Ex Parte Jacobs et al

Board of Patent Appeals and Interferences

Feb 23, 2012

10746749 (B.P.A.I. Feb. 23, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/746,749 12/23/2003 Andrew M. Jacobs 1671-0276 4130
7590 02/23/2012
Maginot, Moore & Beck LLP
Chase Tower
111 Monument Circle, Suite 3250
Indianapolis, IN 46204-5109
EXAMINER
HOFFMAN, MARY C
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
02/23/2012 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 ANDREW M. JACOBS, ANTHONY D. ZANNIS,
HERBERT E. SCHWARTZ, CAROLYN K. DAY,
and JOHN KEMPPAINEN
__________

Appeal 2010-008655
Application 10/746,749
Technology Center 3700
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and STEPHEN WALSH,
Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 15-23, directed to a surgical cutting tool, and claims 33, 34, 37, and
52, directed to an implant delivery device. The claims have been rejected as
anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
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STATEMENT OF THE CASE
Claims 15-23, 33-39, 43-48, and 52 are pending and were all finally
rejected in the Office Action dated December 23, 2008. However, the
Examiner subsequently withdrew a number of rejections (Ans. 2-3). As a
result, claims 35, 36, 38, 39, and 43-48 are no longer subject to any ground
of rejection. Claims 1-14, 24-32, 40-42, and 49-51 have been canceled.
Claims 15-23, 33, 34, 37, and 52 are on appeal. Claim 15, directed to
a surgical cutting tool, and claim 33, directed to an implement delivery
device, are representative:
15. A surgical cutting tool comprising:
a tubular body comprising a bore extending from a proximal end of
said tubular body to a distal end of said tubular body, said tubular body
further comprising a blade disposed at a tip of said distal end of said tubular
body, said blade defining an incision diameter and configured to incise about
an articular cartilage area;
a shaft configured for insertion into said bore, said shaft defining a
proximal end of said shaft and a distal end of said shaft;
an attachment head disposed at said proximal end of said shaft and
configured to be received in a rotation device; and
a reamer having a diameter substantially equal to the incision diameter
and disposed at said distal end of said shaft and configured to ream the
incised articular cartilage area and to simultaneously prepare a bore in
subchondral bone underneath the incised articular cartilage area.

33. An implant delivery device comprising:
a handle defining a proximal end and a distal end;
a shaft extending from said distal end of said handle and having an
application end with a retention slot configured to releasably receive an
articular cartilage repair assembly comprising an articular cartilage repair
unit releasably retained on an articular cartilage implant retainer; and
a retaining sleeve disposed on said shaft and operative in a first mode
to allow the articular cartilage implant retainer to be received in said
retention slot, and in a second mode that the retaining sleeve blocks egress
of the articular cartilage implant retainer from said retention slot.
Appeal 2010-008655
Application 10/746,749

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The outstanding rejections are as follows:
Claims 15-17 and 20-23 under 35 U.S.C. § 102(b) as anticipated by
Michelson (US 5,484,437, January 16, 1996);
Claims 18 and 19 under 35 U.S.C. § 103(a) as unpatentable over
Michelson and Bonutti (US 5,269,785 December 14, 1993); and
Claims 33, 34, 37, and 52 under 35 U.S.C. § 102(b) as anticipated by
Griggs (US 4,263,903, April 28, 1981).
REJECTIONS BASED ON MICHELSON
Findings of Fact
1. The surgical cutting tool of independent claim 15 requires, in
relevant part, (1) a tubular body with a blade at its distal end, configured to
incise an articular cartilage area, and (2) a reamer, with a diameter
substantially equal to the incision diameter of the blade, configured to ream
the incised articular cartilage area and to simultaneously prepare a bore in
subchondrial bone underneath the incised articular cartilage area. According
to the Specification, the surgical cutting tool is “a combination articular
cartilage reamer and implantation borer” (Spec. 5), used “for preparing an
articular cartilage site for implantation of an articular cartilage repair device
into subchondrial bone (id.).
2. Figure 2 of the Specification depicts an enlarged side view of
an exemplary tubular body (or cannula) with a cartilage incising blade at its
distal tip. Figure 4 of the Specification depicts a side view of an exemplary
reamer that may be used with the exemplary tubular body. Figures 2 and 4
are reproduced below, and together depict an embodiment that meets the
limitations of claim 15:
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Figure 2 of the Specification depicts an enlarged side view of an
exemplary tubular body (or cannula) 40 with an annular cartilage incising
blade 64 at its distal tip 56 (Spec. 17). Figure 4 of the Specification depicts
a side view of an exemplary reamer 90 that may be used with the exemplary
tubular body. The reamer 90 “includes a cutting or reaming head or portion
100 at the distal end . . . to cut through cartilage” using helical blades 102
and 103 (id. at 19), “and to simultaneously bore a hole in subchondrial bone”
underneath the reamed cartilage using cutting tip 104 (id. at 20).
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3. Michelson discloses a device for removing a damaged spinal
disc to make way for a threaded spinal implant (Michelson, col. 1, ll. 14-17).
Essentially, “an intervertebral space is first distracted, a hollow sleeve
having teeth at one end is then driven into the vertebrae adjacent that disc
space” and “[a] drill is then passed through the hollow sleeve removing disk
and bone in preparation for receiving the spinal implant” (id., Abstract).
4. A side sectional view of Michelson’s device is depicted in
Figure 11A (annotated to label element 142), and is reproduced immediately
below:

Figure 11A (annotated) is a side sectional view of Michelson’s device
“cutting across the intervertebral space and cutting partially cylindrical areas
from the adjacent vertebrae [V]” (Michelson, col. 11, ll. 56-58). The device
includes “Outer Sleeve 140” which “has a sharp toothed front end 142 that is
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capable of penetrating into and holding fast the two adjacent vertebrae (V).
Interrupting the circumferential sharp teeth of 142 are flat, planar areas . . .
that serve to resist the further insertion of the sharp teeth into the vertebral
bodies” (id. at col. 19, ll. 58-63).
An “Inner Sleeve 242 is inserted from the rear within the Outer Sleeve
140” and “[a] Drill 240 . . . is then introduced through the rearward aperture
of the Inner Sleeve 242 and utilized to ream out the arcs of bone which it
engages from the opposed vertebral endplates as well as any discal material
within its path” (id. at col. 21, ll. 54-65).
“[T]he outside diameter of the Drill 240 corresponds to the minor
diameter of the threaded spinal implant” (id. at col. 22, ll. 16-18). “The
Inner Sleeve 242 has an inner diameter slightly greater than that dimension
and its outer diameter is slightly smaller than the inside diameter of the
Outer Sleeve 140 which has the same outer diameter as the major diameter
of the threaded implant” (id. at col. 22, ll. 18-22).
5. According to Michelson,
The Inner Sleeve 242 serves many functions. First, it
provides a more intimate drill guide for drill 240 in the event a
smaller diameter hole is to be drilled than that of the inside
diameter of the Outer Sleeve 140. Second, since it now guides
the Drill, it allows for the Outer Sleeve 140 to have an internal
diameter large enough to admit the threaded spinal implant,
which is indeed considerably larger in diameter than the Drill
240 itself.
(Michelson, col. 22, ll. 28-35.)
6. Thus, Michelson discloses a surgical cutting tool with
concentric elements, increasing in diameter as follows: reaming Drill 240;
Inner Sleeve 140; and Outer Sleeve 140 with teeth 142 (see FFs 4, 5).
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Discussion
Claims 15-17 and 20-23 stand rejected as anticipated by Michelson.
The Examiner finds that Michelson discloses a surgical cutting tool
comprising, in relevant part: (1) a tubular body 140 with a blade 142 at its
distal end, “said blade defining an incision diameter and configured to incise
about an articular cartilage area” (Ans. 4); and (2) a reamer 250 “having a
diameter substantially equal to the incision diameter . . . since the diameter
of the reamer 250 is approximately equal to the blade” (id.).
Appellants contend, among other things, that the inner diameter of the
outer sleeve 140 of Michelson’s device is “considerably larger in diameter
than the Drill 240 [250]” (App. Br. 10). In other words, “the outside
diameter of the drill [240] 250 is selected to be smaller than the area defined
by the teeth 142 (which the Examiner has alleged to be ‘blades’) so as to
allow for tapping of the bone” (id.). “Therefore,” Appellants contend, the
diameter of “the alleged reamer (the drilling portion 250) is more than
‘considerably’ smaller than the alleged ‘incision diameter.’” (Id. at 11.)
We agree with Appellants, and are not persuaded otherwise by the
Examiner’s assertion that “[t]he reamer of Michelson is similar in size to
[the] incision diameter defined by [the] serrated tooth/blade and can
therefore be considered ‘substantially’ equal in size” because “the term
‘substantially’ is a broad term” (Ans. 8).
The term “substantially” may be broadening, in the sense that it
denotes approximation, and is commonly used to avoid assigning a strict
numerical boundary to a specified parameter. See e.g., Cordis Corp. v.
Medtronic AVE, Inc., 339 F.3d 1352, 1360; Ecolab, Inc. v. Envirochem,
Inc., 264 F.3d 1358, 1367 (Fed. Cir. 2001). However, its meaning depends
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on the context in which it is used - or in this case, asserted, since Michelson
does not use the term. See e.g., Medrad, Inc. v. MRI Devices Corp., 401
F.3d 1313, 1318 (Fed. Cir. 2005) (“A patentee may define a particular term
in a particular way, and in that event the term will be defined in that fashion
for purposes of that particular patent, no matter what its meaning in other
contexts.”); Young Dental Mfg. Co. v. Q3 Special Prods., Inc., 112 F.3d
1137, 1143 (Fed. Cir. 1997) (“The specification that is relevant to claim
construction is the specification of the patent in which the claims reside.”).
In the present case, Michelson teaches that the outer sleeve 140, with
its sharp toothed front end 142, has an internal diameter large enough to
admit the inner sleeve 242, which in turn, has an internal diameter large
enough to admit the drill 240, and also teaches that the outer sleeve 140 has
a diameter “large enough to admit the threaded spinal implant, which is
indeed considerably larger in diameter than the Drill 240 itself” (FF5).
Thus, by logical extension, the diameter of the circle pierced by the teeth
142 is, using Michelson’s words, “considerably larger” than the diameter of
the area reamed by the drill 240. Given this disclosure, we do not agree with
the Examiner that one of ordinary skill in the art would have considered the
diameter of Michelson’s drill 240 to have a diameter “substantially equal” to
the incision diameter of the teeth 142, as required by independent claim 15.
The Examiner also rejected claims 18 and 19 as unpatentable over
Michelson in view of Bonutti, but Bonutti does not correct Michelson’s
underlying deficiencies.
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REJECTION BASED ON GRIGGS
Findings of Fact
7. The implant delivery device of independent claim 33 requires,
in relevant part, a shaft with a retention slot configured to receive and
releasably retain an articular cartilage repair assembly, and a retaining sleeve
which is “operative in a first mode to allow the articular cartilage implant
retainer to be received in said retention slot, and in a second mode . . . blocks
[its] egress.”
8. Figures 20 and 22 of the Specification, reproduced below,
depict an exemplary implant delivery device 260. Figure 20 shows the
unloaded device with the sleeve 274 drawn back to expose the retainer slot
272 for the articular cartilage repair assembly 226. Figure 22 shows the
loaded device, with the retaining sleeve covering the retention slot and
preventing the egress of the articular cartilage repair assembly:

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Figure 20 shows the unloaded device with the sleeve 274 drawn back
to expose the retainer slot 272 for the articular cartilage repair assembly 226.
Figure 22 shows the loaded device, with the retaining sleeve covering the
retention slot and preventing the egress of the articular cartilage repair
assembly (Spec. 32).
9. Griggs discloses a “medical staple means” comprising a staple
11 and staple holder 13 “which coact with one another to allow the staple 11
to be easily and securely held as it is driven into and/or removed from bone”
(Griggs, col. 1, l. 68 - col. 2, l.. 2).
10. Figures 4 and 5 of Griggs, reproduced below, depict the
medical staple means. Figure 5 shows the staple 11 clamped in the jaws of
the staple holder:

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Figures 4 and 5 of Griggs depict the medical staple means, with
Figure 5 showing the staple 11 clamped in the jaws of the staple holder 13.
The holder 13 includes a body means 23 having a first
end 23’ . . . An aperture 25 extends through the body means 23
. . . The aperture 25 flares outwardly at the first end 23’ of the
body means to form a cam surface 27 . . . The holder 13 also
includes jaw means for selectively engaging the bridge member
19 of the staple 11. The jaw means includes two coacting jaw
members 31, 33. . . . Each jaw member 31, 33 also includes a
cam portion 39 for coacting with the cam surface 27 of the body
means[.]
(Griggs, col. 2, ll. 39-68.)
The holder also includes an activating means for
selectively causing the cam portions 39 of the jaw means to
engage the cam surface 27 of the body means 23 in a manner to
cause the mouth portions 35 of the jaw means to move to a
closed position as shown in FIG. 5 thereby engaging the bridge
portion 19 of the staple 11.
(Id. at col. 3, ll. 12-17.)
Discussion
Claims 33, 34, 37, and 52 stand rejected as anticipated by Griggs.
The Examiner finds that Griggs discloses an implant delivery device
with “a retention slot [37] . . . configured to releasably receive an articular
cartilage repair unit . . . and a retaining sleeve [23]” which is “operative in a
first mode to allow the articular cartilage implant retainer to be received in
said retention slot, and in a second mode . . .blocks egress of the articular
cartilage implant retainer from said retention slot” (Ans. 5).
Appellants contend that “the Examiner has failed to identify how the
structure of Griggs could hold a repair assembly with the structural
limitation recited in claim 33” (App. Br. 18). Moreover, Appellants contend
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that “[t]he first end 23’ of the Griggs device includes a cam portion 27 that is
forced against a cam portion 39 of jaw members 31 and 33 to force jaw
members 31 and 33 to press against a staple 11 to grasp the staple” (id. at
17). Appellants contend that “[t]he first end 23’ thus does not block a slot.
Rather the camming portion 27 of the end 23’ is used to deform the portion
of the device in which a slot is formed” (id.).
Appellants’ argument is persuasive. Claim 33 requires a retention
sleeve that “blocks egress of the articular cartilage implant retainer from said
retention slot.” Even if we accept the Examiner’s assertion that Griggs’
staple 11 is an “articular cartilage implant” unit, we agree with Appellants
that “[a] component which is used to deform another component to close a
slot is not the same as a component that is physically placed over a slot”
(App. Br. 17) to block it.
SUMMARY
The rejection of claims 15-17 and 20-23 as anticipated by Michelson
is reversed;
The rejection of claims 18 and 19 as unpatentable over Michelson and
Bonutti is reversed; and
The rejection of claims 33, 34, 37, and 52 as anticipated by Griggs is
reversed.

REVERSED

DM