Ex Parte Smith

Patent Trial and Appeal Board

Oct 20, 2016

12663493 (P.T.A.B. Oct. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/663,493
26170 7590
Smith & Nephew, Inc.
Sabrina Chambers
1450 Brooks Road
Memphis, TN 38116
06/24/2010
10/20/2016
FIRST NAMED INVENTOR
Richard Smith
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.
PT-3276-US-PCT 4127
EXAMINER
GIBSON, ERIC SHANE
ART UNIT PAPER NUMBER
3776
MAILDATE DELIVERY MODE
10/20/2016 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 RICHARD SMITH
Appeal2014-007474
Application 12/663,493
Technology Center 3700
Before LYNNE H. BROWNE, LISA M. GUIJT, and ERIC C. JESCHKE,
Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Richard Smith (Appellant) seeks review under 35 U.S.C. § 134(a) of
the Examiner's decision, as set forth in the Final Office Action dated July 9,
2013 ("Final Act."), rejecting claims 1-23. 1 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies Smith & Nephew, Inc. as the real party in
interest. Appeal Br. 1.
Appeal2014-007474
Application 12/663,493
BACKGROUND
The disclosed subject matter "relates generally to implants and
processes in joint surgery, particularly knee surgery, and more particularly
tibial preparation." Spec. i12. Claims 1 and 12 are independent. Claim 1 is
reproduced below:
1. A reamer for reaming a joint between at
least two bones, comprising:
a. a housing configured to be inserted within
the joint;
b. a plurality of cutting blades configured to
couple to the housing, the plurality of cutting
blades creating a cutting surface and defining
openings in the cutting surface, a channel defined
between the plurality of cutting blades and the
housing, the openings allowing cut bone and
cartilage to flow therethrough and enter the
channel;
wherein a first of the plurality of cutting
blades is configured to reciprocate back and forth
along an axis, and a second of the plurality of
cutting blades is configured to reciprocate back
and forth along an axis opposite to a direction of
reciprocation of the first of the plurality of cutting
blades.
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Application 12/663,493
REJECTIONS2
1. Claims 1, 2, 4--10, 12, 13, 15-20, 22, and 23 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Lee (US 2006/0129159 Al,
published June 15, 2006) and Liu (US 2006/0129160 Al, published June 15,
2006). See Final Act. 2-5, 6-9.
2. Claims 3 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lee, Liu, and Johnson (US 2007/0260253 Al, published
Nov. 8, 2007). See id. at 5---6, 9.
3. Claims 11and21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lee, Liu, and McBean (US 2004/0106881 Al, published
June 3, 2004). See id. at 6, 10.
DISCUSSION
Rejection 1 - The rejection of claims 1, 2, 4-10, 12, 13,
15-20, 22, and 23 under 35U.S.C.§103(a)
A. Claims 1, 2, 4---6, 8-10, 12, 13, 15-17, 19, 20, 22, and 23
For the claims in this group, Appellant argues the patentability of the
two independent claims---claims 1 and 12-based on the same arguments.
Appeal Br. 3-7, 8. Appellant does not provide separate arguments for any
dependent claims in this group. We select independent claim 1 as
2 The Examiner rejected claims 3 and 11 under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and distinctly claim the
subject matter regarded as the invention, based on insufficient antecedent
basis. See Final Act. 2. Appellant subsequently filed an Amendment, which
the Examiner entered, addressing this prior rejection. See Amend. 2, 3, 6
(dated Sept. 9, 2013); Adv. Act. 1 (dated Sept. 18, 2013). We consider this
prior rejection implicitly withdrawn.
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Application 12/663,493
representative, with the remaining claims standing or falling with claim 1.
See 37 C.F.R. § 41.37 (c)(l)(iv) (2013).
In rejecting claim 1, the Examiner relied on Lee for various
limitations but stated that "Lee does not disclose a plurality of cutting blades
and wherein a second of the plurality of cutting blades is configured to
reciprocate back and forth along an axis opposite to a direction of
reciprocation of the first of the plurality of cutting blades." Final Act. 3.
The Examiner found, however, that Liu
discloses a reaming device comprising: a plurality of cutting
blades ( 66, 68) which reciprocate back and forth along an axis
in opposite direction of one another (see Figs. 2--4) such that a
more precise shaped surface may be cut because the forces
imparted by the oppositely moving blades counteract one
another thereby minimizing the resultant force imparted on the
end portion of the device.
Id. at 3--4 (citing Liu i-f 30, 11. 7-20).
