Ex Parte Sharratt

Board of Patent Appeals and Interferences

Nov 7, 2008

11032548 (B.P.A.I. Nov. 7, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TODD WILLIAM SHARRATT
__________

Appeal 2008-5059
Application 11/032,548
Technology Center 3700
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Decided: November 7, 2008
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Before ERIC GRIMES, RICHARD M. LEBOVITZ, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of performing hip joint surgery, which the Examiner has rejected on grounds
of anticipation and obviousness. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

Appeal 2008-5059
Application 11/032,548

BACKGROUND
“A number of variations have evolved in the surgical approaches and
techniques used for replacement of the hip components” (Spec. 2:19-20).
The Specification notes that the “surgical procedure can become quite
physically taxing on the surgeon or surgeons performing it. The surgical
procedure requires lifting and moving the patient's femur into multiple
positions. At times, the surgeon may need to hold the femur in position for
an extended period of time” (Spec. 3:3-7). According to the Specification,
“[o]ne way to reduce the physical nature of the operation and the number of
personnel required to perform the procedure is to use retractors secured to a
support that is secured to a surgical table to retract the flesh to expose the
surgical site” (Spec. 3:20-24).
STATEMENT OF THE CASE
The Claims
Claims 1-15 are on appeal. We will focus on claim 1 which is
representative and reads as follows:

1. A method of performing a hip joint surgery on a
patient positioned on a surgical table, the hip joint
comprising a pelvis having an acetabulum, a femur and a
femorral ball, the method comprising:
mounting a retractor support to the surgical table;
positioning the retractor support about the hip joint;
incising skin and flesh layers proximate the hip joint;
positioning a retractor blade of a retractor within the
incision and wherein the retractor includes a
handle attached to the retractor blade;
manually retracting the skin and flesh layers
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Application 11/032,548

proximate the hip joint with the retractor by
applying manual force to the handle of the
retractor; and
securing the retractor in a selected retracting position
by attaching the retractor to a retractor support
by positioning the retractor handle within a
clamping socket of a retractor clamp attached to
the retractor support.

The Issues

The Examiner relies upon the following prior art references
to show unpatentability:
McGuire US 3,823,709 Jul. 16, 1974
Benson US 5,318,571 Jun. 7, 1994
Sharratt US 6,315,718 B1 Nov. 13, 2001

Dictionary.com. Dictionary.com Unabridged (v 1.1). Random House,
Inc. (at http://dictionary.reference.com/browse).

The rejections as presented by the Examiner are as follows:
A. Claims 1, 2, 11, 12, and 15 stand rejected under 35 U.S.C. § 102(b), as
being anticipated by McGuire (Ans. 3).
B. Claims 3, 4, 6-10, 13, and 14 stand rejected under 35 U.S.C. § 103(a),
as being obvious over McGuire and Benson (Ans. 4).
C. Claim 5 stands rejected under 35 U.S.C. § 103(a), as being obvious
over McGuire and Sharratt (Ans. 5).
A. 35 U.S.C. § 102(b) rejection over McGuire
Appellant argues that the “McGuire patent does not disclose
positioning a retractor handle within a clamping socket of a retractor clamp
attached to the retractor support as defined in independent claim 1” (App.
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Application 11/032,548

Br. 8).1 According to Appellant, “a specific definition of the meaning of the
term ‘socket’ in the specification . . . was erroneously ignored in the Office
Action to allege that the McGuire patent anticipates claim 1. The
anticipation rejection is contrary to established case law” (id. at 8).
Appellant contends that:
What is alleged to be a clamping socket in the Office
Action is nothing more than a through bore. . . . In relationship
to either the top end or the bottom end, a through bore does not
have a back surface as described in the definition of a socket.
Therefore a through bore is not a socket as defined in the
specification.

Id. at 9.
Appellant further argues that “the retractor R disclosed in the
McGuire is a rigid, static support that is positioned about the hip joint. A
rigid, static support is not a clamp” (id. at 10).
The Examiner argues that the “definition of a socket provided in
Appellant's specification is . . . merely exemplary in nature and is therefore
not an explicit definition. Thus, the Examiner in interpreting ‘socket’ to
mean an opening or cavity, the ordinary and customary meaning given to the
term by those of ordinary skill in the art” (Ans. 5). The Examiner further
contends that “Appellant is not claiming structural characteristics of the
clamping socket to enable adjustment of the position of the retractor
handle inside the clamping socket or ‘opening’ (emphasized in bold by
the Examiner)” (id. at 6). The Examiner also argues that the “McGuire table

