Ex Parte Perez-Cruet

Board of Patent Appeals and Interferences

Jan 3, 2012

11408571 (B.P.A.I. Jan. 3, 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.
11/408,571 04/21/2006 Mick J. Perez-Cruet MI4-00002 9457
68779 7590 01/03/2012
MILLER IP GROUP, PLC
MI4 SPINE, LLC
42690 WOODWARD AVE.
SUITE 200
BLOOMFIELD HILLS, MI 48304
EXAMINER
HARVEY, JULIANNA NANCY
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
01/03/2012 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 MICK J. PEREZ-CRUET
__________

Appeal 2010-007447
Application 11/408,571
Technology Center 3700
__________

Before LORA M. GREEN, JEFFREY N. FREDMAN, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a pedicle
access device. The Examiner rejected the claims as anticipated and obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

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Statement of the Case
Background
“This invention relates generally to a device for accessing the pedicle
of a vertebra during a surgical procedure and, more particularly, to a device
having a specially configured tip for docking to a facet complex of a
vertebra during spinal instrumentation and fusion surgery, where the device
includes a hollow rod for passing a K-wire through” (Spec. 1 ¶ 0001).
The Claims
Claims 1-20 are on appeal. Claim 1 is representative and is
reproduced below:
1. A pedicle access device comprising:
a positioning needle including a first handle and a
hollow tube attached thereto, the hollow tube having a
specially configured and shaped end for effectively
engaging a facet complex of a vertebra; and
a targeting needle including a second handle and a
rod, the rod extending through the hollow tube of the
positioning needle, the second handle being removably
secured to said first handle, and wherein a pointed tip of
the rod extends out of the specially configured end of the
hollow tube.

The issues

A. The Examiner rejected claims 1, 3-5, 10, 11, and 13-16 under 35
U.S.C. § 102(b) as anticipated by Ryan1 (Ans. 3-7).
B. The Examiner rejected claims 2 and 12 under 35 U.S.C. § 103(a) as
obvious over Ryan and Cushieri2 (Ans. 7-8).

1 Ryan et al., US 5,693,031, issued Dec. 2, 1997.
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C. The Examiner rejected claims 6 and 17 under 35 U.S.C. § 103(a) as
obvious over Ryan and Bramlet3 (Ans. 8-9).
D. The Examiner rejected claims 7 and 18 under 35 U.S.C. § 103(a) as
obvious over Ryan, Bramlet, and Wilson4 (Ans. 9-10).
E. The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as obvious
over Ryan, Bramlet, and McPhaul5 (Ans. 10).
F. The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as obvious
over Ryan and Wilson (Ans. 10-11).
G. The Examiner rejected claims 19 and 20 under 35 U.S.C. § 103(a) as
obvious over Ryan, Wilson, Cushieri, and Bramlet (Ans. 11-15).
A. 35 U.S.C. § 102(b) over Ryan
The Examiner finds that Ryan discloses
a pedicle access device comprising: a positioning needle
including a first handle and a hollow tube attached thereto,
the hollow tube having a specially configured and shaped
end (“Specially Configured End”) for effectively engaging a
facet complex of a vertebra; and a targeting needle including
a second handle (“Knob”) and a rod, the rod extending
through the hollow tube of the positioning needle, the
second handle being removably secured to the first handle,
and wherein a pointed tip of the rod extends out of the
specially configured end of the hollow tube.

(Ans. 3-4).

