Ex Parte Lappin

Patent Trial and Appeal Board

Oct 14, 2016

13363583 (P.T.A.B. Oct. 14, 2016)

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.
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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
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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
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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
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