Ex Parte Ferree

Board of Patent Appeals and Interferences

Aug 31, 2009

10873021 (B.P.A.I. Aug. 31, 2009)

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.
10/873,021 06/21/2004 Bret A. Ferree BAF-11202/29 5258
25006 7590 09/01/2009
GIFFORD, KRASS, SPRINKLE,ANDERSON & CITKOWSKI, P.C
PO BOX 7021
TROY, MI 48007-7021
EXAMINER
SONNETT, KATHLEEN C
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
09/01/2009 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte BRET A. FERREE
__________

Appeal 2009-008379
Application 10/873,021
Technology Center 3700
__________

Decided: August 31, 2009
__________

Before LORA M. GREEN, FRANCISCO PRATS, and
MELANIE L. McCOLLUM, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 5 and 6. We have jurisdiction under 35
U.S.C. § 6(b).
Appeal 2009-008379
Application 10/873,021

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STATEMENT OF THE CASE
The claims on appeal are directed to a surgical instrument, and read as
follows:
5. A surgical instrument particularly suited to severing ligaments,
fibrous tissues, and spinal structures, comprising:
a handle connected to a shaft terminating in a distal end with a bent
portion including a blunt tip for separating tissues to be protected from tissue
to be cut;
a sharp cutting blade spaced apart from the blunt tip for severing the
tissue to be cut, the cutting blade being disposed on the shaft or the bent
portion, but not both, and wherein:
the distal end is bent creating a longer first section coupled to the
handle and a shorter portion at an angle to the first section; and
the cutting blade is only on the first section.

6. A surgical instrument particularly suited to severing ligaments,
fibrous tissues, and spinal structures, comprising:
a handle connected to a shaft terminating in a distal end with a bent
portion including a blunt tip for separating tissues to be protected from tissue
to be cut;
a sharp cutting blade spaced apart from the blunt tip for severing the
tissue to be cut, the cutting blade being disposed on the shaft or the bent
portion, but not both, and wherein:
the distal end is bent creating a longer first section coupled to the
handle and a shorter second section at an angle to the first section; and
the cutting blade is only on the second section.

The Examiner relies on the following evidence:
Mull US 5,122,152 Jun. 16, 1992
Massa US 5,826,341 Oct. 27, 1998

We affirm.

Appeal 2009-008379
Application 10/873,021

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PRINCIPLES OF LAW
To anticipate, every element and limitation of the claimed invention
must be found in a single prior art reference, arranged as in the claim.
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001).

ISSUE (Mull)
The Examiner finds that Mull anticipates claim 5.
Appellant contends that claim 5 requires a “blunt tip,” whereas the tip
of Mull is sharp.
Thus, the issue on appeal is: Has Appellant demonstrated that the
Examiner erred in finding that Mull teaches a “blunt tip” as required by
claim 5?

FINDINGS OF FACT
FF1 The Examiner rejects claim 5 under 35 U.S.C. § 102(b) as being
anticipated by Mull (Ans. 3).
FF2 The Examiner finds that Mull teaches all of the limitations of claim 5
(id.).
FF3 As to the blunt tip, the Examiner finds that the tip 28 of the blade of
Mull has a flat top surface, and is thus considered to be blunt (id. at 4 (citing
Figures 1 and 2 of Mull)).
FF4 Mull discloses a suture removing device (Mull, col. 1, l. 5).
FF5 Figure 2 of Mull is reproduced below:
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Application 10/873,021

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Figure 2 shows a perspective view of the head portion of the device of Mull
(id. at col 1, ll. 59-60).
FF6 Mull teaches that the blade 14 having a cutting edge 30 does not
extend to the tip 28 (id. at col. 2, ll. 11-15).
FF7 In use, the forked tip 28 is inserted below a suture to lift the suture
from the skin (id. at col. 2, ll. 39-40). The suture rides over the tip and onto
the cutting edge 30 (id. at col. 2, ll. 42-44).
FF8 According to Mull, the only parts that touch the patient are the face of
rib 24, and perhaps the tip 28, and as the only portion of the blade that is
exposed is cutting edge 30, it is unlikely that the patient will be accidentally
injured (id. at col. 2, ll. 50-55).