2 Cushieri et al., US 5,352,206, issued Oct. 4, 1994.
3 Bramlet et al., US 5,649,946, issued Jul. 22, 1997.
4 Wilson et al., US 6,656,189 B1, issued Dec. 2, 2003.
5 McPhaul, Jack, US 4,443,941, issued Apr. 24, 1984.
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Appellant contends that “Ryan does not teach, nor does any section of
Ryan teach or suggest, that the trocar assembly 10 is a pedicle access device
or can in any way be used during spinal surgery” (App. Br. 8). Appellant
contends that “the distal tip 20 identified as a pointed tip by the Examiner on
page 5 of the Final Office Action is clearly not a pointed tip, but is a rounded
tip” (Id.)
Appellant contends that the “cannula 12 may be similar to Appellant’s
positioning needle and the trocar 19 may be similar to Appellant’s targeting
needle, but there still is no teaching or suggestion in Ryan that the cannula
12 includes a specially configured end that is shaped to engage a facet
complex of a vertebra” (App. Br. 8). Appellant contend that claims 1 and 11
“state that the end of the hollow tube of the positioning needle has a shape
that is effective for engaging a facet complex of the vertebra. Appellant
submits that this language specifically identifies the shape of the end of the
hollow tube, thus making it a structural limitation” (App. Br. 9).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s finding that Ryan anticipates the claims?
Findings of Fact
1. The Specification teaches that the “following discussion of the
embodiments of the invention directed to a pedicle access device for spinal
fusion surgery is merely exemplary in nature, and is in no way intended to
limit the invention or its applications or uses” (Spec. 5 ¶ 0024).
2. The Specification teaches that the “positioning needle 12
includes a specially configured tip 40 that allows it to lock onto a complex
facet of a vertebra . . . tip 40 of the positioning needle 12 can have different
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configurations, such as a saw tooth or corrugated tip, that allow it to reliably
dock onto the superior facet . . . In one non-limiting embodiment, the tip 42
is a trocar (three-sided) tip” (Spec. 6 ¶ 0027).
3. Figure 2 of Ryan is reproduced below:
”FIG. 2 is an exploded view” of an embodiment of the invention (see Ryan,
col. 4, l. 2).
4. Ryan teaches that:
the trocar assembly 10 of the present invention generally
includes a hollow trocar tube or cannula assembly 11 having
a cannula 12 insert molded in a cannula base 14, a sealing
valve assembly 16 removably coupled to the cannula base
14, and a trocar assembly 18 having a trocar 19 with a distal
tip 20 and a proximal handle 21 which is removably
inserted through the valve assembly 16 and the cannula 12.

(Ryan, col. 5, ll. 35-42).
5. Ryan teaches that “the cylindrical 143, threaded 144, and
tapered 145 portions of passage 141 are used to receive and couple to the
valve assembly 16” (Ryan, col. 5, ll. 59-61).
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6. Ryan teaches that the “external surface of the valve body 160
also includes a first threaded section 166 which mates with threads 144 of
the cannula passageway” (Ryan, col. 6, ll. 7-9).
7. Figure 10b of Ryan is reproduced below:

“FIG. 10b is a longitudinal cross sectional view of the piercing point” (Ryan,
col. 5, ll. 5-6).
8. Figure 11g is reproduced below:

“FIG. 11g is a view . . . of a slightly different embodiment of the invention”
(Ryan, col. 5, ll. 23-24).
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9. Ryan teaches that in Figure 11g, the “proximal mouth 2145 of
the cannula base 2114 is of a somewhat smaller diameter than the cannula
base” (Ryan, col. 14, ll. 14-15).
10. Ryan teaches that:
a number of different tips 20, 920, 1020 may be provided on
trocar 19 which is preferably insert molded into trocar
handle 21. Trocar tip 20 is blunt and is preferred when a
small incision such as might have been made by a scalpel
blade or by a Veress needle is already available. Trocar tip
920 is a sharp pointed tip and is preferred when the trocar is
used to incise the patient while inserting the trocar tube or
cannula.

(Ryan, col. 11, ll. 41-48).
11. Figure 9c is reproduced below:

Figure 9c is a side elevation view of a trocar tip (see Ryan, col. 4, ll. 62-63).
12. Ryan teaches that
when the reusable trocar 18 is inserted through the
throughbore 174 in the valve covering cap 164, and through
the washer 163, slit valve 162, throughbore 171 in the valve
body 160, and the cannula 12, the internal splines 202 in the
trocar handle 21 engage the external splines 175 on the
covering cap 164 of the valve body 160 as the trocar tip 20
extends past the distal end of the cannula 12. These splines
prevent the trocar handle from rotation relative to the valve
body 14.

