Ex Parte Wenstrom et al

Board of Patent Appeals and Interferences

Mar 30, 2012

10951107 (B.P.A.I. Mar. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte RICHARD F. WENSTROM, JR. and RAN OREN
__________

Appeal 2011-000925
Application 10/951,107
Technology Center 3700
__________

Before DONALD E. ADAMS, STEPHEN WALSH, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

BONILLA, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to a
surgical instrument, such as a surgical drill guide. The Examiner has
rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2011-000925
Application 10/951,107

2
STATEMENT OF THE CASE
The claims are directed to a surgical instrument, such as a surgical
drill guide, comprising an elongated tubular member with at least two tangs
at the end, and an elongated handle having at least one tactile reference
mark. Claims 1-16 are on appeal, with claims 1 and 11 being independent.
Independent claim 1 is representative, and reads as follows:
1. A surgical instrument, comprising:
an elongated tubular member having a distal end, a proximal
end, a tubular wall, a longitudinal axis, and at least two tangs
extending substantially distally from the distal end;
an elongated handle extending from the tubular member
proximal to the at least two tang members, and having an external
surface, the surface having a substantially triangular external cross-
section about the axis;
at least one tactile reference mark on the surface, the at least
one tactile reference mark having a predetermined alignment with the
at least two tang members, such that the orientation of the tangs with
respect to the handle is determinable by a surgeon engaging the tactile
reference mark without visually observing the tangs; and,
a cannulated passage extending through the tubular member and
handle, said passage having a proximal opening, a distal opening and
a lumen in communication with said openings.
Claim 8 depends on claim 1, but further recites that “the at least one tactile
reference mark comprises a plurality of grooves.”
The claims stand rejected as follows:
• Claims 1-3, 6-11, 13, 15, and 16 under 35 U.S.C. §103(a) as
obvious over Burkhart ‘451 (U.S. Pat. No. 5,993,451, issued Nov. 30, 1999)
in view of Bonutti (U.S. Pat. No. 5,782,862, Jul. 21, 1998).
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Appeal 2011-000925
Application 10/951,107

4
Figure 1 depicts a side view of a cannulated drill guide, and Figure 3 depicts
a partial, distal end view of the drill guide.
2. As shown in Figure 1, Burkhart ‘451 discloses a surgical instrument 2
comprising an elongated tubular member 4 having a distal end, a proximal
end, a tubular wall, a longitudinal axis, as well as two tangs 10 that extend
distally from the distal end of the tubular member 4.
3. Figure 1 of Burkhart ‘451 also shows an elongated handle 6 extending
from the tubular member 4, proximal to the two tangs.
4. In addition, Figures 1 and 3 in Burkhart ‘451 show that a cannulated
passage extends through the tubular member 4 and handle 6, and that the
passage has a proximal opening, a distal opening and a lumen in
communication with the openings. (See also id. at Figure 2.)
5. Bonutti also discloses a hand-held surgical instrument having a handle
and a shaft that extends outwardly from the handle. (Bonutti, col. 1, ll. 25-
27.) As taught in Bonutti, “[t]o facilitate gripping of the handle, the handle
may advantageously have a triangular cross-sectional configuration.” (Id. at
ll. 49-52.)

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Appeal 2011-000925
Application 10/951,107

6
10. As further shown in Figure 1 of Bonutti, a plurality of ribs 146 extend
across a different surface of the handle (surface 140), which also helps
“retard slippage between the hand of the surgeon and the handle.” (Id. at
col. 7, ll. 32-38; see also Figures 16 and 17.) Some, but not all, of the ribs of
146 are aligned with the ribs 120 on the first side of the triangular handle.
(Id. at ll. 58-60.)
Principles of Law
The ultimate question of obviousness is one of law, based upon
factual inquiries set forth in the Graham case: (1) the scope and content of
the prior art; (2) the differences between the prior art and the claims at issue;
(3) the level of ordinary skill in the pertinent art; and (4) objective evidence
of non-obviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). “An examiner bears the initial burden of presenting a prima facie
case of obviousness.” In re Huai-Hung Kao, 639 F.3d 1057, 1066 (Fed. Cir.
2011). “Once the examiner establishes a prima facie case of obviousness,
the burden shifts to the applicant to rebut that case.” Id. If the applicant
presents rebuttal evidence, such as unexpected results or that the prior art
teaches away from the claimed invention, the Examiner must consider the
totality of the evidence to determine whether the obviousness rejection
should stand. Id.
Analysis
As noted by the Examiner, Burkhart ‘451 teaches the surgical
instrument recited in claim 1, “except for explicitly reciting that the handle
can have a triangular cross-section and a plurality of grooves forming a
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tactile reference mark.” (Ans. 4; see also FF 1-4.) Bonutti teaches a similar
tool, however, comprising a triangular handle that has at least one tactile
reference mark on the surface of the handle, as shown in Figure 1. (FF 5-
10.) Moreover, as noted by the Examiner, “at least some of the grooves
adjacent feature 102 are unique to only one side of the triangular handle, and
would accordingly provide a tactile reference mark corresponding to a
particular orientation of the tool.” (Ans. 5.) Specifically, Figure 1 of
Bonutti shows one side of the triangular handle having a recess 102 and ribs
120, i.e., a plurality of grooves, as well as a second side of the handle having
a different number of ribs 146 and no recess. (FF 8-10; see also Ans. 9.)
Bonutti describes advantages to having a triangular handle, such as
comfortable gripping of the handle, and accurate pointing and positioning of
the device. (FF 7.) Bonutti also describes advantages of having the recess
102, ribs 120, and ribs 146 on the triangular handle, such as minimizing
finger and hand slippage by the surgeon. (FF 9, 10.) In light of these
advantages, we agree with the Examiner that it would have been prima facie
obvious to provide the drill guide of Burkhart ‘451 with the triangular
handle of Bonutti (Ans. 5), thereby rendering claim 1 prima facie obvious.
In response to the Examiner’s prima facie case, Appellants rely on the
portion of claim 1 that recites that the tactile reference mark has “a
predetermined alignment with the at least two tang members, such that the
orientation of the tangs with respect to the handle is determinable by a
surgeon engaging the tactile reference mark without visually observing the
tangs.” In relation to this claim language, Appellants argue that “[n]either
Burkhart nor Bonutti speak to the issue of providing a reference on a tool
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Application 10/951,107

