Ex Parte Harris et al

Patent Trial and Appeal BoardApr 19, 2016

12371700 (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/371,700 02/16/2009 8933 7590 04/19/2016 DUANE MORRIS LLP- Philadelphia IP DEPARTMENT 30 SOUTH 17TH STREET PHILADELPHIA, PA 19103-4196 FIRST NAMED INVENTOR Brian R. Harris JR. 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. E3383-0023 l 8196 EXAMINER ARAJ, MICHAEL J ART UNIT PAPER NUMBER 3775 MAILDATE DELIVERY MODE 04/19/2016 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 BRIAN R. HARRIS, JR. and CHRISTOPHER R. McKNETT Appeal 2014-003192 1,2 Application 12/3 71, 7 00 Technology Center 3700 Before HUBERT C. LORIN, PHILIP J. HOFFMANN, and AMEE A. SHAH, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1-5. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 Our decision references Appellants' Specification ("Spec.," filed Feb. 16, 2009), Appeal Brief ("Appeal Br.," filed June 28, 2013), and Reply Brief ("Reply Br.," filed Jan. 14, 2014), as well as the Examiner's Answer ("Answer," mailed Nov. 14, 2013). 2 According to Appellants, "[t]he real party in interest is Wright Medical Technology, Inc." Appeal Br. 2. Appeal2014-003192 Application 12/3 71, 7 00 According to Appellants, the invention relates "to surgical instruments for use with bone screws." Spec. 1, 11. 14--15. We reproduce, below, independent claim 1 as representative of the appealed claims. 1. An adjustable screwdriver for selectively driving an adjustable compression screw into a substrate, the adjustable compression screw having a screw shaft and a separate adjustable head threaded on a head of the screw shaft, compnsmg: a handle, an adjustable head driver extending distally from said handle, a distal tip of said adjustable head driver configured to engage the adjustable head of the adjustable compression screw for use in rotating the adjustable head of the adjustable compress10n screw, a shaft driver concentrically disposed in said adjustable head driver, said shaft driver fixed in said handle, a distal tip of said shaft driver configured to engage the head of the screw shaft of the adjustable compression screw for use in rotating the screw shaft, said shaft driver configured to selectively lock in an even driving position wherein said distal tip of said shaft driver is substantially even with said distal tip of said adjustable head driver to thereby allow said adjustable head driver and said shaft driver to cooperatively drive the adjustable head and the screw shaft, and said shaft driver configured to selectively lock in a retracted driving position wherein said distal tip of said shaft driver is recessed in said adjustable head driver to thereby allow said adjustable head driver to drive the adjustable head without said shaft driver driving the screw shaft. Appeal Br., Claims App. 2 Appeal2014-003192 Application 12/3 71, 7 00 REJECTION AND PRIOR ART The Examiner rejects claims 1-5 under 35 U.S.C. Â§ 102(b) as anticipated by Crawford (US 5,711,043, iss. Jan. 27, 1998). See Answer 3--4. ANALYSIS Appellants argue that the rejection is in error because Crawford does not teach the claim limitation of "said shaft driver configured to selectively lock in an even driving position wherein said distal tip of said shaft driver is substantially even with said distal tip of said adjustable head driver to thereby allow said adjustable head driver and said shaft driver to cooperatively drive the adjustable head and the screw shaft." Appeal Br., Claims App., 6-7; see also Reply Br. 2--4. In response, the Examiner finds that Crawford's drill bit 20 teaches the claimed shaft driver, that Crawford's body 12 teaches the adjustable head driver, and that Crawford's drill bit 20 and body 12 "ha[ ve] the ability to perform the [claimed] function." Answer 6. Based on our review of the record, we find that the Examiner fails to establish that either drill bit 20 or body 12 has the ability to engage and drive a screw, and similarly fails to establish that both the drill bit 20 and body 12 have the ability to cooperatively drive a screw. Specifically, the Examiner does not point to anything in Crawford that clearly shows or describes either or both of drill bit 20 or body 12 having the ability to engage and drive a screw. Further, although the Examiner references Crawford's Figures 2 and 4, neither figure shows that drill bit 20 or body 12 has the ability to engage and drive a screw, separately or together. Thus, based on the foregoing, we 3 Appeal2014-003192 Application 12/3 71, 7 00 do not sustain the rejection of independent claim 1, or claims 2-5 depending from claim 1. DECISION We REVERSE the Examiner's rejection of claims 1-5 under 35 U.S.C. Â§ 102(b). REVERSED 4