Ex Parte Gamache

Patent Trial and Appeal Board

Jul 29, 2016

12823490 (P.T.A.B. Jul. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/823,490 06/25/2010
27777 7590 08/02/2016
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
FIRST NAMED INVENTOR
Daniel Gamache
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.
MIT5123USNP 7971
EXAMINER
SHIRSAT, MARCELA
ART UNIT PAPER NUMBER
3776
NOTIFICATION DATE DELIVERY MODE
08/02/2016 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 DANIEL GAMACHE
Appeal 2014-007967 1,2
Application 12/823,490
Technology Center 3700
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
MATTHEWS. MEYERS, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-8 and 10-13. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
According to Appellant, the invention provides "a single manual tool
for quickly and reproducibly preparing bone holes for receiving threaded
1 Our decision references Appellant's Specification ("Spec.," filed June 25,
2010) and Appeal Brief ("Br.," filed Jan. 6, 2014), as well as the Examiner's
Answer ("Answer," mailed May 7, 2014).
2 Under the Appeal Brief section titled Real Party in Interest, Appellant
identifies "DePuy Mitek, LLC[,] which is a subsidiary of Johnson &
Johnson." Br. 2.
Appeal2014-007967
Application 12/823,490
suture anchors or other threaded devices." Spec. 2, 11. 4--5. Independent
claims 1 and 10 are the only independent claims under appeal. See Br.,
Claims App. We reproduced claim 1, below, as representative of the
appealed claims.
Id.
1. An awl for creating a hole in a bone, the awl
compnsmg:
an elongated shaft having a distal tip;
the distal tip having a sharp point adapted to penetrate
bone;
first cutting flute having a first longitudinally extending
cutting edge formed on the shaft proximal to and adjacent to the
sharp point and oriented to allow removal of bone via the first
cutting flute upon rotation in a first direction of the shaft about a
central longitudinal axis thereof inside of the bone, a second
cutting flute having a second longitudinally extending cutting
edge formed on the shaft proximal to and adjacent to the sharp
point and in longitudinal registry with the first cutting edge and
oriented to allow removal of bone via the second cutting flute
upon rotation in a second opposite direction of the shaft about
the central longitudinal axis; and
instructions for using the awl comprising the steps of
driving the distal tip of the awl into the bone to initiate creation
of a hole therein, and rotating the shaft to create the hole with a
predetermined diameter.
REJECTIONS AND PRIOR ART
The Examiner rejects claims 1 and 10 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
The Examiner rejects claims 1 and 7 under 35 U.S.C. § 103(a) as
unpatentable over Azer (US 5,490,852, iss. Feb. 13, 1996), Rahmani
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Application 12/823,490
(US 2009/0204147 Al, pub. Aug. 13, 2009), and Knisely
(US 2005/0283160 Al, pub. Dec. 22, 2005).
The Examiner rejects claims 2 and 3 under 35 U.S.C. § 103(a) as
unpatentable over Azer, Rahmani, Knisely, and Lindblom
(US 7 ,252,465 B2, iss. Aug. 7, 2007).
The Examiner rejects claims 4---6 under 35 U.S.C. § 103(a) as
unpatentable over Azer, Rahmani, Knisely, and Desrosiers
(US 2005/0272004 Al, pub. Dec. 8, 2005).
The Examiner rejects claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Azer, Rahmani, Knisely, and Bergstrom (US 5,785,522,
iss. July 28, 1998).
The Examiner rejects claims 10 and 13 under 35 U.S.C. § 103(a) as
unpatentable over Azer and Knisely.
The Examiner rejects claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Azer, Knisely, and Lindblow.
The Examiner rejects claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Azer, Knisely, and Bergstrom.
See Answer 2-12.
ANALYSIS
Written description rejection
The Examiner determines that the recitation in each of independent
claims 1 and 10 of first and second cutting edges "in longitudinal registry"
with one another was not described in the originally-filed Specification in
such a way as to reasonably convey to one skilled in the relevant art that the
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Appeal2014-007967
Application 12/823,490
inventor, at the time the application was filed, had possession of the claimed
invention. See Answer 2-3. In response, Appellant contends that
[t]o be in registry is to be in alignment and the cutting edges are
