Ex Parte Bertram

Patent Trial and Appeal Board

May 22, 2017

13635212 (P.T.A.B. May. 22, 2017)

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.
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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.
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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.
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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
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