Ex Parte Bacher

Board of Patent Appeals and Interferences

Jun 5, 2009

10662759 (B.P.A.I. Jun. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte UWE BACHER
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Appeal 2009-001102
Application 10/662,759
Technology Center 3700
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Decided:1 2June 5, 2009
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Before DEMETRA J. MILLS, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

2 Oral Hearing in this case took place May 21, 2009.

Appeal 2009-001102
Application 10/662,759

STATEMENT OF CASE
This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
The following claims are representative.
1. Medical instrument with a shaft, a handle mounted on the proximal
end of the shaft, and a tool mounted on the distal end of the shaft and
activated by the handle, where the handle and the tool are in active
connection by means of at least one activation rod and the tool can be
secured detachably by means of a tool shaft on the activation rod, for which
purpose the tool shaft and the activation rod have protuberances and/or
recesses, which can be joined in a form-locking connection, at least partially
with corresponding recesses or protuberances of the other respective
component wherein the recesses and protuberances corresponding to one
another are configured in such a way that the tool and the activation rod can
be brought into engagement with one another by means of a movement
exclusively in one direction essentially perpendicular to the longitudinal axis
of the activation rod, and the components coupled to one another are
nonmoveably fixed relative to one another in all directions other than the
one direction essentially perpendicular to the longitudinal axis of the
activation rod.

4. Medical instrument according to claim 3, wherein the activation rod
and the tool shaft are configured as essentially round in cross-section.

5. Medical instrument according to claim 4, wherein in the area of the
distal end of the round activation rod at least on one side a tangential
leveling is formed on the activation rod in such a way that the distal end of
the activation rod further has a head area overhanging the leveling in radial
direction and the proximal area of the tool shaft has an overlap for receiving
the head area of the activation rod and a recess corresponding to the
tangential leveling of the activation rod.

6. Medical instrument according to claim 5, wherein the tangential
leveling of the activation rod is configured as a middle stud leveled from two
opposite sides and the corresponding recess on the tool shaft is configured as
a radial slit.
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7. Medical instrument according to claim 6, wherein the activation
rod and the tool can be coupled to one another by means of at least one stud
running diagonally to the instrument longitudinal axis, where the stud on the
one hand is stored in a hole bored in the activation rod or in the tool shaft
and on the other hand engages in a corresponding recess in the tool shaft or
in the activation rod.

8. Medical instrument according to claim 7, wherein, for the
transmission of pulling or pushing forces in the coupling area, a spring
element is placed between the activation rod and the tool.

Cited References
Strait US 2,334,449 Nov. 16, 1943
LeMarie, III et al. US 5,366,477 Nov. 22, 1994

Grounds of Rejection
1. Claims 1-9 are rejected under 35 U.S.C. § 103(a) as being unpatentable
over LeMarie in view of Strait.

ISSUE
The Examiner argues that it “would have been obvious to one having
an ordinary skill at the time of the invention was made to modify LeMarie
by using the coupling as taught by Strait to provide and easy and quick
connection and disconnection between the two members of the coupling.”
(Ans. 4.)
Appellant contends that the cited references do not disclose a tool
shaft and activation rod secured by protuberances and/or recesses, which can
be joined in a form-locking connection, at least partially with corresponding
recesses or protuberances of the other respective component wherein “the
recesses and protuberances corresponding to one another are configured in
such a way that the tool and the activation rod can be brought into

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engagement with one another by means of a movement exclusively in one
direction essentially perpendicular to the longitudinal axis of the activation
rod.” (App. Br. 5.)
The issue is: Does the combination of references disclose a tool shaft
and the activation rod with protuberances and/or recesses, which can be
joined in a form-locking connection, at least partially with corresponding
recesses or protuberances of the other respective component wherein the
recesses and protuberances corresponding to one another are configured in
such a way that the tool and the activation rod can be brought into
engagement with one another by means of a movement exclusively in one
direction essentially perpendicular to the longitudinal axis of the activation
rod, as claimed?

