Ex Parte Neubardt

Board of Patent Appeals and Interferences

Dec 21, 2011

11091089 (B.P.A.I. Dec. 21, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte SETH L. NEUBARDT

Appeal 2011-001391
Application 11/091,089
Technology Center 1600
__________

Before TONI R. SCHEINER, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1, 4, 5, and 7-23, directed to a surgical bone wax applicator. The
claims have been rejected as obvious. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
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STATEMENT OF THE CASE
Claims 1, 4, 5, and 7-23 are pending and on appeal; claims 2, 3, and 6
have been canceled (App. Br. 1). Claim 1 is representative of the subject
matter on appeal:
1. A surgical bone wax applicator, comprising:
one or more layers of absorbent material;
a mass of bone wax deposited on a surface of the absorbent material
so that the bone wax adheres to the material;
an electrical heating element comprising an electrically resistive
heating wire or conductor that extends within the absorbent material in the
vicinity of the mass of bone wax, and the heating wire has an associated pair
of electrical contact terminals that are exposed on the applicator for
connecting the heating wire to an outside voltage source; and
the heating wire is constructed and arranged to heat and soften the
mass of bone wax when the electrical contact terminals of the heating wire
are connected to the outside voltage source and a determined current flows
through the heating wire.
The Examiner relies on the following evidence:
Eidus US 3,596,657 Aug. 3, 1971
Ray US 5,201,704 Apr. 13, 1993
Lee US 5,250,046 Oct. 5, 1993
Howell US 6,695,837 B2 Feb. 24, 2004
Becker US 5,306,287 Apr. 26, 1994
Ray US 5,374,246 Dec. 20, 1994
Phillips US 5,383,879 Jan. 24, 1995
Keppel US 6,203,541 B1 Mar. 20, 2001

