Matthias E. Schuele

Patent Trials and Appeals Board

Nov 14, 2019

14566800 - (D) (P.T.A.B. Nov. 14, 2019)

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.
14/566,800 12/11/2014 Matthias E. Schuele 0101546.0610812 9775
26874 7590 11/14/2019
FROST BROWN TODD LLC
3300 Great American Tower
301 East Fourth Street
Cincinnati, OH 45202
EXAMINER
HANNA, SAMUEL SALEEB
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
11/14/2019 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):
patents@fbtlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MATTHIAS E. SCHUELE

Appeal 2019-002738
Application 14/566,800
Technology Center 3700
____________

Before DANIEL S. SONG, STEFAN STAICOVICI, and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4–12, 14–18, 21, and 22. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “pro med
instruments GmbH.” Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The disclosed subject matter relates to “retractor systems [that] can be
used in certain medical procedures where retraction, holding, or positioning
of tissue, for example, would be beneficial.” Spec. ¶ 2. Apparatus claim 1
and system claim 22 are independent. Claim 1 is illustrative of the claims on
appeal and is reproduced below.
1. A surgical retractor system for use in a medical procedure,
said surgical retractor system comprises:
(a) a first rod;
(b) a second rod, comprising an elongated curved shape;
(c) a first coupling assembly operable to selectively and
adjustably couple the first rod with a stabilization device,
wherein the first coupling assembly defines a first axis of rotation
and a second axis of rotation, wherein the first rod is rotatably
adjustable about the first axis of rotation and the second axis of
rotation, wherein rotation of the first rod about a select one or
both of the first axis of rotation and the second axis of rotation
adjusts a position of the first rod relative to the stabilization
device; and
(d) a second coupling assembly operable to selectively and
adjustably couple the second rod with the first rod, wherein the
second coupling assembly defines a third axis of rotation and a
fourth axis of rotation, wherein the second rod is rotatably
adjustable about the third axis of rotation and the fourth axis of
rotation, wherein rotation of the second rod about a select one or
both of the third axis of rotation and the fourth axis of rotation
adjusts a position of the second rod relative to the first rod.
EVIDENCE
Name Reference Date
Winquist et al.
(“Winquist”)

US 2002/0165543 A1 Nov. 7, 2002
Olsen US 2006/0229602 A1 Oct. 12, 2006
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Krishna et al. (“Krishna”) US 2006/0265074 A1 Nov. 23, 2006
Richelsoph et al.
(“Richelsoph”)
US 2007/0049932 A1 Mar. 1, 2007
REJECTIONS
Claims 1, 4–8, 17, 18, and 21 are rejected under 35 U.S.C. § 102(a)(1)
as anticipated by Olsen.
Claims 1, 7–12, 14, and 22 are rejected under 35 U.S.C. § 103 as
unpatentable over Richelsoph and Krishna.
Claims 15 and 16 are rejected under 35 U.S.C. § 103 as unpatentable
over Richelsoph, Krishna, and Winquist.
ANALYSIS
The rejection of claims 1, 4–8, 17, 18, and 21
as anticipated by Olsen
Appellant argues these claims together. See Appeal Br. 6–10. We
select claim 1 for review, with the remaining claims standing or falling with
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Claim 1 recites the limitation of “a second rod.” The Examiner
identifies Olsen’s “540 and/or 12” as disclosing this limitation. Final Act. 3.
Appellant restates this finding as, “the Office relied on structures 12 or 540
of Olsen as allegedly satisfying the claimed second rod.” Appeal Br. 7. The
Examiner clarifies stating that what was meant was “member 540 alone or in
combination with 12.”2 Ans. 17.

