Ex Parte Pandya

Patent Trial and Appeal Board

Dec 19, 2016

12270492 (P.T.A.B. Dec. 19, 2016)

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.
12/270,492 11/13/2008 Rajiv D. Pandya 048408.003 2260
51108 7590 12/19/2016
DAVID L. KING, SR.
5131 N.E. COUNTY ROAD 340
HIGH SPRINGS, EL 32643
EXAMINER
MORAN, EDWARD JOHN
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
12/19/2016 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 RAJIV D. PANDYA
Appeal 2015-001499
Application 12/270,492
Technology Center 3700
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Rajiv D. Pandya (“Appellant”) appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 1, 2, 4, 5, 7—17, 19-29, 31, and
33—37, which are all the pending claims. See Br. 5. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-001499
Application 12/270,492
CLAIMED SUBJECT MATTER
Appellant’s disclosed invention relates to “osteal guides, surgical
drilling systems and methods and devices for drilling osteal tunnels.”
Spec. 11. Claims 1,17, and 29 are independent. Claim 1, reproduced
below, is illustrative of the subject matter on appeal.
1. A surgical drill guide device for drilling intersecting
angled osteal or osteous bone tunnels comprising:
a) a support rack having a first end and a second end;
b) a drill guide sleeve having a passage for receiving
a drill therethrough, the drill guide sleeve being adjustably
securable and positionable on the rack between the first end and
the second end of the rack; and
c) a guide component secured on the first end of said
rack, the guide component being a hollow cylinder having an
exterior end attached to the rack and an interior end for
insertion in a bone tunnel, the interior end having a blunt, round
or awl tip and a target ring near the tip, the target ring being a
hole through the hollow cylinder; the guide component having a
suture seizing mechanism positioned in the interior end of the
hollow cylinder; and
wherein the guide component when positioned in a
previously drilled first bone tunnel a distance equal or
approximately equal a length of the first bone tunnel and the
drill guide sleeve is placed at a desired position of a surface of
the bone, the target ring is aligned with the direction of the drill
guide sleeve and a drill bit can be guided inside the guide sleeve
to create a second bone tunnel intersecting the first bone tunnel
as the drill bit passes into and through a center of the target ring
without touching the guide component to create the angled
intersecting bone tunnels wherein the target ring is aligned with
an axis of the second tunnel.
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Application 12/270,492
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Hourahane US 4,672,957 June 16, 1987
Sauer US 5,669,917 Sept. 23, 1997
REJECTION
The following rejection is before us for review: Claims 1, 2, 4, 5,
7—17, 19—29, 31, and 33—37 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hourahane and Sauer. Final Act. 3—7.
ANALYSIS
Claims 1, 2, 4, 5, and 7—16
Appellant presents arguments against the rejection of claims 1, 2, 4, 5,
and 7—16 as a group. See Br. 16—19. We select independent claim 1 as the
representative claim to decide the appeal of the rejection of these claims,
with claims 2, 4, 5, and 7—16 standing or falling therewith. See 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner found that Hourahane discloses a surgical drill guide,
substantially as claimed, including
a guide component (14) capable of being rigidly secured on the
first end of the rack (e.g. via tightening of set screw 30) and
having an exterior end (e.g. from 22 downwards to rack
intersection point) capable of attaching to the rack and an interior
end (e.g. from 20 upwards to rack intersection point) capable of
insertion in a bone tunnel.
