Ex Parte Sharratt et al

Board of Patent Appeals and Interferences

Mar 26, 2009

10966831 (B.P.A.I. Mar. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TODD W. SHARRATT,
TODD M. BJORK and ROBERT J. BALLANTINE
____________

Appeal 2008-4681
Application 10/966,831
Technology Center 3700
____________

Decided:1 March 26, 2009
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Before DONALD E. ADAMS, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-4681
Application 10/966,831

This appeal under 35 U.S.C. § 134 involves claims 1, 2, 4, 5, 8-11, 14-
22, 26, and 27. Claim 7, the only remaining pending claim, was withdrawn
from consideration as drawn to a non-elected species (June 26, 2006 Office
Action 2). We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE CASE
The claims are directed to an apparatus for holding a surgical retractor
(claims 1, 2, 4, 5, and 8-10); an articulated joint (claims 11 and 14-16); an
assembly attachable to a retractor support apparatus (claims 17-21); and
articulated retractor holder (claims 22, 26, and 27). Claims 1 and 11 are
illustrative:
1. An apparatus for holding a surgical retractor, the surgical retractor having
a retractor blade, the apparatus comprising:
a support handle having a longitudinal axis;
a surgical retractor-holding element pivotally attached to the support
handle;
a rod engaging the retractor holding element at a position spaced from
the pivotal attachment to the support handle, the rod being movable thereby
pivoting the holding element to move the position of the retractor blade; and
a clamp attached to the support handle wherein the clamp attaches to a
retractor support.

11. An articulate [sic] joint comprising:
a handle having a cavity therethrough;
an engaging member comprising a channel having a substantially
circular cross-sectional perimeter and a slot intersecting the channel and
extending to an outer surface and being generally aligned with the
longitudinal cavity and wherein the engaging member pivotally attaches to
an end of the handle; and
a rod positioned through the cavity and the slot comprising a
substantially spherical engaging end positioned within the channel and
wherein the rod moves within the handle to provide a force to the engaging
member and causes the engaging member to pivot into a selected position.
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Appeal 2008-4681
Application 10/966,831

The Examiner relies on the following evidence:
Sharratt US 6,315,718 B1 Nov. 13, 2001

The rejection presented by the Examiner is as follows:
Claims 1, 2, 4, 5, 8-11, 14-22, 26, and 27 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Sharratt.
We reverse.

ISSUES
1. Does Sharratt teach a clamp attached to a support handle? This
issue corresponds to claims 1, 2, 4, 5, 8-10, and 17-21.
2. Did the Examiner meet his burden of establishing that Sharratt
teaches an engaging member comprising a channel having a substantially
circular cross-sectional perimeter? This issue corresponds to claims 11, 14-
16, 22, 26, and 27.

FINDINGS OF FACT
FF 1. Sharratt teaches “[a] method for performing hip surgery using at
least one support arm attached to a retractor support apparatus” (Abstract).
For clarity we reproduce Sharratt’s figure 1 below:

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Appeal 2008-4681
Application 10/966,831

“FIG. 1 is a perspective view of a table mounted embodiment of . . .
[Sharratt’s] inventive retractor assembly” (Sharratt, col. 2, ll. 44-45).
FF 2. The Examiner finds that element 16 of Sharratt represents a support
handle (Ans. 3). The Examiner finds that Sharratt’s “rotatable base (13) [is]
slidable relative to the handle (16) along element (14) and ‘rotatably’
attached to a clamp (11)” (id.).
FF 3. The Examiner finds that Appellants’ “claims do not require the
clamp to be directly attached to the support handle and retractor support,
merely ‘attached’” (Ans. 4).
FF 4. The Examiner directs attention to Sharratt’s Figure 3A and
Appellants’ figure 4 (Ans. 5). For clarity we reproduce Sharratt’s Figure 3A
and Appellants’ figure 4 below:

“Figure 3A is a partial perspective view of a finger and rod adapter
connection in an articulated joint of the table mounted embodiment of . . .
[Sharratt’s] inventive retractor assembly” (Sharratt, col. 2, ll. 56-58).
“Figure 4 is a sectional view of the articulated retractor blade holder of . . .
[Appellants’] invention” (Spec. 2: 26-27).
FF 5. The Examiner finds that Sharratt teaches a “holding
element/engaging member (102) having a channel with a circular cross-
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Appeal 2008-4681
Application 10/966,831

sectional perimeter (Figure 3A, portion of 122 receiving spherical engaging
end 108)” (Ans. 3).
FF 6. The Examiner finds that
Figure 3A of Sharratt and Figures 2-4 of the pending
application clearly show the similarities of having a rod (112
Sharratt; 36 Application) with a ball end (108 Sharratt; 38
Application) placed within a corresponding shaped channel
(122 Sharratt; 21 Application) having a slot extending to the
outer surface to allow the rod to slide along.

(Ans. 5.)

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987).
Because the hallmark of anticipation is prior invention, the
prior art reference – in order to anticipate under 35 U.S.C.
§ 102 – must not only disclose all elements of the claim within
the four corners of the document, but must also disclose those
elements “arranged as in the claim.” Connell v. Sears, Roebuck
& Co., 722 F.2d 1542, 1548 (Fed.Cir.1983).

Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).

ANALYSIS
Issue 1:
With regard to claims 1, 2, 4, 5, 8-10, and 17-21, Appellants contend
that Sharratt fails to teach “a clamp being attached to the support handle
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Application 10/966,831

where the clamp also attaches to a retractor support as claimed” (App. Br. 9;
Reply Br. 3). More specifically, Appellants contend that
The rail clamp 11 is not attached to the retractor arm 16, which
is alleged to be the claimed support handle. Rather, the
retractor arm 16 is positioned within a through bore in an angle
bar 54 that is attached to a support art 14. Neither the angle bar
54 nor the support arm 14 is attached to the rail clamp 11.

(App. Br. 9; Reply Br. 3.) Similarly, with regard to claims 17-21,
Appellants contend that clamp 11 “does not attach to a base that is
attached to the handle for the reasons stated with respect to claim 1”
(App. Br. 13).
In response, the Examiner finds that Appellants’ “claims do not
require the clamp to be directly attached to the support handle and retractor
support, merely ‘attached’” (FF 3). We are not persuaded. As Appellants
explain, “[w]hile a wheel and a seat are parts of a vehicle, one would not
consider a wheel attached to a seat even though both are components of a
vehicle because many components separate the wheel from the seat” (Reply
Br. 4). This analogy holds true when applied to the facts in this case.
Simply because Sharratt’s element 16 (e.g., a wheel) is ultimately connected,
through a variety of intermediates, to element 11 (e.g., a seat); we do not
find it reasonable to conclude that Sharratt anticipates Appellants’ claimed
invention that requires, inter alia, a support handle (element 16) to be
attached to a clamp (element 11). To interpret the claim any other way
would read the limitation of “a clamp attached to the support handle wherein
the clamp attaches to a retractor support” out of the claim, which we decline
to do. Bicon, Inc. v. The Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006)
(noting that claim language “should not be treated as meaningless.”).
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Application 10/966,831

Issue 2:
With regard to claims 11, 14-16, 22, 26, and 27, Appellants contend
that “there is no disclosure of a channel having a substantially circular cross-
sectional perimeter. The Sharratt patent discloses a channel in the engaging
member having a square or rectangular cross section” (App. Br. 11 and
Reply Br. 6; see also App. Br. 13-14 and Reply Br. 8).
While the Examiner asserts that Sharratt’s and Appellants’
channels are correspondingly shaped (FF 6), the Examiner fails to
identify any teaching in Sharratt of an engaging member comprising a
channel having a substantially circular cross-sectional perimeter as is
required by Appellants’ claims 11, 14-16, 22, 26, and 27.

CONCLUSION OF LAW
1. Sharratt fails to teach a clamp attached to a support handle.
2. The Examiner failed to meet his burden of establishing that
Sharratt teaches an engaging member comprising a channel having a
substantially circular cross-sectional perimeter.
The rejection of claims 1, 2, 4, 5, 8-11, 14-22, 26, and 27 under 35
U.S.C. § 102(b) as being anticipated by Sharratt is reversed.

REVERSED

cdc
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