Ex Parte Guzman et al

Board of Patent Appeals and Interferences

May 14, 2012

10480053 (B.P.A.I. May. 14, 2012)

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.
10/480,053 12/09/2003 Pamela C. Guzman 14291-73999 4824
7590 05/14/2012
Barnes & Thornburg
11 South Meridian Street
Indianapolis, IN 46204
EXAMINER
HOFFMAN, MARY C
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
05/14/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte PAMELA C. GUZMAN, MICHAEL A. WACK,
DALE R. SCHULZE, GARY W. KNIGHT, CHRISTOPHER J. HESS,
RUDOLPH H. NOBIS, MICHAEL F. CLEM, and RONALD J. KOLATA
__________

Appeal 2010-012364
Application 10/480,053
Technology Center 3700
__________

Before DONALD E. ADAMS, ERIC GRIMES, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a bone
plating instrument. The Examiner has rejected the claims as lacking written
description and as being anticipated and/or obvious. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Claims 56-65 are pending and on appeal (App. Br. 2). We will focus
on claim 56, the only independent claim on appeal, which reads as follows:
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56. A bone plating instrument comprising:
a handle sized to receive a palm of a hand of an orthopaedic surgeon,
a tissue expander non-removably secured to the handle, the tissue
expander comprising a body having a top wall and a pair of downwardly
extending side walls, wherein (i) the top wall has an access hole defined
therein, and (ii) the top wall and the side walls define a working space
configured to receive a tip of an endoscope, and
a screw alignment jig having a first end portion thereof secured to the
handle such that a second end portion thereof is spaced-apart from the tissue
expander and extends outwardly away from the handle in a direction toward
the access hole of the tissue expander, the second end portion of the screw
alignment jig having a guide hole aligned with the access hole of the tissue
expander.
Claims 56-65 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement (Ans. 4).
Claims 56, 57, 61, 62, and 65 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Chin et al. (US 5,897,557, Apr. 27, 1999) (Ans. 4).
Claims 56-58 and 61-65 stand rejected under 35 U.S.C. § 103(a) as
obvious over Chin (Ans. 6).
Claim 59 stands rejected under 35 U.S.C. § 103(a) as obvious over
Chin in view of Medoff (US 5,931,839, Aug. 3, 1999) (Ans. 8).
Claims 56-58, 60, 62, 63, and 65 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Schmelzeisen et al. (US 5,947,970, Sep. 7, 1999) in
view of Gotfried (US 5,429,641, Jul. 4, 1995) (Ans. 8).
Claim 59 stands rejected under 35 U.S.C. § 103(a) as obvious over
Schmelzeisen in view of Gotfried and Medoff (Ans. 11).
Claim 61 stands rejected under 35 U.S.C. § 103(a) as obvious over
Schmelzeisen in view of Gotfried and Carpentier et al. (US 5,972,020,
Oct. 26, 1999) (Ans. 11).
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PRINCIPLES OF LAW
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
WRITTEN DESCRIPTION
The Examiner finds:
The term “non-removably” in claim 56, line 3, is not found in
the written disclosure, and the drawings do not definitively
show whether the tissue expander ref. # 308 is removable or
not. . . . Moreover, the tissue expander ref. # 308 is attached to
spoon ref. # 310 in FIG. 16 and is therefore . . . removable.
(Ans. 4.)
Issue
Does the Specification describe a tissue expander that is non-
removably secured to the handle?
Analysis
The Specification discloses:
The aforedescribed embodiments of the tissue
expanders 308 provide for a relatively large degree of flexibility
in regard to the design of the plating instrument 300.
Additional flexibility may be achieved by the use of removable
tissue expanders 308. In particular, the spoon 310 may be
configured to be removably secured to the elongated cannulated
shaft 306, whereas the tunnel 312 may be configured to be
removably secured to the handle 304. In such an arrangement,
different sizes, shapes, or types of spoons and tunnels may be
utilized on a common shaft 306/handle 304 assembly thereby
allowing the plating instrument 300 to be adapted to fit the
needs of a given patient‟s anatomy or surgical procedure.
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(Spec. 20.) We agree with Appellants that this paragraph discloses that the
tissue expander can be removably or non-removably secured to the handle
(App. Br. 7). In addition, we agree with Appellants that a tissue expander
that can be separated from the handle only by breaking the device would be
considered non-removably secured (Reply Br. 2-3). We therefore reverse
the written description rejection.
CHIN
In rejecting claim 56 as anticipated by Chin, the Examiner finds:
Chin et al. discloses a bone plating instrument comprising a
handle (ref. #45), the handle being capable of being received by
a palm of a surgeon (e.g. the surgeon is able to pick up and
grasp component ref. #45, therefore, it is “sized to be received
by a palm of a surgeon”), a tissue expander (ref. #21) non-
removably secured to the handle . . . , and a screw alignment jig
(ref. #41).
(Ans. 4-5.) In the alternative obviousness rejection, the Examiner finds that
Chin discloses “a tissue expander (ref. #21) removably secured to the
handle,” but concludes that it would have been obvious
to construct the device of Chin having the tissue expander being
non-removably secured to the handle, i.e. the tissue expander
being integral with the handle, since it has been held that
forming in one piece an article which has formerly been formed
in two pieces and put together involves only routine skill in the
art.
(Id. at 6-7.)
Issue
Has the Examiner set forth a prima facie case that Chin teaches or
suggests a tissue expander that is non-removably secured to the handle?
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Analysis
Chin discloses that the “drill guide 41 is detachably mounted to the
top of the body 21 near the proximal end thereof using threaded fastener 43
that passes through a spacer block 45 for mating threaded engagement with a
reference block 47 on the body 21” (Chin, col. 3, ll. 23-28). We agree with
Appellants that this passage teaches that the body 21 of positioning
fixture 20 is removably secured to spacer block 45 of drill guide 41 (App.
Br. 9). We therefore reverse the anticipation rejection.
We also conclude that the Examiner has not set forth a prima facie
case of obviousness. In particular, we agree with Appellants that the
Examiner has not set forth an adequate reason to modify Chin‟s device to
non-removably secure the drill guide 41 to the body 21 of positioning
fixture 20. The Examiner does argue:
there are advantages of having integral components (e.g.
increased efficiency since integral components eliminate the
extra step of attaching ref. #45 to ref. #21) and of leaving the
devices attached and withdrawing the whole unit as one piece
rather than removing ref. #45 from ref. #21 and withdrawing
each piece separately (e.g. efficiency).
(Ans. 15.) However, the Examiner has not shown why the whole unit could
not be withdrawn when they are detachably secured. With regard to
eliminating the extra step of attaching ref. #45 to ref. #21, Chin teaches that
the drill guide 41, through spacer block 45, is “selectively attached to the
body 21 following proper positioning thereof on a fractured bone” (Chin,
col. 3, ll. 23-32, & col. 4, ll. 10-15 (emphasis added)). The Examiner failed
to explain why, when Chen is read in its entirety, a person of ordinary skill
in this art would interpret selective attachment as a suggestion to make
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various elements of the device integral. In addition, the Examiner
acknowledges that integral attachment of the components would make “the
device bulkier and therefore possibly more difficult to insert” (Ans. 15).
Thus, it is not clear on this record that integral components would be more
efficient (Cf. Reply Br. 7 (Examiner‟s modification of Chin would
“unnecessarily clutter the surgeon‟s working area and possibly interfere with
the proper placement of fixture 20”)). We therefore also reverse the
obviousness rejections over Chin alone and in view of Medoff.
SCHMELZEISEN WITH GOTFRIED
The Examiner relies on Schmelzeisen for disclosing “a device
comprising a semi-tubular shaped body (see FIG. 4A, ref. #15) having an
access hole (ref. #14) defined in an outer surface thereof” (Ans. 9). In
particular, the Examiner finds: “The device comprises a handle (ref. #10).
The tissue expander (ref. #8, 15) is secured to the handle. . . . The screw
alignment jig (FIG. 1c) has a first portion (ref. #3, left side in FIG. 5A).”
