Ex Parte Crandall et al

Patent Trial and Appeal Board

Feb 28, 2017

13198060 (P.T.A.B. Feb. 28, 2017)

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.
13/198,060 08/04/2011 Jonathan P. Crandall ORTH-IND-0030 7032
33751 7590
Greatbatch Ltd.
10,000 Wehrle Drive
Clarence, NY 14031
EXAMINER
GIBSON, ERIC SHANE
ART UNIT PAPER NUMBER
3776
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
mscalise@greatbatch.com
michael. scalise @ integer.net
denise.kraft@integer.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN P. CRANDALL and DOUGLAS J. ROGER
Appeal 2015-002617
Application 13/198,060
Technology Center 3700
Before JOHN C. KERINS, WILLIAM A. CAPP, and
SEAN P. O’HANLON, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jonathan P. Crandall and Douglas J. Roger (Appellants) seek our
review under 35 U.S.C. § 134 of the final rejection of claims 1, 3—5, 7, 8, 11,
12, 16, 18, 20, 23, 25, and 38. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-002617
Application 13/198,060
THE INVENTION
Appellants’ claimed invention is directed to an orthopedic cup
impactor. Claim 1, reproduced below, is illustrative:
1. An orthopedic cup impactor, which comprises:
a) a handle extending along a handle longitudinal axis from a
proximal handle end to a distal handle end;
b) a curved shaft extending from a proximal curved shaft end to
a distal curved shaft end, wherein the proximal curved shaft end
is connected to the distal handle end;
c) a cup engagement portion extending along a cup engagement
portion longitudinal axis from a distal end of the cup
engagement portion to a proximal end of the cup engagement
portion connected to the distal curved shaft end, wherein an
apex of the curved shaft is intermediate where the proximal
curved shaft end is connected to the distal handle end and
where the distal curved shaft end is connected to the proximal
end of the cup engagement portion;
d) a drive train at least partially disposed within the curved
shaft and within the cup engagement portion, the drive train
comprising a proximal drive train end extending to a distal
drive train end;
e) wherein the cup engagement longitudinal axis is parallel to
the handle longitudinal axis, and
f) wherein an imaginary line extending perpendicularly from
the cup engagement portion longitudinal axis intersects the
handle longitudinal axis and then the apex such that the curved
shaft apex is a greater distance from the cup engagement
longitudinal axis than from the handle longitudinal axis, and
g) wherein the proximal drive train end is adapted for releasable
connection to a source of rotary motion so that rotational
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Application 13/198,060
movement imparted to the drive train in a first direction causes
the distal drive train end to engage with an implant and
rotational movement imparted to the drive train in a second,
opposite direction causes the distal drive train end to disengage
from the implant.
THE REJECTION
The Examiner rejects:
(i) claims 1, 3—5, 7, 8, and 11 under 35 U.S.C. § 103(a) as being
unpatentable over Heavener (US 2007/0225725 Al, published Sept. 27,
2007) in view of Hedley (US 2005/0038443 Al, published Feb. 17, 2005);
(ii) claim 12 under 35 U.S.C. § 103(a) as being unpatentable over
Heavener in view of Hedley and Smith (US 7,335,207 Bl, issued Feb. 26,
2008) ; and
(iii) claims 16, 18, 20, 23, 25, and 38 under 35 U.S.C. § 103(a) as
being unpatentable over Heavener in view of Hedley and Smith.
ANALYSIS
Claims 1, 3—5, 7, 8, and 11—Obviousness—Heavener/Hedley
Appellants argue claims 1, 3—5, 7, 8, and 11 as a group, with no
arguments for the separate patentability of any of these claims. We take
claim 1 as representative, and claims 3—5, 7, 8, and 11 stand or fall with
claim 1.
The Examiner finds that Heavener discloses an orthopedic cup
impactor that includes all elements of claim 1, with the exception of the
limitation set forth in subpart f), which requires that an apex of a curved
shaft of the device is a greater distance from a cup engagement longitudinal
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axis than it is from the handle longitudinal axis. Final Act. 2—\. The
Examiner finds that Hedley discloses a surgical tool for a similar use that has
its cup engagement longitudinal axis offset from its handle longitudinal axis.
Id. at 4. The Examiner explains that Hedley employs such a configuration in
order to aid in avoiding soft tissue for improved visibility and positional
accuracy while maintaining a straight-line approach to tool placement. Id.
at 4, citing Hedley, para. 24. The Examiner concludes that it would have
been obvious to modify the Heavener tool such that the cup engagement
portion longitudinal axis is at a greater distance from its curved shaft apex
than is the handle longitudinal axis, in order to provide the same benefits
disclosed in Hedley. Id.
Appellants traverse the rejection, agreeing initially that “improved
visibility and positional accuracy are goals of most every cup impactor that
is not of a straight line or linear construction.” Appeal Br. 15. Appellants
