Ex Parte MichelsonDownload PDFBoard of Patent Appeals and InterferencesMar 8, 201110675820 (B.P.A.I. Mar. 8, 2011) Copy Citation 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. 10/675,820 09/30/2003 Gary K. Michelson 101.0093-01000 6670 22882 7590 03/08/2011 MARTIN & FERRARO, LLP 1557 LAKE O'PINES STREET, NE HARTVILLE, OH 44632 EXAMINER WOODALL, NICHOLAS W ART UNIT PAPER NUMBER 3775 MAIL DATE DELIVERY MODE 03/08/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte GARY K. MICHELSON ____________ Appeal 2009-015030 Application 10/675,820 Technology Center 3700 ____________ Before TONI R. SCHEINER, DONALD E. ADAMS, and STEPHEN WALSH, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL1 This appeal under 35 U.S.C. § 134 involves claims 1-30, the only claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-015030 Application 10/675,820 2 STATEMENT OF THE CASE The claims are directed to a guard. The claims have not been argued separately and therefore stand or fall together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 1 is representative and is reproduced in the “Claims Appendix” of Appellant’s Brief. Claims 1-28 stand rejected under 35 U.S.C § 103(a) as unpatentable over the combination of Cauthen2 and Thompson.3 Claim 29 stands rejected under 35 U.S.C § 103(a) as unpatentable over the combination of Cauthen, Thompson, and Gruskin.4 Claim 30 stands rejected under 35 U.S.C § 103(a) as unpatentable over the combination of Cauthen, Thompson, and Mansouri.5 We affirm. ISSUE Does the preponderance of evidence on this record support a conclusion of obviousness? FINDINGS OF FACT FF 1. We adopt the Examiner’s factual findings as our own. FF 2. Thompson’s apparatus is configured to provide three apertures “to allow access to the patient’s cervix when the examination apparatus . . . is in use” (Thompson, col. 2, ll. 38-40; see also Ans. 6 (“Thompson is also a surgical device that distracts and provides access to a surgical site”)). 2Cauthen, US 2003/0135220 A1, published July 17, 2003. 3 Thompson, US 5,846,249, issued December 8, 1998. 4Gruskin et al., US 2003/0023209 A1, published January 30, 2003. 5Mansouri et al., US 2003/0229401 A1, published December 11, 2003. Appeal 2009-015030 Application 10/675,820 3 PRINCIPLES OF LAW “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed.Cir.1992). In other words, “familiar items may have obvious uses beyond their primary purposes.” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 127 S.Ct. 1727, 1742, 167 L.Ed.2d 705 (2007). We therefore have concluded, for example, that an inventor considering a hinge and latch mechanism for portable computers would naturally look to references employing other “housings, hinges, latches, springs, etc.,” which in that case came from areas such as “a desktop telephone directory, a piano lid, a kitchen cabinet, a washing machine cabinet, a wooden furniture cabinet, or a two-part housing for storing audio cassettes.” Paulsen, 30 F.3d at 1481-82. In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-1380 (Fed.Cir. 2007). Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(vii) (“Any arguments or authorities not included in the brief or a reply brief ... will be refused consideration by the Board, unless good cause is shown.”). ANALYSIS Appellant contends that Thompson’s speculum is used to facilitate the dilation of soft tissue, whereas the guard of independent claim 1 is for use with bone (App. Br. 4; see also Reply Br. 2-3). From this Appellant contends that “Thompson is non-analogous art to the claimed invention” (id.). We are not persuaded. Cauthen, Thompson, and the invention of Appellant’s claim 1 all relate to a medical apparatus that articulates about a pivot point. As such we find that a person of ordinary skill in this art interested in modifying the articulation point of Cauthen’s device would Appeal 2009-015030 Application 10/675,820 4 have considered Thompson. In this regard, we find that Appellant does not dispute the Examiner’s reason to modify Cauthen with the teachings of Thompson “to better use the device to distract the vertebrae” (Ans. 5). Appellant contends that in contrast to the teachings of Thompson, Cauthen teaches that the articulating hinges “are positioned adjacent the leading ends of the insertion instruments” and “are disposed on the exterior of the hollow bodies” (App. Br. 8-9; see also Reply Br. 3-4). From this Appellant contends that “Cauthen and Thompson teach away from one another” (App. Br. 7 (emphasis removed); Reply Br. 3 (emphasis removed)). We are not persuaded. Appellant fails to support this contention with persuasive evidence or argument to support his conclusion that it would not have been obvious to modify Cauthen in the manner suggested by Thompson. Appellant contends that if one of ordinary skill in this art modified Cauthen’s apparatus with the teachings of Thompson, the passage way through the hollow body of Cauthen’s apparatus “would be interrupted, and therefore, instruments could not be inserted therethrough” (App. Br. 9; see also Reply Br. 4-5). From this Appellant contends that “[t]he combination of Cauthen and Thompson is inoperable” (App. Br. 9 (emphasis removed); Reply Br. 4 (emphasis removed)). We are not persuaded. Thompson’s apparatus comprises apertures to allow access through the apparatus into the patient (FF 2). Appellant fails to provide persuasive evidence or argument to support a conclusion that similar apertures would not be present in Cauthen’s apparatus when modified by Thompson. Appeal 2009-015030 Application 10/675,820 5 CONCLUSION OF LAW The preponderance of evidence on this record supports a conclusion of obviousness. The rejection of claim 1 under 35 U.S.C § 103(a) as unpatentable over the combination of Cauthen and Thompson is affirmed. Claims 2-28 fall together with claim 1. As for claims 29 and 30 Appellant relies on their arguments with regard to claim 1 (App. Brief 10; Reply Br. 5). For the foregoing reasons we are not persuaded. The rejection of claim 29 stands rejected under 35 U.S.C § 103(a) as unpatentable over the combination of Cauthen, Thompson, and Gruskin is affirmed. The rejection of claim 30 under 35 U.S.C § 103(a) as unpatentable over the combination of Cauthen, Thompson, and Mansouri is affirmed. TIME PERIOD FOR RESPONSE 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 cdc MARTIN & FERRARO, LLP 1557 LAKE O'PINES STREET, NE HARTVILLE, OH 44632 Copy with citationCopy as parenthetical citation