Ex Parte 7351248 et alDownload PDFBoard of Patent Appeals and InterferencesFeb 29, 201290009638 (B.P.A.I. Feb. 29, 2012) 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. 90/009,638 12/16/2009 7351248 67167-0003 7505 10291 7590 02/29/2012 RADER, FISHMAN & GRAUER PLLC 39533 WOODWARD AVENUE SUITE 140 BLOOMFIELD HILLS, MI 48304-0610 EXAMINER CLARK, JEANNE MARIE ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 02/29/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte Centurion Medical Products Corporation, Patent Owner and Appellant ____________ Appeal 2012-001456 Reexamination Control 90/009,638 Patent 7,351,248 B2 Technology Center 3900 ____________ Before SALLY G. LANE, RICHARD M. LEBOVITZ, and JEFFREY B. ROBERTSON, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-001456 Reexamination Control 90/009,638 Patent 7,351,248 B2 2 Centurion Medical Products Corporation, the owner of the US Patent 7,351,248 B2 under reexamination1 (hereinafter the “‘248 Patent”), appeals under 35 U.S.C. §§ 134(b) and 306 from a final rejection of claims 1-11 (Supplemental Appeal Brief filed June 6, 2011, hereinafter “App. Br.,” at 5; Final Office Action mailed October 6, 2010). We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. We AFFIRM. STATEMENT OF THE CASE This reexamination proceeding arose from a third-party request for ex parte reexamination filed by John R. Schaefer of Bacon & Thomas, PLLC (Corrected Request for Ex Parte Reexamination filed December 16, 2009). We have also been informed that the ‘248 Patent was the subject of litigation styled Centurion Medical Products Corporation v. Surgical Design, Inc., Case No. 1:09-cv-04696, U.S. District Court (N.D. Illinois), which has been settled. (App. Br. 4.) The ‘248 Patent is directed to medical and surgical instruments, which incorporate a precision box hinge. (Col. 1, ll. 12-15.) Figure 5 of the ‘248 Patent is reproduced below: 1 See Patent Assignment Abstract of Title, Reel 023065, Frame 0531, which was entered into the record of this proceeding as “Title Report” on December 1, 2009. Appeal 2012-001456 Reexamination Control 90/009,638 Patent 7,351,248 B2 3 Figure 5 depicts a perspective view of a surgical instrument 10 including a first elongated member 12 having a first box hinge portion 16, a handle end portion 18, and a working tip portion 26, and a second elongated member 14 having a second box hinge portion 22 with ends 34 and 36, a handle end portion 24, and a working tip portion 26. (Col. 3, ll. 16-19, 40- 46.) The second box hinge portion 22 has opposing side surfaces 30 and a cross section that conforms to generally flat parallel sides 32 of slot 28 of first box hinge portion 16. (Col. 3, ll. 49-53.) Claims 1 and 3 on appeal read as follows: 1. A surgical instrument comprising: a first elongated member having a handle end portion, a working tip portion and a box hinge portion between said handle and tip end portions; a second elongated member having a handle end portion, a working tip portion and a box hinge portion between said handle and tip end portions; said first box hinge portion being defined by a slot having generally flat parallel sides for receiving said second box hinge portion therein; said second box hinge portion having a continuous, non- stepped, cross-sectional shape conforming with the flat, parallel sides of the slot in said first box hinge portion and comprising a Appeal 2012-001456 Reexamination Control 90/009,638 Patent 7,351,248 B2 4 surface generally perpendicular to the parallel sides, the surface having a width that is generally continuous in width with the handle and tip portions of the second elongated member on either side of the second box hinge portion; said working tip portion of said first elongated member extending in a gradually tapered disposition from said first box hinge portion to a tip of said first elongated member, and edges of said first and second elongated members having a smooth cooperative transition so that relative movement between the instrument box hinge, and a suture in uninterrupted so as not to create any snag points; and a hinge pin extending through the parallel sides of the slot and through said second box hinge portion hingedly connecting together said first and second elongated members. 