Final Act. 3^4. Next, the Examiner found that Hourahane discloses “a
suture fee[d]ing sleeve (120) having a generally tubular structure having a
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Application 12/270,492
hollow interior an outer diameter smaller than the osteal tunnel and an inner
diameter large enough to accommodate the sutures.” Id. at. 4 (citing
Hourahane, Fig. 16). The Examiner acknowledged that Hourahane does not
disclose “wherein the guide component is a hollow cylinder with a target
ring near the ring tip, a suture seizing pestle or activating mechanism as
required or wherein the outer diameter of the suture feeding sleeve is larger
than the opening of the target ring.” Id. However, the Examiner found that
Sauer discloses
a guide component (see Figs 1—3) being a hollow cylinder (22
and 14) with a target ring being a hole through the hollow
cylinder (formed by opening 23 and opposite top opening, see
Fig. 6) formed near the tip of the device, a suture seizing
mechanism (e.g. pestle 26) positioned in the end of the cylinder,
and an activating mechanism (48 and 54) on the opposite end of
the guide component capable of engaging the suture seizing
mechanism, wherein when the pestle is moved toward the target
ring when the activating/actuating mechanism is activated
(squeezed), the movement of the pestle is capable of closing the
hole of the target ring (by moving the pestle axially) and securely
presses against the tip of the interior end of the guide component
or the edge of the target ring, whereby a suture is capable of being
pinned and secured between the pestle and the tip of the guide
component at an inner surface of the target ring (e.g. inside), and
wherein the target ring is capable of accommodating a drill bit
(e.g. dependent on the size of the drill bit used) and is
complimentary to a suture inserted therein (see Figs).
Id. at 4—5. The Examiner concluded that, given the teachings of the prior
art, it would have been obvious to one of ordinary skill in the art at the time
of the invention to modify Hourahane’s guide component to include a
hollow structure, suture seizing mechanism, target ring, and activating
mechanism, as taught by Sauer, in order to “allow for improved grip of the
suture during removal, improve the accuracy of the drilling and provide a
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Application 12/270,492
more secure grip on the suture during various differing surgical procedures
and threading arrangements and reduce the number of parts and devices
needed for device operation.” Id. at 5.
Appellant initially points to the Notice of Allowance in Appellant’s
related Application 12/270,506 (nowU.S. Patent No. 8,579,974, issued
Nov. 12, 2013). See Br. 16—17. Appellant argues that “Hourahane . . . was
clearly cited in the related granted patent and was determined not to be
novelty destroying.” Id. at 16.1 We do not find Appellant’s position
persuasive. As explained by the Examiner, “[a] device claim will not. . .
automatically be found allowable merely because functional or structural
limitations from an allowable method claim have been included.” Ans. 2. It
is well established that patentability decisions involving claims in other
patents or patent applications are not necessarily germane to issues in
another patent application. See In re Gyurik, 596 F.2d 1012, 1016 (CCPA
1979) (“Each case is determined on its own merits; allowed claims in other
applications or patents are not considered in reviewing specific rejections of
specific claims.”); In re Giolito, 530 F.2d 397, 400 (CCPA 1976) (“We
reject appellants’ argument that the instant claims are allowable because
similar claims have been allowed in a patent. It is immaterial whether
similar claims have been allowed to others.”).
Appellant argues that Sauer “does not teach a guide component as part
of an assembly.” Br. 18. Appellant asserts that Sauer’s “device is not
intended to function as part of the bone tunnel forming tool nor is it
1 We note that Sauer is not listed in the References Cited section of
U.S. Patent No. 8,579,974, and it appears that the Examiner, in reviewing
that application, did not consider this reference.
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structurally the same or even similar to the claimed device.” Id. According
to Appellant, Sauer’s “device is a separate tool to crimp a suture after
tunnels exist; it is not part of a rack assembly.” Id. This argument regarding
Sauer is not persuasive because it attacks the reference individually, where
the rejection is predicated upon a combination of prior art disclosures. See
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re
Keller, 642 F.2d 413, 425 (CCPA 1981)). Here, as discussed supra, the
Examiner’s rejection is based on the combined teachings of Hourahane and
Sauer. Appellant’s allegation of differences or shortcomings of Sauer alone
is not responsive to the rejection as articulated by the Examiner and
therefore does not apprise us of error.
Appellant argues that Sauer does not disclose a “target ring to receive
a drill bit.” Br. 18. For the following reasons, this argument does not
persuade us of error in the rejection.