The Examiner concluded that it would have been obvious "to modify
the reamer of Lee to have a plurality of cutting blades" that satisfied the last
clause of claim 1 (beginning "wherein"), "in view of [Liu,] to permit the
imparted forces on the end portion of the device such that a surgeon has to
apply little or no force to counteract the cutting forces generated and such
that a precisely dimensioned finished surface can be formed." Id. at 4.
First, Appellant contends that "it would not have been obvious to
modify Lee's device based on Liu's device" "because the devices of Lee and
Liu are intended to operate under very different constraints." Appeal Br. 4.
According to Appellant, Lee "describes a 'contouring device for use in facial
bone contouring surgery"' that Lee "distinguishes ... from conventional
bone-cutting elements that require a 'large-sized incision'" (id. (citing Lee
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Application 12/663,493
iii! 1, 3, 7)), whereas "Liu, in contrast, is entirely unrelated to facial bone
contouring surgery and instead describes an intervertebral endplate tool for
preparing surfaces of vertebral endplates" (id. (citing Liu iii! 7, 8)).
Appellant contends that
[b ]ecause Lee's device is specifically configured to
contour facial bone through a minimal incision, and because the
device of Liu is specifically configured to create wide,
rectangular cavities in vertebral endplates, one of ordinary skill
in the art would not have modified the facial bone contouring
device of Lee based on Liu's teaching of an intervertebral
endplate tool.
Id. at 4--5.
We are not apprised of error based on the differences in the disclosed
uses in Lee and Liu because, here, Appellant has not shown that these
differences undermine the factual findings or reasoning relied on to support
the conclusion of obviousness. See Final Act. 2--4; Ans. 9-10; see also KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) ("[F]amiliar items may
have obvious uses beyond their primary purposes, and in many cases a
person of ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.").
We tum now to the allegedly different sizes of the disclosed devices.
Here, Appellant has not shown error in the Examiner's finding that one of
ordinary skill in the art "would find the benefit of modifying the device of
Lee with the concept of alternately reciprocating blades on a reamer, from a
teaching of Liu, to be beneficial when reaming bone, because of the
advantages gained in doing so, while still maintaining the minimal invasive
use of the device." Ans. 10 (emphasis added). In the Reply Brief, Appellant
contends that "the Examiner labels the modification as involving a
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'concept,' [but] no explanation is offered as to how a person of ordinary skill
in the art would be able to add a second blade to Lee without departing from
Lee's desire to maintain minimal size." Reply Br. 1. Appellant, however,
has not provided evidence or technical reasoning to support that the
proposed modification would have been beyond the level of ordinary skill in
the art. See KSR, 550 U.S. at 417-18; see also id. at 421 ("A person of
ordinary skill is also a person of ordinary creativity, not an automaton.").
Moreover, as noted by the Examiner, the proposed modification is not based
on a bodily incorporation of the structure of Liu into Lee. See Ans. 10.
Rather, Liu is relied on "as a teaching of the concept of having a plurality of
alternately reciprocating reamer blades" that provide "the benefit that a more
precise shaped surface may be cut" based on the manner of operation. Id.
Second, Appellant contends that "the modification of Lee in view of
Liu would not have been obvious to a person of ordinary skill" because "Lee
teaches away from increasing the width of the device." Appeal Br. 5---6; see
also id. at 5 ("[A] modification that significantly increases the width of
Lee's device---e.g., by adding a second cutting blade adjacent the first one-
is strongly discouraged by Lee's own teaching."). Appellant states that Lee
"repeatedly emphasizes the importance of providing a contouring device that
can be inserted through small or minimal openings" (id. at 5 (citing Lee i-fi-1 3,
7, 10, 22, 47, 52, 68)) and argues that the "modification would increase the
width of Lee's device, and potentially double the width of Lee's device." Id.
Here, Appellant has not shown error in the Examiner's finding that
one of ordinary skill in the art
would find the benefit of modifying the device of Lee with the
concept of alternately reciprocating blades on a reamer, from a
teaching of Liu, to be beneficial when reaming bone, because of
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Application 12/663,493
the advantages gained in doing so, while still maintaining the
minimal invasive use of the device and without the need for a
larger incision.
Ans. 11-12 (emphasis added). In other words, Appellant has not provided
evidence or technical reasoning to support that the proposed modification
either (1) "would increase the width of Lee's device" (Appeal Br. 5) or (2)
that any increase in width (if shown to be necessary) would preclude the use
of, for example, a "minimum-sized incision" (Lee i-f 1 ).
