Ex Parte Powell

Patent Trial and Appeal Board

Jul 25, 2017

12899241 (P.T.A.B. Jul. 25, 2017)

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.
12/899,241 10/06/2010 Sean Powell 10139/19402 (T1170US1) 5363
76960 7590
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
07/25/2017 EXAMINER
KAMIKAWA, TRACY L
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
07/25/2017 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 SEAN POWELL
Appeal 2016-000447
Application 12/899,241
Technology Center 3700
Before CHARLES N. GREENHUT, LYNNE H. BROWNE, and
NATHAN A. ENGELS, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Sean Powell (Appellant) appeals under 35 U.S.C. § 134 from the
rejection of claims 1—9 and 12—151 under 35 U.S.C. § 103(a) as unpatentable
over Ritchey (US 2008/0264109 Al, pub. Oct. 30, 2008) and Reilly (US
3,645,569, iss. Feb. 29, 1972). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Claims 10, 11, and 16—19 are withdrawn from consideration and claim 20
is canceled. Appeal Br. 14, 16—17 (Claims App.).
Appeal 2016-000447
Application 12/899,241
CLAIMED SUBJECT MATTER
Claims 1 and 14 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A system for inserting an implant into a target bone,
comprising:
a base defining an open central area sized and adapted to
receive a portion of a patient's anatomy including the target bone
into which the implant is to be inserted;
an insertion handle coupled to the base and extending
away therefrom in a first direction, a distal end of the insertion
handle being configured to removably mount a proximal end of
the implant thereto so that the base is in a desired orientation
relative to the implant;
a first arm coupled to the base and extending away from
the base in a second direction opposite the first direction, the first
arm including a first aiming hole through which a first target
structure of the implant is to be accessed, the first arm including
a first spring element mounted therein and biased to extend into
the first aiming hole;
a second arm coupled to the base and extending away from
the base in the second direction, the second arm being separated
laterally from the first arm so that the second arm extends
substantially parallel to the first arm in alignment with a second
target structure of the implant coupled to the insertion handle, the
second arm including a second aiming hole through which the
second target structure is to be accessed; and
a first protection sleeve sized and adapted for insertion
through the first aiming hole through an intervening portion of
soft tissue located adjacent to the first target structure of the
implant coupled to the insertion handle, the first protection sleeve
being configured so that, when the first protection sleeve is
rotated to a first orientation relative to the first aiming hole, the
first spring element engages the first protection sleeve to lock the
first protection sleeve in position within the first aiming hole and,
when the first protection sleeve is rotated from the first
orientation to a second orientation, the first spring element
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Application 12/899,241
disengages the first protection sleeve so that the first protection
sleeve is free to move within the first aiming hole.
DISCUSSION
Appellant argues claims 1—9, 12, and 13 as a group. Appeal Br. 8.
Further, regarding claims 14 and 15, Appellant refers to the arguments
presented to contest the rejection of claim 1. Id. at 9-10. Thus, Appellant
argues all of the pending claims together. We select claim 1 as the
illustrative claim, and claims 2—9 and 12—15 stand or fall with claim 1. See
37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Ritchey and Reilly disclose or suggest all of
the limitations of claim 1. Final Act. 6—15. In particular, the Examiner finds
that Reilly teaches “an arm (10) including an aiming hole (longitudinal
aperture through 10) and a spring element (12) mounted therein and biased
to extend into the aiming hole.” Id. at 9 (citing Reilly 2:26—57, Figs. 1—3).
Appellant contends that Reilly is nonanalogous art. See Appeal Br. 7;
see also Reply Br. 3. In support of this contention, Appellant notes that
“Reilly relates to a joint suitable to medium duty work for trolleys,
showcases, small tables, etc. whereas Ritchey and the present Application
related to medical devices involving orthopaedic surgery.” Appeal Br. 5
(citing Reilly 2:52—54); see also Reply Br. 4. Appellant further argues that:
At no point does Reilly teach or suggest that the disclosed joint