3. The surgical instrument of claim 1, wherein the transitional slope of the second elongated member between the box hinge portion and the handle end portion on one end and the box hinge portion and the working tip portion on the other end is a long smooth oblique transition. (Claims App’x, App. Br. 28, 29.) The Examiner relied upon the following as evidence of unpatentability (Examiner’s Answer mailed August 15, 2011, hereinafter “Ans.,” 5): Jaekisch DE 23 64 287 June 26, 19752 Tiholiz US 5,036,733 Aug. 6, 1991 Tabrah US 2,726,657 Dec. 13, 1955 2 Hereinafter “DE ‘287.” We rely on the English Translation of DE ‘287 of Record. Appeal 2012-001456 Reexamination Control 90/009,638 Patent 7,351,248 B2 5 The Examiner rejected claims 1-11 under 35 U.S.C. § 103(a) as unpatentable over DE ‘287 in view of Tiholiz and Tabrah. (Ans. 5-9.) CLAIM INTERPRETATION “‘During reexamination, as with original examination, the PTO must give claims their broadest reasonable construction consistent with the specification.’” In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010) (quoting In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)). Although claims are interpreted in light of the specification, limitations from the Specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). “Generally Continuous in Width” In applying the prior art to the claims, the Examiner construed the claim limitation that the second box hinge portion comprises a surface perpendicular to the parallel sides “having a width that is generally continuous in width with the handle and tip portions of the second elongated member on either side of the second box hinge portion” to include “a constant width, widths having a smooth, uninterrupted taper, and widths having a slight irregularity or interruption.” (Ans. 6-7, 10-11.) Appellant apparently does not consider widths having a slight taper to be “generally continuous in width” as recited in claim 1. (See App. Br. 13- 16; Reply Brief filed June 22, 2011, hereinafter “Rep. Br.,” at 3-4.) Appeal 2012-001456 Reexamination Control 90/009,638 Patent 7,351,248 B2 6 We essentially agree with the Examiner, that a second box hinge portion with a width having a slight taper would be encompassed by the phrase “generally continuous in width.” Specifically, as the Examiner points out, the ‘248 Patent does not provide any special definition of “generally continuous in width” that would necessarily exclude any tapering. (Ans. 10.) Thus, the Examiner was correct to rely on the plain meaning of the word “generally” as embracing slight variations from and “continuous” as evidenced by the definitions provided by the Examiner. (Ans. 10-11.) The Examiner’s construction is also consistent with the purpose of the ‘248 Patent to eliminate machined portions, i.e., recesses, of the second box hinge portion of the second elongated member in order to prevent snagging. (Col. 1, ll. 31-39, 60-63.) Therefore, we accept the Examiner’s well- reasoned construction as comporting with the broadest reasonable interpretation of the claims. “Smooth Cooperative Transition” The Examiner has interpreted the claim phrase “edges of said first and second elongated members having a smooth cooperative transition so that relative movement between the instrument box hinge, and a suture in uninterrupted so as not to create any snag points” to include “edges, whether beveled or not beveled, that have a smooth cooperative (e.g., no sharp steps) transition and are capable, whether explicitly, implicitly, or inherently, of not providing any snag points for a suture line.” (Ans. 16.) In arguing against the Examiner’s rejection over the prior art, Appellant stated that edges having an abrupt, sharp edge upon which sutures Appeal 2012-001456 Reexamination Control 90/009,638 Patent 7,351,248 B2 7 may snag does not meet the recited “smooth cooperative transition,” consistent with the Examiner’s interpretation. (See App. Br. 18.) Moreover, the Examiner’s interpretation appears to be consistent with the portions of the ‘248 Patent identified by Appellant as corresponding to this limitation. (App. Br. 8.) Thus, we adopt the Examiner’s construction of this limitation of the claims as being consistent with the broadest reasonable interpretation of a “smooth cooperative transition.” ISSUES The Examiner found that DE ‘287 discloses a surgical instrument as recited in claim 1, where the surgical instrument appears to have a second box hinge portion with a width that is generally continuous with the width of the handle and tip portions as recited in the claim. (Ans. 5-6.) Alternatively, the Examiner concluded that it would have been obvious to make the width of the second box hinge portion of the instrument described in DE ‘287 generally continuous in width in order to simplify the manufacturing process. (Ans. 6-7.) The Examiner also found that the working tip of the first elongated member disclosed in DE ‘287 is gradually tapered from the first box hinge portion to a tip of the first elongated member, which would not create any snag points thereon. (Ans. 6.) The Examiner concluded that in light of Tiholiz’s disclosure that working tip members are gradually tapered from the first box hinge portion to the top of the first elongated member and Tabrah’s disclosure that edges in surgical