DEPUY SYNTHES PRODUCTS, INC.

Patent Trials and Appeals Board

Aug 25, 2020

2019006884 (P.T.A.B. Aug. 25, 2020)

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.
14/532,454 11/04/2014 Joshua MCMANUS DSP5019USNP 5762
76960 7590 08/25/2020
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
EXAMINER
SIPP, AMY R.
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
08/25/2020 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):
bnasunova@fkmiplaw.com
okaplun@fkmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSHUA McMANUS
Appeal 2019-006884
Application 14/532,454
Technology Center 3700
Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and
BRADLEY B. BAYAT, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–13. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Under the Real Party in Interest heading of the Appeal
Brief, Appellant states that “[t]his application is assigned to DePuy Synthes
Products, Inc. Johnson & Johnson, Inc. is the parent corporation of DePuy
Synthes Products, Inc.” Appeal Br. 2.
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According to the Appellant, the invention relates “to a system and
method for the repair of a fractured, shattered[,] or otherwise damaged
clavicle using an intramedullary nail” (Spec. ¶ 9), and, more specifically, “to
a device for reaming a bone” (id. ¶ 3). Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A device for reaming a bone, the device comprising:
an elongated shaft extending along a first longitudinal
axis from a first end to a second end, the elongated shaft being
sufficiently longitudinally flexible to enable the elongated shaft
to be passed through a path having a curvature of a target bone;
and
a reaming head extending along a second longitudinal
axis from the second end to a third free end, wherein the first
longitudinal axis is parallel to and laterally offset from the
second longitudinal axis so that, upon rotation of the shaft, the
reaming head rotates eccentrically with respect to the first
longitudinal axis.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims on as follows:
I. Claims 1, 2, 10, 12, and 13 under 35 U.S.C. § 102(a)(1) as
anticipated by Steudel (DE 910376C, issued May 3, 1954);2
II. Claims 7 and 11 under 35 U.S.C. § 103 as unpatentable over
Steudel; and
III. Claims 1–13 under 35 U.S.C. § 103 as unpatentable over Rupp
(US 5,720,749, issued Feb. 24, 1998) and Steudel.