FINDINGS OF FACT

1. The Examiner finds:

LeMarie discloses a medical instrument with a shaft 18, a
handle 14 mounted on the proximal end of the shaft 18, and a
tool (50,52) mounted on the distal end of the shaft 18 and
activated by the handle 14, wherein the handle 14 and the tool
(50,52) are in active connection by means of at least activation
rod (20) and the tool (50,52) can be secured detachably by
means of a tool shaft on the activation rod (20), for which
purposes the tool shaft (242) and the activation rod (248) have
protuberances (246) which can be joined in a form-locking
connection with corresponding recesses (244), wherein the
recesses (244) and protuberances (246) corresponding to one
another are configured in a such a way that the tool (50,52) and
the activation rod (20) can be brought into engagement with
one another by means of a movement exclusively in one

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direction essentially perpendicular to the longitudinal axis of
the activation rod (20). Note figures 1-3, 11a, 1b and 12.

(Ans. 3-4.)
2. According to the Examiner, “LeMarie discloses the invention
substantially as claimed except the claimed coupling between the activation
rod and the tool.” (Id. at 4.)
3. “Strait discloses such coupling between male member 10 and female
member 11.” Id. See also, Strait, Fig. 4.
4. The Examiner concludes that “[i]t would have been obvious to one
having an ordinary skill at the time of the invention was made to modify
LeMarie by using the coupling as taught by Strait to provide and easy and
quick connection and disconnection between the two members of the
coupling.” Id.
5. The Examiner finds as to claim 1 that “LeMarie teaches the tool (50,52)
secured to the activation rod (20) in such a way that forces can be
transmitted in the longitudinal direction of the activation rod (20) and/or
torsion forces can be transmitted to the tool (50,52).” Id.
6. The Examiner argues that “a direction is the line or course on which
something is moving (Merriam-Webster dictionary). Therefore, whether
member 10 is moving downward or upward, it is still moving along the same
line.” Id. at 5.

ANALYSIS
We select claim 1 as representative of the rejection of claims 1-4, as
Appellant has not separately argued individual claims. Appellant contends
that the cited references do not disclose a tool shaft and the activation rod

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have protuberances and/or recesses, which can be joined in a form-locking
connection, at least partially with corresponding recesses or protuberances of
the other respective component wherein “the recesses and protuberances
corresponding to one another are configured in such a way that the tool and
the activation rod can be brought into engagement with one another by
means of a movement exclusively in one direction essentially perpendicular
to the longitudinal axis of the activation rod.” (App. Br. 5.)
According to Appellant,
Strait discloses a line shaft coupling for detachably
attaching and adjoining ends of a pair of shaft sections together.
A male member 10 of the coupling includes a projecting stem
12 with a pair of dove-tail lugs 13 upon each of two inset sides
of the stem 12, while a female member 11 of the coupling
includes a notch 16 having a pair of dove-tail sockets 17 in the
side walls thereof arranged in matched relation with respect to
the dove-tail lugs 13. The dove-tail lugs 13 have side walls that
are perpendicular to a longitudinal axis of the male member 10,
and the dove-tail sockets 17 have side walls that are
perpendicular to a longitudinal axis of the female member 11.
Thus, the male member 10 and the female member 11 can be
brought into engagement with one another by means of a
movement in two directions essentially perpendicular to the
longitudinal axes of the members.

(App. Br. 6.)
More specifically, Appellant argues
with reference to Figure 4 of Strait, the male member 10 could
be positioned “over” the female member 11, and then the two
can be brought into engagement by moving the male member
10 downward (i.e., in a direction into the page), or the male
member 10 could be positioned “under” the female member 11,
and then the two can be brought into engagement by moving

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the male member 10 upward (i.e., in a direction out of the
page).

(App. Br. 7, Reply Br. 2.)
The Examiner responds, arguing that
a direction is the line or course on which something is moving
(Merriam-Webster dictionary). Therefore, whether[, in Strait,]
member 10 is moving downward or upward, it is still moving
along the same line. The member is therefore, still moving in
only one direction since the line/course has not changed.
Alternatively, the activation rod 6 and tool shaft 7 of the instant
application are engaged when member 6 moves downward to
engage member 7. Therefore the two members are brought into
engagement in one direction perpendicular to the longitudinal
axis of the activation rod 6. However, when flipped upside
down, the activation rod 6 and tool shaft 7 are engaged when
member 6 moves upward to engage member 7. This then
qualifies as a second direction according to the appellant's
argument. Therefore, based on the appellant's argument, the
instantly claimed activation rod 6 and tool shaft 7 are not
brought into engagement with one another by means of a
movement in exclusively one direction.

