Ex Parte ZajacDownload PDFPatent Trial and Appeal BoardJun 26, 201713741413 (P.T.A.B. Jun. 26, 2017) Copy Citation 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 /2-vs «rst niiakr.^ / /-S8CQi>d fi'ScSCRBOS b\Copy with citationCopy as parenthetical citation