additionally concede that offsetting the handle longitudinal axis from the cup
engagement portion longitudinal axis, as taught by Hedley, provides this
benefit. Id. at 16.
Appellants maintain, nonetheless, that a person of ordinary skill in the
art would not look to combine features from one surgical tool having a
curved shaft having an apex with a tool for a similar operation lacking an
apex. Id. at 16—17. Appellants criticize the rejection as failing to contain an
articulation of “what the common or linking structure between the
competing devices is.” Id. at 16. Appellants assert that, in order for a
person of ordinary skill in the art to have understood the desirability of
making the modification to Heavener proposed by the Examiner, “not only
must there be a recitation of an obvious benefit, but a reference structure on
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Application 13/198,060
the competing prior art devices that would have facilitated such a
combination.” Id.
Appellants continue, in the Appeal Brief and in the Reply Brief, with
a discussion directed to not being able to match up components on the
Heavener and Hedley devices so as to physically combine some portion of
the Hedley device with some portion of the Heavener device. See Appeal
Br. 16—17; Reply Br. 4—5 and Exhibit 1. Appellants posit that
the dispositive question is not whether one can cut up the
respective drawings and then cobble them together into a hybrid
design. Rather, where in either reference is it discussed that the
respective impactors or surgical tools are deficient and need to
be modified? In other words, why would an artisan break each
of the prior art shafts part-way along their respective lengths to
then reassemble the pieces into a new hybrid shaft?
Reply Br. 4—5.
Appellants’ arguments miss the mark on two related fronts. First, the
arguments are to the effect that a proper obviousness determination requires
the Examiner to demonstrate that particular structural elements from the
device in the secondary reference (here, Hedley) must be capable of being
bodily incorporated into the device in the primary reference proposed to be
modified (here, Heavener). There is no such requirement in order to
properly establish prima facie obviousness. In re Keller, 642 F.2d 413, 425
(CCPA 1981) (test for obviousness is not whether features of a secondary
reference may be bodily incorporated into the structure of the primary
reference).
Second, the Examiner, in apparent recognition that capability of
bodily incorporation is not required to be shown, is not proposing to break
the shafts of the two devices part way along their respective lengths and
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reassemble pieces of the two. The Examiner concludes that it would have
been obvious to reconfigure only the Heavener device, in view of the benefit
of offsetting the handle and the cup engagement portion, to obtain the
benefit of the advantages taught by Hedley. The Examiner appropriately
states this as using Hedley simply “as a teaching to modify the distal end
portion of the shaft” of Heavener to obtain that offset on the Heavener
device. See Ans. 17. Although the Examiner does not provide a specific
example as to how such modification would be effected, it would be readily
understood that the offset could be obtained by extending the length of the
distal portion of the curved shaft in Heavener that connects to the cup
engagement portion, or by modifying a radius of curvature of that portion of
the shaft as necessary to result in the cup engagement portion longitudinal
axis being a distance further away from the apex than is the handle
longitudinal axis.
In response to Appellants’ question in the above-quoted passage from
the Reply Brief, asking where, in the references, is it evidenced that the
impactors disclosed therein are deficient and in need of modification, we
note that Hedley discloses an improvement over devices in which the handle
and cup engagement portions are co-linear, as the Heavener device appears
to be, thus providing a reason to modify the Heavener device to include the
same improvement. See, e.g., Hedley, para. 24.
Appellants’ arguments fail to apprise us of error in the rejection of
claim 1, and the rejection is thus sustained. Claims 3—5, 7, 8, and 11 fall
with claim 1.
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Application 13/198,060
Claim 12—Obviousness—Heavener/Hedley/Smith
Appellants present no additional arguments directed to this rejection.
Accordingly, for the reasons expressed above, the rejection of claim 12 is
sustained.
Claims 16, 18, 20, 23, 25, and 38—Obviousness—Heavener/Hedley/Smith
Appellants present no additional arguments directed to this rejection.
Accordingly, for the reasons expressed above, the rejection of claims 16, 18,
20, 23, 25, and 38 is sustained.
DECISION
The Examiner’s decision to reject of claims 1, 3—5, 7, 8, 11, 12, 16,
18, 20, 23, 25, and 38 under 35 U.S.C. § 103(a) is affirmed.
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
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