(Ryan, col. 7, ll. 5-13).

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Principles of Law
It is well settled that during examination, the PTO must interpret
terms in a claim using “the broadest reasonable meaning of the words in
their ordinary usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in the
applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997).
“A single prior art reference that discloses, either expressly or
inherently, each limitation of a claim invalidates that claim by anticipation.”
Perricone v. Medicis Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir.
2005). In Cruciferous Sprout, the court stated “[i]t is well settled that a prior
art reference may anticipate when the claim limitations not expressly found
in that reference are nonetheless inherent in it.” In re Cruciferous Sprout
Litigation, 301 F.3d 1343, 1349 (Fed. Cir. 2002).
Analysis
Claim 1
Claim interpretation is at the heart of patent examination because
before a claim is properly interpreted, its scope cannot be compared to the
prior art. In this case, the limitations in claim 1 which are at issue are
“pedicle access device” and “shaped end for effectively engaging a facet
complex of a vertebra” (Claim 1).
During prosecution, claim terms are given their broadest reasonable
interpretation as they would be understood by persons of ordinary skill in the
art in the light of the Specification. Therefore, we first turn to the
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Specification to determine whether these phrases have any specified
definition.
The Specification discusses both phrases. The Specification teaches,
regarding the “pedicle access device” that the “following discussion of the
embodiments of the invention directed to a pedicle access device for spinal
fusion surgery is merely exemplary in nature, and is in no way intended to
limit the invention or its applications or uses” (Spec. 5 ¶ 0024; FF 1). The
Specification teaches, regarding the “shaped end for effectively engaging a
facet complex of a vertebra”, that the “positioning needle 12 includes a
specially configured tip 40 that allows it to lock onto a complex facet of a
vertebra . . . tip 40 of the positioning needle 12 can have different
configurations, such as a saw tooth or corrugated tip, that allow it to reliably
dock onto the superior facet . . . In one non-limiting embodiment, the tip 42
is a trocar (three-sided) tip” (Spec. 6 ¶ 0027; FF 2).
“pedicle access device”
When the Specification uses the phrase “pedicle access device” in the
context of Claim 1, the Specification is reasonably understood as
encompassing any device which is capable of accessing a pedicle, and the
device may have other uses besides pedicle access (see FF 1). In addition,
the phrase “pedicle access device” is an intended use recitation for the
claimed device. A preamble is not limiting “‘where a patentee defines a
structurally complete invention in the claim body and uses the preamble only
to state a purpose or intended use for the invention.”’ Catalina Mktg. Int’l,
Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). Here,
claim 1 defines a structurally complete invention consistent with Catalina.
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The preamble is used only to state the intended use of the invention and the
Specification makes it clear that the device is open to other uses (FF 1).
Appellant contends that “Ryan does not teach, nor does any section of
Ryan teach or suggest, that the trocar assembly 10 is a pedicle access device
or can in any way be used during spinal surgery” (App. Br. 8).
We are not persuaded. Since we interpret “pedicle access device” as
an intended use recitation in the preamble, which is not limiting, we
therefore agree with the Examiner that “because the Ryan device is capable
of accessing a pedicle, it meets the intended use limitation of a ‘pedicle
access device’” (Ans. 16). This interpretation is consistent with the
Specification (FF 1). In addition, Appellants do not identify any structure in
the claimed “pedicle access device” which distinguishes it from the device
of Ryan.
“shaped end for effectively engaging a facet complex of a vertebra”
Interpreting the phrase “shaped end for effectively engaging a facet
complex of a vertebra” in light of the Specification, it is clear that no
specific configuration of the shaped end is required (FF 2). Instead, the
Specification teaches that the “tip 40 of the positioning needle 12 can have
different configurations, such as a saw tooth or corrugated tip, that allow it
to reliably dock onto the superior facet . . . In one non-limiting embodiment,
the tip 42 is a trocar (three-sided) tip” (Spec. 6 ¶ 0027; FF 2).
The Specification clarifies that a variety of different configurations
may be used to engage a facet complex of a vertebra (FF 2) and therefore,
this functional limitation is reasonably interpreted as broadly applying to the
cannula ends of Ryan (FF 3). See In re Zletz, 893 F.2d 319, 322 (Fed. Cir.
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1989) (“[D]uring patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language explored,
and clarification imposed.”)
Anticipation
Ryan expressly teaches a device which meets the structural
requirements of claim 1, as discussed by the Examiner (Ans. 3-4). Ryan
teaches a device comprising a positioning needle with a first handle and a
cannula, which is a hollow tube (FF 3). Ryan teaches at least three different
configurations for the hollow tube, a circular configuration (FF 3), a tapered
tip configuration (FF 7) and a reduced diameter configuration (FF 8-9). As
discussed already, we agree with the Examiner that Ryan’s three ends would
have reasonably been “capable of contacting a facet complex of a vertebra
(note that contacting an object is one way of engaging that object) after
access to the vertebra has been provided” (Ans. 16).
Appellant contends that “the distal tip 20 identified as a pointed tip by
the Examiner on page 5 of the Final Office Action is clearly not a pointed
tip, but is a rounded tip” (App. Br. 8).
We are not persuaded. Ryan clearly teaches pointed tips, teaching
that “[t]rocar tip 920 is a sharp pointed tip and is preferred when the trocar is
used to incise the patient while inserting the trocar tube or cannula” (Ryan,
col. 11, ll. 45-48; FF 10). This is clearly shown in figure 9c, where the tip is
pointed (FF 11; Ans. 17).
Appellant contends that the “cannula 12 may be similar to Appellant’s
positioning needle and the trocar 19 may be similar to Appellant’s targeting
needle, but there still is no teaching or suggestion in Ryan that the cannula
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12 includes a specially configured end that is shaped to engage a facet
complex of a vertebra” (App. Br. 8). Appellant contends that claims 1 and
11 “state that the end of the hollow tube of the positioning needle has a
shape that is effective for engaging a facet complex of the vertebra.
Appellant submits that this language specifically identifies the shape of the
end of the hollow tube, thus making it a structural limitation” (App. Br. 9).
We are not persuaded. While we agree that the shape of the end is
structural, there is no requirement for any particular shape either in claim 1
or in the Specification (FF 2). The Specification expressly teaches that a
variety of different shapes will function (Id.). The only function required in
claim 1 for the shaped end is that of “engaging a facet complex of a
vertebra”, which the Examiner reasonably interprets as encompassing
contacting the facet complex of a vertebra (see Ans. 16). We think the
Examiner has properly addressed this functional limitation and has shifted
the burden to Appellant to demonstrate that the shaped ends taught by Ryan
would not satisfy the functional requirement of “engaging a facet complex of
a vertebra” in claim 1. See In re Best, 562 F.2d, 1252, 1255 (CCPA 1977)
(“Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on
‘prima facie obviousness' under 35 U.S.C. § 103, jointly or alternatively, the
burden of proof is the same, and its fairness is evidenced by the PTO’s
inability to manufacture products or to obtain and compare prior art
products”). On this record, Appellant has proffered no evidence or proof
that Ryan’s cannula shapes do not inherently satisfy “engaging a facet
complex of a vertebra” requirement.

