Ex Parte Zajac

Patent Trial and Appeal Board

Jun 26, 2017

13741413 (P.T.A.B. Jun. 26, 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.
13/741,413 01/15/2013 Eric Zajac 13271.11 7339
92010 7590
KARISH & BJORGUM, PC
119 E. Union Street, Suite B
Pasadena, CA 91103
06/28/2017 EXAMINER
KU, SI MING
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
06/28/2017 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):
marc.karish@kb-ip.com
docketing@kb-ip.com
michell.rudacille@kb-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC ZAJAC
Appeal 2016-006363
Application 13/741,4131
Technology Center 3700
Before ULRIKE W. JENKS, JOHN G. NEW and DAVID COTTA,
Administrative Patent Judges.
COTTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
surgical cutting block. The Examiner rejected the claims on appeal under 35
U.S.C. § 102(b) as anticipated and under 35 U.S.C. § 103(a) as obvious.
We affirm-in-part.
1 According to Appellant, the real party in interest is Arthrex, Inc. See App.
Br. 3.
Appeal 2016-006363
Application 13/741,413
STATEMENT OF THE CASE
Claims 1—7, 9, 11, 12, and 21—30 are on appeal. Claims 1 and 28 are
illustrative and reads as follows:
1. A surgical cutting block, comprising:
a block body including a top surface, said block body
including a first thickness that extends between a first surface
and an opposing second surface of said block body, said first
surface adapted to be received against an exterior surface of a
bone;
a capture disposed at said top surface, wherein said capture
includes a second thickness that is less than said first thickness of said
block body at said top surface and a slot that extends through said
capture across an entirety of said second thickness; and
at least one chamfer cutting guide slot that extends
through said block body.
28. A surgical cutting block, comprising:
a block body; and
a capture separate from and magnetically connected to said
block body, said capture including a slot that extends from a front face
to a rear face across a thickness of said capture.
App. Br. 14—15.
The claims stand rejected as follows:
Claims 1—3 were rejected under 35 U.S.C. § 102(b) as anticipated by
Reiley.2
Claims 1, 4, 5, 9, 11, 12, 21—27 and 29 were rejected under 35 U.S.C.
§ 103(a) as obvious over the combination of Elliott,3 and Lionberger.4
2 Reiley, US Patent No. 6,673,116 B2, issued Jan. 6, 2004 (“Reiley”).
3 Elliott et al., US Patent No. 5,720,752, issued Feb. 24, 1998 (“Elliott”).
4 Lionberger et al., US Patent Publication No. 2004/0260301 Al, published
Dec. 23, 2004 (“Lionberger”).
2
Appeal 2016-006363
Application 13/741,413
Claims 6, 7, 28 and 30 were rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Elliott, Lionberger, and Fox.5
ANTICIPATION
Reiley discloses an intramedullary guidance system. Figure 3 of
Reiley is reproduced below.
“FIG. 3 shows the components of an intramedullary guidance system 10 for
providing a desired alignment of the tibia and talar before and while the
tibial and/or talar cuts shown in FIG. 2 are made.” Reiley col. 4,11. 35—38.
Reiley’s guidance system is comprised of a “guide pin 27” and a “cutting
guide 31” which “includes one or more cutting slots 33, through which a
saw blade passes.” Id. at col. 5,11.19—36. Reiley’s cutting guide also
includes “an intramedullary locating feature, which in the illustrated
embodiment takes the form of an intramedullary locating post 35.” Id. at
col. 5,11. 36-39.
5 Fox et al., US Patent Publication No. 2008/0228189 Al, published Sept.
18, 2008 (“Fox”).
3
Appeal 2016-006363
Application 13/741,413
Figure 8 (reproduced below) depicts Reiley’s guidance system in use.
nc. a
“FIG. 8 is a posterior section of the lower leg and foot with the fibula not
shown and depicting the insertion of the intramedullary cutting guide
between the tibia and the talus.” Id. at col. 3,11. 37—39.
“In use, the intradmedullary cutting guide 31 functions to guide [a]
saw blade used to create the planar surfaces 25 on the tibia and/or talus, as
shown in FIG. 2.” Id. at col. 5,11. 31—34. Figure 2 is reproduced below.
4
Appeal 2016-006363
Application 13/741,413
“FIG. 2 is a lateral view of a human foot and lower leg skeleton with the
fibula shown in an assembly format and having a planarly resected tibia and
talus.” Reiley col. 3,11. 5—7. In Figure 2, element 25 depicts a planar
surface formed by “cut[ting] away bone on the inferior end of the tibia 16
and/or the superior end of the talus 15.” Id. at col. 24,11. 24—25.
In finding that Reiley anticipated claims 1—3, the Examiner found,
inter alia, that cutting slots 33 of the cutting guide depicted in Reiley’s
Figure 3 met the claim requirement for “at least one chamfer cutting guide
slot.” Final Act. 3.6 Appellant argues, inter alia, that the cutting slots 33 in
Reiley’s cutting guide are used to create planar rather than chamfer cuts, and
thus Reiley does not disclose all of the elements of claims 1—3. App. Br. 8—
9. We find that Appellant has the better position.
Appellant contends that “[a] chamfer cut is a cut made at an angle,
such as a 45° angle, for example.” Id. at 8. Appellant’s definition is
consistent with the ordinary meaning of “chamfer” and with how the
Specification uses the term “chamfer.” See e.g.. Spec. % 41 (“The chamfer
cutting guide slots 32A, 32B can be disposed at an angle through the block
body 12. That is, the chamfer cutting guide slots 32A, 32B extend obliquely
between the first surface 22 and the opposing second surface such that a
transverse cut can be made in the bone B.”); see also, Spec. Figs. 2 & 4
(depicting angled chamfer cutting slots). Accordingly, we construe the term
“chamfer cutting guide slot” to mean a cutting guide slot for a cut made at an
angle.
As reflected in Figures 2 and 8 (reproduced above) the cutting slots 33
in Reiley’s cutting guide 31 are not configured for making angled cuts. The
6 Office Action mailed April, 17, 2015 (“Final Act.”).
5
Appeal 2016-006363
Application 13/741,413
Examiner contends that the “chamfer cutting slot” limitation is merely a
recitation of intended use that does not result in structural differences. Ans.
3. We disagree, at least because a cutting slot for cutting at an angle is
structurally different from a cutting slot for making planar cuts, as reflected
in, e.g., Figure 2 of the Specification, in which cutting slot 28 is structurally
different from chamfer cutting slots 32A and 32B. The Examiner further
contends that Reiley’s device is “capable of being placed at different angular
orientations to produce a chamfer cut in a bone.” Ans. 3. We are not
persuaded at least because this is inconsistent with how Reiley’s device is
taught to be used (see Fig. 8 (reproduced above)). In re Giannelli, 739 F.3d.
1375, 1380 (Fed. Cir. 2014) (“Physical capability alone does not render
obvious that which is contraindicated.”). Accordingly we reverse the
Examiner’s decision to reject claims 1—3 as anticipated by Reiley.
OBVIOUSNESS OVER ELLIOTT AND LIONBERGER
In rejecting claims 1, 4, 5, 9, 11, 12, 21—27, and 29 as obvious over
the combination of Elliott and Lionberger, the Examiner found that Elliott
disclosed a cutting block meeting all of the limitations of claim 1 with the
exception that it did not disclose “at least one chamfer cutting guide slot.”
Final Act. 4—5. The below annotated figure shows how the Examiner
contends Elliott’s cutting block met the limitations of claim 1.
6
Appeal 2016-006363
Application 13/741,413
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