2 In this opinion, our reference to Steudel is to an English-language
translation on which the Examiner and Appellant rely throughout
prosecution.
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ANALYSIS
Rejection I—Anticipation rejection of claims 1, 2, 10, 12, and 13
We are unpersuaded by the Appellant’s arguments that “Steudel does
not teach or suggest ‘a device for reaming a bone’ or ‘a reaming head’ as
recited in claim 1.” Appeal Br. 4.
The preamble of claim 1 recites a “device for reaming a bone.” The
body of the claim sets forth two components: an elongated shaft, and a
reaming head. If the body of a claim fully and intrinsically sets forth all of
the limitations of the claimed invention, and the preamble merely states, for
example, the purpose or intended use of the invention without breathing life
into the claim, then the preamble is not afforded considerable patentable
weight, and the limitation is of no significance to claim construction. See
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed.
Cir. 1999). Here, the body of claim 1 sets forth all the limitations of the
claimed device, and thus we treat the preamble’s statement “for reaming a
bone” as merely a statement of intended use, which does not receive
patentable weight.
Appellant argues that the Examiner’s rejection is in error because
“Steudel does not provide any teaching or suggestion that its device is
suitable for any orthopedic procedure much less for reaming a bone”
(Appeal Br. 5), and that Steudel’s reaming head is not “a ‘reaming head’ in
the context of such a bone reaming device.” Reply Br. 4. Appellant further
argues that it “appears that the Examiner is unfamiliar with the anatomy of
long bones” (id. at 4) and “misunderstands the operation of the claimed
device as well as the environment within which it operates” (id. at 5), that
Steudel’s device “is not in any way adapted for use in any anatomical
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setting” (id.) and is “in no way configured to ream a bone” (id. at 8), and that
the Examiner does not know how Steudel’s device would work “when
positioned within a bone” (id. at 6).
However, to the extent that we rely on claim 1’s body to recite
features of the reaming head, the claim recites only
a reaming head extending along a second longitudinal
axis from the second end to a third free end, wherein the first
longitudinal axis is parallel to and laterally offset from the
second longitudinal axis so that, upon rotation of the shaft, the
reaming head rotates eccentrically with respect to the first
longitudinal axis.
Appeal Br., Claims App. The claim recitation does not limit the reaming
head to use in a bone, or any other anatomical setting. Appellant’s
arguments are therefore unpersuasive, because the arguments are not
commensurate in scope to limitations present in the claim.
Appellant further argues that “cutting head 12 of Steudel is designed
to cut laterally into an existing hole and does not cut beyond the bottom of
an existing blind-end bore and thus, operates in a manner completely
different from . . . [the] device” as claimed. Reply Br. 8. This argument is
similarly not persuasive, because claim 1 does not recite the manner in
which the reaming head cuts.
We are not persuaded by Appellant’s further arguments that “Steudel
appears to describe a tool for threading a blind hole of a generic workpiece
and not for reaming any hole” (Appeal Br. 6–7 (citing Steudel translation
¶¶ 1–3)), and that “the cutting head of Steudel is designed to cut threads into
an existing hole” (Reply Br. 9). Steudel indicates not that its tool is used for
tapping, but is instead “a back-bone drill, in particular for blind holes with a
small diameter, so that a groove can also be inserted directly into the bore
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base into which the tapping screw enters.” Steudel ¶ 3. Steudel’s tool thus
reams a hole so that a tap may later operate in the hole without problems
evidenced in the prior art when the tap reaches the bottom of the hole. Id.
¶ 1.
Still further, we are unpersuaded by Appellant’s arguments that
Steudel does not disclose a “longitudinally flexible” shaft, but only a shaft
that is “elastically compliant” so that “cutting head 12 may be angled with
respect to . . . shaft 11 as it enters the blind-end bore hole and then permitted
to revert to an initial (non-angled) configuration once removed from the
hole.” Appeal Br. 11 (citing ¶¶ 14–15 of Steudel).
Steudel discloses that its tool includes “long conical tapered elastic
shaft 3” (Steudel ¶ 10), which is used to cut a groove near the bottom of a
drilled hole “into which the tapping screw enters” (id. ¶ 3). The flexible
shaft allows “the rotating cutting head of the lowering guide cone on the
tapered base of the blind hole [to form] . . . a decaying spiral movement[,]
which brings the cutting edge into the wall of the blind hole with increasing
feed.” Id. ¶ 11; see also id. ¶ 14 (“During working, the circular approaching
of the lowering tip of the guide cone to the lowest point of the hole cone
when the shank (ii) is flexed results in an increasing helical movement of the
cutting edge (1c) laterally located on the cutting head.”). Steudel thus
discloses the flexible shaft functioning while working under rotation, not just
while introducing the tool to, and removing it from, the drilled hole.
We also are unpersuaded by Appellant’s argument that “at most,
Steudel discloses an elastic, resilient joint that is formed via the conical
tapering of the shaft. A resilient joint does not constitute a longitudinally
flexible shaft.” Appeal Br. 12. However, Steudel in fact discloses “the
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lateral elastic resilience of the shaft can be achieved by its own elasticity or
by a resilient joint.” Steudel ¶ 7. Therefore, Steudel apparently discloses
two embodiments, and Appellant does not argue against the embodiment
upon which the Examiner relies.
Based on the foregoing, Appellant does not establish error in the
Examiner’s rejection. Thus, we sustain the Examiner’s anticipation rejection
of independent claim 1, and of claims 2, 10, 12, and 13 that depend from
claim 1, and which Appellant does not argue separately.
Rejection II—Obviousness rejection of claims 7 and 11 based on
Steudel
Claim 7 depends directly from claim 1, and recites “wherein the first
longitudinal axis is laterally offset from the second longitudinal axis by a
distance of 0.05–2 mm.” Claim 11 depends directly from claim 1, and
recites “wherein the elongated shaft is deflectable in a plane extending
orthogonal to the first longitudinal axis along a curve with a radius
of 0.3[ ]m–1[ ]m.”
Appellant argues that the Examiner’s obviousness rejection is in error
because Steudel fails to disclose the elements of claim 1, and thus cannot
render claims 7 and 11 obvious. Appeal Br. 14; see also Reply Br. 11.
Inasmuch as we do not agree with Appellant that Steudel fails to anticipate
claim 1, we are not persuaded of error by this argument.
Appellant also argues that Steudel is non-analogous art, because
Steudel describes a tool for threading a blind hole in a generic
workpiece (which may be completely unrelated to a bone[)],
such as, e.g., wood, metal, rock, etc. . . ., while the present
application is directed to an orthopedic surgical device for
solving a problem in reaming bone having a particular
curvature, such as the S-shaped curvator of the clavicle,
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and because “Steudel does not teach or suggest an orthopedic surgical
device.” Appeal Br. 14–15; see also Reply Br. 11–13. These arguments are
unpersuasive because, as we discuss above, Steudel discloses a tool for
reaming, rather than threading, and because the claims do not recite
limitations for orthopedic surgery.
Rejection III—Obviousness rejection of claims 1–13 based on Rupp
and Steudel
Appellant’s argue that the rejection of claims 1–13 are in error for
reasons similar to those discussed above—i.e., that Steudel is not analogous
art to the claimed invention, is designed to cut threads and not ream the
bottom of a hole, and “operates in a completely different manner than a
device that would ream or create a path within a medullary canal of a bone
suitable for receiving an intramedullary nail in the canal,” and thus the
combination of Rupp and Steudel fail to disclose a reaming head, as
claimed. Appeal Br. 17; see also Reply Br. 13–14. These arguments are
unpersuasive for the same reasons discussed above.
Regardless, the Examiner finds that Rupp discloses substantially all of
the claim features of claim 1, except the axial eccentricity of the head to the
shaft, which the Examiner finds is disclosed by Steudel. Final
Action 12–15. Appellant does not address these findings. Therefore, this
failure provides an independent basis upon which we sustain the Examiner’s
obviousness rejection of claim 1.
Appellant does not argue separately against the Examiner’s
obviousness rejection of claims 2–13 based on Rupp and Steudel.
Accordingly, we also sustain the Examiner’s obviousness rejection of
claims 2–13.
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CONCLUSION
We AFFIRM the Examiner’s anticipation and obviousness rejections.
In summary:
Claim(s) 35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1, 2, 10, 12,
13
102(a)(1) Steudel 1, 2, 10, 12,
13

7, 11 103 Steudel 7, 11
1–13 103 Rupp, Steudel 1–13
Overall
Outcome:
1–13
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED