Ex Parte Michelson

Board of Patent Appeals and Interferences

Mar 8, 2011

10675820 (B.P.A.I. Mar. 8, 2011)

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

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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