Ex parte BERTIN et al.

Board of Patent Appeals and Interferences

May 8, 1998

08242987 (B.P.A.I. May. 8, 1998)

Application for patent filed May 16, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte KIM C. BERTIN, ROBERT BOOTH JR., DENNIS W. BURKE,
RODNEY BAYS, TERRY L. DIETZ, GREGORY C. STALCUP
and RICHARD D. VANLANINGHAM
__________
Appeal No. 96-3696
Application No. 08/242,9871
__________
ON BRIEF
__________
Before ABRAMS, FRANKFORT and McQUADE, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1, 3-7 and 9-17. Claim 8 has been
Appeal No. 96-3696
Application No. 08/242,987
Although the examiner has listed twenty-seven references2
in the Answer as being relied upon in the rejection of the
claims, the fact is that only Bowman has been applied in the
rejection.
2
indicated as containing allowable subject matter, and claims 2
and 18-20 have been canceled. No claims have been allowed.
The subject matter before us on appeal is an apparatus
for guiding a device for milling a portion of exposed bone.
It is illustrated by reference to claim 1, which has been
reproduced in an appendix to the Appellant’s Brief.
THE REFERENCE
The reference relied upon by the examiner to support the
final rejection is:
Bowman et al. (Bowman) 4,952,213 Aug. 28,
19902
THE REJECTION
Claims 1, 3-7 and 9-17 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Bowman.
The rejection is explained in the Examiner's Answer.
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Application No. 08/242,987
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The opposing viewpoints of the appellants are set forth
in the Brief.
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Application No. 08/242,987
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OPINION
Anticipation under 35 U.S.C. 102(b) is established only
when a single prior art reference discloses, either expressly
or under the principles of inherency, each and every element
of the claimed invention. See In re Paulsen, 30 F.3d 1475,
1480-1481, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994) and In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir.
1990). Since we find this not to be the case with regard to
the claims before us on appeal, we will not sustain the
rejection. Our reasoning follows.
Claim 1 is directed to an apparatus for guiding a milling
device for producing a planar surface on a portion of an
exposed bone. The claim recites a template means having a
reference surface and defining a track for accommodating a
milling machine, and a guide means
to be secured adjacent said bone for positioning
said template means over said bone portion . . .
[which] includes alignment means for aligning said
template means over said bone portion (emphasis
added).
It is the examiner’s position that the subject matter of claim
1 is anticipated by Bowman, which discloses an apparatus for
Appeal No. 96-3696
Application No. 08/242,987
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guiding a saw that cuts an exposed portion of a bone. The
appellants argue that the Bowman template means is not “over”
the bone, as is required by claim 1, but is positioned
laterally of the bone. According to the examiner, however,
“over” is a term “dependent on one’s point of reference and
the position of the patient” (Answer, page 6), and therefore
the Bowman template qualifies as being “over” the bone.
The interpretation to be given to “over” therefore is of
primary importance in evaluating whether claim 1 is
anticipated by Bowman. Looking to the appellants’
specification, the portion of the bone upon which the burr of
the appellants’ milling machine is to work is the exposed
proximal end of the tibia. To do so, the milling machine and
the template that holds it is positioned “over” the end of the
bone, that is, spaced from the end of the bone along its
longitudinal axis, above it as is shown in Figure 13. This
interpretation is confirmed by considering the apparatus
recited in independent claim 15, which is shown in Figures 3
and 5 and described in claim 15 also as being “over” the bone.
Appeal No. 96-3696
Application No. 08/242,987
We note that while the term “over” is not used in the3
description of the invention in the specification, it is
present in the original claims.
6
We therefore shall interpret the phrase “over said bone” in
the manner expressed above. 3
Considering this interpretation, the Bowman template 28
is not “over” the bone, but is lateral of the bone. This
being the case, while Bowman discloses guide means secured
adjacent to the bone for positioning the template means, it
does not disclose or teach means for positioning the template
means “over” the bone portion. Nor does the Bowman alignment
means align the template means “over” the bone portion in the
medial-lateral direction.
In view of the foregoing, we have concluded that Bowman
does not anticipate the structure recited in claim 1 and we
will not sustain the rejection of this claim or of those that
depend from it.
Independent claim 15 is directed to an apparatus used
with an “extramedullary alignment guide” to position the guide
with respect to the bone. The apparatus includes a planar
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Application No. 08/242,987
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member paralleling a portion of the bone and including a means
for centering the planar member “over” the bone.
In the Bowman system, the alignment guide comprises a rod
40 “adapted to be inserted into the medullary canal in the
tibia bone” (column 2, lines 38 and 39, emphasis added). All
of the other elements of the mechanism that aligns planar
member 28 are carried by rod 40, including the means for
centering it. It is clear that Bowman utilizes an
intramedullary guide, rather than the extramedullary guide
required by this claim, and the rejection fails at the outset.
Moreover, there thus is no “body part adapted for longitudinal
connection to said extramedullary guide,” “planar member
paralleling a portion of said bone when said extramedullary
guide is properly positioned with respect to said bone,” or
“means for centering said planar member over said bone when
the extramedullary guide is properly positioned with respect
to said bone.”
Since Bowman fails to disclose all of the required
structure, it does not anticipate claim 15 and the rejection
of this claim and those which depend from it is not sustained.
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Application No. 08/242,987
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SUMMARY
The rejection of claims 1, 3-7 and 9-17 is not sustained.
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge)
)
)
)
CHARLES E. FRANKFORT ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge)
Appeal No. 96-3696
Application No. 08/242,987
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Todd A. Dawson
Zimmer Inc.
P.O. Box 708
Warsaw, IN 46581-0708