instruments that have a smooth cooperative Appeal 2012-001456 Reexamination Control 90/009,638 Patent 7,351,248 B2 8 transition avoid snagging suture lines, it would have been obvious to modify the working tip of DE ‘287 to have a gradual taper and the members to have a smooth cooperative transition as claimed. (Ans. 7.) The Examiner reasoned that such modifications would have been well known in the art and desirable to avoid snagging the suture line, and for ease of cleaning and manufacture. (Ans. 7.) Appellant contends that DE ‘287 must be strictly construed to disclose a second box hinge portion with a tapered profile, which is also consistent with the profile of the second box hinge portion disclosed in Tiholiz. (App. Br. 14-15.) Appellant argues that contrary to the Examiner’s position, it would be more difficult to manufacture a surgical tool where the second box hinge portion has a continuous, non-stepped cross-sectional shape. (App. Br. 17.) Appellant also argues that Tabrah lacks a box hinge, but that the analogous surfaces in Tabrah are also not generally continuous in width. (App. Br. 16.) As a result, Appellant argues that the combination of the prior art applied by the Examiner does not disclose or suggest to one of ordinary skill in the art to produce a second box hinge portion with a generally continuous width, or having the gradually tapered disposition and smooth cooperative transition recited in the claims. (App. Br. 17-18.) Thus, the principal issues in this appeal are: (1) Did the Examiner err in concluding that a surgical instrument having a second box hinge portion having a width that is “generally continuous in width” would have been obvious to one of ordinary skill in the in view of DE ‘287, Tiholiz, and Tabrah, when viewed as a whole? Appeal 2012-001456 Reexamination Control 90/009,638 Patent 7,351,248 B2 9 (2) Did the Examiner err in concluding that a working tip portion of a first elongated member “extending in a gradually tapered disposition” would have been obvious in view of DE ‘287 and Tiholiz? (3) Did the Examiner err in concluding that edges of said first and second members having “a smooth cooperative transition” would have been obvious in view of DE ‘287, Tiholiz, and Tabrah, when viewed as a whole? FINDINGS OF FACT (“FF”) 1. The ‘248 Patent discloses that surgical instruments having machined portions are manufactured using “very expensive and precise matched grinding of the handles at either end of the box hinge where the machined portion first interfaces with the slot.” (Col. 1, ll. 19-39, 52-53.) 2. The ‘248 Patent discloses a “hinge portion of generally continuous section in the second member” to replace a machined portion as known in the art in order to eliminate points where a suture could snag. (Col. 2, ll. 4-19.) 3. The ‘248 Patent discloses: The slope of the side surfaces of the second elongate member is nearly flat, although there may be some tapering of the of the member between the box hinge portion and the handle end portion on one end of the box hinge and the box hinge portion and the working tip portion on the other end of the box hinge. (Col. 2, ll. 39-44, see also col. 3, ll. 49-67.) Appeal 2012-001456 Reexamination Control 90/009,638 Patent 7,351,248 B2 10 4. The ‘248 Patent discloses that: the second box hinge portion 22 can be disposed between handle end 24 and working tip 26 of portions that therein provide a long smooth oblique transition thereby being generally nearly flat and extending outward and away from the box hinge portion toward the handle end portion on one end of the box hinge and working tip portion on the other end of the box hinge. (Col. 4, ll. 1-7.) 5. Figure 3 of DE ‘287 is reproduced below: Figure 3 is a box-joint forceps in an exploded view, including a leg 10 including a slot 16, a leg 11 which includes a slight taper in the width on the handle side of the second box hinge portion, and a pivot pin 12. (DE ‘287, p. 2-3; Ans. 7, App Br. 13-14.) 6. DE ‘287 discloses that the construction of the box-joint forceps “is designed for simplified production.” (Page 1.) 7. Tiholiz discloses medical instruments, such as forceps, with non-slip engaging surfaces. (Col. 1, ll. 10-19.) Appeal 2012-001456 Reexamination Control 90/009,638 Patent 7,351,248 B2 11 8. Figure 12a of Tiholiz is reproduced below: Figure 12a is a perspective view of a coaptive instrument having an engaging surface 24. (Col. 6, ll. 24-31.) 9. Tabrah discloses surgical instruments including beveled and rounded surfaces in order to prevent sutures from catching on a joint when the instrument is in use, and to make the joint easier to manufacture, clean, and maintain. (Col. 1, ll. 15-20; col. 2, l. 51 – col. 3, l. 6.) PRINCIPLES OF LAW A prima facie case of obviousness is established where the Examiner demonstrates that the invention is nothing more than the predictable result of a combination of familiar elements according to known methods. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 416-17 (2007). “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” Id. at 417. ANALYSIS Issue 1 In light of the claim interpretation discussed above, we agree with the Examiner that DE ‘287 discloses a second box hinge portion having a Appeal 2012-001456 Reexamination Control 90/009,638 Patent 7,351,248 B2 12 surface generally perpendicular to the parallel sides “generally continuous in width” with the width of the handle and tip portions of the second elongated member on either side of the second box hinge portion. That is, although Figure 3 of DE ‘287 depicts a slight taper in the width of the second elongated member (leg 11) on the handle side of the second box hinge portion (see FF 5), because the term “generally continuous” allows for widths with a smooth uninterrupted taper, the width recited in claim 1 reads on the leg 11 disclosed in DE ‘287. As discussed above, the width profile of leg 11 is consistent with the purpose of the ‘248 Patent, which is to eliminate the machined portion, or recess, in the prior art second elongated members to prevent snagging. (FF 2.) Appellant has not pointed to persuasive evidence that the structural configuration in DE ‘287 is excluded by the claim language. In this regard, Appellant’s argument that DE ‘287 should be strictly construed to disclose tapered widths misses the mark. The issue is not whether DE ‘287 discloses a tapered width. Indeed, the Examiner and Appellant appear to agree on that point. (Ans. 6, 10-11; App. Br. 13-14.) Rather, the issue here is whether the claims may be reasonably interpreted to include the tapered widths depicted in DE ‘287. Accordingly, we are not persuaded by Appellant’s arguments. We are also not persuaded by Appellant’s argument disputing the Examiner’s alternative rationale that a second elongated member having a generally continuous width would be easier to manufacture. (App. Br. 17.) Appellant has not directed us to persuasive evidence on the record to support their argument. As the Examiner points out, the ‘248 Patent discloses that Appeal 2012-001456 Reexamination Control 90/009,638 Patent 7,351,248 B2 13 prior art machined portions of box hinge instruments were very expensive to manufacture due to matching grinding employed where the machined portion first interfaces with the slot. (Ans. 13, FF 1.) Moreover, DE ‘287 discloses that the forceps disclosed therein are designed for simplified production. (FF 6.) Thus, the preponderance of the evidence of record indicates that prior art devices having machined portions to form the slot are more expensive to manufacture versus devices that do not have machined portions. In addition, Appellant’s arguments that Tiholiz does not disclose a second box hinge member having a width that is generally continuous as recited in claim 1, and that Tabrah does not disclose a box hinge, are attacking the references individually and fail to consider what the prior art as a whole would have taught to one of ordinary skill in the art. (App. Br. 15- 16.) Appellant has not directed our attention to sufficient evidence of record that would indicate that one of ordinary skill in the art would have been incapable of combining the teachings of the prior art in the manner articulated by the Examiner. Issue 2 We find no persuasive merit in Appellant’s argument that the surgical tool of DE ‘287 cannot be modified to assume the tapered tip of Tiholiz or that Tiholiz’s second member does not meet the requirements of the second elongated member recited in the claims. (App. Br. 18-19.) Tiholiz provides evidence that such tapered tips on surgical instruments were known in the art. (FF 7-8.) As the Examiner points out, Tiholiz is only relied on for Appeal 2012-001456 Reexamination Control 90/009,638 Patent 7,351,248 B2 14 teaching the gradually tapered disposition of working tips. (Ans. 14.) We have not been directed to persuasive evidence that applying the tips of Tiholiz to the instruments of DE ‘287 would have been beyond the capabilities of one of ordinary skill in the art. Therefore, we agree with the Examiner, that it would have been obvious to have utilized the tip configuration in Tiholiz in the instruments of DE ‘287 since such tips were a known design of surgical instruments. (Ans. 7-8.) Issue 3 Appellant’s arguments that the prior art would not have rendered obvious the “smooth cooperative transition” of the edges of the first and second elongated members recited in claim 1 are also unavailing. Although Appellant argues that DE ‘287 discloses abrupt external edges (App. Br. 18; Rep. Br. 4-5), we, like the Examiner, are unable to discern an appreciable difference between the edges depicted in Figure 3 of DE ‘287 and the edges depicted in, for example, Figure 5 of the ‘248 Patent, identified by Appellant as supporting such limitation. (Ans. 13-14; App. Br. 8.) Appellant has not adequately explained how the annotation “C”3 in Figure 3 of DE ‘287 shows an abrupt, sharp edge upon which a suture could snag. (App. Br. 18; Rep. Br. 4.) 