Jianguo Cheng

Patent Trials and Appeals Board

Feb 21, 2020

14564309 - (D) (P.T.A.B. Feb. 21, 2020)

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.
14/564,309 12/09/2014 Jianguo Cheng CCF-022826 US ORD 5898
26294 7590 02/21/2020
TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300 EAST NINTH STREET, SUITE 1700
CLEVELAND, OH 44114
EXAMINER
BECCIA, CHRISTOPHER J
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
02/21/2020 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):
docketing@tarolli.com
rkline@tarolli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JIANGUO CHENG
____________________

Appeal 2018-008392
Application 14/564,309
Technology Center 3700
____________________

Before STEFAN STAICOVICI, LEE L. STEPINA, and
BRENT M. DOUGAL, Administrative Patent Judges.

DOUGAL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a final rejection of
claims 1–8, 16, and 17. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as The Cleveland
Clinic Foundation. Appeal Br. 3.
Appeal 2018-008392
Application 14/564,309

2
CLAIMED SUBJECT MATTER
The claims are directed to a surgical jig and the disclosure is further
directed to devices and methods for treating medical conditions associated
with sacroiliac joint abnormalities. Claim 1, the only independent claim at
issue, is reproduced below and is illustrative of the claimed subject matter:
1. A surgical jig device comprising:
a substantially rectangular body having a superior end
portion and an inferior end portion;
a superior radiopaque marker located at the superior end
portion;
an inferior radiopaque marker located at the inferior end
portion; and
a plurality of substantially linearly aligned through-holes
located between the superior and inferior radiopaque markers,
wherein the through-holes are sized to receive needles that fixate
the surgical jig in position.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Williams
Jessop
US 4,860,331
US 6,269,148 B1
Aug. 22, 1989
July 31, 2001
Stetz
Chan
Donner
US 2008/0039866 A1
US 2008/0140130 A1
US 2012/0296428 A1
Feb. 14, 2008
June 12, 2008
Nov. 22, 2012

REJECTIONS
Claims 1, 3, 7, and 17 are rejected under 35 U.S.C. § 103 as being
unpatentable over Williams and Donner.
Claim 2 is rejected under 35 U.S.C. § 103 as being unpatentable over
Williams, Donner, and Jessop.
Appeal 2018-008392
Application 14/564,309

3
Claims 4–6 and 8 are rejected under 35 U.S.C. § 103 as being
unpatentable over Williams, Donner, and Stetz.
Claim 16 is rejected under 35 U.S.C. § 103 as being unpatentable over
Williams, Donner, and Chan.

OPINION
35 U.S.C. § 103 – Claims 1, 3, 7, 17
Appellants argue the rejection of claims 1, 3, 7, and 17 together. We
select independent claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv)
(permitting the Board to select a single claim to decide the appeal as to a
single ground of rejection of a group of claims argued together).
The Examiner initially finds that Williams teaches all of the features
of independent claim 1 “except for wherein the through holes are sized to
receive needles that fixate the surgical jig in position.” Final Act. 3. The
Examiner relies on Donner for this teaching. Id. However, in the Answer,
the Examiner finds that “[h]oles 16 of Williams are sized to receive needles.”
Ans. 5. In particular, Williams teaches that “the provision of biopsy holes
16 . . . allows biopsy needles to be precisely inserted” into Williams’ jig.
Williams 4:23–25 (cited by the Examiner at Final Act. 3). A person of
ordinary skill in the art would readily understand that the end result of
biopsy needles being inserted into Williams’ jig is that the jig is fixed in
position on the patient’s body. This is the same result desired by claim 1.
Appellant argues that the biopsy needles of Williams with “a diameter
of one-eighth of an inch” are “entirely too thin to fixate a surgical jig in
position” as required by the claims. Reply Br. 2 (citing Williams, 4:32).
Appellant further argues that “one of skill would not be motivated by the
Appeal 2018-008392
Application 14/564,309

4
disclosure in Williams . . . to modify those holes to be suitable to function as
receiving holes for needles that are sufficiently large to fixate the jig in
position.” Id.
Appellant’s argument is merely attorney argument, with no supporting
evidence. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(“Attorney’s argument in a brief cannot take the place of evidence.”).
Appellant offers no persuasive evidence to support their position that
Williams’ needles are too thin to fixate Williams’ jig in position. Further,
Williams’ teachings are not limited to holes or biopsy needles that are 1/8
inch in diameter. Rather, Williams specifically states that “larger or smaller
holes may be employed,” thereby implying that larger or smaller needles can
also be used. Williams, 4:30–31.
Finally, the claims merely require “through-holes . . . sized to receive
needles that fixate the surgical jig in position.” There is no evidence that
Williams’ holes are too small to be used to fixate Williams’ jig in position.
Appellant does assert that the holes “would be too small to receive a
structure, such as guide pins, that could fixate the surgical jig in position.”
Reply Br. 2. However, Appellant does not offer persuasive evidence to
support this argument. In view of the above, we are not informed of error in
the Examiner’s rejection or findings that Williams teaches or suggests all of
the limitations of claim 1.
Concerning Donner, Appellant argues that the Examiner has not
provided a sufficient reason to combine Donner with Williams. Appeal Br.
5–7. In particular, Appellant notes that Williams does not teach securing the
jig to bone, while the Examiner’s reason to combine relies on this point. Id.
at 6–7. The Examiner provides no adequate reason why one of skill in the
Appeal 2018-008392
Application 14/564,309

5
art would modify or use Williams’ jig to secure the jig to bone. See Final
Act. 4; Adv. Act. 2. Thus, we agree with Appellant that the Examiner has
not provided a sufficient reason to combine Williams and Donner. At the
same time, as noted above, the Examiner does not need the teachings of
Donner to support the rejection of claim 1. Thus, Appellant has not
identified reversible error in the Examiner’s rejection of claim 1.

35 U.S.C. § 103 – Claims 2, 4–6, 8
Appellant relies upon their arguments over claim 1 for the
patentability of dependent claims 2, 4–6, and 8. Appeal Br. 7. Thus, we are
not informed of reversible Examiner’s error in these rejections.

35 U.S.C. § 103 – Claim 16
Claim 16 depends from claim 1 and requires: “wherein one end of
each through-hole is substantially funnel shaped.” The Examiner finds that
this is taught by Chan and that “[i]t would have been obvious . . . modify the
surgical jig of Williams and Donner with the funnel shaped bore
modification of Chan in order to assist in placing the needle through the
bore.” Final Act. 5.
Appellant argues that “Chan does not describe a surgical jig with
through-holes with one end having a substantially funnel shape. Rather,
Chan is directed to a bone plate.” Appeal Br. 7.
The Examiner responds that “Chan is relied upon to teach a through
hole with one end having a substantially funnel shape. The funnel shape
assists in placing a fixation device through the bore.” Ans. 6. Appellant
does not further respond. See generally, Reply Br.
Appeal 2018-008392
Application 14/564,309

6
The Examiner’s rejection relies on Williams for teaching a surgical
jig, rather than Chan. Final Act. 2. Appellant does not contest the
Examiner’s reason to combine Williams and Chan. Thus, Appellant’s
argument does not inform us of error in the Examiner’s rejection.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
References Affirmed Reversed
1, 3, 7, 17 103 Williams, Donner 1, 3, 7, 17
2 103 Williams, Donner, Jessop 2
4–6, 8 103 Williams, Donner, Stetz 4–6, 8
16 103 Williams, Donner, Chan 16
Overall
Outcome
1–8, 16, 17

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)(1)(iv).

AFFIRMED