Ex Parte Novak et al

Board of Patent Appeals and Interferences

Jul 18, 2012

11196607 (B.P.A.I. Jul. 18, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/196,607 08/02/2005 Theodore A. D. Novak M24-129 5637
28156 7590 07/19/2012
COLEMAN SUDOL SAPONE, P.C.
714 COLORADO AVENUE
BRIDGE PORT, CT 06605-1601
EXAMINER
SEVERSON, RYAN J
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
07/19/2012 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 THEODORE A.D. NOVAK, WERNER SLADEK-MAHARG,
DAN VOIC, SCOTT ISOLA, and RONALD R. MANNA
__________

Appeal 2011-005063
Application 11/196,607
Technology Center 3700
__________

Before TONI R. SCHEINER, ERIC GRIMES, and ERICA A. FRANKLIN,
Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 8, 11, 12, and 14-20, directed to a surgical method. The claims have
been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

Appeal 2011-005063
Application 11/196,607

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STATEMENT OF THE CASE
The present invention is directed to an ultrasonically assisted surgical
method whereby hard tissue, e.g., hard cartilage or bone, is cut and separated
from adjacent soft tissue, while minimizing trauma to the soft tissue (Spec.
4: 8-12; 3: 10; 6: 5-15).
Claims 8, 11, 12, and 14-20 are pending and on appeal; claims 1-7, 9,
10, and 13 have been canceled (App. Br. 2). Claim 8 is representative of the
subject matter on appeal:
8. A surgical method comprising:
providing a cutting blade having a thickness along a cutting edge of
between about 0.0005 inch and about 0.020 inch;
moving said blade in contact with relatively hard tissue located
adjacent to relatively soft tissue at a surgical site in a patient, so that said
cutting edge cuts through said hard tissue and leaves said soft tissue
substantially intact and undamaged; and
ultrasonically vibrating said blade during the moving of said blade,
wherein the vibrating of said blade is initiated prior to a contacting of
said surgical site with said blade and is maintained during an initial contact
of said blade with the tissues at said surgical site and during the moving of
said blade through said hard tissue,
wherein said blade is moved in a continuous and uninterrupted stroke
along an interface between said hard tissue and said soft tissue at said
surgical site with said blade extending generally parallel to said interface,
the ultrasonic vibrating of said blade being performed continuously and
uninterruptedly during said stroke.
Claims 8, 11, 12, and 14-20 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Idemoto (US 5,188,102, February 23, 1993) and
Vercellotti (US 2001/0004695 A1, June 21, 2001).
Appeal 2011-005063
Application 11/196,607

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FINDINGS OF FACT
1. Idemoto discloses “a surgical ultrasonic horn . . . used in cutting
and separating of the living tissue, e.g. cartilaginous tissue or bone”
(Idemoto, col. 1, ll. 6-10). According to Idemoto:
[O]n the cutting and separating of the bone, due to the shape of
the cutting portions [of the ultrasonic horn], the cutting portions
smoothly enter[] from the surface of the bone to an interior
thereof by means of the mechanical ultrasonic oscillation when
it contacts slightly against the bone. Therefore, any scattering
of bone against the surgeon is suppressed, enabling the
operation to proceed with greater precision. The elastic tissue
of the bone, e.g periosteum is never damaged by the horn . . .
due to the characteristics of the ultrasonic.
(Id. at 3, col. 3, ll. 29-39.)
2. Vercellotti discloses “a surgical device and method for bone
surgery” which is particularly suitable for “osteotomy, ostectomy,
osteoplasty etc. and for oral surgical procedures such as excision of cysts,
third molar extraction, preparation of implant sites, creation of an opening
into the maxillary sinus and elevation of the endosteum” (Vercellotti ¶ 1).
“[T]he cutting action on the bone tissue is produced by variable modulation
ultrasonic vibrations that are activated only on the cutting end of the tip that
comes into contact with the mineralized tissue to be cut” (id. at ¶ 20).
Furthermore, when the vibrating tip encounters soft
tissue, such as a neurovascular structure, it loses its cutting
capacity. In fact the soft tissue absorbs the vibrations of the tip
without being resected and the energy caused by the vibrations
of the tip is dissipated in the form of a slight heat. This can be
further reduced by the surgeon’s promptness in withdrawing the
instrument as soon as he feels that it does not vibrate anymore.
(Id. at ¶ 22.)
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Application 11/196,607