Claim 1 recites, in relevant part, a “target ring being a hole through
the hollow cylinder,” wherein “the drill bit passes into and through a center
of the target ring.” Br. 22, Claims App. The Examiner found that Sauer
discloses “a target ring being a hole through the hollow cylinder (formed by
opening 23 and opposite top opening, see Fig. 6) formed near the tip of the
device.” Final Act. 4. According to the Examiner, Sauer’s “target ring is
capable of accommodating a drill bit (e.g. dependent on the size of the drill
bit used).” Id. at 5. Specifically, Sauer discloses “aperture 23 (FIG. 5). . .
formed on the bottom surface of the tool housing 22.” Sauer, col. 4,
11. 50-51 (boldface omitted). With reference to Figure 5, Sauer also
discloses “opening 70 provided intermediate the distal end 16b of the tool
assembly 16.” Id. at col. 6,11. 15—16 (boldface omitted). Appellant does not
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set forth evidence or persuasive technical reasoning to explain why Sauer’s
aperture 23 and opening 70 would not be capable of receiving a drill bit.
Thus, Appellant does not apprise us of error in the Examiner’s findings
regarding the disclosure of Sauer, which are supported by a preponderance
of the evidence.
Appellant argues that “[t]here simply is no teaching or suggestion that
the combination of making the tunnel and the suture seizing can be
accomplished in a single unitary assembly.” Br. 19. In particular, Appellant
asserts that “it is unclear what teaching or motivation one skilled in the art
would take from these two prior art patents to achieve the claimed invention
absent impermissible hindsight reconstruction after seeing the claims as
presented in this appeal.” Id. Appellant’s argument is unpersuasive for two
reasons. First, the argument appears to urge us to apply a strict teaching,
suggestion, or motivation (“TSM”) test for obviousness. Rigid application
of the TSM test was explicitly disavowed by the Supreme Court in KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 415, 419 (2007). Second, Appellant’s
argument does not address the Examiner’s articulated reasoning for the
conclusion of obviousness. Here, the Examiner provided articulated
reasoning with a rational underpinning for the combination of teachings used
in the rejection, as discussed supra, which Appellant does not persuasively
refute. Moreover, regarding the allegation of improper hindsight, Appellant
does not identity any knowledge relied upon by the Examiner that was
gleaned only from Appellant’s disclosure and that was not otherwise within
the level of ordinary skill at the time of the invention. See In re McLaughlin,
443 F.2d 1392, 1395 (CCPA 1971). Thus, Appellant does not apprise us of
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Application 12/270,492
error in the Examiner’s findings or reasoning for the conclusion of
obviousness.
Appellant also argues “that the prior art combination is inconsistent
with the explicit teaching in both cited documents.” Br. 19. In particular,
Appellant asserts that “Hourahane forms the tunnels prior to any concern for
passing the sutures,” and “the suture seizing and tissue work is accomplished
after the Hourahane device is removed.” Id. at 18 (citing Hourahane,
Figs. 17—19). Appellant also asserts that “[t]he Saurer [sic] device similarly
is structured to independently enter the bone tunnel.” Id. at 18—19.
According to Appellant, the proposed combination of Hourahane and
Sauer’s teachings would destroy the principle of operation of the devices.
See id. at 19.
We are not persuaded by Appellant’s argument. To the extent that
Appellant appears to argue that the cited references teach away from the
Examiner’s proposed combination of Hourahane’s drill guide device with
Sauer’s suture device, Appellant does not identify, nor do we discern, any
passage in either Hourahane or Sauer that criticizes, discredits, or otherwise
discourages such a combination. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004) (prior art does not teach away from claimed subject matter
merely by disclosing a different solution unless the prior art also criticizes,
discredits or otherwise discourages the solution claimed).
Additionally, we find nothing in the references that is inconsistent
with the Examiner’s proposed combination. Although Hourahane discloses
that the drill guide is removed so that tubes can be used to insert a suture
through the bone tunnel (see Hourahane, col. 9,11. 12—23), this disclosure
merely describes the use of the drill guide device without modification.
