Pepper in view of Powell and Vendrely.
FINDINGS OF FACT
The Examiner's findings of fact are set forth in the Final Action at
pages 2-9. The following facts are highlighted.
1. Figure 1 of the Specification is reproduced below.
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Appeal2017-008553
Application 14/023 ,400
Figure 1 shows an aiming device for bone fixation with handle
102, blocking element 112, opening for drill sleeve 114, drill
protection sleeve 110. Spec. ,r 6.
2. Figure 3 of Pepper is reproduced below.
Figure 3 of Pepper shows handle 34B, guide arm 57, guide 50,
protection sleeve 22, channel 64. Ans. 2.
3. Figure 3a of Powel is reproduced below.
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Appeal2017-008553
Application 14/023 ,400
Fig. 3a
Figure 3a of Powell shows radiant abutment 2000 with angled wall
2010, second wall 2020, slots 2050, 2060, drill sleeve 210.
Powell, col. 8.
Once the ridge 2000 is fully engaged with the recess 3000,
the second tapered surface 2020 may contact the proximal
end wall 3010 of the recess 3000 in the protection sleeve 30
to prevent the drill sleeve 20 from falling out of the proximal
end 210 of the protection sleeve 30 during normal handling.
Powell, col. 7:48-53.
4. Figure 1 of Vendrely is reproduced below.
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Appeal2017-008553
Application 14/023 ,400
Figure 1 of Vendrely shows guide 16 with guide orientation feature
32 with prosthesis orientation feature 34. Vendrely ,r 34.
PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F .2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007).
The test for non-analogous art is first whether the art is within the
field of the inventor's endeavor and, if not, whether it is "reasonably
pertinent to the particular problem with which the inventor was involved."
In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). "A reference is reasonably
pertinent if, even though it may be in a different field" of endeavor, it
logically would have commended itself to an inventor's attention in
considering his problem "because of the matter with which it deals." In re
Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
Further, as noted by the United States Supreme Court,
If a person of ordinary skill can implement a predictable
variation,§ 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his
or her skill.
KSR, 550 U.S. at 418.
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Appeal2017-008553
Application 14/023 ,400
Obviousness Rejection-Pepper, Powell, Vendrely
The Examiner finds that Pepper teaches each element claimed, except:
Pepper et al. does not explicitly disclose the guide being
movable to a second position wherein the guide is axially
locked relative to the guide arm, wherein an outer wall of the
guide comprises a radial abutment having a first angled wall
and a second wall extending substantially perpendicular to a
longitudinal axis of the guide, wherein engagement of the
second wall with a proximal wall of a radial groove prevents an
axial movement of the drill guide in the second position, and
wherein a head of the drill guide includes a cross-slot defining
first and second portions on lateral sides thereof, wherein a
radial compression of the first and second portions permits a
withdrawal of the radial abutment from the radial groove.
Ans. 3. To make up for this deficiency, the Examiner relies on Powell.
Powell discloses an aiming device having a drill guide (20)
with a radial abutment (2000) having a first angled wall (2010)
and a second wall (2020) extending substantially perpendicular
to a longitudinal axis of the drill guide (Figs. 3a, 3c and Col. 7
lines 62-64 discloses angle c can be 90 degrees; therefore
making surface 2020 perpendicular), wherein engagement of
the second wall with a proximal wall (3010) of radial groove
(3000) (Fig. 4c) prevents the drill guide from falling out during
normal handling (Col. 7 lines 44-53) and wherein a head (212)
of the drill guide includes a cross-slot (2050, 2060) defining
first and second portions (216, 218) such that they can be
radially compressed (Col. 8 lines 34-35).
Ans. 3--4. The Examiner further acknowledges that
Pepper et al. also does not explicitly disclose the guide
being movable such that it is rotationally locked relative to the
guide arm, wherein the outer wall of the guide includes a button
extending thereoutof by a predetermined distance, the button
engaging one of a plurality of button holes formed in the
opening to permit insertion of the guide into the guide arm in a
selected rotational orientation. [ Claim 5.]
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Appeal2017-008553
Application 14/023 ,400
Vendrely et al. discloses an aiming device having a guide
(16) with a button (32) extending thereoutof at a predetermined
distance, the button engaging one of a plurality of button holes
(34) from in an opening (Fig. 1) to angularly orient the guide
(paragraph [0034 ]).
Ans. 4, bracketing added. The Examiner concludes that
[i]t would have been obvious to one having ordinary skill in the
art at the time the invention was made to modify the outer wall
and head of the guide and the opening of the guide arm of
Pepper et al., wherein the outer wall includes a radial abutment,
the head includes a cross-slot, and the opening includes a radial
groove such that the guide is axially locked relative to the guide
arm in view of Powell to permit insertion of the guide within
the opening in a manner that prevents the guide from falling out
during normal handling.
