Ex Parte Shluzas et al

Board of Patent Appeals and Interferences

Sep 20, 2010

10926579 (B.P.A.I. Sep. 20, 2010)

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.
10/926,579 08/26/2004 Alan E. Shluzas 1291.1149101 9644
33469 7590 09/20/2010
CROMPTON, SEAGER & TUFTE, LLC
1221 NICOLLET AVENUE
SUITE 800
MINNEAPOLIS, MN 55403-2420
EXAMINER
MAI, HAO D
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
09/20/2010 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 ALAN E. SHLUZAS, KARL DALLAS KIRK III, and
WALTER STOECKMANN
____________________

Appeal 2009-013786
Application 10/926,579
Technology Center 3700
____________________

Before: WILLIAM F. PATE III, MICHAEL W. O’NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-013786
Application 10/926,579
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

The claims are directed to access systems and methods for minimally
invasive surgery. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A device for retracting tissue to provide access to a spinal
location within a patient, said device comprising:
an elongate body having a proximal portion and a distal
portion, the elongate body defining a length between the
proximal and distal portions along a longitudinal axis such that
the distal portion can be positioned inside the patient adjacent
the spinal location while the proximal portion is accessible, a
transverse cross section of the elongate body in the proximal
portion comprises a first dimension that is longer than a second
dimension, the first dimension being perpendicular to the
second dimension; and
a path extending through the elongate body between the
proximal and distal portions;
wherein the elongate body is configured such that the
proximal portion may be tilted relative to the distal portion in a
first direction generally aligned with the first dimension and in
a second direction generally aligned with the second dimension.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kim US 2005/0215866 A1 Sep. 29, 2005

Appeal 2009-013786
Application 10/926,579
3
REJECTIONS
Claims 1-18 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Kim. Ans. 3.

OPINION
We have carefully reviewed the rejection on appeal in light of the
arguments of the Appellants and the Examiner. As a result of this review,
we have determined that the cited portion of Appellants’ provisional
application does not support Appellants’ claim for benefit under 35 U.S.C.
§ 119. Accordingly, the Kim publication is a reference against the claimed
subject matter under 35 U.S.C. § 102. We have further reviewed the
Examiner’s findings under § 102 and have determined that the applied prior
art establishes the lack of novelty of claims 1-4 and 8-18. The rejection of
these claims is sustained. On the other hand, we find that the applied prior
art does not establish that the subject matter of claims 5-7 lacks novelty.
The rejection of these claims is reversed. Our reasons follow.
Appellants argue that the Examiner’s findings that Appellants’
provisional application does not support the subject matter now claimed and
that Appellants are not entitled to benefit are in error. Appellants refer us to
Figures 1 and 35 of the provisional application. App. Br. 8. We
acknowledge that Figure 1 shows a retractor with, what Appellants call, the
oblong transverse cross section in question. See id. We acknowledge that
Figure 35 is a crude sketch of a partial ball joint, the lower portion of the ball
joint having a frusto-conical flare. Appellants argue that because the legend
of the figure states that it is a partial ball joint, this supports Appellants’
claim to an oblong transverse cross section. We disagree. First of all, the
partial ball joint most likely refers to the fact that the ball in Figure 35 has
Appeal 2009-013786
Application 10/926,579
4
the bottom portion thereof cut away. That makes the partial hemispherical
structure a “partial ball.” Secondly, as Appellants readily admit, the cross-
sectional nature of the Figure leaves open the exact shape or cross section of
the proximal and distal members. Appellants, in the Reply Brief,
characterize this drawing as generic to the possible shapes. We, on the other
hand, would characterize the drawing simply as vague, at least as to the
point relied upon. Such a drawing cannot reasonably convey to one of
ordinary skill that Appellants are in possession of the subject matter of a
proximal member that has an oblong transverse cross section.
We also reject the argument of Appellants’ that consideration of
Figure 1 and Figure 35 together makes clear that the cross section in Figure
35 is Appellants’ oblong transverse cross section. Without more
information, it is unclear that these embodiments are related in any way, and
they do not support a finding that the cross section in Figure 35 has been
further defined. Accordingly, it is our finding that the material from the
provisional application that Appellants rely on does not reasonably convey
possession of the subject matter now claimed. The Examiner’s
determination that Appellants are not entitled to benefit under 35 U.S.C. §
119 is not erroneous.
Turning to the rejection, we adopt the Examiner’s findings on pages
3-5 of the Examiner’s Answer as our own with one proviso. While we agree
with the Examiner that the apparatus of Kim provides the requisite axes of
rotation, claim 5 is clearly directed to a gimbal ring. Absent the frame 110
of Kim, there is no ring structure in the reference that can satisfy the
limitation found in claim 5 for a gimbal ring. See Kim, para. [0037].
Therefore, the rejection of claim 5 and claims 6 and 7 which depend thereon,
is reversed.
Appeal 2009-013786
Application 10/926,579
5
Appellants appear to assert that Kim does not provide a first portion
and a second portion. See App. Br. 11. We agree with the Examiner that the
frame that surrounds the surgical field and mounts the retractors is clearly a
first portion. As to Appellants’ arguments that the frame and retractors
together do not establish a path, we agree with the Examiner that the central
axis down through the frame and through the retractors fully satisfies the
claimed limitation of a path. Furthermore, with reference to Figure 5 of
Kim, we note that the retractor positions are such that the top of the
retractors are lower than the top of the frame. This clearly establishes that
the surgical path is partly through the frame even before it reaches the top of
the retractors.
Appellants state that the frame of Kim is used outside of the body.
App. Br. 11-12. We agree and remind Appellants that this is consonant with
the claimed subject matter. For example, claim 1 requires the distal portion
to be inserted in the body while the proximal portion is accessible. This is a
precise definition of a frame that is accessible outside of the body but
connected to the distal portion that retracts tissue of the patient.
Appellants’ final argument is that the proximal portion does not
appear to be movable relative to the distal portion. App. Br. 12-13. First of
all, we deny that this is factually the case. It is clear that the retractors of
Kim could be positioned and the frame readjusted if a surgeon so desired.
Secondly, the claims on appeal are directed to two members that are
relatively movable with respect to one another. We believe it is sophistry to
make the argument that one is movable with respect to the other, but not vice
versa. Accordingly, Appellants’ arguments fail to convince us of any error
in the Examiner’s rejection of claims 1-4 and 8-18.

Appeal 2009-013786
Application 10/926,579
6
SUMMARY
The rejection of claims 1-4 and 8-18 under 35 U.S.C. § 102 is
affirmed.
The rejection of claims 5-7 is reversed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

nlk

CROMPTON, SEAGER & TUFTE, LLC
1221 NICOLLET AVENUE
SUITE 800
MINNEAPOLIS MN 55403-2420