Ex Parte Lechner et alDownload PDFPatent Trial and Appeal BoardDec 16, 201511015297 (P.T.A.B. Dec. 16, 2015) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 111015,297 108549 7590 Tucker Ellis LLP Brainlab AG 950 Main A venue Suite 1100 FILING DATE 12/17/2004 12/18/2015 Cleveland, OH 44113-7213 FIRST NAMED INVENTOR Christian Lechner 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 013658/000492 8922 EXAMINER ANDERSON, GREGORY A ART UNIT PAPER NUMBER 3773 NOTIFICATION DATE DELIVERY MODE 12/18/2015 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): patents@tuckerellis.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTIAN LECHNER and CLAUS SCHAFFRATH Appeal2013-005490 Application 11/015,297 Technology Center 3700 Before JENNIFER D. BAHR, JAMES J. MAYBERRY, and JASON W. MELVIN, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Christian Lechner and Claus Schaffrath (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1, 3-9, and 11-27. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal2013-005490 Application 11/015,297 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. An instrument for use m computer guided surgery, compnsmg: a shaft including an instrument tip, an intermediate section formed unitary with said instrument tip, and an adapter interface formed unitary with said intermediate section; a grip piece interface for receiving a grip piece, said grip piece interface formed unitary with said shaft and different from said adapter interface; and a reference element adapter including a rotatable support comprising a fixed inner diameter, the rotatable support rotatably mounted at the fixed inner diameter for relative coaxial rotation on said adapter interface. REJECTIONS 1 I. Claims 1, 3-5, 7, 8, 11-13, 19, 20, and 27 stand rejected under 35 U.S.C. § 102(e) as anticipated by Smothers (US 7,237,556 B2, issued July 3, 2007). Ans. 2. II. Claims 6, 9, and 14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Smothers. Ans. 3. III. Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Smothers and Misenti (US 3,504,776, issued Apr. 7, 1970). Ans. 5. IV. Claims 16-18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Smothers and Foley (US 6,021,343, issued Feb. 1, 2000). Ans. 6. 1 The Examiner withdrew the rejection of claims 1, 3-9, and 11-27 under 35 U.S.C. § 112, second paragraph. Ans. 9. 2 Appeal2013-005490 Application 11/015,297 V. Claims 21, 22, and 26 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Smothers and Estes (US 6,556,857 B 1, issued Apr. 29, 2003). Ans. 7. VI. Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Smothers, Estes, and Foley. Ans. 8. VII. Claim 25 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Smothers, Estes, and Foley, "and further in view of substitution of known equivalents." Ans. 9. DISCUSSION Rejection I Independent claim 1 requires, in pertinent part, a reference element adapter including a rotatable support that ( 1) comprises a fixed inner diameter and (2) is rotatably mounted at the fixed inner diameter for relative coaxial rotation on the adapter interface of the shaft. Appellants argue that the Examiner fails to adequately explain how Smothers discloses a reference element adapter that satisfies both of these requirements. Appeal Br. 15-17; Reply Br. 1-5. "[U]nless a reference discloses within the four comers of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102." Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Thus, in order to anticipate, the reference must disclose a single embodiment satisfying all limitations of the claim; "it is not enough that the prior art reference discloses part of the claimed 3 Appeal2013-005490 Application 11/015,297 invention, which an ordinary artisan might supplement to make the whole, or that it includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention." Id. The Examiner reads the claimed reference element adapter on articulating bracket 32 of Smothers. Ans. 2 (citing Smothers, col. 7, 11. 17- 28). The Examiner then points out that Smothers "discloses the bracket having a clamp that open[ s] and closes to secure the body, when closed the inner diameter of the clamp is fixed to the adapter interface." Id. (citing Smothers, col. 7, 11. 3-8). This suggests that the Examiner finds that articulating brackets 32 described by Smothers in column 7, lines 17-28, comprise "a clamp that opens and closes to secure elongated body 11," which Smothers describes as an alternative to the "rigidly affixed" arrangement of bracket 30 near proximal end 17 of elongated body 11. See Smothers, col. 6, 11. 64--66; col. 7, 11. 