Ex Parte Berberich et alDownload PDFPatent Trial and Appeal BoardSep 25, 201411962581 (P.T.A.B. Sep. 25, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte SASCHA BERBERICH and MICHAEL SAUER1 __________ Appeal 2012-007114 Application 11/962,581 Technology Center 3700 __________ Before DEMETRA J. MILLS, ERIC B. GRIMES, and CHRISTOPHER G. PAULRAJ, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a device for guiding a bone-drilling tool, which have been rejected as anticipated, obvious, and including new matter. We have jurisdiction under 35 U.S.C. § 6(b). We affirm the new matter rejection and enter a new ground of rejection of additional claims on the same basis. 1 According to Appellants, the Real Party in Interest is Karl Storz GmBH & Co. KG (App. Br. 2). Appeal 2012-007114 Application 11/962,581 2 STATEMENT OF THE CASE Claims 1, 3, 4, and 6–10 are on appeal. Claim 1 is the only independent claim and reads as follows: 1. A device for guiding a drilling tool for forming a second bore in a bone, which second bore intersects an already existing first bore, comprising a frame having a first end and a second end, a rod-shaped body arranged at said first end of said frame, wherein said rod- shaped body is designed to be inserted into said already existing first bore in said bone, a guide sleeve for guiding said drilling tool being arranged at said second end of said frame, a longitudinal axis of said guide sleeve intersecting said rod-shaped body in an area of a distal end of said rod-shaped body, and a fixing device provided at said guide sleeve, said fixing device protrudes distally from said guide sleeve, wherein said fixing device is capable of being placed on a body of a patient to be treated in an area where said second bore is to be formed, wherein said fixing device has at least three fixing elements comprising radially protruding legs having ends extended axially, which axially extending ends of said radially protruding legs are capable of penetrating into said bone. The claims stand rejected as follows: Claim 1 under 35 U.S.C. § 112, first paragraph, on the basis that it includes a limitation that is not supported by the Specification (Ans. 4); Claims 1, 3, 4, 7, and 8 under 35 U.S.C. § 102(b) as anticipated by Chervitz2 (Ans. 5); Claim 6 under 35 U.S.C. § 103(a) as obvious based on Chervitz and Pierce3 (Ans. 6); and 2 Chervitz et al., US 5,688,284, patented Nov. 18, 1997. 3 Pierce, US 5,893,878, patented Apr. 13, 1999. Appeal 2012-007114 Application 11/962,581 3 Claims 9 and 10 under 35 U.S.C. § 103(a) as obvious based on Chervitz and Marchione4 (Ans. 7). I. The Examiner has rejected claim 1 for lack of adequate written description, on the basis that “the ‘axially extending ends of said radially protruding legs’ being ‘capable of penetrating into said bone’ is not supported by the application as originally filed because the specification only recites axially extending ends 65, 67, 69 are capable of penetrating skin (para. [0078], Fig. 6)” (Ans. 4–5). Appellants acknowledge that “[i]t is true that the specification recites that the axially extending ends 65, 67, 69 are capable of penetrating skin (para. [0078], Fig. 6)” (Appeal Br. 5). Appellants argue, however, that “[o]ne of ordinary skill in the art would recognize that if the axially extending ends are capable of penetrating skin, that the ends are capable of digging into whatever lies below the skin, namely, bone” (id.). Appellants argue that “[o]ne of ordinary skill in the art of medical devices . . . would also recognize that, especially in areas of the body such as the knee where the bone lies close under the skin, if a hook penetrates the skin, it enters the bone” (id.). Appellants also point out that “further down in paragraph [0078] of the published application, it is clearly stated that the hook-shaped ends 65, 67, 69 which are the axially extending ends of the leg[s], dig through the skin 88 into the ‘tissue 89’. One of ordinary skill in the art would recognize 4 Marchione et al., US 6,595,999 B2, patented July 22, 2003. Appeal 2012-007114 Application 11/962,581 4 that this tissue 89 may be the bone tissue which is present under the skin.” (Id.) “In the context of the written description requirement, an adequate prima facie case must . . . sufficiently explain to the applicant what, in the examiner’s view, is missing from the written description.” Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007). “When no such description can be found in the specification, the only thing the PTO can reasonably be expected to do is to point out its nonexistence.” Id. “The burden was then properly shifted to [the applicant] to cite to the examiner where adequate written description could be found, or to make an amendment to address the deficiency.” Id. at 1371. As the Examiner has pointed out, the Specification does not describe the axially extending ends of the radially protruding legs recited in claim 1 as being capable of penetrating into bone. In relevant part, the Specification states that “the hook-shaped ends 65, 67, 69 of the legs 64, 66, 68 dig through the skin 88 into the tissue 89, as a result of which the guide sleeve 26 is fixed in the position chosen by the operator for formation of the second bore 84” (Spec. 12 (corresponding to ¶ 78 of the published application)). This paragraph refers to Figure 4 of the Specification, which is reproduced below: Appeal 2012-007114 Application 11/962,581 5 Figure 4 shows the disclosed device being used during reconstruction of an anterior cruciate ligament (Spec. 8). The figure shows the ends of the fixing element5 engaged with skin 88 but the only bones shown in the figure are femur 76 and tibia 74 (see id. at 11). The figure does not show any bone in the vicinity of the skin where the ends of the fixing element are engaged. In summary, the Examiner has shown that the Specification does not expressly describe the limitation that is in dispute. Appellants argue that those skilled in the art would recognize that the axially extending ends of the radially protruding legs of the claimed device are capable of penetrating through skin and into bone (Appeal Br. 5) but point to no evidence to support this position. Appellants rely instead solely on attorney argument, 5 The fixing element is unnumbered in this figure but is visible as three legs extending from the circular central portion from which element 90 projects. Appeal 2012-007114 Application 11/962,581 6 which does not take