1 We refer to the Appeal Brief filed July 5, 2007.
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R functions as a clamp because it is used to support retractor 35 and is used
to fasten various elements of the McGuire device together” (id. at 7).
In view of these conflicting positions, we frame the issue before us as
follows:
Does McGuire anticipate a method of hip joint surgery in which a
retractor is secured within a “clamping socket” as required by claim 1?
Findings of Fact (FF)
1. Claim 1 requires “securing the retractor in a selected retracting
position by attaching the retractor to a retractor support by positioning the
retractor handle within a clamping socket of a retractor clamp attached to the
retractor support” (Claim 1).
2. The Specification discloses a specific retractor clamp, in Figure
4, which is reproduced below:

“Figure 4 is a perspective view of a clamp having a clamping socket for
securing a retractor handle therein” (Spec. 5:1-3).
3. The Specification teaches that
By socket is meant an opening or a cavity into which an
inserted part, such as a retractor support apparatus, is
designed to fit and wherein the retractor support apparatus
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Application 11/032,548

can be inserted into the socket from an infinite number of
directions in a 180° range starting from a substantially
parallel position to a back surface of the socket to a position
substantially perpendicular to the back surface and
continuing to position again substantially parallel to the
back surface of the socket.

(Spec. 7:9-19.)
4. McGuire teaches “a table supported surgical retractor for
shoulder or hip operations” (McGuire, col. 1, ll. 25-26).
5. McGuire teaches that “it will be noted that the C-shaped
retractor is mounted by one of its legs to one side of the operating table”
(McGuire, col. 3, ll. 53-55).
6. McGuire teaches that the “open end of the retractor permits the
limb, that is to say, the leg when a hip operation is being performed . . . to be
moved or shifted by the surgeon during the operation” (McGuire, col. 4, ll.
3-6).
7. McGuire teaches that a “number of retracting blades 33, 34, 35,
and 36 . . . are used to retract the soft tissue, tendons, muscles, or other
portions of the body, away from the bone or other area to be worked on.”
(McGuire, col. 4, ll. 26-30.)
8. McGuire teaches that the “blades each have a flexible cable 38
attached at one end to the blades, and the other end of the cables have a
block 40 rigidly fixed thereto” (McGuire, col. 4, ll. 35-37).
9. McGuire teaches that “the surgeon can easily and quickly apply
the retracting blade and anchor it with the proper amount of force”
(McGuire, col. 4, ll. 67-68).
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Application 11/032,548

10. McGuire teaches that “the surgeon first places the retractor at
the desired position in the patient’s opening . . . trains the cable around the
appropriate projection 31, and then inserts the pin 41 in the appropriate hole
30 to maintain the proper tension in the cable” (McGuire, col. 5, ll. 8-13).
Principles of Law
Claim terms are interpreted using the broadest reasonable
interpretation in light of the Specification. See, e.g., In re Hyatt, 211 F.3d
1367, 1372 (Fed. Cir. 2000) (“[D]uring examination proceedings, claims are
given their broadest reasonable interpretation consistent with the
specification.”). See also In re Morris, 127 F.3d 1048, 1054-56 (Fed. Cir.
1997). “Absent an express definition in their specification, the fact that
appellants can point to definitions or usages that conform to their
interpretation does not make the PTO's definition unreasonable when the
PTO can point to other sources that support its interpretation.” Id. at 1056.
“To anticipate a claim, a reference must disclose every element of the
challenged claim and enable one skilled in the art to make the anticipating
subject matter.” PPG Indus. Inc. v. Guardian Indus. Corp, 75 F.3d 1558,
1566 (Fed. Cir. 1996).
Analysis
Discussion of the 35 U.S.C. § 102(b) rejection over McGuire
During prosecution of a patent application, the words in the claims
therein are given the broadest reasonable interpretation, taking into account
the written description found in the Specification.
In the instant context, the question is the interpretation of the claim
term “clamping socket” in claim 1, and particularly the word “socket.” We
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Application 11/032,548