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Claim 4
Appellant contends that “Ryan does not expressly or inherently
disclose that the second handle is removably secured to the first handle by
threading a threaded portion of the second handle into a threaded bore of the
first handle” (App. Br. 10).
The Examiner finds that “Ryan et al. disclose that the second handle
(‘Knob’) is removably secured to the first handle by threading a threaded
portion of the second handle (‘Knob’) into a threaded bore of the first
handle (Fig. 2 inset)” (Ans. 4).
We find that Appellant has the better position. The Examiner
interprets the combination of the valve assembly 16 and the trocar assembly
18 as the “second” handle, while the cannula assembly 11 is the “first”
handle (see Ans. 4-6). However, claim 4 depends from claim 1, which
specifically identifies the positioning needle as “including a first handle and
a hollow tube” and a targeting needle as “including a second handle and a
rod”. The cannula assembly 11 reasonably satisfies the “first” handle of
claim 1. However, the only teaching in Ryan which reasonably corresponds
to the “second” handle is the trocar assembly 18. We do not find it a
reasonable interpretation to interpret the connection of the valve assembly
16 into the cannula assembly 11 as a connection of the first and second
handles of claims 1 and 4. Ryan does not teach that the trocar assembly 18
is threaded into the valve assembly 16, but rather
when the reusable trocar 18 is inserted through the
throughbore 174 in the valve covering cap 164, and through
the washer 163, slit valve 162, throughbore 171 in the valve
body 160, and the cannula 12, the internal splines 202 in the
trocar handle 21 engage the external splines 175 on the
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covering cap 164 of the valve body 160 as the trocar tip 20
extends past the distal end of the cannula 12. These splines
prevent the trocar handle from rotation relative to the valve
body 14.

