Ex Parte Suddaby

Patent Trial and Appeal Board

Jan 12, 2016

13073925 (P.T.A.B. Jan. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/073,925 03/28/2011
26936 7590 01/14/2016
SHOEMAKER AND MATT ARE, LTD
c/o DA VIS & BUJOLD, P.L.L.C.
112 PLEASANT STREET
CONCORD, NH 03301
FIRST NAMED INVENTOR
Loubert Suddaby
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
6629 8775
EXAMINER
RAMAN A, ANURADHA
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
01114/2016 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@SHOMAT.COM
patent@nhpat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LOUBERT SUDDABY
Appeal2013-006243
Application 13/073,925
Technology Center 3700
Before MICHELLE R. OSINSKI, JILL D. HILL, and JASON W. MEL VIN,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Loubert Suddaby (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner's decision rejecting claims 1 and 9. 1 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, represents the subject matter on
appeal and is reproduced below with the key disputed limitation italicized.
1 Claims 2-8 are cancelled. Br., Claims App.
Appeal2013-006243
Application 13/073,925
1. A tool for preparing a surface of an end plate on a
vertebral body, said tool comprising:
a body,
a rotary head supported on the body,
a mechanism for turning the rotary head, and
a cutting tool mounted on the rotary head, wherein
the cutting tool is a flexible rasp which can deflect from
its original shape to follow irregularities it encounters in the end
plate without undergoing permanent deformation and
the aspect ratio of the blade is at least 3 : 1, so that it may
be inserted through a small surgical aperture.
Br., Claims App.
REJECTIONS
I. Claim 9 stands rejected under 35 U.S.C. § 112, second
paragraph, as indefinite. Final Act. 3.
II. Claim 1 stands rejected under 35 U.S.C. § 102(b) as anticipated
by Cragg (US 6,740,090 Bl, iss. May 25, 2004). Final Act. 4.
III. Claim 9 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Cragg and Tarabishy (US 6,755,865 B2, iss. June 29,
2004). Final Act. 5.
OPINION
Priority, 112, f 6, and Objections
Appellant lists the Examiner's priority determination as a rejection to
be reviewed on appeal. Br. 2. Because this matter is properly considered
via a petition rather than an appeal, and because Appellant agrees with the
Examiner's determination regarding priority (Br. 3), we decline to reach this
lSSUe.
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Application 13/073,925
Appellant also lists the Examiner's determination that claim 1 invokes
section 112, paragraph 6, as a rejection to be reviewed on appeal. Br. 2.
The Examiner's determination was not a rejection and Appellant does not
refute that claim 1 invokes section 112, paragraph 6. Br. 3. We therefore
decline to reach this issue.
Appellant does not list the objections to claims 1 and 9 as being a
ground for appeal, yet addresses the objections in the Appeal Brief. Br. 2,
3--4. Appellant appears to agree to change the term "blade" to "rasp" in
claim 1 (Br. 3), and agrees with the Examiner's understanding that "in the
vicinity" means "near" (Br. 4). Further, claim objections are petitionable,
rather than appealable. See MPEP § 1002.02(c). We therefore decline to
reach this issue.
Rejection I
Claim 9 stands rejected under 35 U.S.C. § 112, second paragraph, as
indefinite. Final Act. 3--4. The Examiner finds that the limitation "in the
vicinity of the rotary head" renders the claim indefinite, and interprets "in
the vicinity" to mean "near." Appellant agrees that "in the vicinity" means
"near" (Br. 4), but does not refute this finding (see Br. 4), and we therefore
summarily sustain Rejection I.
Re} ections II and III
Appellant argues that Cragg's counterbore with abrading cables 624
(see Cragg, Figs. 35-36 and col. 20, 11. 4--10) is not a rasp, and that one
skilled in the art "would know that rasps and counterbore tools are entirely
different types of tools that do not overlap." Br. 4--5. Appellant notes that
the ordinary meaning of rasp is "'a type of file with rough points instead of
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Appeal2013-006243
Application 13/073,925
lines"' or "'a bar [with] sharp teeth."' Br. 5 (citing Webster's Dictionary
and Wikipedia). This meaning is consistent with Appellant's Specification.
The Examiner first responds that Appellant's proffered Wikipedia
article defining the term "rasp" was not considered, because it was not
provided before the final rejection. Ans. 4; see 37 C.F.R. § 41.33(d). The
Examiner disagrees with Appellant's contention that a counterbore tool is
not a rasp, arguing that "a counterbored hole can be formed by a rasping
element similar to a Dremel tool being forced onto a cutting location for an
extended period of time." Id. The Examiner then reasons that "Cragg's tool
can be a rasp as claimed, as Cragg mimics this example." Id.
We are not persuaded by the Examiner's finding that Cragg's
counterbore tool is a rasp because "a counterbored hole can be formed by a
rasping element similar to a Dremel tool being forced onto a cutting location
for an extended period of time." The ability of a Dremel to create a
counterbore hole, even if a Dremel is considered a rasp, does not lead to a
conclusion that Cragg's abrading cables explicitly teach rasps.
The Examiner next responds that the term rasp has been construed to
mean "a tool that abrades," and Cragg's tool abrades. Ans. 5 (citing Final
Act. 4; Cragg, col. 20, 11. 7-10). The Examiner continues that "the plain
meaning of rasp is a coarse file with cutting points instead of lines," and one
skilled in the art "would readily acknowledge that the abrasive compound
([Cragg, ] FIG. 36, col. 20/ 11. 9) in combination with the braided ([Cragg,]
col. 20/ 11. 8) cable clearly provide cutting points due to the compound as
well as from peaks that are formed in the fabric as it is braided." Id.
While, during examination, claims must be given their broadest
reasonable construction, such construction must be made in light of the
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Application 13/073,925
specification as it would be interpreted by one skilled in the art. Phillips v.
AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005). Appellant presents
evidence regarding the ordinary meaning of the term "rasp" (Br. 5 (citing
Webster's Dictionary and Wikipedia2)), and that meaning is consistent with
Appellant's Specification. The Examiner, in contrast, makes a single cite to
column 20 of Cragg (Final Act. 4--5), which cite provides no evidence that
construing the term "rasp" to include any tool that abrades is reasonable in
light of one skilled in the art's understanding of Appellant's Specification.
Final Act. 4; Ans. 5. We therefore are persuaded that the Examiner's
construction of the term "rasp" as including any tool that abrades was in
error.
To the extent that the Examiner finds that Cragg's abrading cables
624 meet Appellant's proposed construction of the term "rasp," the
Examiner has not explained why Cragg' s abrasive compound in combination
with its braided cable render it a coarse file with cutting points instead of
lines. Lacking such an explanation, the Examiner's finding is not
sufficiently supported.
For the reasons set forth above, we do not sustain Rejection II. Claim
9 depends from claim 1, and the Examiner does not make any finding or
conclusions that cure the deficiency of Cragg. We therefore do not sustain
Rejection III.
2 Even if the Examiner is correct in refusing to consider Appellant's
Wikipedia evidence on appeal, the dictionary definition provides support for
Appellant's proposed construction.
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Application 13/073,925
DECISION
We summarily AFFIRM the rejection of claim 9 under 35 U.S.C.
§ 112, second paragraph, as indefinite.
We REVERSE the rejection of claim 1under35 U.S.C. § 102(b) as
anticipated by Cragg.
We REVERSE the rejection of claim 9 under 35 U.S.C. § 103(a) as
unpatentable over Cragg and Tarabishy.
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-IN-PART
msc
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