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Application 12/270,492
Namely, since Hourahane’s unmodified drill guide device lacks a suture
seizing mechanism in the guide component, the guide component is removed
from the bone tunnel before a tube and suture can be inserted. Similarly,
because Sauer’s suture device lacks a drill guide, a separate drill guide is
necessary to create a bone tunnel before the suture device can be inserted to
retrieve a suture.
Appellant does not provide factual evidence or persuasive technical
reasoning to explain why the proposed combination of Hourahane’s drill
guide device and Sauer’s suture device would destroy the principle of
operation of either device or yield anything other than a result that would
have been predictable to one of ordinary skill in the art. See KSR Int 7 Co.,
550 U.S. at 416 (“The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.”).
After careful consideration of all the evidence, Appellant’s arguments
do not apprise us of error in the Examiner’s findings or reasoning in support
of the conclusion of obviousness. Accordingly, we sustain the rejection of
claim 1, and of claims 2, 4, 5, and 7—16 falling therewith, under 35 U.S.C.
§ 103(a) as being unpatentable over Hourahane and Sauer.
Claims 17 and 19—28
With respect to the rejection of claims 17 and 19—28, Appellant relies
on the same arguments set forth with respect to claims 1, 2, 4, 5, and 7—16.
See Br. 19. For the same reasons that Appellant’s arguments do not apprise
us of error in the rejection of claims 1, 2, 4, 5, and 7—16, Appellant’s
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Application 12/270,492
arguments also do not apprise us of error in the rejection of claims 17 and
19-28.
Appellant additionally argues that “the activating mechanism is part
of the guide component” (Br. 19) and “[t]his assembly is not taught in any of
the prior art of record” {id. at 20). This argument is unpersuasive because it
is not responsive to the rejection as presented. Here, the Examiner did not
rely on an individual reference for disclosing an assembly having both a drill
guide device and a suture seizing device. Rather, as discussed supra, the
Examiner relied on Hourahane for disclosing a drill guide device having a
guide component and relied on Sauer for disclosing a suture seizing device
having an activating mechanism. See Final Act. 3—6. Thus, the rejection is
based on the combined teachings of Hourahane and Sauer. Appellant’s
allegation of differences or shortcomings of the references individually is
not responsive to the rejection as articulated by the Examiner and does not
apprise us of error. See In re Merck & Co., 800 F.2d at 1097.
Accordingly, we sustain the rejection of independent claim 17, and of
dependent claims 19—28, for which Appellant does not present any
additional arguments, under 35 U.S.C. § 103(a) as being unpatentable over
Hourahane and Sauer.
Claims 29, 31, and 33—37
With respect to the rejection of claims 29, 31, and 33—37, Appellant
relies on the same arguments set forth with respect to claims 1, 2, 4, 5, and
7—16. See Br. 20. For the same reasons that Appellant’s arguments do not
apprise us of error in the rejection of claims 1, 2, 4, 5, and 7—16, these
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Application 12/270,492
arguments also do not apprise us of error in the rejection of claims 29, 31,
and 33—37.
Appellant additionally asserts that “the claimed device has features as
an assembly that are never taught or suggested to be used as a single tool
integrated to perform all these separate functions as a single combination of
elements all affixed to the rack and workable while still positioned in the
bone tunnels.” Br. 20. This argument is unpersuasive because it is not
responsive to the rejection as presented. As discussed supra, the rejection is
based on the combined teachings of Hourahane and Sauer. Appellant’s
allegation of differences or shortcomings of the references individually is
not responsive to the rejection as articulated by the Examiner and does not
apprise us of error. See In re Merck & Co., 800 F.2d at 1097.
Accordingly, we sustain the rejection of independent claim 29, and of
dependent claims 31 and 33—37, for which Appellant does not present any
additional arguments, under 35 U.S.C. § 103(a) as being unpatentable over
Hourahane and Sauer.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1, 2, 4, 5,
7—17, 19—29, 31, and 33—37 under 35 U.S.C. § 103(a) as being unpatentable
over Hourahane and Sauer.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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