3 Although Appellant refers to annotations of the prior art Figures in the Appeal Brief, no such annotations are visible. (App. Br. 14-16, 19.) Accordingly, we refer to the Reply Brief for the annotations to the extent that the annotations appear to be consistent with Appellant’s arguments. (Rep. Br. 4, 7, 8.) Appeal 2012-001456 Reexamination Control 90/009,638 Patent 7,351,248 B2 15 Although Appellant contends that “beveling the surfaces of the claimed invention with the bevels of Tabrah would still present snagging surfaces” (App. Br. 19), Appellant has not directed our attention to any persuasive evidence on the record that the modified edges of DE ‘287 in view of Tiholiz and Tabrah, when taken as a whole, would have snagging surfaces. In this regard, Tabrah expressly discloses that beveling and rounding the surfaces of the joint of the forceps avoids snagging of sutures. (FF 9.) Appellant’s contention that the areas of potential snagging on surgical tools having a scissor or an X-joint are different than surgical tools having a box joint (App. Br. 19) does not provide a sufficient basis from which to conclude that such a modification for a box joint would also not aid in preventing snagging. Moreover, the ‘248 Patent’s disclosure that a surgical tool with beveled edges still would have snagging above and below the pivot point of the hinge relates to those surgical instruments having a second elongated member with a machined portion that extends through the slot of the first elongated member and does not address the combination of the prior art in the present rejection. (See the ‘248 Patent, col. 1, ll. 19-45.) Thus, the modification of DE ‘287 in view of Tiholiz to introduce the beveled or rounded edges of Tabrah produces a surface that is capable, whether explicitly, implicitly, or inherently, of not providing any snag points for a suture line, which comports with the broadest reasonable interpretation of the claims as discussed above. Regarding Appellant’s argument that DE ‘287 cannot be modified with the disclosure in Tiholiz to include a working tip of a first elongated Appeal 2012-001456 Reexamination Control 90/009,638 Patent 7,351,248 B2 16 member in a gradually tapered disposition from the first box hinge portion to the tip of the first elongated member and the transition surfaces of Tabrah, Appellant has not provided sufficient reasoning as to why this is the case. (App. Br. 18.) To the extent Appellant is arguing that DE ‘287 may not be modified because it is a foreign reference (see App. Br. 13), we have not been directed to sufficient basis in the law to support a proposition that a foreign reference may not be modified as part of an obviousness analysis. Claim 3 ISSUE The Examiner concluded that the “transitional slope of the second elongated member” that is a “long smooth oblique transition,” as recited in claim 3, is an alternative structure that results in a nearly flat slope, and that DE ‘287 appears to show substantially the same structure, consistent with the side surfaces shown in the ‘248 Patent. (Ans. 20; See also Ans. 18-19.) Appellant argues that Figure 3 of DE ‘287 shows that the second elongated member has sharp, abrupt steep transitions on either side of the box hinge portion at the transition between the box hinge portion and the handle portion. (App. Br. 21.) Therefore, an additional issue on appeal is: (4) Did the Examiner err in concluding that the prior art would have rendered obvious the transitional slope of the second elongated member having a “long smooth oblique transition” as recited in claim 3? Appeal 2012-001456 Reexamination Control 90/009,638 Patent 7,351,248 B2 17 ANALYSIS We are not persuaded by Appellant’s argument that none of the cited references disclose a long smooth oblique transition because the second elongated member in DE ‘287 has sharp abrupt steep transitions on either side of the box hinge portion at the transition between the box hinge portion and the handle portion. (App. Br. 21.) However, Appellant does not adequately explain how the structure in DE ‘287 differs from the structure of the surgical instrument as claimed. As the Examiner points out, Appellant appears to be referring to the width of the second elongated member, whereas the ‘248 Patent appears to describe the smooth oblique transition with respect to the side surfaces. (Ans. 18, 