Ex Parte Shadeck et al

Patent Trial and Appeal Board

Feb 16, 2017

13799233 (P.T.A.B. Feb. 16, 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.
13/799,233 03/13/2013 Louis M. Shadeck M190.398.102/P0039932.USV 9549
63496 7590 02/21/2017
DICKE, BILLIG & CZAJA, PLLC
ATTN: MDT SURGICAL TECHNOLOGIES MATTERS
FIFTH STREET TOWERS, SUITE 2250
100 SOUTH FIFTH STREET
MINNEAPOLIS, MN 55402
EXAMINER
DANG, ANH TIEU
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
02/21/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USPTO.PATENTS @dbclaw.com
DBCLAW-Docket@dbclaw.com
medtronic_ent_docketing @ cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LOUIS M. SHADECK and DANA A. OLIVER
Appeal 2015-0058931
Application 13/799,2332
Technology Center 3700
Before JOSEPH A. FISCHETTI, KENNETH G. SCHOPFER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
SCHOPFER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 1—10. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed Jan.
5, 2015) and Reply Brief (“Reply Br.,” filed May 21, 2015), and the
Examiner’s Answer (“Ans.,” mailed Mar. 26, 2015) and Final Office Action
(“Final Act.,” mailed July 7, 2014).
2 According to Appellants, the real party in interest is Medtronic Xomed,
Inc. Appeal Br. 3.
Appeal 2015-005893
Application 13/799,233
BACKGROUND
According to Appellants, the Specification “relates to removal of
intervertebral disc material. More particularly, it relates to a method and
powered device for removing some or all of the material (tissue,
cartilaginous bone, etc.) associated with an intervertebral disc, for example
in performing a nucleotomy.” Spec. 12.
CLAIMS
Claims 1—10 are on appeal. Claim 1 is the only independent claim on
appeal and recites:
1. A surgical intervertebral disc material shaving instrument
for use with a powered handpiece, the instrument comprising:
an elongated outer tubular member defining a central
passage about a central axis and a cutting window at a distal end
thereof, the cutting window being fluidly connected to the central
passage and defined by a perimeter edge forming at least four
teeth on a first longitudinal side and at least four teeth on a second
longitudinal side thereof, the perimeter edge being formed on a
first side of the central axis;
an inner tubular member coaxially disposed within the
central passage, the inner tubular member defining a central
lumen and a cutting tip at a distal end thereof, the cutting tip
including a plurality of circumferentially-extending teeth formed
about at least a portion of a mouth otherwise fluidly connected to
the lumen;
a manual decorticating implement including a scraping
surface positioned on a second side of the central axis of the outer
tubular member opposite the first side, the scraping surface
extending around an outer circumference of the outer tubular
member from a first side of the perimeter edge of the cutting
window to an opposite side of the perimeter edge of the cutting
window; and
wherein upon final assembly, the decorticating implement
is configured to remove material from an end plate, the cutting
2
Appeal 2015-005893
Application 13/799,233
tip is exposed within the cutting window, the cutting tip and
cutting window combining to define a shaving head configured
to shear intervertebral disc material and aspirate sheared material
through the mouth and lumen.
Appeal Br. 11
REJECTIONS3
1. The Examiner rejects claims 1—8 under 35 U.S.C. § 103(a) as
unpatentable over Oliver4 in view of Marino.5
2. The Examiner rejects claims 9 and 10 under 35 U.S.C. § 103(a) as
unpatentable over Oliver in view of Marino and Hickingbotham.6
DISCUSSION
We agree with Appellants’ argument that the proposed combination
would not result in a device that is configured as claimed. See Appeal Br. 8—
9. Claim 1, the only independent claim before us on appeal, requires, inter
alia, a manual decorticating implement and that the implement is configured
to remove material from an end plate of a vertebra. The Examiner relies on
Marino’s support member 18/58 as a manual decorticating implement as
claimed. Final Act. 7. However, Marino identifies element 18/58 as a
support member separate from Marino’s actual decorticating implement
12/52. See, e.g., Marino, col. 4,11. 43—56. Marino discloses that the support
member is designed as a support to hold the device in place while the
decorticating tool 12/52 resects or decorticates tissue. See Marino col. 2,11.
3 The Examiner’s rejection of claims 1—10 under 35 U.S.C. § 112, first
paragraph, has been withdrawn. Ans. 2.
4 Oliver et al., US 2007/0149975 Al, pub. June 28, 2007.
5 Marino, US 6,030,401, iss. Feb. 29, 2000.
6 Hickingbotham, US 2008/0188877 Al, pub. Aug. 7, 2008.
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Appeal 2015-005893
Application 13/799,233
5—11. Although the Examiner speculates that one could apply sufficient
force on the gripping teeth to scrape or remove material from an endplate,
we find the Examiner’s interpretation of Marino’s gripping tool as a
decorticating implement is not consistent with the broadest reasonable
interpretation of the claim. The claim requires more than the speculative
possibility that Marino’s support member may be capable of removing
material in some instance. Rather, the claim specifically requires a manual
decorticating implement that is configured to remove material from an end
plate. We find that the Examiner has not shown that Marino’s support
member is either a decorticating implement or is configured as required by
the claim. Accordingly, we do not sustain the rejection of claim 1 or any of
dependent claims 2—10 for the same reasons.
CONCLUSION
For the reasons set forth above, we reverse the rejections of claims 1—
10.
REVERSED
4