The claims stand rejected as follows:
(A) Claims 1, 4, 5, and 7-12 under 35 U.S.C. § 103(a) as unpatentable
over Eidus, Lee, Ray 246, and Keppel;
(B) Claims 13-16 under 35 U.S.C. § 103(a) as unpatentable over
Eidus, Lee, Ray 246, Keppel, and Phillips;
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(C) Claims 17 and 20-23 under 35 U.S.C. § 103(a) as unpatentable
over Eidus, Lee, Ray 246, Keppel, and Becker;
(D) Claim 18 under 35 U.S.C. § 103(a) as unpatentable over Eidus,
Lee, Ray 246, Keppel, Becker, and Howell; and
(E) Claim 19 under 35 U.S.C. § 103(a) as unpatentable over Eidus,
Lee, Ray 246, Keppel, Becker, and Ray 704.
OBVIOUSNESS
Issue
There are five separate rejections of the claims, but all rely, at least in
part, on the Examiner’s proposed combination of the teachings of Ray 246,
Eidus, and Lee.
Bone wax is used in “surgical procedure[s] in which bone is broken or
injured, and bone hemostasis must be achieved” or open bone surfaces “will
continue to ooze blood . . . tending to obscure and clutter the area of the
operation” (Ray 246, col. 5, ll. 5-23).
In its broadest aspect, the invention is directed to a surgical bone wax
applicator comprising a mass of bone wax adhered to the surface of an
absorbent material. An electrically resistive wire or conductor is embedded
in the absorbent material in the vicinity of the bone wax. The wire or
conductor has two electrical contact terminals exposed on the surface of the
absorbent material, so that when the terminals are connected to an outside
voltage source, and current flows through the wire or conductor, the wire or
conductor heats up and softens the bone wax (see claim 1). In certain
embodiments, current flows through the heating wire when the terminals are
contacted by bipolar forceps having a pair of opposed electrical contact
blades connected to a bipolar generator (see e.g., claims 4 and 10).
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The Examiner finds that Ray [246] “teaches an applicator comprising
cotton with a mass of bone wax attached to one surface” and “teaches
applying the bone wax that is attached to the cotton applicator with forceps”
(Ans. 4). The Examiner notes that Ray 246 “teach[es] heating the bone wax
in a water bath, . . . [but] does not teach . . . an electrically resistive
conductor” in the applicator (id.). However, the Examiner finds that Eidus
“teaches a thermally conductive surgical dressing comprising cotton and
thermally conductive wire undulating throughout the cotton” (id.).
The Examiner concludes that one of ordinary skill in the art “would
have been motivated to employ the thermally inductive [sic, conductive]
wire [of Eidus] into the cotton bone wax applicator of Ray [246] to
efficiently transmit heat evenly . . . and to reduce the number of steps in an
operation, reduce the amount of time during an operation and reduce
distractions” (id. at 5).
The Examiner further notes that “[n]either Ray [246] nor Eidus teach
a separate electric power source directly connected to the apparatus” (id.),
but finds that Lee “teaches [heated] forceps that are used to melt paraffin and
are attached to an electric power circuit” (id.).
The Examiner concludes that one “would have been motivated to use
the heated forceps of Lee for application of the bone wax in a thermally
conductive wire embedded cotton of Ray [246] and Eidus for ease of
administration . . . and [to] maintain a constant thermal temperature for the
bone wax to stay softened” (id.).
Appellant contends that “the thermally conductive elements in [the
surgical dressing of] Eidus serve only to transfer heat to or from the body of
the person wearing the dressing” (App. Br. 6), and “[e]ven if the thermally
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conductive metallic elements of Eidus are introduced in the absorbent
material of Ray ´246 . . . the combination would still omit (a) electrical
contact terminals, and (b) a construction that exposes the terminals for
connection to a voltage source, as presently claimed” (id. at 7). Moreover,
Appellant contends that Lee’s heated forceps “could [not] be used to
energize a heating element in an applicator since the forceps blades do not
supply an output voltage” (Reply Br. 1).
The issue raised by all of the rejections is whether the Examiner has
established that it would have been obvious for one of ordinary skill in the
art to provide a bone wax applicator with an integral electrical heating
element, which can be operated by application of an external voltage source,
given the teachings of the prior art, particularly Ray 246, Eidus, and Lee.
Findings of Fact
1. Ray 246 discloses a bone wax applicator comprising a mass of
bone wax attached to a pad of absorbent material (Ray 246, col. 4, ll. 44-45;
col. 5, l. 4). “A water bath pre-set to a temperature sufficient to melt or
soften the bone wax . . . serves to both soften the bone wax on the absorbent
material and wet the combination of bone wax and absorbent material” (id.
at col. 6, ll. 54-58). “In a single movement, the surgeon engages an
applicator with the bone wax in place, and inserts it into the incision . . .
where it is pressed against the bone surface” (id. at col. 8, ll. 39-42).
According to Ray 246, the disclosed applicator is an improvement
over prior art techniques because it reduces the number of steps needed to
adhere the bone wax to the bone surface, saves time, and minimizes clutter
and distractions during surgery (id. at col. 5, l. 24 – col. 6, l. 17).
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2. Eidus teaches that medical treatment frequently requires direct
application of cooling packs to a body part that must remain bandaged, but
“conventional surgical dressing are poor thermal conductors, . . . [thus] the
transmission of heat from the body area is very slow and inefficient” (Eidus,
col. 1, ll. 28-35). “Conversely, in those instances where it is desirable to
apply heat to a body area . . . it is very difficult to transmit heat efficiently
and evenly through the bandages and to the desired body area due to the
poor thermal transfer characteristics of such conventional surgical
dressing[s]” (id. at col. 1, ll. 36-40).
Eidus discloses “a surgical dressing comprising high-absorbency
fibrous material in combination with thermally conductive elements
distributed throughout said fibrous material” (Eidus, col. 1, ll. 65-67), which
provides “improved thermal conduction characteristics” and “even
distribution of heat transfer over the area . . . in contact with the body area”
(id. at col. 1, ll. 58-63).
3. Lee discloses forceps for use in embedding tissue samples in a
paraffin matrix. The forceps “are modified to include electrical resistance
heaters at the grasping portions . . . to maintain the grasping portions at a
temperature above the point of liquefaction of the paraffin being used” (Lee,
col. 1, ll. 39-43), “[t]o assure that congealed paraffin does not accumulate on
the grasping portion of these instruments” (id. at col. 1, ll. 22-23).
Discussion
We agree with Appellant that the Examiner has not shown that the
cited references support a prima facie case of obviousness. At best, the
Examiner has established that various, discrete elements of the claimed
invention were known in the art, but an invention “composed of several
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elements is not proved obvious merely by demonstrating that each of its
elements was, independently, known in the prior art.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
Moreover, we agree with Appellant that the combination proposed by
the Examiner would lack certain elements of the claimed invention. As
Appellant points out, even if one were to combine the teachings of the
references in the manner proposed by the Examiner, “the combination would
still omit (a) electrical contact terminals, and (b) a construction that exposes
the terminals for connection to a voltage source” (App. Br. 7) as required by
all the claims on appeal. Moreover, we agree with Appellant that Lee’s
heated forceps “could [not] be used to energize a heating element in an
applicator since the forceps blades do not supply an output voltage” (Reply
Br. 1).
In short, while we agree with the Examiner that one of ordinary skill
in the art would have been motivated to “reduce the number of steps in an
operation, reduce the amount of time during an operation and reduce
distractions” (Ans. 5), the Examiner has not identified anything in the
references or otherwise that would have suggested the particular
configuration required by the claims as a means of accomplishing these
goals. What is lacking in the rejection is “a reason that would have
prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.” KSR, 550 U.S. at 418.
The Examiner has, therefore, not provided an adequate basis to support a
conclusion of obviousness under 35 U.S.C. § 103(a).
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SUMMARY
The Examiner has not established that it would have been obvious for
one of ordinary skill in the art to provide a bone wax applicator with an
integral electrical heating element, which can be operated by application of
an external voltage source, given the teachings of the prior art relied on.
Accordingly, all five of the rejections of the claims under 35 U.S.C.
§ 103(a) are reversed.

REVERSED

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