Ex Parte Dugas et al

Patent Trial and Appeal Board

Dec 29, 2016

11186911 (P.T.A.B. Dec. 29, 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.
64024.000004 4265
EXAMINER
WOLF, MEGAN YARNALL
ART UNIT PAPER NUMBER
3738
MAIL DATE DELIVERY MODE
11/186,911 07/22/2005 Jeffrey R. Dugas
21967 7590 12/30/2016
HUNTON & WILLIAMS LLP
INTELLECTUAL PROPERTY DEPARTMENT
2200 Pennsylvania Avenue, N.W.
WASHINGTON, DC 20037
12/30/2016 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 JEFFREY R. DUGAS and
EDWARD LYLE CAIN JR.
Appeal 2015-004679
Application 11/186,9111
Technology Center 3700
Before LINDA E. HORNER, JILL D. HILL, and NATHAN A. ENGELS,
Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 17—23, 25, 27, 30, 32, and 33. Claims 1—16 and 28 are withdrawn
from consideration and claims 24, 26, 29, and 31 are canceled. App. Br. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
appellants identify Ortho Ventions, LLC as the real party in interest. App.
Br. 1.
Appeal 2015-004679
Application 11/186,911
ILLUSTRATIVE CLAIM
Claim 17, reproduced below, is illustrative of the claimed subject
matter:
17. A surgical system for use during surgical
implantation of a prosthetic articular surface at a bone site in the
knee in place of material removed from the knee during a partial
knee replacement surgery, comprising:
a plurality of prostheses of at least two different
geometries, at least two different sizes and at least two different
radii of curvature, each of the prostheses in the system being
selected and placed in the system prior to the surgery for
selection by a surgeon during surgery based on a determination
of an appropriate shape, size and radii of curvature,
each of the prostheses being a prosthetic articular surface
element designed for placement in a knee site after removal of a
portion of a patient’s articular surface,
wherein each of the plurality of prostheses comprises a
contoured plate having two sides, one side of which is a bone­
contacting side and the other side of which is an articular side,
and at least one post extending from the bone contacting side;
a plurality of guide tools, wherein each guide tool
comprises a top surface that matches the cross-sectional
geometry, size, and radius of curvature of an outer surface of a
prosthesis in the surgical system and further wherein each guide
tool comprises a bottom surface with a different radius of
curvature from that of the top surface;
a reamer bit, wherein the reamer bit is configured for
reaming out a volume of cartilage and subchondral bone to a
depth having the same radius of curvature as the top surface of
the guide tool;
a plurality of templates, wherein each template has a
geometry and size similar to the cross-sectional geometry and
size of a prosthetic articular surface, and a top surface with a
radius of curvature similar to the radius of curvature of the given
prosthesis;
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Application 11/186,911
a depth gauge, wherein the depth gauge is configured for
engaging the reamer bit and the guide tool and further wherein
the depth gauge comprises:
a sleeve, wherein the sleeve is configured for attaching to
the reamer bit and further configured for slide movement while
remaining in contact with the top surface of the guide tool; and
a collar, wherein the collar is configured for engaging the
reamer bit and further configured for slide movement while
remaining in contact with the inside surface of the guide tool; and
at least one catheter through which the at least one
deformable guide tool may be inserted in a deformed state and
upon passing through the catheter, expand to reach its full size,
in which state it may function as a template to direct where bone
removal is to occur.
THE REJECTIONS
Claims 17—23, 25, 27, 30, 32, and 33 stand rejected 35 U.S.C. § 112,
second paragraph, as being indefinite.
Claims 17—23, 25, 27, 30, 32, and 33 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable in view of the combination of Lang et al. (US
2004/0133276 Al; July 8, 2004), Abendschein (US 2003/0181984 Al; Sept.
25, 2003), Novak (US 2005/0273114 Al; Dec. 8, 2005), Zannis et al. (US
2004/0267277 Al; Dec. 30, 3004), and McGovern et al. (US 6,554,838 B2;
Apr. 29, 2003).
ANALYSIS
The Obviousness Rejection
Appellants contend the cited prior art fails to teach or suggest a guide
tool comprising “a bottom surface with a different radius of curvature from
that of the top surface” and a sleeve “configured for slide movement while
remaining in contact with the top surface of the guide tool,” as required by
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Application 11/186,911
claim 17. App. Br. 9—11, 13-17; Reply Br. 4—7. Specifically, Appellants
argue Figures 6 and 7 of McGovern depict a guide tool with “the top and
bottom surfaces hav[ing] an identical shape and curvature [sic].” Reply Br.
5. Appellants also argue McGovern discloses a sleeve having longitudinal
but not lateral movement (App. Br. 15—17), while the claimed “slide
movement” requires both lateral and radial movement (App. Br. 14 (citing
Spec. 25, 31 to argue “interpreting the claimed ‘slide movement’ to be
both lateral and radial is consistent with Appellants’] disclosure”)).
Contrary to Appellants’ arguments, the views provided in
McGovern’s Figures 6 and 7 do not depict the relevant radii of curvature.
Appellants’ Specification identifies the relevant radii of curvature of a guide
tool’s top surface and bottom surface as the surfaces numbered 30 and 31 in
Appellants Figure 3(E), copied below. See Spec. 131 (“as seen in
embodiment E (guide tool), the guide tool may have a top surface 30 with a
radius of curvature substantially similar to that of the prosthesis, but a
bottom surface 31 with a different radius of curvature”).
37
.....T
31-'''
Appellants’ Figure 3(E): Depicting a
guide tool with top surface 30 that is
curved and a bottom surface 31 that is flat
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Application 11/186,911
The Examiner finds that McGovern’s Figure 8, copied below, teaches
a bottom surface (96) having a radius of curvature different than that of the
