Ex Parte Fifolt

Patent Trial and Appeal Board

Sep 29, 2017

13487880 (P.T.A.B. Sep. 29, 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.
13/487,880 06/04/2012 Douglas A. Fifolt 47062-044F01US
(MT5177USN
6428
30623 7590 10/03/2017
Mint7 T evin/Rns;tnn Office
EXAMINER
One Financial Center
Boston, MA 02111
COLEY, ZADE JAMES
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
10/03/2017 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):
IPDocketingBOS @mintz.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEPUY MITEK, LLC1
Appeal 2015-006473
Application 13/487,880
Technology Center 3700
Before: LYNNE H. BROWNE, LISA M. GUIJT, and
GORDON D. KINDER, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35U.S.C. § 134 from the Examiner’s Final
rejection of claims 1—4, 6, 7, 9—12, and 19-27. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Douglas A. Fifolt is the inventor.
Appeal 2015-006473
Application 13/487,880
CLAIMED SUBJECT MATTER
The claims are directed to a method for surgical guide pin placement.
Spec. 1. Claims 1—7, 9—12 and 19—27 are pending.2 Claims 1 and 24 are
independent. Claim 1 is reproduced below to illustrate the claimed subject
matter:
1. A surgical method, comprising:
advancing a rigid proximal portion of a guide pin through
a tissue opening adjacent to a femur, across an intra-articular
space, and into a femoral tunnel such that a flexible distal portion
of the guide pin extends across the intra-articular space and
extends out of the tissue opening;
bending the flexible distal portion of the guide pin within
the intra-articular space such that the rigid proximal portion of
the guide pin extends at a non-zero angle relative to the flexible
distal portion;
advancing a cannulated reamer over the flexible distal
portion of the guide pin to position a proximal tip of the reamer
in contact with the femur, the cannulated reamer being
manipulated to substantially avoid contact with articular
cartilage within the intra-articular space; and
advancing the cannulated reamer over the rigid proximal
portion of the guide pin within the femoral tunnel.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Rothschild US 2002/0055714 A1 May 9,2002
Chudik US 2007/0233151 A1 Oct. 4,2007
Steiner et al. US 2011/0208194 A1 Aug. 25, 2011
(“Steiner”)
2 There is no standing rejection of claim 5. See Final Act. 1—13; Answer 1—
11.
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REJECTIONS
1. Claims 1—3, 6, 7, 12, and 19—27 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Chudik and Rothschild.
2. Claims 1—4, 6, 7, 9—12, 19, and 21—23 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Steiner and Rothschild.
OPINION
Rejection 1
Claims 1—3, 6, 7, 12, and 19—27— Obvious over Chudik and
Rothschild
The Examiner finds that Chudik discloses all of the steps of claim 1
except the proportions of rigid and flexible parts of the guide pin. Final Act.
2—3. The Examiner finds that Rothschild teaches the guide pin with a rigid
portion and a flexible portion. Id. Because Chudik and Rothschild are “both
geared towards guide wires3 that are stuck through tissue in a medical
procedure, which is also what the Appellant^s] claims are geared towards”
(Ans. 3), the Examiner finds it would have been obvious “to construct the
guide pin of Chudik with a rigid proximal portion and a flexible distal
portion, as taught by Rothschild, in order to help the guide wire be
manipulated through tunnels and skin.” Final Act. 3.
Rothschild discloses a guide pin 46 (Fig. 4) with two parts, 52 and 54.
Part 52 ends in a sharpened tip 60 and is stiffer than the part 54. Rothschild
13 8. The location identified by the letter A marks the junction between
3 Appellant’s claims call for a “guide pin;” the references describe “guide
wires.” We perceive no difference between a “guide pin” and a “guide
wire,” (and Appellants do not argue any. We use the terms interchangeably
throughout this decision.
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these two parts. Id. The exact length of part 52 is not specified by
Rothschild, but may be “several inches.” Id. 144. In use, Rothschild’s
guide wire is positioned so that the junction A is located just at the boundary
between a vein and the surrounding tissue, as shown in Figures 11—13 A.
