11561969 (P.T.A.B. Oct. 4, 2017)

Ex Parte Globerman et al

Patent Trial and Appeal BoardOct 4, 2017

11561969 (P.T.A.B. Oct. 4, 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. 11/561,969 11/21/2006 Oren Globerman 101896-921 8416 21125 7590 10/06/2017 NUTTER MCCLENNEN & FISH LLP SEAPORT WEST 155 SEAPORT BOULEVARD BOSTON, MA 02210-2604 EXAMINER CRENSHAW, HENRY T ART UNIT PAPER NUMBER 3744 NOTIFICATION DATE DELIVERY MODE 10/06/2017 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): docket @ nutter.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte OREN GLOBERMAN and MORDECHAY BEYAR Appeal 2016-007017 Application 11/561,9691 Technology Center 3700 Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and PHILIP J. HOFFMANN, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 8—22 and 27—31. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. According to Appellants, the invention relates to “[a] method of regulating a setting time of a bone filler material.” Spec., Abstract. 1 According to Appellants, “[t]he real party in interest is DePuy Synthes Products, Inc.” Br. 1. Appeal 2016-007017 Application 11/561,969 Claims 8, 27, and 29 are the only independent claims on appeal. Br., Claims App. We reproduce claim 8, below, as illustrative of the appealed claims. 8. Apparatus for regulating setting time of a bone filler material mixture in a bone filler material injection system, the apparatus comprising: (a) a reservoir in the bone filler material injection system; (b) a cooling mechanism adapted to cool a bone filler material mixture in the reservoir as a portion of the mixture is injected into a patient; and (c) control circuitry adapted to output a control signal to the cooling mechanism so that the mixture does not set before a minimum setting time. REJECTIONS AND PRIOR ART The Examiner rejects the claims as follows: I. claims 8, 9, and 13—22 under 35 U.S.C. § 103(a) as unpatentable over Planck (US 5,145,250, iss. Sept. 8, 1992) and Reiley (US 2002/0082605 Al, pub. June 27, 2002); II. claims 10—12 under 35 U.S.C. § 103(a) as unpatentable over Planck, Reiley, and Knab (US 4,062,274, iss. Dec. 13, 1977); III. claims 27, 29, and 30 under 35 U.S.C. § 103(a) as unpatentable over Planck, Reiley, and Bhatnager (US 6,770,079 B2, iss. Aug. 3, 2004); IV. claim 28 under 35 U.S.C. § 103(a) as unpatentable over Planck, Reiley, Bhatnager, and Spiegelberg (US 2002/0183851 Al, pub. Dec. 5, 2002); and V. claim 31 under 35 U.S.C. § 103(a) as unpatentable over Planck, Reiley, Bhatnager, and Van Der Wei (US 2001/0024400 Al, pub. Sept. 27, 2001). 2 Appeal 2016-007017 Application 11/561,969 ANALYSIS Rejection I Based on our review of the record, including the Examiner’s Final Office Action and Answer, and Appellants’ Appeal Brief, for the reasons discussed below, we do not sustain the Examiner’s rejection of independent claim 8, or claims 9 and 13—22 that depend from claim 8. With respect to independent claim 8, the Examiner finds that the claimed “control circuitry adapted to output a control signal to the cooling mechanism” is taught by Planck at column 14 lines 15—27. Answer 2. Appellants argue that the Examiner’s finding is erroneous, because neither Planck nor Reiley teach temperature control circuitry, as claimed. Br. 9—10. Planck teaches a “tempering apparatus . . . used to cool. . . bone cement.” Planck col. 2,11. 15—16. But, the portion of Planck the Examiner cites does not teach any “control circuitry” as recited by claim 8. In response to Appellants’ argument that Planck does not teach control circuitry, the Examiner finds that Planck “uses temperature controls,” but does not otherwise respond to Appellants’ argument or identify where Planck teaches control circuitry. See Answer 17. Thus, based on the foregoing, the Examiner fails to support adequately the finding that any reference, including Planck, discloses the claimed control circuitry. Therefore, we do not sustain the obviousness rejection of claim 8, and we do not sustain the obviousness rejection of claims 9 and 13—22 that depend from claim 8. Rejection II Claims 10—12 depend from claim 8. Br., Claims App. The Examiner does not rely on any other reference, including Knab, the remedy the above 3 Appeal 2016-007017 Application 11/561,969 deficiency in claim 8’s rejection. Thus, we do not sustain the obviousness rejection of claims 10—12. Rejection III Each of independent claims 27 and 29 recites “control circuitry adapted to output a control signal to the cooling mechanism,” which is identical to the language recited in claim 8. Br., Claims App. Thus, for reasons similar to those discussed above regarding claim 8, the Examiner does not support adequately the finding that Planck discloses the claimed control circuitry. Further, the Examiner does not rely on any other reference, including Reiley or Bhatnagar, to disclose the claimed control circuitry. Thus, based on the foregoing, we do not sustain the obviousness rejection of claims 27 and 29. We also do not sustain the obviousness rejection of claim 30 that depends from claim 29, inasmuch as the Examiner does not rely on any other reference to remedy the above deficiency in claim 29’s rejection. Rejections IV and V Claims 28 and 31 depend from independent claims 27 and 29. Br., Claims App. The Examiner does not rely on any other reference remedies the above deficiency in the rejection of claim 27 or claim 29. Thus, we do not sustain the obviousness rejection of claims 28 and 31. 4 Appeal 2016-007017 Application 11/561,969 DECISION We REVERSE the Examiner’s obviousness rejections of claims 8—22 and 27—31. REVERSED 5