Ex Parte Simonson

Board of Patent Appeals and Interferences

Jan 5, 2012

11030218 (B.P.A.I. Jan. 5, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ROBERT E. SIMONSON
__________

Appeal 2010-008809
Application 11/030,218
Technology Center 3700
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Before DONALD E. ADAMS, STEPHEN WALSH, and
ERICA A. FRANKLIN, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
rejection of claims directed to a method of creating a working channel from
a skin incision to proximate a vertebra. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.
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Application 11/030,218

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STATEMENT OF THE CASE
Claims 1-4 are on appeal. Claim 1 is representative and reads as
follows:
1. A method of creating a working channel from a skin incision to
proximate a vertebra, comprising:
making a skin incision;
inserting a distal end of a dilator into the skin incision;
advancing the distal end of the dilator into proximity to a vertebra, the
dilator extending from proximate the vertebra to external to the skin
incision;
inserting a cannula over the dilator;
removing the dilator, a bore of the cannula defining a working channel
from the skin incision to proximate the vertebra; and
passing an implant through a lateral passage extending laterally
through the distal end of a sidewall of the cannula. (Emphasis added.)

The Examiner rejected the claims under 35 U.S.C. § 103(a) as
unpatentable over Mathews1 and Sasso.2
OBVIOUSNESS
The Issue
The Examiner’s position is that Mathews taught a method of creating
a working channel from a skin incision to proximate a vertebra comprising
the first five steps recited in Appellant’s claim 1, but not the last step of
passing an implant through a lateral passage. (Ans. 3.) The Examiner
explained why it would have been obvious to modify Mathews’ method:
Sasso teaches a lateral passage (at 110) extending laterally
through a distal end (at 104) of a sidewall of the cannula (see fig. 1) in
order to provide ease for contacting the surgical site (see para. 22-
note crescent shape). It would have been obvious to one of ordinary

1 Hallett H. Mathews, US 6,033,406, issued March 7, 2000.
2 Rick Sasso, US 2001/0027320 A1, published Oct. 4, 2001.
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skill in the art at the time the invention was made to modify Matthews
in view of Sasso in order to provide ease for contacting the surgical
site (para. 22 lines 14-19).

(Ans. 4.)
Appellant contends that Mathews and Sasso deliver bone screws
longitudinally through their cannulas, and neither suggests passing an
implant through a passage in the sidewall. (App. Br. 4.) Thus, “Appellants
submit that by requiring the lateral passage to extend laterally through a
sidewall of a cannula, the only way for an implant to pass through such a
passage is for it to pass laterally.” (Id. at 5.)
The Examiner responds:
The Examiner agrees with Appellant that Matthews and Sasso teach
delivering a bone screw longitudinally through the cannula, but
respectfully points out that because the lateral and longitudinal
passages of Sasso intersect, the bone screw is also passed through a
central portion of the lateral passage. Claim 1, as written, only
requires that the passage extends laterally through the distal end of
the sidewall, and that the implant pass through the lateral passage,
all of which are taught by Sasso. Neither claim 1 nor claim 2
requires that the implant pass through the sidewall of the
cannula.

(Ans. 5-6.)
Appellant replies that the Examiner’s reliance on an imaginary
passage extending between opposed sides of the cannula misconstrues the
claim language, and that “[t]he plain language of the claim requires that the
lateral passage extend through ‘the sidewall,’ and not between opposed
sidewalls or through the center area of the cannula.” (Reply Br. 2.)
The issue is the broadest reasonable interpretation of the method step
“passing an implant through a lateral passage extending laterally through the
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Application 11/030,218

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distal end of a sidewall of the cannula.” More particularly, the question is
whether a person of ordinary skill in the art would reasonably construe the
claim to read on passing an implant through the imaginary portion of a
lateral passage that extends through a cannula’s intersecting longitudinal
passage.
Principles of Law
[T]he PTO applies to the verbiage of the proposed claims 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).
Analysis
Having considered the arguments, we conclude that Appellant has the
more reasonable position on claim interpretation. That is, a person of
ordinary skill in the art would reasonably interpret the claim in a practical
way, rather than imagine a passage between the opposing sidewalls of a
cannula and think that the claim means no more than passing implants
through the longitudinal bore of the cannula, transiting an imagined
extension of a lateral passage. Put another way, the rejection means that a
person of ordinary skill in this art would interpret the last clause of the claim
as open to replacing “the distal end of a sidewall” with a reference to empty
space, as if it read “passing an implant through a lateral passage extending
laterally through the [longitudinal bore] of the cannula.” Stated differently,
the rejection posits that since the combination of prior art suggests a crescent
moon-like shaped sidewall at the distal end of a cannula, the distal end of the
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cannula has a lateral passageway and therefore an implant passed
longitudinally through the bore of the cannula from the proximal to the distal
end will exit the distal end of the cannula through both a longitudinal and
lateral passageway. While these readings might be consistent with abstract
geometry, we agree with Appellant that the person of ordinary skill in this
art would not read the claim in that way. See In re Nelson, 280 F.2d 172,
181 (1960) (“The descriptions in patents are not addressed to the public
generally, to lawyers or to judges, but, as section 112 says, to those skilled in
the art to which the invention pertains or with which it is most nearly
connected.”).
SUMMARY
We reverse the rejection of claims 1-4 under 35 U.S.C. § 103(a) as
unpatentable over Mathews and Sasso.

REVERSED

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