Structural Modification Does Not Result in Claimed Method
Appellant asserts that the Examiner has proposed a “structural
modification of Chudik’s guide pin 30 in view of Rothschild’s guide wire or
46, [] and inexplicably concludes that this structural modification somehow
necessarily changes Chudik’s surgical procedure to specifically arrive at the
claimed method.” Appeal Br. 11. Appellant argues that the references do
not provide “any teaching or suggestion that the ‘rigid proximal portion’ of
the modified guide pin would be within the femur 2 in the method described
by Chudik if the reamer 50 is advanced over the modified guide pin within
Chudik’s femoral tunnel 55.” Appeal Br. 12. This conclusion is based on
Appellant’s premise that the sharp tip of the guide pin 30 in Chudik “is
entirely outside the femur 2 throughout the advancement of the reamer 50
over the guide pin 30.” Id.
This argument is not persuasive. Chudik specifically suggests that
“the guide pin 30 may be inserted just into the femoral bone 2 to create a
blind ended femoral tunnel 55.” Chudik 1117. Accordingly, the
proposition that Chudik teaches reaming a femoral tunnel only after the tip
of the guide pin has passed outside of the femur is contrary to the explicit
teachings of Chudik. For this reason, we are not persuaded that the
Examiner erred.
Appellant further argues that there is no reason to position the
Rothschild guide pin with the rigid portion within the femoral tunnel.
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Appeal Br. 12. The Examiner finds that using the guide wire of Rothschild
in Chudik’s method “results in the rigid proximal portion of the guide pin
residing within the femoral tunnel. Everything past the bend is the rigid
proximal part.” Ans. 4. We agree with the Examiner because, as noted
above, Rothschild places his guide pin so that the junction between the more
and less rigid parts is at the boundary between a vein and the tissue to be
penetrated by the more rigid part. See Figs. 11—13 A. Rothschild has a
relatively long “rigid” part passing through tissue, with the more flexible
part inside a vein and not needing to be advanced by force. The junction
between the more or less flexible parts is placed at the bend, just as the
Examiner finds would have been obvious.
Appellant further argues that there is no reason to import the features
of Rothschild into Chudik and that “Rothschild indicates that the stiffer
distal portion 52 of the guide wire is provided to prevent prolapsing of the
vein in which it is inserted.” Appeal Br. 12. This argument is not
persuasive because it is contrary to the actual disclosure of Rothschild. In
Rothschild the more flexible part 54 of the guide pin 46 is caused to prolapse
(double on itself) as shown in Figure 13A as discussed in Rothschild,
paragraph 46. We find no discussion in Rothschild of preventing prolapse of
a vein nor any discussion of prolapse other than that associated with folding
the guide wire over on itself. See 12, 27, 37 (“[T]he prolapse constitutes
a doubled up section of the STGW [i.e., sharp tip guide wire] in other words,
folded upon itself.”), 46, and 47. Accordingly, we agree with the Examiner
that because both Rothschild and Chudik are involved with medical
procedures involving guide wires, combining their teachings would have
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been obvious to one of ordinary skill in the art at the time the invention was
made.
Appellant also contends that even using Rothschild’s guide wire in
Chudik’s method would result in the stiffer portion of the guide wire being
entirely “outside the femur 2 before the reamer 50 is used” because in
Chudik’s method, the guide pin’s sharp tip is outside the femur before the
reamer is used. Appeal Br. 13. We find this argument unpersuasive because
the Examiner has specifically found that the stiff portion of Rothschild
would begin at the bend in the guide wire and extend through the femur, and
Appellant provides no reasoned argument for error in this finding.
Examiner’s Reliance on Optimization Is Improper
Appellant challenges the Examiner’s reliance on optimization to
locate the juncture between the more and less flexible portions of the guide
pin of Rothschild when used in the process of Chudik. Appeal Br. 13—16.
Appellant asserts that the position of the juncture is not an art-recognized
variable and so cannot be optimized. Id. The Examiner finds that
“Rothschild shows the rigid portion 52 being the portion past where the
guide pin is bent in [Rothschild] Figure 11.” Final Act. 4. The Examiner
further finds that “one would expect the rigid portion [of Rothschild’s guide
wire when used with Chudik to be] where the guide pin of Chudik bends in
[Chudik] Fig. 10.” Final Act. 4. The Examiner further finds that Rothschild
discloses variable lengths marked “X” and “Y,” and that it would be routine
to experiment by varying these lengths as suggested by Rothschild.
