Ex Parte BertramDownload PDFPatent Trial and Appeal BoardMay 22, 201713635212 (P.T.A.B. May. 22, 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. MBE-11504/29 9059 EXAMINER BOLES, SAMEH RAAFAT ART UNIT PAPER NUMBER 3775 MAIL DATE DELIVERY MODE 13/635,212 09/14/2012 131270 7590 BELZER PC ATTN: John G. Posa 2905 Bull Street Savannah, GA 31405 05/22/2017 Morton Bertram III 05/22/2017 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 PATENT TRIAL AND APPEAL BOARD Ex parte MORTON BERTRAM III Appeal 2016-005813 Application 13/635,2121 Technology Center 3700 Before ERIC B. GRIMES, RYAN H. FLAX, and DAVID COTTA, Administrative Patent Judges. COTTA, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a cutting fixture for total knee replacement surgery. The Examiner rejected the claims on appeal under 35 U.S.C. § 102(e) as anticipated and under 35 U.S.C. § 103(a) as obvious. We reverse. 1 According to Appellant, the real party in interest is Morton Bertram III. App. Br. 1. Appeal 2016-005813 Application 13/635,212 STATEMENT OF THE CASE Claims 14 and 16—20 are on appeal. Claim 14, the only independent claim, is illustrative and reads as follows: 14. A cutting fixture for total knee replacement surgery, comprising: a contact plate having a surface adapted for placement against the apex of a distal femur having medial and lateral condyles; a body including an adjustment mechanism enabling the body to assume an angle relative to the contact plate; a cutting block coupled to the body to resect a predetermined thickness from the medial condyle and an amount from the lateral condyle determined through measurement of an x-ray or CT image of the femur; an anchoring device for holding the fixture in position to resect the medial and lateral condyles; and an indicator showing the angle between the contact plate and the body. App. Br. 10 (Claim App.). The claims stand rejected as follows: Claims 14, 16—18 and 20 under 35 U.S.C. § 102(e) as anticipated by Gross.2 Claim 19 under 35 U.S.C. § 103(a) as obvious over Gross. ANTICIPATION In finding claims 14, 16—18, and 20 to be anticipated by Gross, the Examiner found that Gross disclosed a cutting fixture for knee replacement surgery including a contact plate, a body, a cutting block, an anchoring 2 Gross et al., US Patent Publication No. 2011/0208093 Al, published Aug. 25,2011. 2 Appeal 2016-005813 Application 13/635,212 device, and an indicator capable of showing the angle between the contact plate and the body. Final Act.3 2—3. Appellant argues, inter alia, that there is “no disclosure showing how the ‘indicator’ 14 of Gross presents any angle between a contact plate and a body.” App. Br. 7. We find that Appellant has the better position. The contact plate and the body of Gross’ cutting fixture — as identified by the Examiner — can be seen in Figure 24 (reproduced below). FIG. 24 Figure 24 provides a perspective view of the “femoral jig assembly” of Gross’ cutting fixture. Gross 144. The Examiner identifies the plate having apertures 132 as corresponding to the claimed “contact plate” and element 118 as corresponding to the “body.” Final Act. 2. The indicator in Gross’ cutting assembly can be seen in Figure 26 (reproduced below). 3 Office Action mailed June 3, 2015. 3 Appeal 2016-005813 Application 13/635,212 Figure 26 provides a perspective view of Gross’ femoral preparation systems (Gross 146) in which a “surgical orientation device 14 and [a] reference sensor device 16” are attached to the jig assembly “using [a] first coupling device 18 and [a] second coupling device 20.” Id. at 1149. The Examiner identifies the orientation device (element 14 above) as corresponding to the claimed “indicator.” Final Act. 3. Gross, however, does not teach that the orientation device can be used to show the angle between the “contact plate” and the “body.” Rather, Gross teaches that the orientation device can be used to locate the mechanical axis of the leg and femur and to determine the orientation of the cutting fixture relative to the mechanical axis. Gross | 80. 4 Appeal 2016-005813 Application 13/635,212 The Examiner contends the orientation device is capable of showing the angle between the contact plate and the body. The Examiner, however, does not provide any explanation or cite any evidence to support this assertion. See Ans. 4. Nor does the Examiner identify any teaching in Gross that provides reason to adapt the orientation device to show an angle between components parts of the cutting fixture — i.e. between the “contact plate” and a “body” — rather than showing the orientation of the cutting fixture relative to the patient. Id. Accordingly, we reverse the Examiner’s rejection of claims 14, 16—18, and 20 as anticipated. OBVIOUSNESS Claim 19 depends from claim 14 and adds the requirements that “the surface of the contact plate is adapted for placement against the apex of a medial condyle” and that “the resection of the lateral condyle is in the range of 3-4 mm less than the resection of the medial condyle.” In finding claim 19 obvious over Gross, the Examiner applied the art as discussed in connection with claim 14. Final Act. 3^4. As the Examiner’s obviousness rejection does not address any of the deficiencies discussed above, we reverse the Examiner’s rejection of claim 19 as obvious over Gross. SUMMARY For the reasons provided herein we reverse the Examiner’s decision to reject claims 14—18 and 20 under 35 U.S.C. § 102(e) as anticipated by Gross and to reject claim 19 under 35 U.S.C. § 103(a) as obvious over Gross. REVERSED 5 Copy with citationCopy as parenthetical citation