Ex Parte Lappin et al

Patent Trial and Appeal Board

Feb 24, 2017

13051026 (P.T.A.B. Feb. 24, 2017)

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.
1671-0480 3739
EXAMINER
KAMIKAWA, TRACY L
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
13/051,026 03/18/2011
28078 7590 02/24/2017
MAGINOT, MOORE & BECK, LLP
One Indiana Square, Suite 2200
INDIANAPOLIS, IN 46204
Kyle Lappin
02/24/2017 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 and LIEVEN DE WILDE
Appeal 2014-006007
Application 13/051,026
Technology Center 3700
Before JOHN C. KERINS, JAMES P. CALVE, and
GEORGE R. HOSKINS, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kyle Lappin and Lieven De Wolfe (Appellants) seek our review under
35 U.S.C. § 134 of the non-final rejection of claims 1—11 and 19—21.
Claims 12—17 are withdrawn from consideration. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Appellants’ claimed invention is directed to an instrumentation kit
including a combination device for boring and reaming a shoulder glenoid to
receive a glenoid prosthetic. Claim 1, reproduced below, is illustrative:
Appeal 2014-006007
Application 13/051,026
1. An instrumentation kit for use in preparing a shoulder to
receive a glenoid component comprising:
at least one combination device, the combination device
including
a boring section configured to rotationally form a first
bore in a glenoid of a shoulder,
a drive section operably connected to the boring section
and configured to receive a rotational force,
a reaming section positioned proximally from the boring
section and operably connected to the drive section, the
reaming section configured to rotationally ream a portion
of the glenoid, and
at least one drill guide configured to guide a drill bit and
positioned so as to guide the drill bit to form a second
bore in the shoulder at a location spaced apart from the
first bore,
wherein the reaming section and the boring section are
positioned with respect to each other such that when the
combination device is positioned against the glenoid and the
rotational force is applied to the drive section, the boring
section rotationally forms the first bore in the glenoid and the
reaming section simultaneously rotationally reams a portion of
the glenoid adjacent to the first bore.
THE REJECTIONS
The Examiner rejects:
(i) claims 1, 2, 7, and 19—21 under 35 U.S.C.
§ 102(b) as being anticipated by McGovern (US 2006/0015112 Al,
published Jan. 19,2006);
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Application 13/051,026
(ii) claims 1—5 under 35 U.S.C. § 102(b) as being anticipated
by Jensen (US 2007/0055249 Al, published Mar. 8, 2007);
(iii) claims 1, 2, and 6 under 35 U.S.C. § 102(b) as being
anticipated by Mikhail (US 5,489,310, issued Feb. 6, 1996);
(iv) claim 3 under 35 U.S.C. § 103(a) as being unpatentable
over Mikhail in view of Rauscher (US 2011/0028977 Al, published
Feb. 3,2011);
(v) claims 8, 9, and 11 under 35 U.S.C. § 103(a) as being
unpatentable over McGovern;
(vi) claim 10 under 35 U.S.C. § 103(a) as being unpatentable
over McGovern in view of Jensen; and
(vii) claim 1 (provisionally) on the ground of nonstatutory
obviousness-type double patenting over claim 6 of Application No.
13/363,583.
Rejections of certain claims under the first and second
paragraphs of 35 U.S.C. § 112 appearing in the non-final action have
been withdrawn on appeal. Ans. 2.
ANALYSIS
Claims 1, 2, 7, and 19 21—Anticipation by McGovern
Claim 1 requires the claimed combination device to include “at least
one drill guide configured to guide a drill bit and positioned so as to guide
the drill bit to form a second bore in the shoulder at a location spaced apart
from the first bore [formed by the boring section].” Appeal Br. 33 (Claims
Appx.) (emphasis added). Appellants argue that, when drill guides 230 in
McGovern are used, the bores created produce keyways that are located
partially within the first, central, bore. Appeal Br. 10—11.
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Application 13/051,026
The Examiner appears to acknowledge that to be the case, but posits
that “the limitation ‘spaced apart from’ does not require that each bore be
fully enclosed, or that the entirety of each hole be spaced apart from the
other.” Ans. 3. The Examiner notes that partially overlapping holes may be
regarded as being spaced apart insofar as the central axes of the bores would,
in this situation, be spaced apart from one another. Id. Using this line of
reasoning, the Examiner maintains that the bores created in using the
McGovern drill guides are spaced apart from the central bore. Id.
Appellants take issue with the Examiner’s claim interpretation, noting
that it does not comport with the plain and ordinary meaning of “spaced
apart,” and that, “under the Examiner’s construction, the only configuration
outside the scope proposed by the Examiner is two bores with identical
diameters which are identically centered. In other words, a single bore.”
Reply Br. 3^4. Appellants characterize the Examiner’s construction as
“nonsensical.” Id. at 4.
Appellants have the better position here. Contrary to the Examiner’s
views, the claims require that the drill guide be configured and positioned so
as to allow the formation of a second bore spaced apart from the first bore.
The claims say nothing about the axes of the bores being spaced apart, but
rather the bores themselves.