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3. Vercellotti further teaches that a spoon-shaped periosteal or
endosteal elevator tip, rather than a cutting blade, is used to separate bone
from surrounding membrane (periosteum) or from connective tissue
(endosteum) (Vercellotti ¶¶ 71-76).
DISCUSSION
The Examiner finds that Idemoto discloses an ultrasonic cutting blade
that “cuts tissue and provides irrigation to the tissue” (Ans. 4), and further
finds that Vercellotti “teach[es] using an ultrasonic cutter to separate hard
from soft tissue” (id.). The Examiner concludes that it would have been
obvious for one of ordinary skill in the art to use Idemoto’s ultrasonic
cutting blade “to cut bone in the manner taught by Vercellotti et al. to allow
the cutter of Idemoto et al. to be used in a variety of surgical procedures”
(id.).
Appellants contend that neither reference discloses “moving the
ultrasonically vibrating blade in a continuous and uninterrupted stroke along
the interface between [] hard tissue and [] soft tissue, with the blade
extending generally parallel to the interface, the ultrasonic vibrating of the
blade being performed continuously and uninterruptedly during the stroke”
(App. Br. 6).
The Examiner concedes that neither reference discloses “moving the
cutter generally parallel to the cutting surface” (Ans. 4). However, the
Examiner finds that “the orientation of the blade relative to the surface to be
cut is merely a matter of the way in which the surgeon[] holds and operates
the instrument,” and concludes that “it would have been obvious . . . to have
moved the blade ‘substantially parallel’ to the cutting surface to assist in
separation of hard and soft tissue” (id.).
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Appellants further contend that the claims require cutting and
separating hard tissue from adjacent soft tissue in a manner which cuts
through the hard tissue and leaves the soft tissue substantially intact and
undamaged, but neither Idemoto nor Vercellotti discloses a method of
cutting and separating hard tissue from soft tissue using a continuously
vibrating ultrasonic blade (App. Br. 5, 6, 8). In particular, Appellants
contend that Idemoto “teaches the cutting and separating of bone, from
itself and not from soft tissue, with an ultrasonically vibrating blade passed
transversely to hard tissue, the cutting edge extending orthogonally to the
tissue surface” (id. at 6-7). Similarly, Appellants contend that Vercellotti
teaches “cutting into the hard tissue to perform an osteotomy, ostectomy or
osteoplasty . . . or to perform a bone sampling, an excision of cysts, and
extraction of molars, etc.” (id. at 8). Appellants contend that Vercellotti uses
“a specialized instrument tip (a spoon shaped periosteal) to separate soft
tissue from hard” (Reply Br. 4). Moreover, Appellants contend that
Vercellotti teaches “interrupting a cutting operation” by “withdrawing of
the surgical blade whenever the surgeon senses a contact between the tip and
soft tissue” (App. Br. 8).
We agree with Appellants that Idemoto discloses cutting into bone,
rather than cutting and separating hard tissue (i.e., bone) from soft tissue
(FF1), and that Vercellotti does not disclose using a continuously vibrating
ultrasonic blade to separate hard tissue from soft (FFs 2, 3). In short, neither
reference discloses a method wherein a continuously vibrating ultrasonic
cutting blade is moved in a continuous and uninterrupted stroke along the
interface between hard tissue and soft with the blade extending generally
parallel to the interface, in such a way that the blade cuts through the hard
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Application 11/196,607

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tissue (rather than the soft tissue) and separates it from the soft tissue,
leaving the soft tissue substantially intact and undamaged. The Examiner
concedes that no combination of the method steps disclosed in the references
would result in these steps (Ans. 4). Nor does the Examiner’s conclusory
statement of obviousness explain how or why these steps would have been
suggested by the cited art.
Accordingly, we are constrained to reverse the rejection of the claims
as unpatentable over Idemoto and Vercellotti.

REVERSED

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