2 The second rod “is interpreted to be member (540, Fig. 20) alone, or in
combination with member” 12. Ans. 17 (referencing Olsen ¶ 121).
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With such understanding, Appellant focuses attention on the
limitation “a second rod, comprising an elongated curved shape.” See Reply
Br. 2–5, Appeal Br. 6, 9. Regarding the “curved” limitation, Appellant
addresses Olsen which states “joint member 540 . . . has a cylindrical body
548 that is coupled at an angle traverse to extension member 542.” Reply
Br. 4, Olsen ¶ 121 (emphasis added); see also Appeal Br. 9. Appellant
provides a definition from Dictionary.com of “curved” as, “a continuously
bending line, without angles.” Reply Br. 4 (emphasis added). Hence,
Appellant argues that Olsen “describ[es] its joint member 540 as angled,
which, according to the definition of ‘curved,’ is opposite of what claim 1
recites and requires.” Reply Br. 4.
Indeed, paragraph 121 of Olsen is correctly transcribed by Appellant
above, but as to joint member 540, paragraph 121 of Olsen further states,
“the joint members of the present invention may have curves or other
configurations.” Emphasis added. In that regard, again, the claim limitation
at issue recites “a second rod, comprising an elongated curved shape,” and
does not require the second rod to be curved in its entirety. Thus, in view of
this further clarification as to the shape of member 540 itself, we do not fault
the Examiner for finding that Olsen discloses that member 540 can comprise
a curved shape. Final Act. 3.
The question now, is whether the above “elongated” limitation is also
disclosed in Olsen, i.e., whether Olsen further teaches the limitation, “a
second rod, comprising an elongated curved shape.” Appellant again looks
to Dictionary.com stating “the term ‘elongated’ means ‘extended;
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lengthened; or long and thin.’”3 Reply Br. 5. Appellant explains that “no
one of ordinary skill in the art, including Olsen himself as evidence by his
own description, would consider joint member 540 ‘elongated.’” Reply Br.
5. However, consideration of joint member 540 alone does not conclude the
matter since Appellant understands, “the Office states that the claimed
second rod could be satisfied by combining main body 12 with joint member
540.” Reply Br. 5; see also supra. In attempting to explain how such a
combination still fails to disclose an “elongated” second rod (applying
Appellant’s definition thereof), Appellant asserts (a) the Examiner’s
combination of components used to satisfy the single claimed second rod
component runs afoul of MPEP § 2131, and (b) the combination still fails
because one skilled in the art would not consider joint member 540
“curved.” Reply Br. 5; see also id. at 6; Appeal Br. 10.
Regarding Appellant’s initial contention regarding MPEP § 2131,
Appellant states,
it is improper for the Office to try to find one component that
allegedly satisfies the ‘elongated’ adjective, and then try to find
a separate component altogether that allegedly satisfies the
‘curved’ adjective, and then combine them to make an
anticipation rejection directed to a single claimed component that
has an ‘elongated curved shape.’
Reply Br. 6; see also Appeal Br. 10. Appellant does not identify where such
combination is prohibited when the identified components (i.e., 540, 12) are

3 The Examiner also proffers a definition of “elongated” (see Ans. 19) but
Appellant correctly identifies issues with this definition (see Reply Br. 5),
and thus Appellant’s definition will be applied.
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themselves joined directly to each other in the single reference relied
upon.4, 5 See Olsen generally.
Additionally, Appellant’s latter contention is not persuasive because
(a) Appellant is still addressing only “joint member 540,” and not its
combination with elongated main body 12, and (b) paragraph 121 of Olsen
clearly states that joint member 540 itself “may have curves.” Thus, in view
of the above, Appellant does not explain how the Examiner’s combination of
main body 12 and joint member 540 fails to disclose “a second rod,
comprising an elongated curved shape.”
Claim 1 further recites a first rod “wherein rotation of the first rod
about a select one or both [axes of rotation] adjusts a position of the first rod
relative to the stabilization device.” Emphasis added. Appellant
paraphrases the Examiner’s findings on this point arguing that Olsen “fails
to address the requirements of the claim because claim 1 requires that the
first rod is rotatably adjustable about the claimed axes of rotation.” Appeal
Br. 10 (underlining added); see also Reply Br. 7, 8. Appellant is mistaken as
to the scope of claim 1 which, instead, recites rotation about “one or both”
axes of rotation, not “both” as argued.
Appellant acknowledges the Examiner’s reliance on Olsen’s “relative
rotation between the first rod and the stabilization device.” Reply Br. 7; see

4 “The office relies on the embodiment of Olsen that includes joint member
540 as an alternative to joint member 300, being identical, which is to be
combined with member 12, Fig. 2.” Ans. 17.
5 We are also reminded of Howard v. Detroit Stove Works, 150 U.S. 164,
170 (1893) which addresses a prior art grate that “is cast in two pieces, while
the [claimed invention] is cast in one piece. This does not involve
patentable invention.”
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also Appeal Br. 10, Final Act. 4. However, Olsen discusses more than
rotation about a single axis of rotation, and specifically discusses rotation
about multiple axis of rotation stating, “FIG. 1 shows an adjustable splint 10
that is adjustable in more than one plane or axis, as illustrated by the arrows
therein.” Olsen ¶ 45; see also id. ¶ 51, Fig. 8, Final Act. 4, Ans. 19–20.
Appellant fails to explain how Olsen’s disclosed axes of rotation fail to
correspond to the “first” and “second” axes of rotation recited in claim 1.
Hence, Appellant’s contention that Olsen fails to disclose rotation “about a
select one or both” axis of rotation is not persuasive of Examiner error.
Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of claims 1, 4–8, 17, 18, and 21 as anticipated by
Olsen.
The rejection of claims 1, 7–12, 14, and 22
as unpatentable over Richelsoph and Krishna
Appellant argues that Richelsoph and Krishna are non-analogous art,
and hence not subject to being combined by the Examiner for the reasons
stated. See Appeal Br. 11–12; Reply Br. 8–11; Final Act. 10, 14. Appellant
addresses both the “field of endeavor” prong of the analogous art test and
also the “reasonably pertinent to the problem” prong of this test.6 See
Appeal Br. 11–12; Reply Br. 8–11. The Examiner addresses only the “field
of endeavor” prong stating, “there is no need to proceed for determining