We find the Examiner’s reliance on Rothschild Figure 11 particularly
persuasive. That figure shows the junction between the more rigid portion
52 and the less rigid portion 54 of guide wire 46 (identified by the letter A)
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located just where the guide wire enters the tissue to be pierced. Rothschild
explains that this juncture is to be “located directly adjacent the intermediate
port 32” (Rothschild 145), and it is through intermediate port 32 that the tip
60 of guide wire 46 first enters tissue. Moreover, the Examiner’s mention of
optimization was not a principle basis for his rejection of claim 1, and we
find it to have been unnecessary in light of the specific teaching of
Rothschild. See Final Act. 3 (“Furthermore, it would have been obvious . . .
to optimize how far the rigid portion extends.”) (emphasis added).
Accordingly, we are not persuaded that the Examiner erred by improperly
relying on optimization of ranges.
Examiner’s Reliance in Inherency Is Improper
Appellant points to the Examiner’s statement in the advisory action
that the tip of Chudik “is going to act more rigidly than a middle portion
when the wire is subjected to an insertion force and technique used to insert
the wire. So inherently a tip portion of the guide pin of Chudik will be more
rigid/harder to bend than a middle portion.” Advisory Act. 2. Appellant
asserts that this is reliance on the inherency doctrine and that there is
insufficient basis for applying the doctrine. App. Br. 16—17. First, we agree
with the Examiner’s finding that the tip of the guide wire in Chudik is rigid.
Final Act. 3; Ans. 5—6. The Examiner finds that under its broadest
reasonable interpretation “rigid” means hard to bend or flex, just as the tip of
a straightened paperclip is harder to bend than the midsection. Ans. 5—6.
Appellant agrees, taking the position in its Reply that rigid means
“substantially non-bendable.” Reply 9, citing Spec. 129. With this
understanding, the tip of Chudik’s guide wire will be harder to bend than a
middle section of the same guide wire.
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Second, the mere use of the word “inherently” does not, ipso facto,
invoke the inherency doctrine, and we do not think the Examiner was relying
on it. Instead, the Examiner finds that it would have been obvious “to
construct the guide pin of Chudik with a rigid proximal portion and a
flexible distal portion as taught by Rothschild in order to help the guide wire
be manipulated through tunnels and skin.” Final Act. 3. The Examiner’s
Answer points out that “rigid” and “flexible” are relative terms, at least so
far as guide wires are concerned, and “Rothschild clearly points out distinct
portions of a guide pin/wire that has a more rigid section [and a less rigid
section].” Ans. 6.
Appellant further argues that it is not necessarily true that
Rothschild’s stiffer part would be a substitute for the allegedly rigid tip of
the guide pin 30. Appeal Br. 17. As discussed above, we find Rothschild
teaches a guide wire with more and less rigid sections and the junction
between them placed in the location corresponding to the bend in Chudik’s
guide wire as illustrated in Chudik Figure 10, and accordingly, we are not
persuaded that the Examiner improperly relied on the inherency doctrine.
Claim 20
Claim 20 depends from claim 1 adding that the “flexible distal portion
of the guide pin is positioned entirely outside the femur when the flexible
distal portion of the guide pin is bent and when the cannulated reamer is
advanced over the rigid proximal portion of the guide pin within the femoral
tunnel.” Appeal Br.,Claims App. C. Appellant argues that Chudik only
shows a flexible portion inside the femoral tunnel during reaming and that
“Rothschild is completely silent as to the guide pin, femur, a cannulated
reamer, and a femoral tunnel and thus fails to provide any teaching or
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suggestion of the method requirements of claim 20.” Appeal Br. 18. The
Examiner finds that the combination of Chudik and Rothschild “results in
the flexible distal portion starting at the bend which is located at the point
where the wire is right at the femur.” Answer 6. Appellant does not address
this finding, and as discussed above, Rothschild suggests explicitly that the
juncture between the more and less rigid portions of the guide wire should
be positioned so that the part penetrates tissue and the flexible part ends
where the tissue penetration begins. Accordingly, Appellant has not
apprised us of error in the rejection of claim 20.
