David C. Koogle et al.Download PDFPatent Trials and Appeals BoardOct 2, 201914091902 - (D) (P.T.A.B. Oct. 2, 2019) 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. 14/091,902 11/27/2013 David C. KOOGLE JR. 67145-201 PUS1 4133 26096 7590 10/02/2019 CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 EXAMINER SIPP, AMY R. ART UNIT PAPER NUMBER 3775 NOTIFICATION DATE DELIVERY MODE 10/02/2019 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): cgolaw@yahoo.com ptodocket@cgolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DAVID C. KOOGLE JR., ZACHARY A. INGWER, and MICHAEL E. EGGERT ___________ Appeal 2018-007425 Application 14/091,902 Technology Center 3700 ____________ Before MICHAEL J. FITZPATRICK, ANNETTE R. REIMERS, and LEE L. STEPINA, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject under 35 U.S.C. § 103(a): (1) claims 1–3, 5, 7, 9, 21, 22, 25, 28, 29, and 32 as unpatentable over Fischer (US 4,992,010, issued Feb. 12, 1991) and Melkent (US 2005/0277971 A1, published Dec. 15, 2005); (2) claims 23, 24, 30, and 31 as unpatentable over Fischer, Melkent, and Cogsdill (US 3,195,378, issued July 20, 1965); and (3) claims 12–15 and 27 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Arthrex, Inc. Appeal Brief 3 (“Appeal Br.”), filed Apr. 9, 2018. Appeal 2018-007425 Application 14/091,902 2 as unpatentable over Melkent and Cogsdill. Claims 4 and 10 have been withdrawn from consideration. Claims 6, 8, 11, 16–20, and 26 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The claimed subject matter “relates to an orthopedic surgical device, and more particularly to an expandable reamer that can be introduced into a bone tunnel to remove areas of diseased bone.” Spec. ¶ 2, Figs. 1A, 1B. Claims 1, 12, and 28 are independent. Claim 1 is illustrative of the claimed subject matter and recites: 1. A surgical device, comprising: a tube; a cutting blade movable between a first position in which said cutting blade is concealed inside said tube and a second position in which said cutting blade is exposed through a sidewall of said tube; a clutch assembly configured to rotate to move said cutting blade between said first position and said second position; and a deflection pin configured to deflect said cutting blade radially outward of said tube as a tapered edge of said cutting blade is moved into contact with said deflection pin. Appeal 2018-007425 Application 14/091,902 3 ANALYSIS Obviousness over Fischer and Melkent Claims 1–3, 5, 7, 21, 22, 28, 29, and 32 Independent claim 1 is directed to a surgical device including “a clutch assembly configured to rotate to move said cutting blade between said first position and said second position.” Appeal Br.19 (Claims App.). The Examiner finds that Fischer discloses the surgical device of claim 1 substantially as claimed except that “Fischer is silent to a clutch assembly configured to rotate to move said cutting blade between said first position and said second position.” Final Act. 6–8.2 The Examiner finds that Melkent discloses the claimed “clutch assembly” and reasons that it would have been obvious to modify the operator end of the tube and shaft of Fischer by “adding a clutch assembly as taught by Melkent in order to enable deployment of the cutting blade at various heights (Melkent ¶s 24 and 36) to enable the user to create a space of a certain height or remove material by incrementally increasing size using successive cutting (Melkent ¶46).” Final Act. 8–9. As to the Examiner’s above-cited reasoning to combine Fischer and Melkent, Appellant contends that “it is never explained how the proposed modification would facilitate these advantages any more than the drilling device of Fischer already does.” Appeal Br. 10. According to Appellant, “[t]he Examiner appears to be proposing adding completely redundant functionality to Fischer” as “reaming element 2 of Fischer is already capable of incremental advancement by controlling the amount of force F applied to 2 Final Office Action (“Final Act.”), dated Oct. 10, 2017. Appeal 2018-007425 Application 14/091,902 4 the stem 1.” Id.; see also Reply Br. 43 (“Fischer does describe such a mechanism - the combination of the force applied by the operator and the compression spring allows a controlled amount of force to be applied.”) (citing Fischer 2:12–22, 3:3–21). Appellant has the better position here. Fischer discloses that compression spring 5 surrounds guide tube 3 in the upper region and is held between support bearing 4 constructed on stem 1 and support bearing 6 arranged on guide tube 3. See Fischer 2:19–22. Fischer also discloses: The device illustrated in FIG. 1 consists of a stem 1 with a reaming element 2. The stem extends in a guide tube 3 having an attached ring 4, which is engaged by a compression spring 5 shown in a simplified form. At the other end of the compression spring 5, a transverse pin 6 forms a support for the compression spring 5. The transverse pin 6 is guided in a slot 7 in the guide tube 3 and in FIG. 1, it is shown as being located in an upper end position. Fischer 2:41–49 (emphases added), Fig. 1. Fischer further discloses that, “[i]n FIG. 2, the stem 1 is pressed downwards with a force F, so that the reaming element 2 reams out an undercut 13 at the bottom of a drilled hole 14” (Fischer 3:3–5; see also id. at 1:29–35;4 Fig. 2), such that “several undercuts can be successively produced” (Fischer 1:48–49). In addition, Figure 1 of Fischer illustrates compression spring 5 uncompressed and Figure 2 of Fischer illustrates 3 Reply Brief (“Reply Br.”), filed July 12, 2018. 