6 “To qualify as prior art for an obviousness analysis, a reference must
qualify as ‘analogous art,’ i.e., it must satisfy one of the following
conditions: (1) the reference must be from the same field of endeavor; or (2)
the reference must be reasonably pertinent to the particular problem with
which the inventor is involved.” K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d
1364, 1375 (Fed. Cir. 2012) (citation omitted).
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whether the references are reasonably pertinent to the particular problem.”
Ans. 22.
Appellant states:
The teachings in Krishna are directed to a lumbar disc prosthesis,
and the teachings of Richelsoph are directed to a spinal rod and
anchor system. The present application and claims are directed
to a surgical retractor system.
Appeal Br. 11; see also Reply Br. 10. Appellant thereafter explains that
Krishna’s lumbar disc prostheses is “used within the body,” the same as
Richelsoph’s spinal rod system. Appeal Br. 11 (referencing Krishna ¶ 2,
Richelsoph ¶ 3). In contrast, Appellant contends that the claimed surgical
retractor system is “used primarily outside of a body” for temporary support
during a medical procedure. Appeal Br. 11; see also Reply Br. 10–11; Spec.
¶ 43. Thus, Appellant concludes, “it cannot be fairly said that either lumbar
disc prostheses or spinal rod and anchor systems are within the same field of
endeavor as surgical retractor systems.” Appeal Br. 11; see also Reply Br.
10.
The Examiner responds, “the teachings of Richelsoph and Krishna
and the claimed invention, are directed to medical systems being used
relative to a human body.” Ans. 21. Further, the Examiner states that a
skilled person would “understand that the disclosed and claimed systems are
from the same field of Endeavor, being directed to systems related to the
medical field.” Ans. 21.
The Examiner’s stated field of use is quite broad. On the other hand,
Richelsoph, while not explicitly describing its device as a prosthesis for use
inside a body, does explain that its spinal clamp members “are made of a
biocompatible, resilient material” and are used “for the purpose of spinal
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fixation and correction of spinal curvature.” Richelsoph ¶¶ 3, 35. Krishna,
on the other hand, is more explicit stating in the Title that the device is a new
anteriorly inserted artificial disc. See also Abstract (“[a] lumbar disc
prosthesis is provided . . .”). We are further guided by In re Bigio, 381 F.3d
1320 (Fed. Cir. 2004) in which our reviewing court stated that the analogous
art “test does not make the assessment of the field of endeavor a wholly
subjective call for the examiner.” Bigio, 381 F.3d at 1326; see also Reply
Br. 9. Thus, at least with respect to Krishna, there is merit to Appellant’s
contention that a skilled person would not consider a prosthesis installed
inside the body as being in the same field of endeavor as an externally
employed surgical retractor, and particularly one that can provide an
“ergonomic support rest for a surgeon or other medical personnel to rest
their one or more arms or hands [on] during a medical procedure.” Spec.
¶ 43.
Accordingly, and based on the record presented, the Examiner has not
established by a preponderance of the evidence that Richelsoph and Krishna
are within the same field of endeavor. Moreover, as noted, the Examiner has
not considered whether Richelsoph and Krishna are reasonably pertinent to
the problem confronting the inventor. See Ans. 22. Thus, the Examiner has
not established that the applied references are analogous art in the matter at
hand, and thus suitable for combination as expressed by the Examiner. We
reverse the Examiner’s rejection of claims 1, 7–12, 14, and 22 as
unpatentable over Richelsoph and Krishna.
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The rejection of claims 15 and 16
as unpatentable over Richelsoph, Krishna, and Winquist
Claims 15 and 16 each depend directly from claim 1. The Examiner
relies on Winquist for teaching their respectively added limitations. The
Examiner does not rely on Winquist to cure the defect of the combination of
Richelsoph and Krishna as discussed above. Accordingly, for similar
reasons, we do not sustain the Examiner’s rejection of claims 15 and 16 as
being obvious over Richelsoph, Krishna, and Winquist.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–8, 17,
18, 21
102(a)(1) Olsen 1, 4–8, 17, 18,
21

1, 7–12, 14,
22
103 Richelsoph,
Krishna
1, 7–12, 14,
22
15, 16 103 Richelsoph,
Krishna, Winquist
15, 16
Overall
Outcome7
1, 4–8, 17, 18,
21
9–12, 14–16,
22
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED IN PART

7 37 C.F.R. § 41.50(a)(1) states, “The affirmance of the rejection of a claim
on any of the grounds specified constitutes a general affirmance of the
decision of the examiner on that claim.”