Ex Parte Beyar et al

Patent Trial and Appeal Board

Aug 1, 2017

11194411 (P.T.A.B. Aug. 1, 2017)

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.
11/194,411 08/01/2005 Mordechay Beyar 101896-882
DEP6101USCIP1
3458
21125 7590 08/03/2017
NT TTTFR Mm F.NNF.N Rr FTNUT T T P
EXAMINER
SEAPORT WEST
155 SEAPORT BOULEVARD
PREBILIC, PAUL B
BOSTON, MA 02210-2604 ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
08/03/2017 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):
docket @ nutter.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MORDECHAY BEYAR, OREN GLOBERMAN,
ABRAHAM DOMB, RONEN SHAVIT, and
HILA WACHSLER-AVRAHAMI1
Appeal 2016-007650
Application 11/194,411
Technology Center 3700
Before ULRIKE W. JENKS, JOHN G. NEW, and TIMOTHY G. MAJORS,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants state the real party-in-interest is DePuy Synthes Products, Inc.
App. Br. 1.
Appeal 2016-007650
Application 11/194,411
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 16—21, 24, 26, 29, 30, 64, 65, 73, 74,
76—79, and 87.2 Specifically, claims 24, 29, 30, 64, 73, 74, 76—79, and 87
stand rejected as unpatentable under 35 U.S.C. § 102(b) as being anticipated
by Jaggi et al. (WO 02/02033 Al, Jan 10, 2002) (“Jaggi”).3
Claims 24, 29, 30, 64, 73, 74, 76—79, and 87 also stand rejected as
unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of
Jaggi and Roberts et al. (US 5,372,583, December 13, 1994) (“Roberts”) or
Tolson (US 6,217,581 Bl, April 17, 2001) (“Tolson”).
Claims 18—20 stand rejected as unpatentable under 35 U.S.C. § 103(a)
as being obvious over the combination of Jaggi, Roberts, Tolson, and Kay et
al. (US 2005/0113762 Al, May 26, 2005) (“Kay”).
Claim 21 stands rejected as unpatentable under 35 U.S.C. § 103(a) as
being obvious over the combination of Jaggi, Roberts, Tolson, and Treace et
al. (US 2004/0068264 Al, April 8, 2004) (“Treace”).
Claims 16, 17, and 26 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) as being obvious over the combination of Jaggi, Roberts, Tolson,
and Voellmicke et al. (US 2002/0156483 Al, October 24, 2002)
(“Voellmicke”).
2 Claims 75, 80-86, and 88—91 are allowed. App. Br. 1. Claims 25 and 66—
72 are withdrawn. Id.
3 Jaggi et al. (US 6,997,930 Bl, February 14, 2006) is used as an English
language equivalence of this reference. App. Br. 2.
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Application 11/194,411
Claim 65 stands rejected as unpatentable under 35 U.S.C. § 103(a) as
being obvious over the combination of Jaggi, Roberts, Tolson, and Reiley et
al. (US 6,575,919 Bl, June 10, 2003) (“Reiley”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants’ invention is directed to a method of treating a vertebra,
comprising: (a) accessing an interior of a vertebra; and (b) introducing a
sufficient amount of artificial biocompatible material which does not set to a
hardened condition in storage, into said bone, with sufficient force to move
apart fractured portions of said bone. Abstract.
REPRESENTATIVE CLAIM
Claim 64 is representative of the claims on appeal, and recites:
64. A composite tool configured both for accessing
bone and delivering material internal to the bone,
comprising:
an elongate body, having:
a head having a distal drill tip configured to
penetrate bone;
at least one aperture formed in a sidewall of
the elongate body proximal to the distal end and
being configured to extrude material radially
therethrough and into bone; and
a lumen adapted to deliver material to the
aperture, the lumen having a sealed distal end
configured to prevent axial discharge of a material;
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Application 11/194,411
wherein manually advancing the distal drill tip of
the head through cancellous and cortical bone drills the
bone, thereby forming a pathway through the bone.
Claims App’x 2.4
ISSUES AND ANALYSES
Except where otherwise indicated, we adopt the Examiner’s
findings and conclusions that certain claims are anticipated and/or
obvious over the cited prior art. We address Appellants’ arguments
below.
