11316176 (P.T.A.B. May. 20, 2013)

Ex Parte Parker

Patent Trial and Appeal BoardMay 20, 2013

11316176 (P.T.A.B. May. 20, 2013)

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. 11/316,176 12/22/2005 Brad Parker SMI0103.US 1271 41863 7590 05/21/2013 TAYLOR IP, P.C. P.O. Box 560 142. S Main Street Avilla, IN 46710 EXAMINER STEITZ, RACHEL RUNNING ART UNIT PAPER NUMBER 3776 MAIL DATE DELIVERY MODE 05/21/2013 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 BRAD PARKER ____________________ Appeal 2011-002914 Application 11/316,176 Technology Center 3700 ____________________ Before: PHILLIP J. KAUFFMAN, BRETT C. MARTIN, and MITCHELL G. WEATHERLY, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002914 Application 11/316,176 2 STATEMENT OF CASE Brad Parker (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1-6, 8, 9, and 12. Of these, claims 1 and 12 are independent. Claims 7, 10, and 11 are allowed. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellant’s invention is directed generally to a radially expanding surgical retractor. Claim 1, reproduced below with emphasis added, is illustrative of the claimed subject matter: 1. A radially expanding surgical retractor, comprising: a base having a thickness, said base including a first slot extending through said thickness in a first arc, and a second slot discrete from said first slot and extending through said thickness in a second arc, said first slot having two sides with curved facing surfaces defined by said first arc; a first handle; a second handle; a first blade extending through said first slot and connected to said first handle; and a second blade extending through said second slot and connected to said second handle. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Farascioni US 6,709,389 B2 Mar. 23, 2004 Bauer US 2004/0087833 A1 May 6, 2004 Appeal 2011-002914 Application 11/316,176 3 THE REJECTIONS ON APPEAL The Examiner made the following rejections: Claims 1-4, 8, 9, and 12 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Bauer. Ans. 3. Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bauer and Farascioni. Ans. 4. ANALYSIS Anticipation Claim 1 In rejecting claims 1-4, 8, 9, and 12, the Examiner finds, in pertinent part, that Bauer discloses a “first slot [that] has two sides (52) defined by the first arc” and that “[t]he first slot has two side[s] with curved facing surfaces (the curved side on the outer perimeter and the curved side on the inner perimeter) defined by the first arc.” Ans. 3-5 (citing Bauer figure 9). In further explaining this application of Bauer, the Examiner provides the following drawing (Ans. 6): Appeal 2011-002914 Application 11/316,176 4 The figure above shows the Examiner’s annotated version of Bauer’s figure 9. As shown, the Examiner points to the inner and outer curved perimeter portions of Bauer’s base as meeting the limitation at issue. As Appellant argues, however, “[t]he only curved surfaces to which the Examiner may be referring to [sic] are portions of the base, below and at the ends of the slots. These surfaces in Bauer et al. are not portions of the slot, nor do they face each other.” App. Br. 11. We agree. At most, Bauer teaches three sides of a slot (bottom and two sides) and none of those sides can be considered to be curved facing surfaces. As such, Bauer does not disclose the requisite “first slot having two sides with curved facing surfaces defined by said first arc” as recited in claim 1. Accordingly, we do not sustain the rejection of claim 1 or its dependent claims 2-4, 8, and 9. Claim 12 Claim 12 similarly claims “said first slot having two sides defined by said first arc” and we also agree with Appellant that the “curved facing surfaces” noted by the Examiner are not “sides [of said first slot] defined by Appeal 2011-002914 Application 11/316,176 5 said arc” for the same reasons noted supra. See App. Br. 12. At most, Bauer teaches one side (the slot bottom) that has two curved edges, but that still does not meet the language at issue in claim 12 requiring “two sides defined by said first arc.” We further agree with Appellant that “it is not possible for a blade of Bauer et al. to be configured to move in a curved direction defined by an arc of Bauer et al.” because the slots of Bauer run straight through the base in a radial direction. Id. (emphasis removed). Bauer, therefore, also does not teach a “first blade being configured to move in a curved direction defined by said arc” as recited in claim 12. Accordingly, we do not sustain the Examiner’s rejection of claim 12. Obviousness The Examiner rejects claims 5 and 6 as “unpatentable over Bauer, as applied to claim 1” and Farascioni. Ans. 4. Farascioni does not cure the deficiency noted above with respect to the rejection of claim 1. Accordingly, we do not sustain the rejection of claims 5 and 6 as unpatentable over Bauer and Farascioni. DECISION For the above reasons, we REVERSE the Examiner’s decision to reject claims 1-6, 8, 9, and 12. REVERSED msc