Ex Parte 7,967,822 et al

Patent Trial and Appeal BoardDec 16, 2016

95002152 (P.T.A.B. Dec. 16, 2016)

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. 95/002,152 09/07/2012 7,967,822 3293.23USREX2 4185 24113 7590 06/26/2017 PATTERSON THUENTE PEDERSEN, P.A. 80 SOUTH 8TH STREET 4800 IDS CENTER MINNEAPOLIS, MN 55402-2100 EXAMINER WEHNER, CARY ELLEN ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 06/26/2017 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 ____________________ DEPUY ORTHOPAEDICS, INC. Requester v. PUGET BIO VENTURES LLC1 Patent Owner ____________________ Appeal 2016-007696 Reexamination Control 95/002,152 Patent US 7,967,822 B22 Technology Center 3900 ____________________ Before DANIEL S. SONG, RAE LYNN P. GUEST, and BRETT C. MARTIN, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING 1 Formerly Hudson Surgical Design, Inc. (Rebuttal Brief, App. C) 2 Issued to Haines et al. on June 28, 2011 (hereinafter the ’822 patent). Appeal 2016-007696 Reexamination Control 95/002,152 Patent US 7,967,822 B2 2 The Requester filed its Request for Rehearing on January 17, 2017 (hereinafter “Rehearing Request” or “Reh’g. Req.”) under 37 C.F.R. § 41.79 seeking rehearing of our Decision mailed December 16, 2016 (hereinafter “Decision” or “Dec.”), which reversed various final rejections of the claims made by the Examiner. The Patent Owner submitted its Appellant’s Comments on Requester’s Request for Rehearing (hereinafter “Comments” or “Cmts.”) on February 15, 2017. We grant the Rehearing Request to the extent that we consider the Requester’s arguments, but DENY the request to modify the Decision. The Requester argues that the Board misapprehended the Protek reference as one of the six bases for the dual guide rejections that “were lumped together and reversed.” Reh’g Req. 1. The Requester alleges that this is so because in Protek, while having dual guides, “both guide arms are not utilized during resection of the same tibia.” Id. at 2 (emphasis removed). As such, the Requester argues that the Board was incorrect in “finding that Protek teaches the use of both medial and lateral cutting guides during resection of [a] single tibia.” Id. at 3. Simply because one guide arm is not used, does not mean it meets the claim language at issue. First, although our decision lumps Protek’s teaching among the “dual guide” references, our Decision holds that “we do not agree that any of the dual guide prior art references disclose both the positioning and cutting requirements of the method claimed.” Decision 6 (emphasis added). Indeed, the majority of our discussion regarding the “dual guide” references explains that, as discussed in the reexamination decision for the ’541 patent, these references fail to teach the step of “cutting Appeal 2016-007696 Reexamination Control 95/002,152 Patent US 7,967,822 B2 3 through the [medial positioned] guide on both the medial and lateral sides of the bone to create a resected surface.” Id. at 5-6. Regardless of the use, or lack thereof, of Protek’s lateral arm, for example, cutting of the lateral portion still is not guided by the medial arm that is in use during the procedure, but is guided by the center portion such that lateral cutting is guided, not by a medial guide, but by an anterior guide portion that extends to the lateral side. See Cmts. 4. Or, at the very least, there “is a lack of any teaching of cutting the lateral portion of the bone from a medial side guide surface.” Id. Accordingly, it is essentially irrelevant in the context of Protek that the lateral arm is unused in the procedure or that the references was lumped with references that expressly teach both medial and lateral guide arms. As stated in the Decision, “[a]lthough the language in the present claims does not mirror identically the language from the parent case, we conclude that each of the independent claims at issue in these rejections warrants treatment similar to that of claims 35-38 and 49-52 of the parent case.” Dec. 5-6. Regardless of Protek’s teaching of not using one of the guide arms, Protek still falls into the class of references that “are intended to be used to make a first cut generally on the lateral side using the lateral guide and to make a second cut on the medial side using the medial guide.” Dec. 5. The only difference with Protek is that it includes a middle section that is both part medial and part lateral guide, but still fails to teach cutting a lateral side from a medial guide as required in the claims. See Cmts. 7-8. As stated by the Patent Owner, “[t]he Board has already ruled twice that Protek does not teach extending a saw blade from a guide surface on the Appeal 2016-007696 Reexamination Control 95/002,152 Patent US 7,967,822 B2 4 medial half of the bone to cut the lateral half of the bone.” Cmts. 8. We decline to change our ruling on Protek. DECISION While we have considered the Decision in light of the Rehearing Request, we decline to modify it in any respect. Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose of judicial review. A party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. DENIED PATENT OWNER: PATTERSON THUENTE PEDERSEN, P.A. 80 South 8th Street 4800 IDS Center Minneapolis, MN 55402-2100 THIRD PARTY REQUESTER: BARNES & THORNBURG LLP (IN) 11 S. Meridian Street Indianapolis, IN 46204 lb