Ex Parte Harris et al

Patent Trial and Appeal Board

Apr 19, 2016

12371700 (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/371,700 02/16/2009
8933 7590 04/19/2016
DUANE MORRIS LLP- Philadelphia
IP DEPARTMENT
30 SOUTH 17TH STREET
PHILADELPHIA, PA 19103-4196
FIRST NAMED INVENTOR
Brian R. Harris JR.
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.
E3383-0023 l 8196
EXAMINER
ARAJ, MICHAEL J
ART UNIT PAPER NUMBER
3775
MAILDATE DELIVERY MODE
04/19/2016 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 BRIAN R. HARRIS, JR. and
CHRISTOPHER R. McKNETT
Appeal 2014-003192 1,2
Application 12/3 71, 7 00
Technology Center 3700
Before HUBERT C. LORIN, PHILIP J. HOFFMANN, and
AMEE A. SHAH, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-5. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellants' Specification ("Spec.," filed Feb. 16,
2009), Appeal Brief ("Appeal Br.," filed June 28, 2013), and Reply Brief
("Reply Br.," filed Jan. 14, 2014), as well as the Examiner's Answer
("Answer," mailed Nov. 14, 2013).
2 According to Appellants, "[t]he real party in interest is Wright Medical
Technology, Inc." Appeal Br. 2.
Appeal2014-003192
Application 12/3 71, 7 00
According to Appellants, the invention relates "to surgical instruments
for use with bone screws." Spec. 1, 11. 14--15. We reproduce, below,
independent claim 1 as representative of the appealed claims.
1. An adjustable screwdriver for selectively driving an
adjustable compression screw into a substrate, the adjustable
compression screw having a screw shaft and a separate
adjustable head threaded on a head of the screw shaft,
compnsmg:
a handle,
an adjustable head driver extending distally from said
handle,
a distal tip of said adjustable head driver configured to
engage the adjustable head of the adjustable compression screw
for use in rotating the adjustable head of the adjustable
compress10n screw,
a shaft driver concentrically disposed in said adjustable
head driver, said shaft driver fixed in said handle,
a distal tip of said shaft driver configured to engage the
head of the screw shaft of the adjustable compression screw for
use in rotating the screw shaft,
said shaft driver configured to selectively lock in an even
driving position wherein said distal tip of said shaft driver is
substantially even with said distal tip of said adjustable head
driver to thereby allow said adjustable head driver and said shaft
driver to cooperatively drive the adjustable head and the screw
shaft, and
said shaft driver configured to selectively lock in a
retracted driving position wherein said distal tip of said shaft
driver is recessed in said adjustable head driver to thereby allow
said adjustable head driver to drive the adjustable head without
said shaft driver driving the screw shaft.
Appeal Br., Claims App.
2
Appeal2014-003192
Application 12/3 71, 7 00
REJECTION AND PRIOR ART
The Examiner rejects claims 1-5 under 35 U.S.C. § 102(b) as
anticipated by Crawford (US 5,711,043, iss. Jan. 27, 1998). See
Answer 3--4.
ANALYSIS
Appellants argue that the rejection is in error because Crawford does
not teach the claim limitation of "said shaft driver configured to selectively
lock in an even driving position wherein said distal tip of said shaft driver is
substantially even with said distal tip of said adjustable head driver to
thereby allow said adjustable head driver and said shaft driver to
cooperatively drive the adjustable head and the screw shaft." Appeal Br.,
Claims App., 6-7; see also Reply Br. 2--4. In response, the Examiner finds
that Crawford's drill bit 20 teaches the claimed shaft driver, that Crawford's
body 12 teaches the adjustable head driver, and that Crawford's drill bit 20
and body 12 "ha[ ve] the ability to perform the [claimed] function."
Answer 6.
Based on our review of the record, we find that the Examiner fails to
establish that either drill bit 20 or body 12 has the ability to engage and drive
a screw, and similarly fails to establish that both the drill bit 20 and body 12
have the ability to cooperatively drive a screw. Specifically, the Examiner
does not point to anything in Crawford that clearly shows or describes either
or both of drill bit 20 or body 12 having the ability to engage and drive a
screw. Further, although the Examiner references Crawford's Figures 2 and
4, neither figure shows that drill bit 20 or body 12 has the ability to engage
and drive a screw, separately or together. Thus, based on the foregoing, we
3
Appeal2014-003192
Application 12/3 71, 7 00
do not sustain the rejection of independent claim 1, or claims 2-5 depending
from claim 1.
DECISION
We REVERSE the Examiner's rejection of claims 1-5 under
35 U.S.C. § 102(b).
REVERSED
4