Ex Parte VanMeter

Patent Trial and Appeal Board

Sep 28, 2016

11895840 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111895,840 08/28/2007
28078 7590 09/29/2016
MAGINOT, MOORE & BECK, LLP
One Indiana Square, Suite 2200
INDIANAPOLIS, IN 46204
FIRST NAMED INVENTOR
J. Brock VanMeter JR.
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.
1671-0414 3308
EXAMINER
BOLES, SAMEH RAAFAT
ART UNIT PAPER NUMBER
3775
MAILDATE DELIVERY MODE
09/29/2016 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 J. BROCK VANMETER JR.
Appeal2014-008927
Application 11/895,8401
Technology Center 3700
Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1, 5-10, 12, 13, and 16-20. Appeal Br. 2.
Claims 2--4, 11, 14, and 15 are withdrawn. Id. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to the Appellant, "DePuy Products, Inc. of Warsaw, Indiana is
... the real party in interest." Appeal Br. 2.
Appeal2014-008927
Application 11/895,840
Claimed Subject Matter
Claims 1, 7, and 16 are the independent claims on appeal. 2 Claim 7,
reproduced below, is illustrative of the subject matter on appeal.
7. A bone cutting instrument comprising:
a body portion providing a cutting guide;
at least one hole extending through the body portion, the
at least one hole including a first opening in an upper surface of
the body portion and an opposing opening in the body portion
and a downwardly extending wall portion between the first
opening and the opposing opening;
a handle engaged with the downwardly extending wall
portion of the at least one hole and extending from the first
opening; and
a bone engaging member contacting the body portion and
rigidly positioned with respect to the body portion and extending
from the opposing opening.
Appeal Br., Claims App.
Rejections
Claim 1 is rejected under 35 U.S.C. § 112, second paragraph, as
indefinite. 3
Claims 16 and 18-20 are rejected under 35 U.S.C. § 102(b) as
anticipated by Lopez (US 2006/0167465 Al, pub. July 27, 2006).
2 The Appellant's proposed amendment of claim 1, filed Jan. 1, 2012, has
not been entered. Adv. Act., mailed Jan. 23, 2012. But see Appeal Br. 2.
We also do not understand the Appellant's proposed amendment, filed
Dec. 30, 2011, to have been entered. But see id. As such, the version of
claim 1 that is appealed is listed in the last entered amendment, filed
May 31, 2011.
3 We understand the failure to include the rejection of claim 1 under
35 U.S.C. § 112, second paragraph, in the Answer as an inadvertent error.
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Application 11/895,840
Claims 1, 5-10, 12, 13, and 16-20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lionberger (US 2004/0260301 Al, pub.
Dec. 23, 2004) and Lopez.
ANALYSIS
Indefiniteness
The Examiner rejects independent claim 1 under 35 U.S.C. § 112,
second paragraph, as indefinite because the phrase "the surgical tool" lacks
antecedent basis. Final Act. 2. The Appellant does not provide an argument
regarding this ground of rejection. Notably, the Appellant attempted to
amend claim 1 by replacing the phrase "the surgical tool" with "'the bone
cutting instrument' to clarify that the bone cutting instrument was stabilized,
not a second tool." Appeal Br. 2. However, the amendments to claim 1
have not been entered by the Examiner. Supra, n.2. Therefore, we
summarily sustain this ground of rejection.
Anticipation by Lopez
Independent claim 16 recites:
[a Jn orthopedic surgery kit comprising:
a surgical tool configured for placement against a bone,
the surgical tool including at least one stabilization hole, the at
least one stabilization hole including a first diameter portion and
a second diameter portion;
a handle member configured to engage the first diameter
portion of the stabilization hole; and
a bone-engaging pin including a first portion sized and
shaped complementary to the second diameter portion of the at
least one stabilization hole and a second portion configured to
engage the first diameter portion.
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Application 11/895,840
Appeal Br., Claims App. (emphasis added).
Giving the term "first diameter portion" the broadest reasonable
interpretation consistent with the Specification, one of ordinary skill in the
art would understand that the term refers to a portion having only one
diameter. See also Appeal Br. 10. This interpretation excludes the
Examiner's construction, which allows for the term "first diameter portion"
to refer to a portion having two differently sized diameters (see Ans. 8).