Claim 21
Claim 21 depends from claim 1 and adds that the “longitudinal length
of the rigid proximal portion forms at least half the total longitudinal length
of the guide pin.” Appeal Br., Claims App. C. Appellant contends that
Chudik lacks this feature and that Rothschild is completely silent as to the
relative longitudinal length of the stiffer part 52 and less stiff part 54 of its
guide wire 46. Appeal Br. 18. Appellant has not appreciated the full
disclosure of Rothschild. Rothschild specifically states that the purpose of
his invention is to “install a semipermanent catheter within a vein where the
proximal end of the catheter punctures the skin at some distance from the
vein and tunnels subcutaneously some distance before it enters the vein so as
to minimize the possibility of infection occurring within the blood.”
Rothchild | 8. To this end, the distance from point A to the tip 60 of
Rothschild’s guide wire 46 is several inches. See Figs. 4, 11; see also id. ]Hf
44, 49. Because the purpose of Rothschild is to separate the skin penetration
for the long-lasting catheter from the place where the catheter enters a vein,
one of ordinary skill in the art would understand that the distance from A to
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the tip 60 is at least several inches and that the thickness of tissue from the
first puncture site 71 to the interior of the vein 74 (as shown in Figures 6—15)
is substantially less. In any event, the Examiner has determined that
choosing particular lengths for the more and less rigid parts involves only
routine skill in the art, as the Examiner found (Answer 7) Appellant does
not address this finding or assert any advantage to the particular proportions
claimed. Accordingly, we are not persuaded of error in the rejection of
claim 21.
Claims 24 and 26
Claims 24 and 26 are independent claims, and Appellant argues that
the rejection of these claims is improper for the same reasons that the
rejection of claim 1 was improper. Appeal Br. 20-21. Appellant repeats the
argument that Chudik shows the tip of his guide wire outside the femur
when reaming takes place, and shows no rigid part of the guide wire inside
the femur while reaming takes place. Id. The Final Action concluded that it
would be obvious to modify Chudik by using Rothschild’s guide wire, and
we agree with the Examiner that doing so would result in the juncture
between rigid and flexible portions of the guide wire being positioned where
the guide wire enters the femur. Moreover, Chudik specifically discloses a
blind hole in the femur (Chudik 1117), in which case even under
Appellant’s interpretation, the rigid portion of Chudik’s guide wire would be
within the femur. Accordingly, we are not apprised of error in the rejection
of claims 24 and 26.
Claim 25
Claim 25 adds to claim 24 that a partial longitudinal length of the
rigid proximal portion is positioned within the intra-articular space when the
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flexible distal portion of the guide pin is bent. Appeal Br., Claims App. C.
Appellant relies on the same argument as made in connection with claim
24 — that Chudik only shows reaming when the tip of his guidewire has
passed all the way through and outside the femur. As discussed supra, this
argument fails to address the combination proposed by the Examiner and the
Examiner’s finding that the juncture between the more and less rigid parts of
Rothschild would be placed where the guide wire enters the femoral tunnel.
Appellant also argues in the Reply Brief that modifying Chudik by
using Rothschild’s guide wire rests on a finding that “the rigid proximal
portion of the guide pin resid[es] within the femoral tunnel,” (citing Answer
4), and that this finding is inconsistent with the rejection of claim 25 which
rests on the finding that “a partial longitudinal length of the rigid proximal
portion is positioned within the intra-articular space when the flexible distal
portion of the guide pin is bent.” Appellant argues,
Either the combination of Chudik and Rothschild results in a
rigid proximal portion of Chudik’s guide pin being located
within the femur with an end thereof external to the patient’s leg,
as alleged by the Examiner to reject the claims other than claim
25, or the combination results in at least a partial longitudinal
length of a rigid proximal portion of Chudik’s guide pin being
located within the intra-articular space as alleged by the
Examiner to reject claim 25.
Reply Br. 11.