the place of evidence showing what those of ordinary skill in the art would have understood from the Specification’s description. “After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Because the Specification does not expressly describe the limitation at issue, and Appellants have pointed to no evidence supporting their assertion of what would be recognized by those of ordinary skill in the art, the Examiner’s rejection is supported by a preponderance of the evidence of record. The rejection of claim 1 under 35 U.S.C. § 112, first paragraph, is affirmed. II. The Examiner has rejected claims 1, 3, 4, 7, and 8 as anticipated by Chervitz (Ans. 5), and has rejected claims 6, 9, and 10 as obvious based on Chervitz and either Pierce or Marchione (Ans. 6–7). The same issue is dispositive for all three rejections. The Examiner finds that Chervitz discloses a device that meets all of the limitations of claim 1, including a fixing device (64; Fig. 1) . . . comprising radially protruding legs (body of elements 64 protrude radially relative to a central axis of body 61) having ends extending axially (external surface of elements 64 extend axially relative to a longitudinal axis of body 61), which axially extending ends of the radially protruding legs are capable of penetrating into the bone (col. 6, lines 46-48). (Id. at 5–6.) Appeal 2012-007114 Application 11/962,581 7 Appellants argue that, in Chervitz’s device, “[t]he ‘fixing elements’, i.e., the serrations, extend axially away from the lower surface of the body 61. See Chervitz, col. 6, ll. 43-48. No portion of the serrations extends in a radial direction from the body 61. Therefore, Chervitz discloses neither radially protruding legs or ends that extend axially therefrom.” (Appeal Br. 6.) We agree with Appellants that Chervitz’s device does not include a fixing device having radially protruding legs, as required by claim 1. The portion of Chervitz’s Figure 1 showing elements 61 and 64 is reproduced below: Chervitz states that its Figure 1 shows a front elevation view of a variable angle drill guide (Chervitz 4:13–14). The drill guide includes guide barrel 60, part of which is body 61, for guiding a drill (see id. at 6:39–42). Chervitz states that “body 61 . . . has a bottom or lower end that preferably includes serrations 64 formed therearound for gripping or biting into a bone surface” (id. at 6:46–48). Appeal 2012-007114 Application 11/962,581 8 Thus, as shown and described in Chervitz, element 64 consists of serrations around the bottom end of the body of guide barrel 60. The serrations extend axially; i.e., in the direction of the central axis of guide barrel 60. Chervitz does not show or describe the serrations as being pointed outward in the direction of a radius from the central axis of guide barrel 60 to its circumference, as would be required for the serrations to “radially protrud[e],” as recited in claim 1. The Examiner reasons, however, that the serrations protrude radially “because serrations 64 project outwardly relative to and along a radius to a longitudinal axis concentric with body 61 of Chervitz” and also extend axially “because portions of serrations 64 farthest from body 61 extend along a longitudinal axis concentric with body 61” (Ans. 9). We agree with Appellants (Reply Br. 3), however, that the Examiner’s apparent position—that the serrations protrude radially because they have a thickness or width in the radial direction—is not how a person of ordinary skill in the art would interpret the claim language requiring “radially protruding legs.” Read in light of the Specification, and consistent with its plain meaning, the claim language requires legs that protrude in a radial direction; i.e., the legs are directed radially, or outwardly from a central point. The serrations of Chervitz’s device are directed axially, and therefore the claim language requiring radially protruding legs cannot reasonably be interpreted as encompassing Chervitz’s serrations. The rejections of claims 6, 9, and 10 under 35 U.S.C. § 103(a) rely on the Examiner’s finding that Chervitz discloses all of the limitations of claim 1. Because this finding is not consistent with the broadest reasonable Appeal 2012-007114 Application 11/962,581 9 interpretation of the claim language, and the Examiner points to no disclosure in Pierce or Marchione that makes up for the deficiency of Chervitz, we also reverse the rejections of claims 6, 9, and 10 under 35 U.S.C. § 103(a). III. New Ground of Rejection Under the provisions of 37 C.F.R. § 41.50(b), we enter the following new ground of rejection: Claims 3, 4, and 6–10 are rejected under 35 U.S.C. § 112, first paragraph. For the reasons discussed in section I of this opinion, the Specification does not support the limitation, recited in claim 1, that the “axially extending ends of said radially protruding legs are capable of penetrating into said bone.” Claims 3, 4, and 6–10 depend from claim 1, and therefore include that limitation as well. See 35 U.S.C. § 112, fourth paragraph (“A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.”). The dependent claims therefore lack adequate written descriptive support for the same reason claim 1 does. SUMMARY We affirm the rejection of claim 1 under 35 U.S.C. § 112, first paragraph, and enter a new rejection of claims 3, 4, and 6–10 on the same basis. We reverse the rejection of claims 1, 3, 4, 7, and 8 as anticipated by Chervitz; the rejection of claim 6 as obvious based on Chervitz and Pierce; Appeal 2012-007114 Application 11/962,581 10 and the rejection of claims 9 and 10 as obvious based on Chervitz and Marchione. TIME PERIOD FOR RESPONSE Regarding the affirmed rejection, 37 C.F.R. § 41.52(a)(1) provides that “Appellant may file a single request for rehearing within two months from the date of the original decision of the Board.” In addition to affirming the examiner’s rejection(s) of one or more claims, this decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 C.F.R. § 41.50(b) provides: “A new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Should the appellant elect to prosecute further before the examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek Appeal 2012-007114 Application 11/962,581 11 review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. If the appellant elects prosecution before the examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. AFFIRMED-IN-PART, 37 C.F.R. § 41.50(b) cdc Copy with citationCopy as parenthetical citation