top surface (94), as claimed.2 * * 5
McGovern Figure 8: Side elevation view
of the depth, contouring, and area guide
Interpreting the plain language of claim 17 in light of Appellants’
Specification (see Spec. Fig. 3E, | 31), we agree with the Examiner.
We also disagree with Appellants’ arguments that McGovern does not
teach or suggest the claimed sleeve “configured for slide movement while
remaining in contact with the top surface of the guide tool.” App. Br. 13—
17. Contrary to Appellants’ arguments, we find no evidence of record that
2 The Examiner additionally finds the claimed radius of curvature of the
bottom surface is a mere design choice because Appellants’ Specification
does not disclose that it is critical to the claimed invention. Ans. 2—3.
Appellants argue the Specification “discloses the varying radii of curvatures
as providing particular advantageous [sic] for the invention,” “a certain
therapeutic effect,” and “as serving a specific advantage and particular
purpose.” Reply Br. 7 (citing Spec. H 31, 38-40, 50). We disagree with
Appellants’ arguments, as the Specification merely mentions the radius of
curvature of the bottom surface without disclosing any significance to the
claimed feature. See Spec. 131. In light of the Examiner’s findings
regarding McGovern, however, we do not reach the Examiner’s findings that
the disputed limitation is a mere design choice.
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Application 11/186,911
would require an interpretation of “slide movement” to require both lateral
and radial movement (see App. Br. 14 (citing Spec. H 25, 31 to argue
“interpreting the claimed ‘slide movement’ to be both lateral and radial is
consistent with Appellants’] disclosure”)).
Further, the Examiner finds, and we agree, that McGovern discloses a
sleeve configured for slide movement (including both lateral and radial
movement) while remaining in contact with the top surface of the guide tool,
as claimed. See Ans. 5—6 (citing McGovern Fig. 11, col. 8,11. 25—35).
Indeed, as cited by the Examiner, McGovern teaches a sleeve that travels
along the contour and radius of a guide slot as follows:
[a]s the burr assembly 150 is translated along the guide slot
120, with the radial bearing surface 172 maintained against the
upper locator surface 94, the contour of the upper locator
surface 94 will determine the depth of the outline groove 190 at
any particular location along the length of the guide slot 120.
Ans. 6 (quoting McGovern col. 8,11. 25—35 (emphasis omitted)); see also
McGovern Figs. 10, 11.
Finally, we disagree with Appellants’ arguments that Lang teaches
away from the claimed invention (App. Br. 11—13) or that the Examiner’s
combination of references is otherwise improper (App. Br. 17—20). As the
Examiner explains, Lang advocates “repairing joints with only minimal or,
in some instances, no loss in bone stock” (see Ans. 5 (quoting Lang 116;
additionally citing Lang H 243, 247, 254)), but nothing in Lang disparages
or otherwise discourages procedures that require removal of bone. See, e.g.,
Ans. 5 (citing numerous passages of Lang that describe procedures requiring
bone removal); see also DePuy Spine, Inc. v. Medtronic Sofamor Danek,
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Application 11/186,911
Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (a reference does not teach away
if it merely expresses a general preference for an alternative).
Moreover, contrary to Appellants’ arguments that the Examiner’s
rejection requires five “disparate” references, each of the five cited
references addresses the same field of endeavor as Appellants’ invention,
namely joint-repair surgeries. Compare, e.g., App. Br. 2 (describing the
claimed invention as a surgical system for use in partial knee replacement
surgery), with App. Br. 7—8 (summarizing each of the cited references as
relating to bone and joint surgeries). Further, the Examiner articulated
reasons for combining the references with rational underpinnings (see Ans.
7; Final Act. 6—9), and Appellants do not substantively rebut the Examiner’s
reasons.
Having considered the Examiner’s rejection in light of each of
Appellants’ arguments and the evidence of record, we agree with, and adopt
as our own, the Examiner’s findings, conclusions, and reasons consistent
with the above. We sustain the rejection under 35 U.S.C. § 103(a) of clam
17, as well as claims 18—23, 25, 27, 30, 32, and 33, which Appellants do not
substantively argue beyond the arguments advanced for claim 17.3
3 Appellants purport to argue each of the remaining claims under a separate
subheading. App. Br. 20-23. Appellants’ arguments amount to a recitation
of each claim element and a “naked assertion” that each element is not found
in the prior art. Such statements do not constitute a separate argument for
patentability of these remaining claims pursuant to 37 C.F.R.
§ 41.37(c)(l)(iv). See In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(holding that the Board had reasonably interpreted the same language in the
prior rule under 37 C.F.R. § 41.37(c)(l)(vii) as requiring “more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art”).
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Application 11/186,911
The Indefiniteness Rejection
Regarding the indefiniteness rejection, Appellants state that claim
amendments had been proposed, but not entered, after the Final Rejection.
App. Br. 2, n. 1; Reply Br. 2—\. Appellants do not, however, substantively
address or rebut the indefmiteness rejection of the claims as currently
pending. Cf. Reply Br. 2—\ (addressing Appellants’ proposed claim
amendments). Accordingly, we summarily sustain the rejection of claims
17—23, 25, 27, 30, 32, and 33 under 35 U.S.C. § 112, second paragraph, as
being indefinite.
DECISION
For the above reasons, we affirm the Examiner’s rejections of claims
17—23, 25, 27, 30, 32, and 33 under 35 U.S.C. § 103(a) and under 35 U.S.C.
§112, second paragraph.
No time period for taking any subsequent action in connection with
this appeal maybe extended. 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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