Third, Appellant argues that "one of ordinary skill in the art would not
have modified Lee's device in view of Liu because the resulting device
would not be suitable for the facial bone contouring application that Lee's
device is intended to perform." Appeal Br. 6 (citing In re Gordon, 733 F.2d
900, 902 (Fed. Cir. 1984)). According to Appellant, the proposed
modification "would require altering Lee's protector 50, which the Examiner
equates to the housing of claim 1, in a manner that Lee's device would be
unable to (i) provide the desired spraying of saline, and (ii) be inserted using
a trocar or other similar means." Id.
Where the proposed modification would render the prior art invention
being modified unsatisfactory for its intended purpose, the proposed
modification would not have been obvious. See In re Gordon, 733 F.2d 900,
902 (Fed. Cir. 1984). Here, however, because Appellant has not provided
evidence or technical reasoning to support that the proposed modification
"would require altering Lee's protector 50" (Appeal Br. 6 (emphasis
added)), we are not persuaded that the proposed modification makes
unavailable the two features identified. In other words, Appellant has not
shown error in the Examiner's finding that one of ordinary skill in the art
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would find the benefit of modifying the device of Lee with the
concept of alternately reciprocating blades on a reamer, from a
teaching of Liu, to be beneficial when reaming bone, because of
the advantages gained in doing so, while still maintaining the
minimal invasive use of the device without altering the
protector 50 or [saline solution} feeding passage [15} as
[A}ppellant asserts.
Ans. 12-13 (emphasis added).
As to the argument, in the Reply Brief, that "the Examiner provides
no explanation for how a person of ordinary skill in the art would be able to
add a second blade to be housed within Lee's protector 50" (Reply Br. 2),
Appellant has not provided evidence or technical reasoning to support that
the proposed modification would have been beyond the level of ordinary
skill in the art. See KSR, 550 U.S. at 417-18, 421.
For the reasons above, we sustain the rejection of independent claim 1
as unpatentable over the combined teachings relied upon by the Examiner.
Claims 2, 4---6, 8-10, 12, 13, 15-17, 19, 20, 22, and 23 fall with claim 1.
B. Claims 7 and 18
Claims 7 and 18 each require that the recited "teeth have a V shaped
cross section." Appeal Br. 11, 13 (Claims App.). Appellant asserts the
patentability of these two claims based on the same arguments. Id. at 7-8.
We select claim 7 as representative. To address claim 7, the Examiner relied
on an annotated version of Figure 5 of Lee. See Final Act. 3, 4.
Appellant argues that "FIG. 5 of Lee shows, at best, a cutting blade
13a with multiple sharp, elongated elements, not 'teeth hav[ing] a V shaped
cross section.'" Appeal Br. 7-8 (alteration in original). Appellant states,
"[i]n contrast, FIG. 4 of the application as filed (and accompanying
paragraph [0060] of the [S]pecification) discloses a plurality of teeth 66 with
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Application 12/663,493
V-shaped cross sections." Id. at 8. In response, the Examiner provides the
following "expanded" annotated version of Figure 5 of Lee and states that
Lee "does disclose its cutting blade 13a having teeth with a V shaped cross
section":
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Ans. 13. In the "expanded" annotated version of Figure 5, the Examiner
provides a close-up of element 13a, identifying certain structures as "teeth"
and identifying a "V-shaped cross section." Id.
We are not apprised of error here because Appellant has not explained
why the structure identified by the Examiner (in the "expanded" annotated
version of Figure 5 of Lee) does not satisfy the claim language at issue.
Although paragraph 60 of the Specification does describe teeth 66 in Figure
4 as having a "V-shaped cross section," we are not persuaded that the claim
language at issue should be limited to the embodiment shown in Figure 4.
See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) ("[L]imitations
are not to be read into the claims from the specification."); see also Anchor
Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1306--07
(Fed. Cir. 2003) (stating that "the mere fact that the patent drawings depict a
particular embodiment of the patent does not operate to limit the claims to
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that specific configuration"). In this case, cross sections taken at locations
other than those shown in Appellant's Figure 4 meet the limitation at issue.
Thus, we sustain the rejection of claims 7 and 18.
Rejections 2 and 3 - The rejection of claims 3, 11,
14, and 21under35 U.S.C. § 103(a)
Appellant does not separately argue claims 3 or 11, which depend
from claim 1, and also does not separately argue claims 14 or 21, which
depend from claim 12. Appeal Br. 3-8. Thus, for the reasons discussed
above (see supra Rejection 1 §A), we sustain the rejection of claims 3, 11,
14, and21.
DECISION
We AFFIRM the decision to reject claims 1-23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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