20; FF 4.) Thus, we agree with the Examiner that Appellant’s arguments do not distinguish the structures of the ‘248 and DE ‘287. We, like the Examiner, are unable to discern a difference between the second elongated member recited in claim 3 and the second elongated member disclosed in DE ‘287. Accordingly, we agree with the Examiner that DE ‘287 discloses the limitations of claim 3. Claim 11 ISSUE Claim 11 is similar to claim 1, but additionally recites that “said width of said surface on either side of the second box hinge portion being generally as wide as said slot.” The Examiner found that the width for the surface of the second elongated member on either side of the second box hinge portion Appeal 2012-001456 Reexamination Control 90/009,638 Patent 7,351,248 B2 18 is “generally” as wide as said slot as depicted in Figures 1-3 in DE ‘287. (Ans. 9.) Appellant argues that DE ‘287 does not disclose that a surface of a second box hinge portion has a width that is generally as wide as the slot of the first box hinge portion on either side of the second box hinge portion. (App. Br. 26.) Specifically, Appellant contends that Member 11 disclosed in DE ‘287 must be narrower at its tip portion than the slot in order to insert member 11 into the first box hinge member 16. (App. Br. 26.) Therefore, an additional issue on appeal: (5) Did the Examiner err in finding that DE ‘287 discloses the width for the surface of the second elongated member on either side of the second box hinge portion is “generally” as wide as said slot as recited in claim 11? ANALYSIS We discern no error in the Examiner’s finding that the width of the surface of the second member, member 11 in Figure 3 of DE ‘287, on either side of the box hinge is “generally” as wide as the slot of the first elongated member 10. Specifically, we agree with the Examiner that the phrase “generally” allows for widths that are slightly narrower than the slot, which would encompass the member 11 disclosed in DE ‘287. (Ans. 25.) Moreover, we agree with the Examiner that similar to DE ‘287, the surgical instrument recited in claim 11 would also require that the tip portion of the second elongated member to be inserted through the box hinge portion in order to assemble the device. (Ans. 25.) The construction of the second Appeal 2012-001456 Reexamination Control 90/009,638 Patent 7,351,248 B2 19 elongated member 14 of the ‘248 Patent and the second elongated member 11 of DE ‘248 appear to be sufficiently similar in this regard. (See the ‘248 Patent, Fig. 5; FF 5.) Therefore, Appellant has not provided persuasive evidence or argument that would refute the Examiner’s position. Claims 2 & 4-10 Although Appellant presents separate headings for dependent claims 4-9 and independent claim 10, Appellant’s arguments with respect to these claims essentially rely on the arguments as discussed for claim 1, and/or allege that the prior art does not disclose the additional limitations recited in the claims, without providing any substantive discussion as to why this is the case. Therefore, we affirm the Examiner’s rejection of claims 2-9 as well as independent claim 10 for the reasons discussed above. CONCLUSION On this record, Appellant has failed to demonstrate any error in the Examiner’s factual findings and conclusions that: (1) a surgical instrument having a second box hinge portion having a width that is “generally continuous in width” would have been obvious to one of ordinary skill in the in view of DE ‘287, Tiholiz, and Tabrah, when viewed as a whole; (2) a working tip portion of a first elongated member “extending in a gradually tapered disposition” would have been obvious in view of DE ‘287 and Tiholiz; Appeal 2012-001456 Reexamination Control 90/009,638 Patent 7,351,248 B2 20 (3) edges of said first and second members having “a smooth cooperative transition” would have been obvious in view of DE ‘287, Tiholiz, and Tabrah, when viewed as a whole; (4) the prior art would have rendered obvious the transitional slope of the second elongated member having a “long smooth oblique transition” as recited in claim 3; and (5) DE ‘287 discloses the width for the surface of the second elongated member on either side of the second box hinge portion is “generally” as wide as said slot as recited in claim 11. DECISION The Examiner’s decision to reject claims 1-11 under 35 U.S.C. § 103(a) is affirmed. Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). AFFIRMED cu Appeal 2012-001456 Reexamination Control 90/009,638 Patent 7,351,248 B2 21 FOR PATENT OWNER: RADER, FISHMAN & GRAUER PLLC 39533 WOODWARD AVENUE SUITE 140 BLOOMFIELD HILLS, MI 48304-0610 FOR THIRD-PARTY REQUESTER: BACON & THOMAS PLLC 625 SLATERS LANE FOURTH FLOOR ALEXANDRIA, VA 22314-1176 Copy with citationCopy as parenthetical citation