Ex Parte Keene

Board of Patent Appeals and Interferences

Oct 10, 2008

10486385 (B.P.A.I. Oct. 10, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GREG KEENE
____________________

Appeal 2008-5315
Application 10/486,3851
Technology Center 3700
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Decided: October 10, 2008
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Before CAROL A. SPIEGEL, ERIC GRIMES, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

SPIEGEL, Administrative Patent Judge.

DECISION ON APPEAL
I. Statement of the Case
This is an appeal under 35 U.S.C. § 134 from a final rejection
of all pending claims, claims 1-11. We have jurisdiction under 35
U.S.C. § 6(b). We AFFIRM.

1 Application 10/486,385 ("the 385 application"), Tibial Resection
Guide, filed 5 November 2004, is the national stage filing under 35
U.S.C. § 371 of international application PCT/GB02/03542, filed 7
August 2002, which claims foreign priority to United Kingdom
application 0119540.3, filed 10 August 2001. The real party in
interest is said to be DePuy International, Ltd. (Appeal Brief refiled
06 April 2006 ("Br.") at 1).
Appeal 2008-5315
Application 10/486,385

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The subject matter on appeal is directed to a tibial resection
guide for preparing a knee joint for implantation of a prosthesis.
Claim 1, the sole independent claim, is illustrative and reads (Br. 6):
1. A tibial resection guide for use in preparing a knee
joint for implantation of a prosthesis, which comprises:
a. an alignment rod which can be positioned
against the tibia, which can be fastened to
the tibia towards its distal end, and which
has a proximal slot formed in it extending
substantially parallel to the axis of the
alignment rod,
b. a cutting block at the proximal end of the
alignment rod having a saw guide slot in it
to guide a saw during resection of the
patient's tibia,
c. a guide pin configured to be fastened into
the tibia, the proximal slot being configured
to slidingly fit over the guide pin, and
the cutting block or the alignment rod towards its
proximal end having fixation holes for receiving fixation
pins, to fix the cutting block and the alignment rod
against further movement relative to the guide pin.

The Examiner has rejected claims 1-11 as unpatentable under
35 U.S.C. § 102(b) over Matsuno2 (Ans.3 3).
Appellant argues Matsuno fails to disclose a guide pin as
recited in claim 1 (Br. 4).
II. Findings of Fact ("FF")
The following findings of fact are supported by a
preponderance of the evidence of record.

2 U.S. Patent 6,090,114, Tibial Plateau Resection Guide, issued 18
July 2000, to Matsuno et al. ("Matsuno").
3 Examiner's Answer mailed 27 July 2007 ("Ans.").
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Application 10/486,385

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A. Appellant's 385 application
[1] The 385 specification ("Spec.") describes "a tibial resection
guide in which the alignment rod has a proximal slot formed in
it extending substantially parallel to the alignment rod axis,
which is a sliding fit on a guide pin" (Spec. 1).
[2] An embodiment depicted in Figure 1 of the 385 application is
said to show, in relevant part (Spec. 5-7),
. . . a resection guide which includes an alignment rod 2 .
. .
The alignment rod 2 has upper and lower parts 4, 6 which
engage one another telescopically . . . to change the
overall length of the alignment rod. The parts of the
alignment rod can be locked against further movement by
means of a screw-threaded clamp 7 . . .
The alignment rod has a cutting block 30 at its upper
(proximal) end. The cutting block has a transverse saw
guide slot 32 . . . The cutting block is fixed permanently
at the top of the alignment rod. . .
The resection guide includes a bracket 8 for fastening the
alignment rod at its distal end to the patient's leg. . . .
At its upper end, the alignment rod has a slot 20 formed
in it, extending parallel to the axis of the rod. . . The
resection guide includes a guide pin 18 which is a sliding
fit in the slot. The pin can be drilled percutaneously into
the tibia through the vertical slot 20 to stabilise the
alignment rod. . . The combination of the bracket at the
distal end and the pin in the slot at the proximal end
serves to stabilize the alignment rod relative to the tibia
while final adjustments are made to the position of the
cutting block.

Figure 1 is reproduced below:
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Application 10/486,385

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{Figure 1 of the 385 application shows an isometric view of the tibial
alignment rod.}

[3] Figure 2 shows the top of the alignment rod of Figure 1 with a
stylus 40 fitted into the cutting block (Spec. 7). Guide pin 18
is visible in slot 20. Figure 2 is reproduced below.

{Figure 2 of the 385 application shows an isometric view of the top of
the alignment rod with a stylus mounted on the cutting block.}

B. Matsuno
[4] Matsuno discloses a tibial resection guide consisting of a first
and second guide rod assembly (Matsuno 2:40-42, 55-59).
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[5] Figure 1 illustrates an embodiment which shows, in relevant
part,
. . .the first . . . guide assembly (1) is composed of four
main elements: anchor block (2), support arm (8), cutting
block (12), and frontal telescoping rod (13). In this
embodiment, the securing pins (24) are affixed to the
anchor block (2). The anchor block (2) is attached to the
support arm (8). . . .
The anchor block (2) fits into the aperture (9) on
the support arm (8) and [is] locked in place with a
thumbscrew (10). The support arm (8) has an elongated
aperture (11) in the approximant center of the support
arm (8). A screw (25) fits through the elongated aperture
(11) and allows for the tightening of the cutting block
(12) against the support arm (8). This allows the cutting
block (12) to be stabilized at an optimal position along
the tibia . . . (Matsuno 4:64-5:26).

Figure 1 is reproduced below.

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Application 10/486,385

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{Figure 1 of Matsuno is a perspective view of one embodiment of a
tibial resection guide comprising first and second guide rod
assemblies.}

[6] In addition, Matsuno discloses that the first guide assembly
"may be secured to the tibia in various manners", e.g., it may
be anchored through pins inserted through the cutting block
(Matsuno 3:38-50).
Other findings of fact follow below.
III. Discussion
Since Appellant has not argued the separate patentability of any
of claims 1-11 (Br. 3-5), we decide this appeal on the basis of claim 1.
37 C.F.R. § 41.37(c)(1)(vii).
A. The Examiner's findings
The Examiner found, in relevant part, that Matsuno discloses a
tibial resection guide comprising an alignment rod, i.e., first guide
assembly 1, with a proximal slot 11; a cutting block 12; and, a guide
pin 25 configured to be fastened into the tibia, the proximal slot being
configured to slidingly fit over the guide pin, as recited in claim 1
(Ans. 3). According to the Examiner, "Configured to be fastened
into the tibia is a functional statement, which does not impose any
structural limitations on the claims distinguishable over Matsuno . . .,
which is capable of being used as claimed if one so desires to do so"
(Ans. 5, original emphasis).
B. Appellant's position
According to Appellant, "guide pin 18 is configured to be
fastened to the tibia through the vertical slot 20 of the alignment rod
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Application 10/486,385

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so as 'to stabilize the alignment rod'. As a result, pin 18 would need to
be of a length that will reach from slot 20 to the tibia into which it is
attached" (Br. 3).
Appellant also notes the European Patent Office identified
Matsuno as an "A" or background reference in a search connected
with a related European patent application with similar claims which
was issued without amendment as European Patent No. 1414355 (Br.
4-5).
C. Legal principles
A claim is anticipated only if each and every element as set
forth in the claim is found, either expressly or inherently described, in
a single prior art reference. Verdegaal Bros., Inc. v. Union Oil Co.,
814 F.2d 628, 631 (Fed. Cir. 1987). As set forth by the court in
Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983),
it is only necessary for the claims to "'read on' something disclosed in
the reference, i.e., all limitations of the claim are found in the
reference, or 'fully met' by it." Moreover, a reference anticipates if it
discloses the claimed invention "such that a skilled artisan could take
its teachings in combination with his own knowledge of the particular
art and be in possession of the invention . . . ." In re LeGrice, 301
F.2d 929, 936 (CCPA 1962).
D. Analysis
Here, we agree with the Examiner that there are no claimed
structural limitations which distinguish the claimed tibial resection
guide from that disclosed by Matsuno. There is no limitation
regarding the length of the guide pin recited in claim 1. Indeed, the
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length of a guide pin might well vary with the physical stature of the
subject the tibial resection is being performed on. In addition,
Matsuno teaches not only that corresponding guide pin, screw 25, not
only allows for the tightening of the cutting block (12) against the
support arm (8), thus allowing the cutting block to be stabilized at an
optimal position along the tibia, but also that the first guide assembly
rod (1) may be secured to the tibia through pins inserted in the cutting
block (FF 5 and 6). Thus, Matsuno reasonably suggests screw (25) is
capable of being configured to be fastened into the tibia. Therefore,
Appellant's argument that the guide pin recited in claim 1 must be of a
particular length which distinguishes it from screw (25) in Matsuno's
tibial resection guide is neither persuasive of Examiner error nor
commensurate in scope with the invention of claim 1.
Appellant's remaining argument is likewise unpersuasive of
Examiner error. As noted by the Examiner (Ans. 5), the United States
Patent and Trademark Office is not bound by the patentability
determinations of foreign patent offices. Patentability criteria vary
among different sovereign states. Moreover, as stated by Appellant,
the claims issued in European Patent 1414355 are not identical to the
claims on appeal. Therefore, the relevancy of those claims to the
claims on appeal here is indeterminate based on the record before us.
In summary, we sustain the rejection of claims 1-11 as
unpatentable under § 102(b) over Matsuno.
IV. Order
Upon consideration of the record, and for the reasons given, it
is
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ORDERED that the decision of the Examiner rejecting claims
1-11 as unpatentable under 35 U.S.C. § 102(b) over Matsuno is
AFFIRMED, and
FURTHER ORDERED that 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

ack

cc:

Philip S. Johnson
JOHNSON & JOHNSON
One Johnson & Johnson Plaza
New Brunswick, NJ 08933-7003