Ex Parte Coleman

Patent Trial and Appeal BoardJul 20, 2018

13492058 (P.T.A.B. Jul. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/492,058 06/08/2012 Stuart Coleman 154825 7590 07/23/2018 KS - Whitmyer IP Group LLC 600 Summer Street 3rd Floor Stamford, CT 06901 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. 04182-P0019A 9822 EXAMINER BOUTSIKARIS, SOCRATES L ART UNIT PAPER NUMBER 3731 MAIL DATE DELIVERY MODE 07/23/2018 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 STUART COLEMAN Appeal2016-007338 1 Application 13/492,0582 Technology Center 3700 Before ANTON W. PETTING, BIBHU R. MOHANTY, and KENNETH G. SCHOPPER, Administrative Patent Judges. SCHOPPER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1 and 4--13, which constitute all the claims pending in this application. Claims 2 and 3 have been cancelled. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 Our decision references the Appeal Brief ("Appeal Br.," filed Jan. 8, 2016), the Reply Brief ("Reply Br.," filed July 22, 2016), the Examiner's Answer ("Ans.," mailed May 25, 2016), and the Non-Final Office Action ("Non- Final Act.," mailed July 8, 2015). The record includes a transcript of the hearing held on July 10, 2018. 2 According to Appellant, "[t]he real party in interest is University of Dundee, of Perth Road, GB-Dundee DDl 4HN, Great Britain, of the present patent application." Appeal Br. 2. Appeal 2016-007338 Application 13/492,058 BACKGROUND According to Appellant, "[ t ]he invention generally relates to medical instruments, especially to medical instruments having a shaft which has at least one bent portion between the distal and the proximal end of the shaft." Spec. ,r 2. CLAIMS Claims 1 and 10 are the independent claims on appeal. Claim 1 is illustrative of the appealed claims and recites: 1. A medical instrument, comprising: an elongated shaft having a distal end, a proximal end, a longitudinal axis, and at least one bent portion between the distal end and the proximal end; a working part arranged at the distal end of the shaft; a handle arranged at the proximal end of the shaft; and an elongated element extending through the shaft and having a distal end connected to the working part and a proximal end connected to the handle, the elongated element connecting the working part to the handle through the elongated element, the elongated element being removable from the handle and having a connecting portion for connection with the handle, and the handle having a receiving portion, into which the connecting portion is inserted and held rotationally fixed with respect to the handle, the elongated element being configured for rotationally fixed connection with the handle in at least two different angular orientations about the longitudinal axis, and the shaft being rotatable relative to the handle about the longitudinal axis of the shaft, the shaft further being rotatable relative to the working part and to the elongated element, and the working part and the elongated element being rotationally fixed relative to the handle. Appeal Br. 11. 2 Appeal 2016-007338 Application 13/492,058 REJECTIONS 1. The Examiner rejects claims 10-13 under 35 U.S.C. Â§ 112, second paragraph, as indefinite. 2. The Examiner rejects claims 1, 4--7, and 10-13 under 35 U.S.C. Â§ I03(a) as unpatentable over Azarbarzin3 in view ofRaus. 4 3. The Examiner rejects claims 8 and 9 under 35 U.S.C. Â§ I03(a) as unpatentable over Azarbarzin in view of Raus and Wolf. 5 DISCUSSION Indefiniteness The Examiner finds that the phrase "an actuating element for actuating the rotation," in claim 10 lacks antecedent bases with respect to "the rotation." Non-Final Act. 2. The Examiner also indicates that claims 11-13 are rejected based on their dependence from claim 10. Id. Appellant does not respond to this rejection. We agree with the Examiner, and thus, we sustain this rejection of claims 10-13. Obviousness With respect to claim 1, the Examiner finds that Azarbarzin teaches a medical instrument including an elongated shaft, a working part, a handle, an actuating element, and an elongated element as claimed, except that "Azarbarzin is silent regarding the elongated element being removable from the handle and configured for rotationally fixed connection with the handle in at least two different angular orientation about the longitudinal axis." Non-Final Act. 3--4 (citing Azarbarzin Figs. 8a, 8b; ,r,r 11, 19, and 92). The 3 Azarbarzin et al., US 2010/0234687 Al, pub. Sept. 16, 2010. 4 Raus et al., US 2008/0027448 Al, pub. Jan. 31, 2008. 5 Wolf, DE 9404423 Ul, May 11, 1994. 3 Appeal 2016-007338 Application 13/492,058 Examiner finds that Raus teaches a medical instrument with an elongated element that is removable from a handle and configured such that the elongated element can be rearranged in at least two different angular orientations about the longitudinal axis of the device. Id. at 4--5 (citing Raus Figs. 3, 5; ,r,r 3, 5, and 6). The Examiner also finds that Raus teaches that the elongated element is connected to the handle via a connection portion and the handle has a receiving portion for receiving the connecting portion. Id. at 5. The Examiner concludes that it would have been obvious to modify the elongated element of Azarbarzin such that the elongated element can be attached via a connecting portion to the receiving portion of the handle with two different angular orientations, as taught by Raus, "in order to allow for a quick, easy and safe switch between different instruments." Id. (citing Raus As discussed below, we are not persuaded of reversible error in the rejection of claim 1. Appellant first argues that "the Examiner's analysis would have actually led one skilled in the art away from" the combination proposed and that Raus teaches away from the claimed invention because Raus teaches that shaft 18 and handle 12 do no rotate with respect to one another. Appeal Br. 7-8. We are not persuaded of error. Appellant points only to Raus's disclosure that the shaft is fixed relative to the handle to show that Raus teaches away from the proposed combination, which is not sufficient to show Raus teaches away. Generally, the mere teaching of an alternate way of doing something is not enough to show that a reference teaches away. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 4 Appeal 2016-007338 Application 13/492,058 1327 (Fed. Cir. 2009) ("A reference does not teach away[ ... ] if it merely expresses a general preference for an alternative invention[.]"). Further, we note that the rejection acknowledges that element 18 of Raus does not rotate with respect to the handle 12 once it is attached, but the Examiner relies on Azarbarzin as teaching an outer shaft (811 in Fig. 8a) that is rotatable relative to the handle and elongated element. Non-Final Act. 4--5; see also Azarbarzin Fig. 8a; ,r 19. Thus, the Examiner makes clear that Azarbarzin is relied upon as disclosing a shaft rotatable with respect to the handle and elongated element as claimed, and the Examiner does not rely on Raus for this teaching. See Ans. 3--4. Also, the rejection does not rely on the particular relationship between the shaft 18 and the handle in Raus, regardless of whether it is fixed in relation to the handle or not. Rather, the Examiner relies on Raus' s disclosure that angular orientation of the cutting plate 20 and the blade 3 8 may be changed with respect to the handle. See Non-Final Act. 4--5; see also Raus ,r 96 (disclosing that the punch may be removed, turned, and replace within the handle such that the gap between the cutting plate and blade is reoriented with respect to the handle). Thus, without further explanation, we disagree with Appellant's contention that Raus teaches away from the proposed combination. Next, Appellant argues that it is not conceivable to a person skilled in the art to provide the shaft 18 of the instrument according to Raus with a curvature, as taught by Azarbarzin, because the sliding movement of the stamp 3 6 in Raus, which forms part of the shaft 18, would not be possible any longer if the shaft 18 would have a curvature along its longitudinal direction. Appeal Br. 9. Further, Appellant asserts that "transferring the teachings of Raus to the teachings of Azarbarzin, the instrument according to Azarbarzin 5 Appeal 2016-007338 Application 13/492,058 must dispense with any curvature along the shaft and dispense with any rotational movement of the shaft relative to the handle." Id. We are not persuaded. "The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413,425 (CCPA 1981). Here, the Examiner does not rely on the specific instrument disclosed by Raus, i.e., the stamp 36, in the proposed combination. Rather, the Examiner finds that it would have been obvious to incorporate Raus's teachings regarding the detachability and rearrangement of the elongated element, i.e., the distal end of Raus's device, with respect to the handle into Azarbarzin's device. See Ans. 5. Under this understanding of the rejection, we are not persuaded that "Azarbarzin must dispense with any curvature along the shaft and dispense with any rotational movement of the shaft relative to the handle." We also note that this argument appears to be similar to the argument addressed above insofar as Appellant asserts that Raus does not teach a shaft as claimed that is rotatable relative to the handle. As discussed above, the rejection relies on Azarbarzin as disclosing the elongated shaft through which the elongated element is inserted. Further, Appellant argues that Azarbarzin is silent regarding the connection of the elongated element and the handle, and thus, "[t]ransferring the connection mechanism of the shaft 18 with the handle 12 according to Raus to the instrument according to Azarbarzin would result in an instrument which is completely different from what is intended by the 6 Appeal 2016-007338 Application 13/492,058 teachings in Azarbarzin." Appeal Br. 9; emphasis omitted. We are not persuaded. First, Appellant does not adequately explain why incorporating Raus' s connection mechanism into Azarbarzin would result in a completely different instrument. It is not clear how Appellant can be sure of this if Azarbarzin is silent regarding this connection. Second, even if we were to assume that Azarbarzin teaches a different connection mechanism, Appellant does not explain adequately how this suggests that the combination proposed would not have been obvious. Finally, to the extent Appellant argues that the rejection is based on impermissible hindsight because "the Examiner's interpretation is an unfair use of Appellant's disclosure as a roadmap" Appeal Br. 10; emphasis omitted, we are not persuaded of error. The Examiner has identified where each element claimed is taught in the art and has provided an articulated reason with rational underpinnings to support the conclusion that the proposed modification of Azarbarzin would have been obvious. See KSR Int'l. Co. v. Teleflex, Inc., 550 U.S. 398,418 (2007). Thus, we are not persuaded the rejection relies on any information found solely in Appellant's disclosure. See In re McLaughlin, 443 F.2d 1392, 1395, (CCPA 1971). Based on the foregoing, we are not persuaded of reversible error in the rejection of claim 1. Accordingly, we sustain the rejection of claim 1. Appellant does not raise any arguments regarding any of the remaining claims, and thus, also we sustain the rejections of claims 4--13 for the same reasons. CONCLUSION We AFFIRM the rejections of claims 1 and 4--13. 7 Appeal 2016-007338 Application 13/492,058 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 8