5-6. The problem with the Examiner's reliance on the opening and closing clamp for securing the bracket to the elongated body 11 is that Smothers provides insufficient details of the clamp embodiment to determine whether or not such an embodiment comprises a rotatable support having a fixed inner diameter, as called for in claim 1. The Examiner finds that when the clamp is in the open position, the bracket is rotatable and its inner diameter is fixed in the open position, and that when the clamp is closed the inner diameter is fixed in the closed position (i.e., fixed to the adapter interface). See Ans. 2, 10. According to the Examiner, "[t]he clamp merely temporarily fixes the position of the bracket with respect to the adapter interface, and whether open or closed the bracket is still 'rotatably mounted' as claimed." Id. at 10. However, the Examiner's findings with respect to the operation of 4 Appeal2013-005490 Application 11/015,297 the clamp embodiment of Smothers describe a support having a variable or adjustable inner diameter, not a fixed inner diameter. See Reply Br. 4 (contrasting "a rotatable support compris[ing] a fixed inner diameter" with a clamp having dimensions that "change in order to secure and release to/from the instrument"). This is in contrast to a reference element adapter as disclosed by Appellants, including an angular rotational catch, such as ball- thrust piece 38 provided on an annular or "wrap-around portion" (i.e., a rotatable support having a fixed inner diameter) of reference element adapter 18, for engaging or latching with structure, such as circumferentially distributed notches 34 on shaft adapting interface 14, to set the angular orientation of reference adapter element 18 and prevent unintentional rotation during operation. See Spec. 3, 11. 11-22; id. at 7, line 22 et seq.; Figs. 2, 3, 5. The Examiner adds that "[ fJurther, the inclusion of a clamp on the bracket of Smothers ... is clearly disclosed as an alternate embodiment. The primary embodiment shows a ring shaped mounting portion (Figs. 7-8) having no clamping mechanism (Col. 7 11. 3-8)." Ans. 10. However, Smothers describes bracket 30, as illustrated in Figures 6-8, as being "rigidly affixed" to elongated body 11. Smothers does not describe the bracket with the ring shaped mounting portion shown in Figures 7 and 8 as being rotatably mounted on the instrument shaft. Moreover, the Examiner's reference to the bracket embodiment of Figures 7 and 8, with its ring shaped mounting portion, casts doubt on whether the Examiner is relying on the bracket of Figures 7 and 8 or the clamp alternative to that bracket. As noted above, the Examiner cannot establish anticipation by relying on one 5 Appeal2013-005490 Application 11/015,297 disclosed embodiment of the reference to satisfy certain features and a different disclosed embodiment to satisfy other claim features. For the above reasons, the Examiner fails to adequately explain how Smothers discloses a reference element adapter that (1) comprises a fixed inner diameter and (2) is rotatably mounted at the fixed inner diameter for relative coaxial rotation on the adapter interface of the shaft, as required in claim 1. Accordingly, we do not sustain the rejection of claim 1 or its dependent claims 3-5, 7, 8, 11-13, 19, 20, and 27 as anticipated by Smothers. Rejection II The Examiner's additional reasoning proposing modifying the Smothers device "by making the selectively operable catch a pin/slit combination and the rotational catch a notch/ball-thrust combination in order to provide reliable rotational orientation" or to include a ball-thrust piece to interface with the notch on the grip piece interface (Ans. 4) does not resolve the ambiguity discussed above as to which embodiment of bracket/clamp of Smothers the Examiner finds corresponds to the claimed reference element adapter, and, thus, what specific structure the Examiner proposes to modify. Consequently, the Examiner's explanation is insufficient to establish a prima facie case that Smothers discloses or renders obvious an instrument including a reference element adapter that (1) comprises a fixed inner diameter and (2) is rotatably mounted at the fixed inner diameter for relative coaxial rotation on the adapter interface of the shaft, as required in claim 1, from which claims 6, 9, and 14 depend. Accordingly, we do not sustain the rejection of claims 6, 9, and 14 as unpatentable over Smothers. 6 Appeal2013-005490 Application 11/015,297 Rejections III-VII The Examiner's application of the teachings of Misenti, Estes, and Foley in rejecting dependent claims 15-18 and 21-26 (Ans. 5-9) fails to remedy the deficiency in the rejection of claim 1, discussed above. Accordingly, we do not sustain the rejections of these claims. DECISION The Examiner's decision rejecting claims 1, 3-9, and 11-27 is reversed. REVERSED PS 7 Copy with citationCopy as parenthetical citation