(Ryan, col. 7, ll. 5-13; FF 12). This does not teach that trocar 18 is
“removably secured to the first handle by threading a threaded portion”, but
rather an engagement of splines.
Claims 5 and 15
Appellant contends that “the Examiner refers to figure 2 of Ryan
without citing any language in the specification that expressly or inherently
discloses a second handle that is a knob with extending ridges” (App. Br.
10).
The Examiner finds that “the second handle is a knob including
extended ridges (Fig. 2. inset)” (Ans. 4).
We find that the Examiner has the better position. Ryan teaches a
proximal handle 21 which has ridges which extend beyond the ends of the
sleeve portion 201 of the trocar handle, reasonably satisfying both the
“knob” and “extending ridges” elements of claim 5.
Claims 10 and 16
Appellant “submits that the language ‘specially configured to engage
the facet complex of an articular process of a vertebra’ in dependent claims
10 and 16 has patentable weight” (App. Br. 11). Appellant contends that
“accordingly, dependent claims 10 and 16 are not anticipated by Ryan
because Ryan does not expressly or inherently disclose a pedicle access
device specially configured to engage the facet complex of an articular
process of a vertebra” (App. Br. 11).
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The Examiner finds that “the specially configured end of Ryan would
also be capable of contacting a facet complex of an articular process of a
vertebra. Thus, because Ryan’s device is capable of meeting the intended
use, it satisfies the claimed intended use limitation” (Ans. 19).
We find that the Examiner has the better position. As we have already
discussed above, the Examiner has properly addressed this functional
limitation and has shifted the burden to Appellant to demonstrate that the
shaped ends taught by Ryan would not satisfy the functional requirement of
“specially configured to engage the facet complex of an articular process of
a vertebra” in claim 10. Best, 562 F.2d at 1255. On this record, Appellant
has proffered no evidence or proof that Ryan’s cannula shapes do not
inherently satisfy this functional requirement.
Claim 13
Appellant contends that “Ryan does not expressly or inherently
disclose removably securing the knob by threading a threaded portion of the
knob into a threaded bore of the positioning handle” (App. Br. 11-12).
The Examiner finds that Ryan discloses a needle with “the knob being
removably secured to the positioning handle by threading a threaded portion
of the knob into a threaded bore of the positioning handle, … wherein a
pointed tip of the rod extends out of the specially configured end of the
hollow tube” (Ans. 4).
We find that Appellant has the better position for the same reasons as
in claim 4 discussed above.
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Conclusion of Law
The evidence of record supports the Examiner’s finding that Ryan
anticipates claims 1, 5, 10, 15, and 16.
The evidence of record does not support the Examiner’s finding that
Ryan anticipates claims 4 and 13.
B. 35 U.S.C. § 103(a) over Ryan and Cushieri
The Examiner finds that Ryan teaches “the claimed invention except
that the specially configured end of the hollow tube has opposing conical
portions” (Ans. 7). The Examiner finds that Cushieri teaches “an access
device wherein the specially configured end of the hollow tube of the
positioning needle has opposing conical configurations” (Ans. 8). The
Examiner finds it obvious “to form the Ryan et al. specially configured end
such that it has opposing conical configurations, as suggested by Cushieri”
(Ans. 8).
Appellant “submits that suggesting that the opposing sides of the tube
16 in Cushieri can be Appellant’s claimed opposing conical portions that are
effective to engage a complex facet of a vertebra is an improper
characterization of what is fairly taught by Cushieri” (App. Br. 12).
Appellant contends that “if Ryan does not include opposing conical portions
as claimed, where opposite sides of a tube are considered the opposing
conical portions, then clearly Cushieri also cannot teach opposing conical
portions” (App. Br. 13).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s finding that Ryan and Cushieri render claims 2 and
12 obvious?
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Findings of Fact
13. Figure 1 of Cushieri is reproduced below:

“FIG. 1 is a perspective view of a trocar system comprising a trocar
cannula” (Cushieri, col. 3, ll. 29-30).
Principles of Law
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citation omitted).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).

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Analysis
The Examiner interprets the tapered end 18 of Cushieri as
encompassing two opposing conical configurations as required by claim 2
(see FF 13). The Examiner identifies two conical portions where the trocar
cannula of Cushieri is bisected by an imaginary line so that one conical
section extends outward and the other inward as shown in the Examiner’s
Answer (Ans. 8). However, the ordinary meaning of the word “opposing”
is “facing; opposite”6. The two conical configurations identified by the
Examiner represent parts of a tapered edge that do not face or oppose one
another, in contrast to the configurations depicted in Figure 4 of the
Specification.
We therefore find that the Examiner’s interpretation of the tapered
edge of Cushieri as satisfying the requirement of claim 2 for “opposing
conical configurations” is not reasonable in light of the Specification. The
Examiner does not identify a teaching in either Ryan or Cushieri where there
is a cannula with where the conical extensions face one another.
Conclusion of Law
The evidence of record does not support the Examiner’s finding that
Ryan and Cushieri render claims 2 and 12 obvious.

6 "opposing". Oxford Dictionaries. April 2010. Oxford
Dictionaries. April 2010. Oxford University Press.
http://oxforddictionaries.com/definition/opposing (accessed
December 28, 2011).

