Ex Parte Cournoyer et al

Patent Trial and Appeal Board

Oct 22, 2018

14737717 (P.T.A.B. Oct. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/737,717 06/12/2015
27777 7590 10/24/2018
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
FIRST NAMED INVENTOR
John R. Cournoyer
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.
MIT5189USDIV1 8987
EXAMINER
BECCIA, CHRISTOPHER J
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
10/24/2018 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):
jnjuspatent@corus.jnj.com
lhowd@its.jnj.com
pairjnj@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN R. COURNOYER, DINA BELLOLI,
JONATHAN CORREIA, SCOTT WOODRUFF, BETHANY F. GRANT,
and JOSEPH HERNANDEZ
Appeal2017-009410
Application 14/73 7, 717 1
Technology Center 3700
Before ULRIKE W. JENKS, ELIZABETH A. LA VIER,
and RYAN H. FLAX, Administrative Patent Judges.
LA VIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants seek review of the
Examiner's rejections of claims 1-14 and 18. We have jurisdiction under 35
U.S.C. § 6(b ). For the reasons set forth below, we REVERSE.
BACKGROUND
The Specification relates to "devices for perforating sub-chondral
bone within a joint of a patient." Spec. ~ 1.
1 Appellants state the real party in interest is DePuy Mitek, LLC. Br. 2.
Appeal2017-009410
Application 14/737,717
Claim 1 is illustrative, and recites:
1. A perforation instrument constructed of medical-grade
materials, comprising:
a shaft capable of being inserted into a joint of a patient, having
a longitudinal axis, and carrying at least one piercing member,
each piercing member having a pointed tip suitable to pierce
sub-chondral bone; and
at least one actuation mechanism to alter the instrument
between an exposed condition wherein the tip of the at least one
piercing member is exposed and pointed in a direction such that
rotation of the shaft can drive the tip into contact with the sub-
chondral bone, and a safety condition wherein the tip of the at
least one piercing member is not capable of piercing tissue.
Br. 8 (Claims Appendix).
REJECTIONS MAINTAINED ON APPEAL
1. Claims 1-3, 5, 8-10, and 18 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Malandain2 and Pamichev. 3 Ans. 2.
2. Claims 4, 11, and 12 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Malandain, Pamichev, and Lizardi. 4 Ans. 3.
3. Claims 6 and 7 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Malandain, Pamichev, and Truckai. 5 Ans. 5.
4. Claims 13 and 14 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Malandain, Pamichev, Lizardi, and Truckai.
Ans. 5.
2 Malandain et al., US 2011/0098709 Al, published Apr. 28, 2011.
3 Pamichev et al., US 8,409,230 B2, issued Apr. 2, 2013.
4 Lizardi et al., US 6,932,834 B2, issued Aug. 23, 2005.
5 Truckai et al., US 2011/0251615 Al, published Oct. 13, 2011.
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Appeal2017-009410
Application 14/737,717
DISCUSSION
Claim 1 recites, inter alia, that "the tip of the at least one piercing
member is exposed and pointed in a direction such that rotation of the shaft
can drive the tip into contact with the sub-chondral bone." Br. 8 (Claims
Appendix) ( emphasis added). The only other independent claim on appeal,
claim 11, likewise requires that the tips of each of at least two piercing
members be similarly exposed and pointed. See id. at 9.
We agree with Appellants that the Examiner has not established that
either Malandain or Pamichev teaches such a tip. Instead, the evidence
supports that "[a]t best [Malandain] would provide a tip facing radially
outwardly from the shaft but in that orientation rotation of the shaft wouldn't
drive the tip into sub-chondral bone." Br. 5; see also Malandain Figs. 1, 2B,
,r,r 37-38. In addition, Pamichev's tip is not disclosed as being driven by
shaft rotation. See Br. 5; see also Pamichev Figs. 27, 28.
Accordingly, on this record we find that the Examiner has not
established a prima facie case of obviousness of claim 1. Each of the
appealed rejections relies similarly on Malandain and Pamichev, and each is
lacking for the same reason.
CONCLUSION
The rejections of claims 1-14 and 18 are reversed.
REVERSED
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