(Id.)
The Examiner relies on Gotfried for disclosing “a plate holding device
where the „handle‟ (ref. # 20) is secured to a first portion of a jig (see top
part of ref. #21, FIG. 8 and 10) to better align the jig with the bone plate
apertures” (id. at 10). The Examiner notes:
The Gotfried plate allows for a minimally invasive incision
(col. 4, lines 50-52) while maintaining a direct and continuous
connection between the drill guide and the plate that allows the
drill guide to be precisely aligned at the exact location to insert
screws into the appropriate location into the plate (compare
with Schmelzeisen et al., where the drill guide ref. #3 . . . is
used by freehand and is not in a direct and continuous
connection with the plate).
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(Id.)
The Examiner concludes it would have been obvious “to construct the
device of Schmelzeisen et al. with the first portion of the jig being secured to
the handle in view of Gotfried . . . to better align the jig with the bone plate
apertures” (id.).
Issue
Has the Examiner set forth a prima facie case that it would have been
obvious to modify Schmelzeisen‟s device to secure the grip end of locking
member 17 to handle 10?
Analysis
Schmelzeisen is directed to an endoscopic device for implanting a
bone plate (Schmelzeisen, col. 1, ll. 36-41). Schmelzeisen‟s device includes
an endoscope attachment element 8, which is used to position bone plate 6,
and a locking member 17, which is connected to the distal end 15 of
attachment element 8 after the bone plate 6 has been positioned “to guide
and enable fastening” the bone plate 6 to the bone (id. at Abstract & col. 3,
ll. 4-30). The Examiner acknowledges that Schmelzeisen does “not disclose
the first portion [3] of the jig [locking member 17] being secured to the
handle” 10 of endoscope attachment element 8 (Ans. 9).
Gotfried discloses a “device for connecting and securing the fractured
neck to the femur shaft” comprising a connector plate and long and short
screws that remain in the body and auxiliary equipment “for insertion and
tightening of the long screws and for compressing the fractured bone parts
after insertion of the screws,” the auxiliary equipment including “an L-
shaped connector arm IV which includes a horizontal portion 20 and a
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vertical portion 21 firmly connected to each other at right angles,” the
vertical portion including bores used to guide the placement of screws
(Gotfried, col. 2, ll. 10-63 & col. 5, ll. 4-31).
A first end of Gotfried‟s vertical portion 21 is secured to horizontal
portion 20, which the Examiner considers a handle (Ans. 10). However, it is
not clear to us how the Examiner is combining Schmelzeisen with Gotfried.
In particular, the Examiner disagrees with the illustrations provided by
Appellants in their Evidence Appendix, but does not indicate how her
proposed combination is different (Ans. 15-16).
It may be that the Examiner is of the opinion that a person of ordinary
skill in this art would understand that locking member 17 can be secured to
the handle of endoscopic attachment element 8 in a manner that does not
require “the locking member 17 to be coupled to the endoscopic
attachment 8 at both ends” (App. Br. 18). Upon review of the applied
references, it appears that it would be possible to remove connecting tube 1,
which is attached to grip 3 by a shim 2 (Schmelzeisen, col. 2, ll. 37-38), and
insert it after positioning the bone plate, similar to how Gotfried inserts
tube 31 “through the bore 26 of the connector arm into the screw-threaded
bore 5 of the connector plate” (Gotfried, col. 5, ll. 47-49). However, the
Examiner has failed to explain that this, for example, is how she is
combining the references. In fact, this combination seems somewhat
inconsistent with her reliance on Gotfried for “maintaining a direct and
continuous connection between the drill guide and the plate” (Ans. 10
(emphasis added)).
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For the reasons discussed above, we conclude that the Examiner has
not set forth a prima facie case of obviousness. We therefore reverse the
obviousness rejections over Schmelzeisen and Gotfried, alone and in view of
Medoff and Carpentier.

REVERSED

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