A. Rejection of claims 24, 29, 30, 64, 73, 74, 76—79, and 87 under
35 U.S.C. $ 102(b)
Issue 1: Claim construction
Appellants argue the Examiner erred by adopting an unreasonably
broad definition of the claim term “drill tip.” App. Br. 3.
Analysis
Appellants dispute the Examiner’s interpretation of the claim term
“drill tip,” which they use more or less interchangeably with “drill.”5 App.
Br. 3. The Examiner has defined the term “drill,” under the broadest
reasonable interpretation standard, as: “a tool used for making a hole in
4 The pages of the Claims Appendix are not numbered. We therefore assign
them sequential page numbers 1—5, starting with the first page of the Claims
Appendix (page 12 of the Appeal Brief).
5 Used, that is, as a noun.
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Application 11/194,411
something.” Final Act. 4 (quoting “drill” in Macmillan Dictionary,
available at: http://www.macmillandictionary.com/dictionary/american/
drill (last visited July 25, 2017)). Appellants contend the Examiner’s
definition of the term is unreasonably broad. App. Br. 3.
Specifically, Appellants argue that claim 64 uses the term “drill” in a
plain and ordinary manner — that is, Appellants assert, claim 64 does not
redefine the term. App. Br. 4. Furthermore, contend Appellants, their
Specification does not expressly define the claim term “drill tip.” Id.
However, Appellants argue, a person of skill in the art would not have
required an express definition, because they would have understood that the
plain and ordinary meaning of drill is a “rotating cutting instrument for
making holes” (e.g., bone in the case of claim 64). Id. Appellants contend
their proposed interpretation is supported by the dictionary definition of
“drill” supplied by Mosby’s Medical Dictionary, (8th ed. 2009) as meaning:
“la rotating cutting instrument for making holes in hard substances, such as
bones or teeth; 2 See burr.” Id. at 5.
According to Appellants, the allegedly overbroad definition adopted
by the Examiner would include not only a drill, but also an “awl.” App. Br.
4 (citing, e.g., http://www.macmillandictionary.com/dictionary/american
/awl#awl (defining an awl as: “a tool used for making small holes in wood
and leather, consisting of a wooden handle and a thin sharp metal point”).
Appellants assert that a person of ordinary skill in the art would not have
confused an awl and a drill, but would have understood that the plain and
ordinary meaning of a drill as a rotating cutting tool and this is consistent
with the Specification, which discloses tips configured to penetrate bone
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Application 11/194,411
broadly and draws a distinction between drill tips and other tips that “mak[e]
a hole in something.” Id.
The Examiner responds that Appellants’ Specification expressly
discloses: “In an exemplary embodiment of the invention, tip 218 of
guidewire 212 is formed to drill in bone and is advanced through the
vertebral cortex by rotation or vibration. Optionally, it is advanced by
tapping thereon or applying pressure thereto.” Ans. 2 (quoting Spec. 15).
The Examiner finds that there is no requirement in the disclosures of the
Specification that drilling must be a rotational motion or that the drill
requires rotation to function. Id. Rather, the Examiner finds, Appellants’
Specification explicitly exemplifies drilling as comprising a rotation,
vibration, or tapping motion. Id.
We agree with the Examiner. It is well-settled that during
examination, claims are to be given their broadest reasonable interpretation
consistent with the specification (emphasis added). See In re Am. Acad, of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Morris, 127 F.3d
1048, 1053—54 (Fed. Cir. 1997). Moreover, it is also well-settled that, in
interpreting an asserted claim, the inquiry should look first to the intrinsic
evidence of record, i.e., the patent itself, including the claims, the
specification and, if in evidence, the prosecution history. Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (citing Markman v.
WestviewInstruments, Inc., 52 F.3d 967, 979, (Fed. Cir. 1995) (en banc),
affd, 517 U.S. 370 (1996)). Such intrinsic evidence is the most significant
source of the legally operative meaning of disputed claim language. Id.
The intrinsic record — specifically the Specification — supports the
Examiner’s interpretation of “drill tip.” Appellants’ Specification discloses
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that: “tip 218 of guidewire 212 is formed to drill in bone and is advanced
through the vertebral cortex by rotation or vibration. Optionally, it is
advanced by tapping thereon or applying pressure thereto.” Spec 15.