(Ans. 5.)
We are not persuaded by Appellant’s argument that Strait does not
teach that the tool and activation rod can be brought into engagement with
one another by means of a movement exclusively in one direction. In Strait,
to engage the tool and the activation rod, “the male member 10 could be
positioned ‘over’ the female member 11, and then the two can be brought
into engagement by moving the male member 10 downward.” (App. Br. 7.)
Such a downward direction is “movement exclusively in one direction” as
claimed. There is no disclosure in Strait that the male member 10 is required

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to pass through female member 11 to engage female member 11. Thus male
member 10 proceeds in exclusively one direction perpendicular to the
longitudinal direction of the activation rod to engage female member 11.

CONCLUSION OF LAW
The combination of references disclose a tool shaft and the activation
rod with protuberances and/or recesses, which can be joined in a form-
locking connection, at least partially with corresponding recesses or
protuberances of the other respective component wherein the recesses and
protuberances corresponding to one another are configured in such a way
that the tool and the activation rod can be brought into engagement with one
another by means of a movement exclusively in one direction essentially
perpendicular to the longitudinal axis of the activation rod, as claimed.
In view of the above, the obviousness rejection of claim 1-4 is
affirmed.

Claims 5 and 8
Claim 5 recites an activation rod with tangential leveling and an
overhanging head area on one end to connect with a corresponding tool shaft
having an overlap for receiving the head area and a recess for receiving the
tangential leveling of the activation rod.

ADDITIONAL FINDINGS OF FACT
7. The Specification, page 6, paragraph 29 states:
In the embodiments illustrated in FIGS. 2a to 4, the
recesses 9 on the activation rod 6 are formed by tangential
levelings which are configured on two opposite sides on the

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activation rod 6 in such a way that the activation rod in the area
of this leveling consists only of a narrow middle stud 9a.

Figures 3 and 4 of the instant disclosure are reproduced below:

Figures 3 and 4 show recesses 9 corresponding to the tangential
leveling of the activation rod (6). (Specification, 12.)

ANALYSIS
According to Appellant, the coupling method disclosed by Strait must
replace the coupling method disclosed in Figures 11a - 11b of LeMarie.
(App. Br. 10.) “Using the coupling method of Strait and the coupling
method of LeMarie simultaneously is neither practical nor possible. For this
reason, rejecting claim 5 with reference to this portion of LeMarie is
inappropriate because the coupling disclosed in Strait could not be used in

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conjunction with the coupling disclosed in Figures 11a-11b of LeMarie.”
(App. Br. 10.) The Examiner responds that Appellant does not define
“tangential leveling” and does not demonstrate where the leveling is
tangential to the activation rod. (Ans. 6.)
We find the Specification depicts a tangential leveling in Figs 3 and 4.
The Examiner has not indicated how the coupling of Strait can be used in
conjunction with the coupling of LeMarie, rather, the Examiner substitutes
the coupling of Strait for the coupling of LeMarie. (Ans. 4.) We find the
argument of Appellant to be persuasive and the obviousness rejection of
claim 5 is reversed.

Claim 8 recites the use of a spring element placed between the
activation rod and a medical tool for the transmission of pulling or pushing
forces in the coupling area. Appellant argues that claim 8 is patentable on
the additional ground that use of a spring in the combination of LeMarie and
Strait would not be practicable or possible. (App. Br. 11.) “The use of a
spring as disclosed by LeMarie with the coupling method of Strait would not
be desireable. As seen and described in Figures 1 and 3 and page 1 of Strait,
a threaded collar 20 is used to secure male member 10 and female member
11 together. The spring of LeMarie would have no effect on the coupling,
since the male and female members are fixed relative to one another by the
threaded collar 20.” (App. Br. 11.)
We do not find that the Examiner has explained how the spring of
LeMarie can modify the coupling of Strait. We find the argument of
Appellant to be persuasive and the obviousness rejection of claim 8 is
reversed.

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SUMMARY
The obviousness rejection of claims 1-4 is affirmed. The obviousness
rejection of claims 5-8 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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