Ex Parte LappinDownload PDFPatent Trial and Appeal BoardOct 14, 201613363583 (P.T.A.B. Oct. 14, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/363,583 02/01/2012 28078 7590 10/14/2016 MAGINOT, MOORE & BECK, LLP One Indiana Square, Suite 2200 INDIANAPOLIS, IN 46204 FIRST NAMED INVENTOR Kyle Lappin 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. 1671-0481CIP1 3944 EXAMINER KAMIKA WA, TRACY L ART UNIT PAPER NUMBER 3775 MAILDATE DELIVERY MODE 10/14/2016 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 KYLE LAPPIN Appeal 2015-000134 1,2 Application 13/363,583 Technology Center 3700 Before PHILIP J. HOFFMANN, AMEE A. SHAH, and MATTHEWS. MEYERS, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of claims 1-8. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. According to Appellant, the invention relates "to glenoid component apparatuses for shoulder arthroplasty and methods for using them." 1 Our decision references Appellant's Specification ("Spec.," filed Feb. 1, 2012), Appeal Brief ("Appeal Br.," filed Apr. 11, 2014), and Reply Brief ("Reply Br.," filed Sept. 17, 2014), as well as the Final Office Action ("Final Action," mailed Oct. 17, 2013) and the Examiner's Answer ("Answer," mailed July 17, 2014). 2 According to Appellant, DePuy Synthes Products, LLC is the real party in interest. Appeal Br. 2. Appeal2015-000134 Application 13/363,583 Spec. i1 1. Claim l is the only independent claim. See Appeal Br., Claims App. We reproduce claim 1, below, as representative of the appealed claims. Id. 1. An instrumentation kit for use in preparing a bone to receive a prosthetic component, comprising: at least one first combination device, the at least one first combination device including a proximal portion configured to couple with a torque providing device and a distal portion configured to couple with a first instrument such that when the first instrument rotates the distal portion rotates with the first instrument, the proximal portion pivotably connected to the distal portion and pivotable between a first position whereat the proximal portion and the distal portion are (i) longitudinally aligned and (ii) configured to transfer a torque received by the proximal portion to the distal portion, and a second position whereat the proximal portion and the distal position are (i) not longitudinally aligned and (ii) configured to transfer a torque received by the proximal portion to the distal portion. REJECTIONS AND PRIOR ART The Examiner rejects claims 1-5 under 35 U.S.C. § 103(a) as unpatentable over Mikhail (US 5,180,384, iss. Jan. 19, 1993) and Tribby (US 2007/0251356 Al, pub. Nov. 1, 2007). The Examiner rejects claims 6-8 under 35 U.S.C. § 103(a) as unpatentable over Mikhail, Tribby, and Rauscher (US 2011/0028977 Al, pub. Feb. 3, 2011). See Final Action 3-12. 2 Appeal2015-000134 Application 13/363,583 ANALYSIS The Examiner rejects independent claim 1, from which claims 2-8 depend, based on a combination of Mikhail and Tribby. See, e.g., Final Action 3-8. More specifically, the Examiner determines, among other things, that it would have been obvious ... to construct the at least one first combination device disclosed in Mikhail (Mikhail, 14) such that the proximal portion is pivotably connected to the distal portion, as Tribby teaches that such a pivoting connection allows for angled adjustment for application of torque to first instruments in varying configurations. Id. at 6. As we discuss in further detail below, Appellant argues that it would not have been obvious to modify Mikhail based on Tribby as the Examiner proposes. See, e.g., Appeal Br. 7-10; see, e.g., Reply Br. 3---6. Based on our review, we determine that the Examiner does not establish that it would have been obvious to combine the references as proposed in the Final Action or Answer. In identifying a reason that would have prompted a person of ordinary skill to combine prior art teachings, the Examiner must provide an articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Mikhail describes a reamer, having a straight shaft, which is connected to "a rotatable power means" to ream a cavity in a bone. Mikhail col 3, 11. 42--47; col. 4, 11. 53-56; Fig. 1. The Examiner determines that it would have been obvious to modify Mikhail, based on Tribby, such that 3 Appeal2015-000134 Application 13/363,583 iviikhail's shaft would include a pivot. See Answer 5---6. In particular, the Examiner determines that Tribby teaches that a combination device with pivotably connected proximal and distal portions is suitable for transferring a torque, and that such a pivoting connection allows for angled adjustment for application of torque to first instruments in varying configurations (Tribby, [0028]). It is well known in the orthopedic art to utilize modified, i.e. non-straight, handles for various surgical tools, to reduce invasiveness particularly based on a patient's surrounding anatomy, and because each patient's surrounding anatomy is different, a pivotably angled as opposed to permanently angled combination device would have been obvious to a person having ordinary skill in the art at the time of invention to achieve minimal invasiveness while still applying the torque required by Mikhail. Id. (square brackets original). As Appellant points out, however, Tribby discloses that ... wrench 100 is used only for the final tightening of the spark plug. . . . [T]he devices of Mikhail and Tribby are operated using different principles of operation. In the Tribby application, the spark plug is threaded. (See, e.g., Tribby at FIG. IB). Accordingly, so long as the spark plug is rotated, the threads provide a self-feeding (self-extracting) feature. Consequently, full functionality is achieved simply by rotating the wrench 100. In contrast, the reamer 10 of Mikhail is not self-feeding. Consequently, in order for the reamer of Mikhail to provide its intended function, reaming of a bone, the reamer 10 must be forced axially into the bone. While this is readily accomplished given the actual linear configuration of Mikhail (see, e.g., Mikhail at FIG. 12), if the stem 14 of Mikhail is bent, application of axial force becomes problematic. Therefore, by pivoting the stem 14 of Mikhail in the manner proposed by the Examiner, the Mikhail reamer 10 is no longer functional as a reamer. Appeal Br. 8-9. We find Appellant's statements persuasive, and determine that the Examiner does not establish that it would have been obvious to use a 4 Appeal2015-000134 Application 13/363,583 pivot on the shaft of iviikhail' s reamer that is connected to a power tool, as it would have made it more difficult (if not impossible) to accurately ream a cavity in a bone when portions of the shaft are angled relative to one another. Thus, based on the foregoing, we do not sustain the obviousness rejection of claim 1. We also do not sustain the obviousness rejections of claims 2-8 that depend from claim 1, inasmuch as the Examiner does not establish that another reference remedies the deficiency in the rejection of claim 1. DECISION We REVERSE the Examiner's obviousness rejections of claim 1-8. REVERSED 5 Copy with citationCopy as parenthetical citation