We perceive no conflict. Claim 1 requires “advancing a rigid
proximal portion of the guide pin . . . into a femoral tunnel.” Appeal Br.,
Claims App. A. Claim 25 requires “a partial longitudinal length of the rigid
proximal portion is positioned within the intra-articular space.” Appeal Br.,
Claims App. C. Claim 1 does not require, as asserted by Appellant, that the
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rigid proximal portion be located within the femur with an end external to
the patient’s leg.
Appellant cites the Examiner’s Answer, page 4, for its finding that
“the modification results in the rigid proximal portion of the guide pin
residing within the femoral tunnel.” This quotation can only be understood
in light of the two sentences which follow:
Everything past the bend is the rigid proximal part. Regardless,
it seems obvious to optimize what parts of the guide pin one
would want to be flexible and rigid. Rothschild teaches making
different portions rigid and flexible.
Answer 4. In light of these two sentences, it is apparent that the Examiner
did not find in connection with claim 1 that the entire rigid maximal portion
of Rothschild’s guide wire was within the femoral tunnel, as Appellant
appears to argue. Thus, the Examiner sufficiently explains that the proposed
combination results in a rigid portion of the guide wire extending into and
through a femoral tunnel, with the junction between more and less rigid
portions of the guide wire being positioned at the entrance to the femoral
tunnel. Claim 25 is narrower than claim 1 by requiring, inter alia, that a part
of the length of the rigid portion be in the femoral tunnel when the flexible
part is bent. The Examiner made a specific finding to this effect, citing
Chudik Figure 10 and paragraphs 116, 117. Final Act. 7. We conclude that
the Examiner’s findings are not contradictory, and we are not persuaded that
the rejections of either claims 1, 24, and 26 or claim 25 must be reversed
because of the alleged inconsistency.
Appellant also asserts that the Examiner used impermissible hindsight
as evidenced by the alleged fact that the same two references are supposed to
teach different uses of the guide pin from Rothschild. We see no inherent
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reason why the Rothschild-Chudik combination cannot make obvious two
different methods.
Any judgment on obviousness is in a sense necessarily a
reconstruction based on hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill in the art at the time the claimed invention was
made and does not include knowledge gleaned only from
applicant’s disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Accordingly, we are
not persuaded by the mere fact of different interpretations of the use of the
modified guide pin 30 in Chudick’s method (assuming, without deciding,
that such are to be found in the Final Action or Answer) requires reversal of
the rejections of either claims 1, 24, and 26 or claim 25.
Claim 27
Appellant argues that claim 27 is patentable for the same reasons that
claim 25 is patentable. Appeal Br. 22. For the same reasons expressed in
connection with claim 25, we find the Examiner presented persuasive
reasoning supporting his conclusions of obviousness, and are not persuaded
by Appellant that there was error in doing so.
Appellant makes no separate argument in connection with Rejection
1, claims 2, 3, 6, 7, 12, 19, and 23, and so for the forgoing reasons we find
no error in the rejection of claims 1—3, 6, 7, 12, and 19—27 as obvious in
light of Chudik and Rothschild.
Rejection 2
Claims 1—4, 6, 7, 9—12, 19, and 21—23 — Obvious over Steiner
and Rothschild
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Appellant contends that the rejection of claim 1 in view of Steiner and
Rothschild must be withdrawn because Steiner does not show a rigid
proximal portion of a guide pin being through a tissue opening and across an
intra-articular space. Appeal Br. 23—24. This argument is not persuasive
because the rejection is based on a combination of references and the
argument addresses Steiner individually. See In re Keller, 642 F.2d 413,
426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).
Next, Appellant argues that the structural change to Steiner proposed
by using the guide pin of Rothschild does not result in the claimed method
step. Appeal Br. 24. Specifically, Appellant contends “the Examiner’s
proposed structural modification of Steiner does not cause a change in
Steiner’s method to include specific step (s).” Id. For the reasons discussed
above in connection with the Chudik/Rothschild rejection of claim 1, we are
not persuaded that the Examiner erred in rejecting claim 1 in view of Steiner
and Rothschild.