Turning to the rejection, the Examiner finds that "sections 130a and 140a of
Lopez" correspond to the "first diameter portion." Ans. 8; see also Final
Act. 3 (annotating Figure 3 of Lopez). However, as pointed out by the
Appellant and depicted in Figure 5 of Lopez, counter sink 140a and
proximal portion 130a of anchor opening 102a have different diameters.
Appeal Br. 10. And, a hole having different diameters does not correspond
to the "first diameter portion," as required by claim 16. See id. at 6-10.
Therefore, the rejection is based on an incorrect finding and is inadequately
supported. Thus, we do not sustain the rejection of independent claim 16
and dependent claims 18-20, as anticipated by Lopez.
Obviousness based on Lionberger and Lopez
Independent claim 1 and dependent claims 5 and 6
Independent claim 1 recites:
1. A bone cutting instrument comprising:
a body portion providing a cutting guide; and
at least one hole extending through the body portion, the
at least one hole including a first portion configured to engage a
handle such that the handle can be used to stabilize the surgical
tool during a surgical procedure, and a second portion configured
to pass a bone engaging member.
Amendment 2, filed May 31, 2011.
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Appeal2014-008927
Application 11/895,840
At the outset, we note that claim 1 is directed to a bone cutting
instrument including a body portion having at least one hole. See id. We
also note that the limitation of claim 1 that recites, "at least one hole
extending through the body portion, the at least one hole including a first
portion configured to engage a handle such that the handle can be used to
stabilize the surgical tool during a surgical procedure" functionally limits
the structure of the hole. See id. (emphasis added).
The Examiner finds that Lopez's hole (anchor opening 102) includes a
first portion (counter sink 140) configured to engage a handle (tabs 570 of
outer sleeve 514 of percutaneous access device 500) such that the handle can
be used to stabilize a surgical tool (alignment device 100) during a surgical
procedure. See Final Act. 5; see also id. at 2-3 (annotating Lopez, Figs. 19,
20). The Examiner's finding is supported by a preponderance of the
evidence.
Lopez's Figure 20 depicts outer sleeve 514's tabs 570 and projections
572 engaging countersink 140. Lopez describes that "percutaneous access
device 500 can be advanced distally within the lumen 302 of the guide tube
302 until the distal end 532 of the outer tube 514 engages the counter sink
140 of the anchor opening 102." Lopez, para. 70 (emphasis added).
Additionally, the engagement of outer sleeve 514's tabs 570 and projections
572 into countersink 140 helps to align percutaneous access device 500 with
the bone anchor assembly 200. See id. Moreover, in this position, tabs 570
of outer sleeve 514 of percutaneous access device 500 can be used to
stabilize the alignment device 100 during a surgical procedure.
The Appellant argues that the Examiner's proposed modification of
Lionberger in view of Lopez does not arrive at the invention of claim 1. See
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Application 11/895,840
Appeal Br. 13-14. The Appellant contends that Lopez's countersink 140 is
not arranged in manner required by claim 1 because "Lopez does
not ... indicate that the counter sink 140 is configured in such a manner as
to allow the percutaneous access device 500 to stabilize the alignment device
100." Id. The Appellant asserts that Lopez's alignment device 100 by use
of a guide tube 300 is used to stabilize percutaneous access device 500. See
id. at 14. The Appellant's argument, however, fails to persuasively explain
why tabs 570 and projections 572 of outer sleeve 514 of percutaneous access
device 500 cannot be used to stabilize the alignment device 100 during a
surgical procedure. Additionally, we note that claim 1 does not require that
tabs 570 and projections 572 of outer sleeve 514 of percutaneous access
device 500 be the only structure that can stabilize the alignment device 100
during a surgical procedure.
The Appellant argues that a clear articulation for the combination of
teachings from Lionberger and Lopez has not been provided. See id. at 14--
16. The Appellant acknowledges, however, the Examiner's rationale that it
would have been obvious to a person of ordinary skill in the art to modify
Lionberger' s hole with first and second diameter portions, wherein the first
diameter opening is configured to engage a handle or inserter tool in view of
Lopez's teaching "'for effectively enhancing accessing, guiding[,] and
inserting the bone engaging member into bone through the hole by the
handle for accurately securing and fixing the main block onto bone.[']
(Office Action at page 6)." Id. at 15. The Appellant contends that the
Examiner's rationale is confusing because Lionberger uses spacers 60 and
stabilizing pins 41 through bores 26 to accurately position a cutting block.