Ans. 4. The Examiner further concludes that
[i]t would have been obvious to one having ordinary skill in the
art at the time the invention was made to modify the outer
surface of the guide and opening of the guide arm of Pepper et
al., wherein the outer surface of the guide includes a button
extending thereoutof at a predetermined distance to engage one
of a plurality of button holes in the opening such that the two
components are rotationally locked in view of Vendrely et al. to
permit angular orientation of the guide relative to the guide arm
when inserted. [Vendrely ,r 34.]
Ans. 4--5, bracketing added.
Appellant argues that, the references do not disclose or suggest a drill
guide axially and rotationally movable relative to the guide arm, as in claim
1. App. Br. 3. Appellant argues that Vendrely is non-analogous art to the
present invention, and that "Vendrely is in no way related to drilling or a
drill guide, nor is it concerned with locking a drill guide against axial or
rotational movement relative to a guide arm." App. Br. 4.
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Application 14/023 ,400
ANALYSIS
Appellant does not argue individual claims separately, therefore we
select claim 1 as representative claim. We agree with the Examiner's fact
finding, statement of the rejection, and responses to Appellant's arguments
as set forth in the Answer. We find that the Examiner has provided
sufficient evidence to support a prima facie case of obviousness. We
provide the following additional comment to the Examiner's argument set
forth in the Final Rejection and Answer.
We are not convinced by Appellant's arguments that the references do
not disclose or suggest a drill guide axially and rotationally movable relative
to the guide arm. The Examiner responds to this argument, arguing that
[l]ooking to applicant's disclosure, specification at paragraph
[0018], lines 10-12 recite "In an operative configuration, a user
may select a desired rotational orientation of the drill sleeve 312
relative to the housing 304 and insert buttons 344 distally into
the desired recesses 346 to lock the drill sleeve in the desired
orientation," wherein it is readily apparent applicant's "buttons"
and "button holes" are disclosed as being used for "rotationally
locking" the sleeve and housing to one another, which is the
same as buttons and buttons holes disclosed by Vendrely.
Ans. 7. When the buttons are not engaged, the surgical device is rotationally
movable. We agree with the Examiner that Vendrely discloses a similar
rotational locking mechanism with buttons and recesses for use in locking a
surgical device. The Examiner has also provided a legally sufficient reason
or motivation to combine the cited references, including to prevent the guide
from falling out during normal handling, as disclosed in Powell; or to permit
angular orientation of the guide relative to the guide arm when inserted, as
disclosed in Vendrely. Ans. 4. The motivation to combine the prior art
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Application 14/023 ,400
references does not have to be the same as Appellant's motivation for
including a claim feature.
If a person of ordinary skill can implement a predictable
variation,§ 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his
or her skill.
KSR, 550 U.S. at 418. In the present case, we find that a person of ordinary
skill in the art aware of the technique of using buttons and button recesses to
lock a surgical device in place, unlock to allow the device to move, or to
permit a fixed angular orientation of the surgical device, as disclosed in
Vendrely, would recognize that such a button and recess locking mechanism
could also be used to improve another surgical device, e.g., an aiming device
for bone fixation, to provide a locking mechanism that predictably works in
the same way.
We are not persuaded by Appellant's argument that Vendrely is non-
analogous art. The test for non-analogous art is first whether the art is
within the field of the inventor's endeavor and, if not, whether it is
"reasonably pertinent to the particular problem with which the inventor was
involved." In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). "A reference is
reasonably pertinent if, even though it may be in a different field" of
endeavor, it logically would have commended itself to an inventor's
attention in considering his problem "because of the matter with which it
deals." In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
We find that the surgical device of Vendrely is in the same field of
endeavor as the claimed device, surgical devices for orthopedic surgery.
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Appeal2017-008553
Application 14/023 ,400
Appellant's invention is a device for bone fixation (claim 1) and Vendrely's
device is for removal of bone adjacent to an implanted prosthesis (abstract,
claim 1 ). In addition, the button mechanism of Vendrely is reasonably
pertinent to the particular problem with which the inventor was involved,
locking a specific orientation of a surgical device, and unlocking to allow
movement of the surgical device (see, Spec. 4).
We do not find that Appellant has rebutted the Examiner's prima facie
case of obviousness, and the obviousness rejection is affirmed for the
reasons of record. The preponderance of the evidence supports the
Examiner's position. Arguments not made are waived.
CONCLUSION OF LAW
The cited references support the Examiner's obviousness rejections,
which are affirmed for the reasons of record. All pending, rejected claims
fall.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
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