The rejection of claims 1, 2, 7, and 19—21 as being anticipated by
McGovern is not sustained.
Claims 1—5—Anticipation by Jensen
The Examiner relies on the same faulty claim construction addressed
above in finding that the drill guides in Jensen (flutes 74) may be used to
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Application 13/051,026
create bores whose axes are spaced apart from a bore formed by boring
section 102 in the Jensen device. See Ans. 5.
For the same reasons set forth in the discussion of McGovern above,
the rejection of claims 1—5 as being anticipated by Jensen is not sustained.
Claims 1, 2, and 6—Anticipation by Mikhail
The Examiner finds that Mikhail discloses a combination device
having a boring section (second cutting edge 46b, third cutting edge 46c), a
drive section (stem 42), a reaming section (first cutting edge 46a), and at
least one drill guide (opening 48). Non-Final Act. 14—15 (citing in part to
Mikhail, Figs. 10—11).
Appellants point out that openings 48 are described by Mikhail as
being provided to allow bone chips and other debris to be expelled away
from the active cutting area, and that they are shown as being curved ovals.
Appeal Br. 24. Appellants maintain that the Examiner has failed to establish
that a person of ordinary skill in the art would understand such openings to
be drill guides, particularly in view of the oval shape of the opening. Id.
The Examiner replies that the opening found to correspond to the
claimed drill guide is “fully capable of guiding a drill,” and is “fully capable
of use with an appropriately sized drill bit.” Ans. 9 (emphasis omitted). As
to Appellants’ argument directed to the oval shape of the cited opening, and
the lack of any finding that a person skilled in the art would recognize such
an opening as a drill guide, the Examiner baldly asserts that “[n]on-circular
guides are also known in the art, for allowing placement of a drilled hole in a
variable yet limited area.” Id.
Appellants characterize this latter statement as a taking of Official
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Application 13/051,026
Notice, which they traverse, further noting that search efforts on their part
did not uncover any instances of non-circular drill guides. Reply Br. 4—5.
Appellants also insist that Mikhail is not designed and configured to operate
as a drill guide, and liken the situation to that present in In re Giannelli,1
where the Federal Circuit held that when a claim recites that an element is
“configured to” perform a particular function, it is not appropriate to base a
rejection on a structure that is “capable of’ performing that function. See
Reply Br. 6.
Appellants have the better position here. An oval opening would not
generally be regarded by a person skilled in the art as a drill guide, in that
such an opening would appear to allow for undesired travel or movement
away from the intended location of the bore to be drilled as the bore is
initiated. In a similar vein, with regard to the Examiner’s statement directed
to “non-circular guides,” the Examiner has not attempted to establish that,
within the pertinent art of joint repair or replacement or an otherwise
analogous art, it might be acceptable to “allow[] [for] placement of a drilled
hole in a variable yet limited area.” Ans. 9. Our sense is that precise
positioning is of great, if not utmost, importance in this field.
The rejection of claims 1, 2, and 6 as being anticipated by Mikhail is
therefore not sustained.
Claim 3— Unpatentability over Mikhail and Rauscher
Claim 3 depends indirectly from claim 1. The Examiner does not rely
on Rauscher in any manner that overcomes the deficiencies of the Mikhail
1 739 F.3d 1375 (Fed. Cir. 2014)
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Application 13/051,026
reference relative to claim 1. Accordingly, the rejection of claim 3 over
Mikhail and Rauscher is not sustained.
Claims 8, 9, and 11—Unpatentability over McGovern
Claims 8, 9, and 11 depend indirectly from claim 1. The Examiner
does not make any additional findings or conclusions relative to McGovern
that overcome the deficiencies of the McGovern reference relative to claim
1. Accordingly, the rejection of claims 8, 9, and 11 over McGovern is not
sustained.
Claim 10— Unpatentability over McGovern and Jensen
Claim 10 depends from claim 8, and indirectly from claim 1. The
Examiner does not rely on Jensen in any manner that overcomes the
deficiencies of the McGovern reference relative to claim 1. Accordingly, the
rejection of claim 10 over McGovern and Jensen is not sustained.
Claim 1—Obviousness-type Double Patenting
This rejection was lodged as a provisional rejection of instant claim 1
over claim 6 of pending application Serial Number 13/363,583, as that claim
stood at the time of the non-final action. Given the provisional nature of the
rejection, we deem it premature to decide this rejection on the merits. The
Examiner may wish to determine whether the rejection is appropriate based
upon the claims as they read, once our jurisdiction over this appeal is
terminated.
DECISION
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Application 13/051,026
The rejections of claims 1—11 and 19—21 under 35 U.S.C. § 102(b)
and 35 U.S.C. § 103(a) are reversed.
We do not reach the merits of the provisional rejection based on
obviousness-type double patenting.
REVERSED
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