4 The Examiner notes that “Fischer does disclose that axial pressure on an end (8) of a shaft (1) pivots the cutting blade radially outwards (col. 1 lines 30- 32).” Final Act. 8. Appeal 2018-007425 Application 14/091,902 5 compression spring 5 fully compressed by force F. Fischer 2:41–44; see also id. at 3:14–15; Figs. 1, 2. As an initial matter, in the Final Office Action and the Answer, the Examiner notes that “Fischer is capable of being operated [incrementally] if a controlled amount of uniform force is applied and sustained during rotational cutting.” Final Act. 4; see also Ans. 5.5 Based on Fischer’s disclosure and Figures, it stands to reason that compression spring 5 can be incrementally advanced via transverse pin 6 in guide slot 7 depending on the amount of force F applied by the operator to stem 1, such that several undercuts 13 can be successively produced at various heights by reaming element 2. See Appeal Br. 10; see also Reply Br. 4. In the Answer, the Examiner states that “Melkent teaches providing a structure [i.e., a clutch assembly] that makes it practical for a user to set a known blade position to achieve a uniform undercut of a specific diameter by making successive cuts.” Ans. 5; see also Final Act. 9. However, as discussed above, Fischer already discloses the ability to achieve such undercuts by making “successive cuts.” Fischer 1:48–49. For these reasons, the Examiner’s proposed reasoning to combine the teachings of Fischer and Melkent lacks rational underpinnings. Similar to independent claim 1, independent claim 28 is directed to a surgical device having a clutch assembly. See Appeal Br. 19 (Claims App.). The Examiner relies on the same inadequate reasoning to combine the teachings of Fischer and Melkent discussed above. See Final Act. 11. Accordingly, we do not sustain the Examiner’s rejection of independent claims 1 and 28, or that of claims 3, 5, 7, 9, 21, 22, 25, 29, and 5 Examiner’ Answer (“Ans.”), dated May 17, 2018. Appeal 2018-007425 Application 14/091,902 6 32, all of which depend from either claim 1 or claim 28, as unpatentable over Fischer and Melkent. Obviousness over Fischer, Melkent, and Cogsdill Claims 23, 24, 30, and 31 Each of claims 23, 24, 30, and 31 depends ultimately from either claim 1 or claim 28. See Appeal Br. 20–22 (Claims App.). The Examiner relies on the same inadequate reasoning to combine the teachings of Fischer and Melkent discussed above for claims 1 and 28 (prior to further combining with the teachings of Cogsdill). See Final Act. 13. Thus, for reasons similar to those discussed above for claims 1 and 28, we do not sustain the Examiner’s rejection of claims 23, 24, 30, and 31 as unpatentable over Fischer, Melkent, and Cogsdill. Obviousness over Melkent and Cogsdill Claims 12–15 and 27 Independent claim 12 is directed to an expandable reamer including at least one cutting blade and a clutch assembly having a clutch hub and a threaded hub, wherein teeth of one of the threaded hub and the clutch hub are removably received within recesses of the other of the threaded hub and the clutch hub, and wherein a distance between the teeth corresponds to a specific radially outward incremental advancement of the at least one cutting blade. Appeal Br. 20 (Claims App.). The Examiner finds that Melkent discloses the expandable reamer of claim 12 substantially as claimed except: Appeal 2018-007425 Application 14/091,902 7 Melkent is silent to teeth of one of said threaded hub and said clutch hub being removably received within recesses of the other of said threaded hub and said clutch hub, and wherein a distance between said teeth corresponds to a specific radially outward incremental advancement of said at least one cutting blade. Final Act. 16. The Examiner finds that Cogsdill discloses an expandable reamer with a clutch assembly having “a clutch hub (126) and a threaded hub (128, 134, 112, 164), wherein teeth (168) of one of said threaded hub and said clutch hub are removably received within recesses . . . of the other of said threaded hub and said clutch hub,” and “wherein a distance between said teeth corresponds to a specific radially outward incremental advancement of said at least one cutting blade.” Id. (citing Cogsdill 5:48– 51, 63–67, Fig. 9). The Examiner reasons that it would have been obvious to modify the threaded hub and clutch hub of Melkent by adding teeth/recesses to the threaded hub and adding the spring and collar with teeth as taught by Cogsdill in order to selectively prevent rotation (Cogsdill col. 5 lines 50- 52) between the hubs while preserving the ability to vary the depth of the cutting edge (Cogsdill col. 5 lines 54-55)” and additionally providing a predetermined number of teeth that correlate with an indication in the change in depth of the cutting edge (Cogsdill col. 5 lines 63-67) to create a space of a certain height/size (Melkent ¶46), i.e. to provide a lock for fixing the cutting blades in a position prior to cutting such