ANALYSIS
Appellant argues that claim 5 requires a “blunt tip,” and that the tip of
Mull is sharp. Thus, Appellant asserts, Mull cannot anticipate claim 5.
We do not find Appellant’s argument convincing. As can be seen in
Fig. 2 of Mull, the tip 28 is blunt. That finding is supported by Mull’s
teaching that the only parts of the instrument of Mull that may touch the
patients are the rib 24 and tip 28, minimizing any risk of accidental injury to
Appeal 2009-008379
Application 10/873,021

5
the patient. Thus, it is clear that Mull does not consider the tip 28 to be
sharp.

CONCLUSION OF LAW
We find that Appellant has not demonstrated that the Examiner erred
in finding that Mull teaches a “blunt tip” as required by claim 5.
We thus affirm the rejection of claim 5 under 35 U.S.C. § 102(b) as
being anticipated by Mull.

ISSUE (Massa)
The Examiner finds that Massa anticipates claim 6.
Appellant contends that Massa fails to teach an instrument wherein
“the cutting blade is only on the second section,” as required by claim 6.
Thus, the issue on appeal is: Has Appellant demonstrated that the
Examiner erred in finding that Massa teaches an instrument wherein “the
cutting blade is only on the second section,” as required by claim 6?

FINDINGS OF FACT
FF9 The Examiner rejects claim 6 under 35 U.S.C. § 102(b) as being
anticipated by Massa (Ans. 3).
FF10 The Examiner finds that Massa meets all of the limitations of claim 6.
FF11 The Examiner finds that Massa “discloses a distal end bent portion
comprising a first section (bent portion of 40) and a shorter second section
(46) at an angle to the first section.” (Id. at 4). According to the Examiner,
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Application 10/873,021

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“[t]he blade (considered sharp cutting edge 48) is only on the second section
(46) as seen in figure 3 for example.” (Id.)
FF12 Massa discloses a tree-trimming device (Massa, col. 1, l. 5).
FF13 Figure 3 of Massa is reproduced below:

Figure 3 shows an exploded side view of the device of Massa (id. at col. 5,
ll. 16-18).
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FF14 Massa teaches that the “pruning component 38 includes a movable
cutting member 46 which has a sharp cutting surface 48.” (Id. at col. 6, ll.
11-12.)

ANALYSIS
Appellant argues that Massa fails to teach that “the cutting blade is
only on the second section,” as required by claim 6 (App. Br. 4). Appellant
argues that Massa is drawn to a tree-trimmer, and thus is non-analogous art
(id.).
Appellant is only arguing the last limitation of claim 6, and therefore
is apparently conceding that Massa teaches the remaining limitations of that
claim, i.e., that Massa teaches “a handle connected to a shaft terminating in a
distal end with a bent portion including a blunt tip for separating tissues to
be protected from tissue to be cut; a sharp cutting blade spaced apart from
the blunt tip for severing the tissue to be cut, the cutting blade being
disposed on the shaft or the bent portion, but not both, and wherein: the
distal end is bent creating a longer first section coupled to the handle and a
shorter second section at an angle to the first section.”
As found by the Examiner, Massa teaches a cutting blade, 48, which
is only on the second section, 46. Moreover, “the question whether a
reference is analogous art is irrelevant to whether that reference anticipates.
A reference may be from an entirely different field of endeavor than that of
the claimed invention or may be directed to an entirely different problem
from the one addressed by the inventor, yet the reference will still anticipate
if it explicitly or inherently discloses every limitation recited in the claims.”
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Application 10/873,021

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In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (internal citation
omitted).

CONCLUSION OF LAW
We find that Appellant has not demonstrated that the Examiner erred
in finding that Massa teaches an instrument wherein “the cutting blade is
only on the second section,” as required by claim 6.
We thus affirm the rejection of claim 6 under 35 U.S.C. § 102(b) as
being anticipated by Massa.

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

alw

GIFFORD, KRASS, SPRINKLE,ANDERSON & CITKOWSKI, P.C
PO BOX 7021
TROY MI 48007-7021