thus in alignment along the longitudinal axis of the awl. On
page 4, lines 16 and 17, the [S]pecification describes that
"[i]mmediately proximal of the tip 16 the shaft 14 bears a
plurality of axial cutting flutes 18 formed therein. Each flute 18
comprises an axially oriented sharp cutting edge 20 and an
adjacent undercut portion 22." Accordingly, the [S]pecification
describes that the cutting flutes which each comprise a cutting
edge are longitudinally positioned immediately proximal of the
tip thus locating the cutting edges in longitudinal registry
immediately proximal of the tip.
Br. 4--5. Based on the above, we agree with Appellant that the Specification
shows Appellant's possession of the claimed invention, noting that a
relevant definition of "register" is "a condition of correct alignment or
proper relative position."3 Thus, we do not sustain the written description
rejection of claims 1 and 10.
f'\ 1 • • ; •
uovzousness rezecnons
For the following reasons, we are not convinced of Examiner error in
the obviousness rejections of claims 1-8 and 10-13. Thus, we sustain the
Examiner's rejections.
With respect to independent claim 1, Appellant argues that it would
not have been obvious "to add the rear facing flutes of Knisely ... to the awl
of Azer." Br. 5. We disagree with Appellant, and agree with the Examiner
that "[i]t would have been obvious ... to modify the awl of Azer by adding
[Knisely's] second cutting flute that can cut upon rotation in a second
3 From http://www.merriam-webster.com/dictionary/register, last accessed
July 25, 2016.
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Appeal2014-007967
Application 12/823,490
opposite direction ... to allow for easier removal and improved cleanup of
the bone canal ... for ready acceptance of a surgical implant into the bone,"
as discussed in Knisely. Answer 5; see id. at 4 (citing Knisely i-fi-f 12, 24).
Appellant's arguments to the contrary, such as "there is nowhere on the Azer
... shaft to place rear facing flutes; the shaft has no rear facing surface," and
that Knisely's "rear facing cutting flutes of opposite cutting direction are
provided by Knisely ... because of [its] rear facing surface and the spiral
arrangement of their main cutting flutes-reversing rotation would assist in
withdrawal and the rear facing cutting flutes would then logically be
oriented to cut in that reverse direction" and"[ w ]ithout such arrangement
there is no motivation to provide cutting flutes for the reverse direction"
(Br. 5) are not persuasive, inasmuch as the Examiner identifies a surface in
Azer on which Knisely's cutting flutes are proposed by the Examiner to be
placed. See Answer 13-14.
Appellant further argues that "[ e ]ven if the alleged combination were
made it would fail to reach the claimed invention. Claims 1 and 7 define the
cutting edges being in longitudinal registry[,] and the flutes and cutting
edges of Knisely ... are longitudinally spaced apart not registered." Br. 5.
This is not persuasive of Examiner error, however, as Appellant does not
explain sufficiently why Knisely's "flutes and cutting edges ... are ... not
registered." See Answer 14.
Thus, based on the foregoing, we do not sustain the rejection of
independent claim 1. Inasmuch as Appellant argues the rejection of
claims 2-8 that depend from claim 1 are erroneous for the same reasons the
rejection of claim 1 is erroneous, we sustain the rejections of the dependent
claims.
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Application 12/823,490
With respect to independent claim 10, Appellant reiterates the
arguments made for claim 1, emphasizing that "[a]n awl formed of the
alleged combination would not provide the cutting edges in longitudinal
registry and thus could not cut in the second direction with a second cutting
edge in longitudinal registry with the first cutting edge." For reasons similar
to those discussed above with respect to claim 1, Appellant does not
persuade us of Examiner error, as Appellant does not explain sufficiently
why Knisely fails to teach registered edges. See Answer 14, 18.
Inasmuch as Appellant argues the rejection of claims 11-13 that
depend from claim 10 are erroneous for the same reasons the rejection of
claim 10 is erroneous, we sustain the rejections of the dependent claims.
DECISION
We AFFIRM the Examiner's obviousness rejections of claims 1-8
and 10-13.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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