agree with Appellant that the Specification may provide a specific definition
of a term. See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005)
(“[O]ur cases recognize that the specification may reveal a special definition
given to a claim term by the patentee that differs from the meaning it would
otherwise possess. In such cases, the inventor's lexicography governs.”)
In this case, the Examiner found that the definition “is merely
exemplary in nature and is therefore not an explicit definition” (Ans. 5). The
definition appears at page 7 of the Specification. At page 7, the
Specification states that “[p]referably, the clamping socket 41 allows the
retractor handle 38 to be manually forced therein” (Spec. 7:4-5). The
Specification continues, noting that “[b]y socket is meant an opening or a
cavity into which an inserted part, such as a retractor support apparatus, is
designed to fit” (Spec. 7:9-12).
The remainder of the definition describes a “back surface”:
wherein the retractor support apparatus can be inserted into the
socket from an infinite number of directions in a 180° range
starting from a substantially parallel position to a back surface
of the socket to a position substantially perpendicular to the
back surface and continuing to position again substantially
parallel to the back surface of the socket.

(Spec. 7:12-19.)
However, a reasonable reading of this definition does not require
finding the back surface as part of the cavity in which the retractor support
apparatus is designed to fit. In fact, inspection of Figure 4 of the
Specification (reproduced in FF 2 above), shows that the retractor handle 38
passes through a bore hole, identical to that shown in McGuire (FF 10).
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Application 11/032,548

We therefore interpret the word “socket” consistent with the express
definition in Appellant’s Specification, to broadly encompass bore holes
such as those shown in McGuire. We are not persuaded by Appellant’s
argument regarding the McGuire disclosure that “a back wall to an opening
does not exist in a through bore because one opening provides access to the
other opening in a through bore” (Reply Br. 4). In fact, McGuire is
consistent with Figure 4 of Appellant’s Specification which shows a socket
in which one opening provides access to the other opening (FF 2, 10).
McGuire teaches that “the surgeon first places the retractor at the desired
position in the patient’s opening . . . trains the cable around the appropriate
projection 31, and then inserts the pin 41 in the appropriate hole 30 to
maintain the proper tension in the cable” (McGuire, col. 5, ll. 8-13, emphasis
added).
We are also not persuaded by the Appellant’s argument that “there is
no disclosure in the McGuire patent of a retractor support positioned about
the hip joint and having a clamp attached to the retractor support where the
clamp includes a clamping socket that accepts a handle of the retractor”
(App. Br. 10). The pin 41 of McGuire satisfies the handle limitation, since
the surgeon “insets the pin 41 in the appropriate hole 30 to maintain the
proper tension in the cable” (McGuire, col. 5, ll. 12-13).
We also do not agree with Appellant’s limiting definition of the word
“clamp” (see App. Br. 10). The Examiner found that “a clamp is a device
for supporting objects or fastening them together” (Ans. 7). The Examiner’s
finding was based upon dictionary definitions of the term “clamp” (Ans. 7).
See Phillips v. AWH Corp., 415 F.3d 1303, 1322 (Fed. Cir. 2005)
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Application 11/032,548

(“Dictionaries or comparable sources are often useful to assist in
understanding the commonly understood meaning of words and have been
used both by our court and the Supreme Court in claim interpretation.”)
Appellant did not identify any limiting definition of the word “clamp”
in the Specification and we therefore apply the broadest reasonable
interpretation. See In re Morris, 127 F.3d at 1056.
We therefore affirm the rejection of claims 1, 2, 11, 12, and 15 as
anticipated by McGuire.
B. 35 U.S.C. § 103(a) rejection over McGuire and Benson
We have already concluded that McGuire teaches the use of a
clamping socket as required by claim 1. Appellant does not identify or
separately argue the obviousness rejection including Benson (see App. Br.
11). Therefore, since the combination of McGuire and Benson teaches or
suggests every required element of the claims, we affirm the rejection of
claims 3, 4, 6-10, 13, and 14 over McGuire and Benson.
C. 35 U.S.C. § 103(a) rejection over McGuire and Sharratt
We have already concluded that McGuire teaches the use of a
clamping socket as required by claim 1. Appellant does not identify or
separately argue the obviousness rejection including Sharratt (see App. Br.
11). Therefore, since the combination of McGuire and Sharratt teaches or
suggests every required element of the claims, we affirm the rejection of
claim 5 over McGuire and Sharratt.
CONCLUSION
In summary, we affirm the rejection of claims 1, 2, 11, 12, and 15
under 35 U.S.C. § 102(b) over McGuire. We affirm the rejection of claims
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3, 4, 6-10, 13, and 14 under 35 U.S.C. § 103(a) over McGuire and Benson.
We affirm the rejection of claim 5 under 35 U.S.C. § 103(a) over McGuire
and Sharratt.
AFFIRMED

cdc

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