Additionally, the Specification discloses that: “drill tip 216 of drill tool 206
designed for drilling and/or is advanced, for example, by tapping, rotation,
and/or vibration.” Id. at 15—16. We therefore interpret Appellants’
Specification to mean that the drill and drill tip recited in claim 64 refer to
any instrument that can be advanced through the bone via rotation, vibration,
tapping thereon, or through the application of pressure. Appellants contend
that a reasonable definition of “drill” would exclude devices such as an awl;
however, ironically, given the exemplary embodiments disclosed by the
Specification, an awl to which pressure is applied to drive the instrument
through the bone would be consistent with Appellants’ claim term “drill.”
We consequently adopt a definition of the term “drill,” with its constituent
drill tip, as meaning “a tool used for making a hole in something via
rotation, vibration, tapping thereon or by applying pressure thereto.”
Issue 2: Anticipation by Jaggi
Appellants argue the Examiner erred because “Jaggi does not disclose
a drill.” App. Br. 6.
Analysis
Appellants argue that Jaggi does not disclose a drill but, rather,
discloses a cannula that slides over a guide wire. App. Br. 6. Appellants
argue that Jaggi further discloses that, once the cannula is in place, the guide
wire is removed and the distal end of the cannula is blocked and bone
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cement is injected through the cannula and out the opening. Id. Appellants
contend that Jaggi does not have a drill tip or disclose drilling, as defined by
Appellants. Id. According to Appellants, a person of ordinary skill in the art
would have understood that a cannula is different from a drill, and that the
latter does not encompass the former. Id.
We are not persuaded. Jaggi discloses: “a guide wire 1 which is
pointed at its front end 2. This front end 2 of the guide wire is driven
forward, under X[-]ray control, into the bone up to some millimeters beyond
the place at which the bone cement is supposed to be injected.” Jaggi col. 2,
11. 1—5. The tip of the guide wire 1 of Jaggi thus corresponds to the tip 218
of guide wire 212 of Appellants’ Specification.
Jaggi further discloses:
According to the embodiment example according to FIGS, la to
Id, a cannula 3 is pushed over the guide wire. This cannula 3
has at its front end an orifice 4 with a sharply ground
circumferential edge whose inner diameter fits snugly over the
guide wire. By means of this design, bone tissue is prevented
from getting into the interior of the cannula 3 during forwards
pushing of the cannula 3. Disposed on the rear (in the drawing
left) end of the cannula is 20 a handle 6.
Id. at 11. 12—20 (emphases added); see also Jaggi Fig. 1. Jaggi thus discloses
a cannula which, at its front end (i.e., at its tip), possesses a sharply ground
circumferential edge that is meant to snugly fit over the guide wire and be
driven by forward pressure through the bone. We agree with the Examiner
that the “sharply ground circumferential edge” of the cannula of Jaggi
corresponds to the “drill tip 216 of drill tool 206 designed for drilling.” As
we have explained supra, the term “drill,” when viewed in the light of
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Appellants’ Specification, refers to an instrument which may be used to
make a hole via the direct application of pressure.
We therefore agree with the Examiner that the cannula of Jaggi
discloses such an instrument. Consequently, we agree with the Examiner
that Jaggi anticipates claims 24, 29, 30, 64, 73, 74, 76—79, and 87.
B. Rejection of claims 16—21, 24, 26, 29, 30, 64, 65, 73, 74, 76—79, and
87 under 35 U.S.C. $ 103(a)
Because we conclude that Jaggi anticipates claims 24, 29, 30, 64, 73,
74, 76—79, and 87, we further conclude, for the same reasons, that the claims
are obvious over Jaggi. See In re Kalm, 378 F.2d 959, 962 (C.C.P.A. 1967)
(Anticipation is the epitome of obviousness). Furthermore, because
Appellants rely upon the same arguments with respect to remaining claims
16, 17, 18—21, 26, and 65, we similarly, and for the same reasons, affirm the
Examiner’s rejection of these claims.
DECISION
The Examiner’s rejection of claims 24, 29, 30, 64, 73, 74, 76—79, and
87 as unpatentable under 35 U.S.C. § 102(b) is affirmed.
The Examiner’s rejection of claims 16—21, 24, 26, 29, 30, 64, 65, 73,
74, 76—79, and 87 as unpatentable under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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