that a space is created of the desired size. Final Act. 17. Appellant contends that Cogsdill fails to disclose “wherein a distance between the teeth corresponds to a specific radially outward incremental advancement of the at least one cutting blade,” as required by claim 12. See Appeal Br. 15–16; see also id. at 20 (Claims App.). In particular, Appellant Appeal 2018-007425 Application 14/091,902 8 contends that the passage of Cogsdill cited by the Examiner for this limitation (i.e., Cogsdill 5:63–67) discloses that “the change in cutting depth is indicated by the total number of teeth and a correlation of that number of teeth with the tapered surface 154” and that “[t]he change in depth . . . has nothing to do with ‘a distance between said teeth.’” Appeal Br. 16; see also Final Act. 16. Cogsdill discloses that “a predetermined number of teeth 168 may be provided and correlated with the tapered surface 154 to provide an indication of the change in depth of cut of the cutting edge 158.” Cogsdill 5:63–66. We agree with Appellant that this passage of Cogsdill indicates that a predetermined number of teeth 168 is correlated with tapered surface 154 of shank 112 “to provide an indication of the change of depth” of the cut of cutting edge 158 of cutting blade 120.” See id.; see also Appeal Br. 16 (emphasis added); Ans. 14 (The Examiner notes that “the number of teeth is specifically disclosed to correlate with the change in depth of the cut of the cutting edge.”). Here, the Examiner fails to provide sufficient evidence or technical reasoning to establish that a “change in depth” of the cut of cutting edge 158 of Cogsdill is correlated to the “distance between teeth” 168, so as to also “correspond[] to a specific radially outward incremental advancement” of cutting blade 120. See Final Act. 16; see also Ans. 14; Appeal Br. 16, 20 (Claims App.). The Examiner states that “the distance between the teeth is . . . predetermined as shown in Fig. 9.” Ans. 14. However, the Examiner does not direct us to any discussion in Cogsdill that the Figures are drawn to scale and “it is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show Appeal 2018-007425 Application 14/091,902 9 particular sizes if the specification is completely silent on the issue.” Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956 (Fed. Cir. 2000). For these reasons, the Examiner fails to establish by a preponderance of the evidence that Cogsdill discloses that a distance between teeth 168 corresponds to a specific radially outward incremental advancement of cutting blade 120. Additionally, we agree with Appellant that the Examiner’s reasoning to combine Melkent and Cogsdill (i.e., “to create a space of a certain height/size (Melkent ¶46), . . . to provide a lock for fixing the cutting blades in a position prior to cutting such that a space is created of the desired size”) lacks rational underpinnings. See Appeal Br. 16–17; see also Final Act. 16– 17; Ans. 15–16. Melkent discloses: The embodiment in FIG. 12 is further provided with indicia to indicate the height between the cutting blades 27, 29 of cutting members 26, 28 at various stages of deployment of cutting members 26, 28 from mounting portion 13. . . . The height marking[s] 170 provide an indication of the deployed height between cutting blades 27, 29 of cutting members 26, 28. This can facilitate the use of instrument 10 during surgery. For example, it may be desired to create a space between vertebrae of a certain height, or it may be desired to remove bony material with cutting members 26, 28 by incrementally increasing the height between cutting blades 27, 29 after successive passes of cutting blades 27, 29 along the bony tissue. Melkent ¶ 46 (emphases added). As correctly pointed out by Appellant, based on the above-cited paragraph, Melkent already provides the ability to fix cutting blades 27, 29 in a position prior to cutting such that a space of desired size/height is created. Appeal Br. 17; see also Reply Br. 5. The Examiner does not Appeal 2018-007425 Application 14/091,902 10 provide any findings that Melkent recognized a problem with the height adjustment assembly. See Final Act. 15–17; see also Ans. 15–16. Moreover, given that Melkent already provides the ability to fix cutting blades 27, 29 in a position prior to cutting such that a space of desired size/height is created, we fail to see, and the Examiner fails to adequately explain, how providing a lock to Melkent’s device would improve its ability to fix cutting blades 27, 29 in a position prior to cutting such that a space of desired size/height is created. See Final Act. 15–17; see also Ans. 15–16. Absent reasoning that is supported by a rational underpinning for modifying the reference as proposed, the Examiner’s rejection appears to be the result of an impermissible hindsight analysis. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (citation omitted)) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”); see also Reply Br. 5. Accordingly, we do not sustain the Examiner’s rejection of claims 12– 15 and 27 as unpatentable over Melkent and Cogsdill. DECISION We REVERSE the decision of the Examiner to reject claims 1–3, 5, 7, 9, 12–15, 21–25, and 27–32. REVERSED Copy with citationCopy as parenthetical citation