The Appellant's argument is not persuasive of error. The Examiner's
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Application 11/895,840
rationale is not based on the stability of the block, as suggested by the
Appellant, but rather the engagement of a handle and a bone engaging
member in an opening in a cutting block "for effectively enhancing
accessing, guiding[,] and inserting the bone engaging member into bone
through [a] hole [in the cutting block]." Final Act. 6. Additionally, we
determine that the Examiner provides adequate reasoning with some rational
underpinning to support the conclusion of obviousness.
Thus, the rejection of independent claim 1 and dependent claims 5 and
6 as unpatentable over Lionberger and Lopez is sustained.
Independent claim 7 and dependent claims 8-10, 12, and 13
At the outset, we note that Appellant reiterates an argument provided
for claim 1; that a clear articulation for the combination of teachings from
Lionberger and Lopez has not been provided. See Appeal Br. 1 7. The
Examiner's rejection of claims 1 and 7 is based on the same rationale. Final
Act. 4---6. For the reasons discussed above, we determine that the
Appellant's argument is not persuasive.
The Appellant also argues that the Examiner's proposed modification
of Lionberger in view of Lopez does not arrive at the invention of claim 7.
See Appeal Br. 18-19. The Appellant's argument is supported by the
contention that "[t]here is nothing in the written [S]pecification of Lopez,
however, that supports a conclusion that the alleged handle (percutaneous
access device 500) actually touches the downwardly extending wall of the
counter sink 140." Id. at 18. The Appellant's contention is not persuasive.
The Examiner finds that Lopez's Figure 20 depicts outer sleeve 514' s
tabs 570 and projections 572 engaging the downwardly extending wall of
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Application 11/895,840
countersink 140. See Final Act. 5. The Examiner's finding is supported by
a preponderance of the evidence. We also note that the Examiner's finding
is also supported by Lopez's description that "percutaneous access device
500 can be advanced distally within the lumen 302 of the guide tube 302
until the distal end 532 of the outer tube 514 engages the counter sink 140 of
the anchor opening 102." Lopez, para. 70 (emphasis added). Additionally,
the engagement of outer sleeve 514' s tabs 570 and projections 572 into
countersink 140, particularly by touching the downwardly extending wall of
countersink 140, helps to align percutaneous access device 500 with the
bone anchor assembly 200. See id. As such, we determine that the
Appellant's argument fails to persuasively explain how Lopez's Figure 20
does not depict projections 572 touching and engaging the downwardly
extending wall of countersink 140.
Thus, the rejection of independent claim 7 and dependent claims 8-
10, 12, and 13 as unpatentable over Lionberger and Lopez is sustained.
Independent claim 16 and dependent claims 17-20
The rejection of claim 16 as unpatentable over Lionberger and Lopez
is based on the same incorrect finding discussed above with regard to the
rejection of claim 16 as anticipated by Lopez. See Final Act. 4--5. The
incorrect finding is not cured by the remainder of the Examiner's findings
and reasoning associated with the rejection of claim 16 as unpatentable over
Lionberger and Lopez. Thus, the rejection of independent claim 16 and
dependent claims 17-20 as unpatentable over Lionberger and Lopez is not
sustained.
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Appeal2014-008927
Application 11/895,840
DECISION
We SUMMARILY AFFIRM the Examiner's decision rejecting
claim 1 under 35 U.S.C. § 112, second paragraph, as indefinite.
We AFFIRM the Examiner's decision rejecting claims 1, 5-10, 12,
and 13 under 35 U.S.C. § 103(a) as unpatentable over Lionberger and
Lopez.
We REVERSE the Examiner's decision rejecting: claims 16 and 18-
20 under 35 U.S.C. § 102(b) as anticipated by Lopez; and claims 16-20
under 35 U.S.C. § 103(a) as unpatentable over Lionberger and Lopez.
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
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