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C. 35 U.S.C. § 103(a) over Ryan and Bramlet
The Examiner finds it obvious “to provide the Ryan et al. pedicle
access device with an elongated handle coupled to the first (or positioning)
handle, as suggested by Bramlet, as doing so allows the surgeon to remotely
hold the access device, thereby allowing better visualization of the surgical
site” (Ans. 9).
The Examiner provides sound fact-based reasoning for combining
Ryan with Bramlet. We adopt the fact finding and analysis of the Examiner
as our own. Appellant argues the underlying obviousness rejection over
Ryan, but Appellant does not identify any material defect in the Examiner’s
reasoning for combining Bramlet with Ryan. Since Appellant only argues
the underlying rejection of Ryan which we affirmed above, we affirm this
rejection for the reasons stated by the Examiner.
D. 35 U.S.C. § 103(a) over Ryan, Bramlet, and Wilson
The Examiner finds it obvious “to construct the Ryan et al. first and
second handles and the Bramlet elongated handle from a radiolucent
material, as suggested by Wilson et al., as stainless steel is radiopaque, and
such a construction would allow monitoring of the device using an x-ray”
(Ans. 9-10).
The Examiner provides sound fact-based reasoning for combining
Wilson with Ryan and Bramlet. We adopt the fact finding and analysis of
the Examiner as our own. Appellant argues the underlying obviousness
rejection over Ryan, but Appellant does not identify any material defect in
the Examiner’s reasoning for combining Wilson with Ryan and Bramlet.
Since Appellant only argues the underlying rejection of Ryan which we
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affirmed above, we affirm this rejection for the reasons stated by the
Examiner.
E. 35 U.S.C. § 103(a) over Ryan, Bramlet, and McPhaul
The Examiner finds it obvious “to modify the manner in which the
Bramlet elongated handle is coupled to the Ryan et al. first handle such that
the coupling is a threaded connection, as suggested by McPhaul, as doing so
is merely a simple substitution of one known element for another to yield
predictable results” (Ans. 10).
The Examiner provides sound fact-based reasoning for combining
McPhaul with Ryan and Bramlet. We adopt the fact finding and analysis of
the Examiner as our own. Appellant argues the underlying obviousness
rejection over Ryan, but Appellant does not identify any material defect in
the Examiner’s reasoning for combining McPhaul with Ryan and Bramlet.
Since Appellant only argues the underlying rejection of Ryan which we
affirmed above, we affirm this rejection for the reasons stated by the
Examiner.
F. 35 U.S.C. § 103(a) over Ryan and Wilson
The Examiner finds it obvious “to construct the Ryan et al. handles
from a radiolucent plastic, as suggested by Wilson et al., as stainless steel is
radiopaque, and such a construction would allow monitoring of the device
using an x-ray” (Ans. 11).
The Examiner provides sound fact-based reasoning for combining
Wilson with Ryan. We adopt the fact finding and analysis of the Examiner
as our own. Appellant argues the underlying obviousness rejection over
Ryan, but Appellant does not identify any material defect in the Examiner’s
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reasoning for combining Wilson with Ryan. Since Appellant only argues
the underlying rejection of Ryan which we affirmed above, we affirm this
rejection for the reasons stated by the Examiner.
G. 35 U.S.C. § 103(a) over Ryan, Wilson, Cushieri, and Bramlet
The Examiner relies upon Cushieri to teach opposing conical portions
(Ans. 12) and on Ryan to teach the “knob being removably secured to the
positioning handle by threading a threaded portion” (Ans. 11).
We reversed the rejection of claim 4 for the lack of a teaching in Ryan
to removably attach the positioning handle using threaded portions and we
reversed the rejection of claim 2 for the absence of any teaching of
“opposing conical portions” in either Ryan or Cushieri. For the same
reasons, we reverse this rejection of claims 19 and 20 which include both of
these limitations.
SUMMARY
In summary, we affirm the rejection of claims 1, 5, 10, 15, and 16
under 35 U.S.C. § 102(b) as anticipated by Ryan. Pursuant to 37 C.F.R.
§ 41.37(c)(1), we also affirm the rejection of claims 3 and 11 as these claims
were not argued separately.
We reverse the rejection of claims 4, 13, and 14 under 35 U.S.C.
§ 102(b) as anticipated by Ryan.
We reverse the rejection of claims 2 and 12 under 35 U.S.C. § 103(a)
as obvious over Ryan and Cushieri.
We affirm the rejection of claims 6 and 17 under 35 U.S.C. § 103(a)
as obvious over Ryan and Bramlet.
Appeal 2010-007447
Application 11/408,571

22
We affirm the rejection of claims 7 and 18 under 35 U.S.C. § 103(a)
as obvious over Ryan, Bramlet, and Wilson.
We affirm the rejection of claim 8 under 35 U.S.C. § 103(a) as
obvious over Ryan, Bramlet, and McPhaul.
We affirm the rejection of claim 9 under 35 U.S.C. § 103(a) as
obvious over Ryan and Wilson.
We reverse the rejection of claims 19 and 20 under 35 U.S.C. § 103(a)
as obvious over Ryan, Wilson, Cushieri, and Bramlet.

AFFIRMED-IN-PART

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