may be used in orthopedic surgery or used in bone or in any other
application within the body not is there anything in the scale or
type of the joint that would suggest that it would be in any way
applicable to such an application.
Id. at 6.
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Appeal 2016-000447
Application 12/899,241
As an initial matter, we note that the test for analogous art does not
require that the reference in question (i.e., Reilly) teach or suggest its use in
a different field of endeavor. Rather,
Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citing In re Bigio, 381
F.3d 1320, 1325 (Fed.Cir.2004)).
Appellant is correct that Reilly is not in the same field of endeavor as
the instant invention; however, this does not end our inquiry into whether or
not Reilly qualifies as analogous art. Accordingly, we next turn to the
question of whether Reilly is pertinent to a particular problem with which
the inventor is involved.
Appellant contends that “Reilly [is] in no way pertinent to the
particular problem resolved in the application nor is it related to the
teachings of Ritchey.” Appeal Br. 6; see also Reply Br. 5. In support of this
contention, Appellant argues that “[t]he ‘spring member’ (the compressible
sleeve 12) of Reilly provides a very different form of frictional locking
engagement. . . from that described in the present application” and that “the
present application allows for the protection sleeve [to] be easily and
selectively engaged or disengaged from the aiming arm, as is common for
guide sleeves for implants in the medical field.” Id.
Responding to this argument, the Examiner explains that “Reilly is
pertinent to the telescopic connection disclosed in Ritchey. Both Ritchey
and Reilly disclose a telescopic connection between a sleeve and an arm, the
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Application 12/899,241
sleeve inserted into a hole in the arm.” Ans. 2. This is also a problem with
which Appellant is concerned. See, e.g., Spec. 14 (discussing a first aiming
hole configured so that the protective sleeve is fictionally locked in position
within the first aiming hole). Thus, the Examiner is correct that Reilly is
pertinent to a problem with which the inventor is involved, and thus, Reilly
qualifies as analogous art.
In addition, Appellant contends that “Reilly also fails to teach or
suggest a ‘first arm including a first spring element mounted therein and
biased to extend into the first aiming hole,’ as recited in Appellant[’s] claim
1.” Appeal Br. 7; see also Reply Br. 6. In support of this contention,
Appellant argues that Reilly’s “spring element is outwardly biased so as to
provide[] a position-retaining friction fit when inserted into the open end of
the tubular member” and thus, “is not biased to extend into the aiming hole.”
Id.
Responding to this argument, the Examiner explains that:
an element disposed in a hole and abutting the interior surface of
the hole is inherently biased into the hole by virtue of its contact
with the hole interior surface, wherein the plain meaning of the
term ‘extend’ is to occupy a specified area, such that Reilly's
spring element does extend into, i.e. does occupy, the hole.
Ans. 5.
The Examiner is correct. Claim 1 merely requires a “first arm
including a first spring element mounted therein and biased to extend into
the first aiming hole.” Appeal Br. 11 (Claims App.).2 Claim 1 does not set
forth any more specific requirements with regard to what type of bias is
2 Page 11 of the Appeal Brief is missing its page number. We understand
this to be a typographical error.
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Application 12/899,241
required. In Reilly, as noted by Appellant and quoted supra, insert 12
(identified in the rejection as corresponding to the claimed spring member)
is biased outwardly to engage the inner walls of the tubular member. Given
that the rejection further identifies the inner walls of Reilly’s tubular
member as proscribing Reilly’s hole (see Final Act. 9), it is clear that in
Reilly the spring member is biased outwardly to engage the inner walls of
the tubular member thereby extending into the hole. Thus, Appellant does
not apprise us of error.
For these reasons, we sustain the Examiner’s decision rejecting claim
1, and claims 2—9 and 12—15, which fall therewith.
DECISION
The Examiner’s rejection of claims 1—9 and 12—15 is AFFIRMED.
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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