Next Appellant argues that it is not clear whether Steiner discloses
advancing a reamer over the distal portion of the drill pin while it still is
heated and therefore rigid. Appeal Br. 24—25. We are not persuaded by this
argument because the Examiner finds that it would be obvious to combine
Steiner and Rothschild so that a cannulated reamer would be advanced over
the distal portion of the guide pin, straightening the flexible distal portion of
the guide pin, and advancing the cannulated Reamer into the femur over the
rigid proximal portion of the guide and. FinalAct.il. The Examiner’s
Answer discounts Appellant’s argument that the distal portion of the guide
pin would no longer be heated and therefore no longer relatively rigid during
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reaming. The Examiner notes that Steiner discloses an embodiment in
which the pin is stuck in the bone, but not through it, and then the reamer
creates a tunnel. To do this, the reamer must go over the entire end of the
pin which the Examiner has found to be rigid. Appeal Br. 8.
Appellant argues that no reason is offered to modify Steiner’s guide
wire to make one part stiffer and another part less stiff. Appeal Br. 25.
Appellant argues that because Steiner’s procedure appears to work as
disclosed by Steiner, there is no reason to modify it. We are not persuaded.
As the Court has said, “if a technique has been used to improve one device,
and the person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless the its actual application is beyond his or her skill.” KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 417 (2007).
For the same reasons discussed above, we are not persuaded by
Appellant’s argument that the Examiner used impermissible hindsight or that
the difference in procedures disclosed in Rothschild and Steiner mean that
one of ordinary skill in the art would not think their teachings combinable.
Similarly, we do not find that the Examiner improperly relied on
optimization of ranges in concluding that combining Rothschild and Steiner
would place the juncture between more and less stiff parts of Rothschild’s
guide pin at the entrance to the femoral tunnel. In like fashion, we are not
persuaded that the Examiner improperly relied on the doctrine of inherency,
for the reasons discussed above.
Claim 4
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Claim 4 depends from claim 1 adding “straightening the flexible distal
portion of the guide pin” “after advancing the cannulated Reamer over the
flexible distal portion of the guide pin.” Appeal Br., Claims App. A.
Appellant argues that Steiner is silent “as to whether not a ‘flexible
distal portion’ of its drill pin is straightened ‘after advancing the cannulated
reamer over the flexible distal portion of the guide pin,’ as required by claim
4.” Appeal Br. 28. Appellant next contends that Rothschild cannot remedy
the deficiencies of Steiner “since it never mentions a cannulated reamer at
all.” Id. The Examiner refers to paragraph 65 in Steiner as teaching
straightening the distal portion of the guide pin prior to advancing a
cannulated reamer over the guide pin. Final Act. 11. The cited paragraph in
Steiner principally addresses straightening the proximal segment of the
guide pin; its only discussion of what Appellant claims as the “distal”
portion of the guide pin is:
If the flexible pin is drilled into the tibia to form a tibial tunnel
path, heating would also occur thus causing the pin to form a
generally straight and substantially linear path through the tibia.
Steiner | 65. Because Steiner is silent about straightening the distal portion
of a guide pin, it cannot suggest a method which includes doing so.
Similarly, Rothschild makes no suggestion that the part corresponding to the
claimed “distal” part of the guide pin be rigid. Accordingly, we do not
sustain the rejection of claim 4 as obvious over Steiner and Rothschild.
Claim 9
Claim 9 depends from claim 1 adding, inter alia, that “when the
proximal portion of the guide pin is advanced through the tissue opening and
across the intra-articular space, the distal portion of the guide pin is rigid.”
Appeal Br., Claims App. B. For reasons set forth in connection with claim
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4, we do not sustain the rejection of claim 9 as obvious over Steiner and
Rothschild.
Claim 10
Claim 10 depends from claim 9. Because we do not sustain the
rejection of claim 9 we do not subsist sustain the rejection of claim 10.
Claim 21
Appellant argues that claim 21 is patentable over the combination of
Steiner and Rothschild for the same reasons it was patentable over the
combination of Chudik and Rothschild. Appeal Br. 30—31. For the reasons
set forth in connection with the rejection of claim 21 over Chudik and
Rothschild, we are not persuaded that the Examiner erred in rejecting claim
21.
DECISION
The Examiner’s rejection of claims 1—3, 6, 7, 11, 12, and 19-27 is
affirmed.
The Examiner’s rejection of claims 4, 9, and 10 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED IN PART
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