8
handle in specific orientation to tangs on the distal end of the tool.” (App.
Br. 4.) In addition, Appellants assert that recess 102 on Bonutti’s handle “is
not for aligning the tool but rather for resting a finger adjacent the actuating
button 94.” (Id.) Because Burkhart does not have an actuating button,
according to Appellants, “there would be no reason for a designer to
incorporate it into the Burkhart device.” (Id.) Lastly, Appellants assert that
“[e]ven if the alleged combination were made,” it would not have
“predetermined alignment with the at least two tang members, such that the
orientation of the tangs with respect to the handle is determinable by a
surgeon.” (Id.)
As discussed above, however, one would have been motivated to
provide the drill guide of Burkhart ‘451 with the triangular handle shown in
Figure 1 of Bonutti. Upon inspection of such a drill guide, those skilled in
the art would have understood that the instrument had a plurality of grooves
having a specific alignment with regard to the two tang members, i.e., “at
least one tactile reference mark having a predetermined alignment with the
at least two tang members” as recited in claim 1. This would have been the
case, even assuming that Burkhart ‘451 and Bonutti did not expressly “speak
to the issue of providing a reference on a tool handle in specific orientation
to tangs,” as alleged by Appellants (App. Br. 4).
Moreover, the drill guide of Burkhart ‘451 having the handle of
Bonutti would have necessarily had a plurality of grooves, i.e., “tactile
reference marks,” and two tangs, where “orientation of the tangs with
respect to the handle is determinable by a surgeon engaging the tactile
reference mark without visually observing the tangs.” We note that this
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Application 10/951,107

9
quoted element of claim 1 only requires that a surgeon be capable of
determining “the orientation of the tangs … without visually observing the
tangs.” Looking at a drill guide of Buckhart ‘451 having Bonutti’s
triangular handle with recess 102 and ribs 120 on one side, and ribs 146
without a recess on a second side of the handle, a surgeon certainly could
determine the orientation of the tangs without visually observing the tangs
when using the drill guide in a patient. A surgeon would be capable of
doing such a thing based on the known location of the recess and different
ribs on different sides of the handle in relation to the tangs at the end of the
elongated tubular member, as seen before using the device.
We find that Appellants have failed to provide adequate evidence of a
teaching away from using the drill guide of Burkhart ‘451 with the triangular
handle shown in Figure 1 of Bonutti. Appellants’ arguments do not
overcome the clear teaching in Bonutti of the advantages of using the handle
shown in Figure 1 of Bonutti, as compared to a different handle that is not
triangular or lacks ribs or grooves. Likewise, Appellants have not alleged
any unexpected results or other evidence of secondary considerations
sufficient to overcome the prima facie case of obviousness regarding claim
1.
Conclusion of Law
We conclude a skilled artisan would have been motivated to provide
the drill guide of Burkhart ‘451 with the triangular handle disclosed in
Bonutti, thereby rendering the surgical instrument of claim 1 prima facie
obvious over these references. We further find that the record before us
does not provide sufficient evidence of secondary considerations, when
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10
weighed with the evidence of obviousness, to rebut the prima facie case
established by the Examiner. Because Appellants do not argue claims 2-3,
6, 7, 9-11, 13, 15, and 16 separately from claim 1, these claims fall together
with claim 1.
II.
Issue
Does Figure 1 of Bonutti disclose at least one tactile reference mark
that “comprises a plurality of grooves” as recited in claim 8, thereby
rendering claim 8 obvious over Burkhart ‘451 in view of Bonutti?
Analysis
Appellants argue claim 8 separately from the other pending claims.
Claim 8 depends on claim 1, but further recites that “the at least one tactile
reference mark comprises a plurality of grooves.” Appellants assert that
Burkhart’s handle lacks a tactile reference mark comprising grooves, and
that the “Bonutti device has grooves on all three faces making them useless
as a tactile reference mark.” (App. Br. 5.) Appellants also assert that the
Examiner identifies recess 102 in the Bonutti’s handle as being the claimed
tactile reference mark. (Id.)
As an initial matter, we disagree with the suggestion that the
Examiner identifies recess 102 as the only possible tactile reference mark.
(See, e.g., Ans. 5 (noting “that at least some of the grooves adjacent feature
102 are unique to only one side of the triangular handle, and would
accordingly provide a tactile reference mark corresponding to a particular
orientation of the tool”); see also id. at 9 (stating that the grooves in Bonutti
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Application 10/951,107

11
“comprise the large groove or recess 102 as well as the small lateral grooves
adjacent each side of the large groove”).)
Appellants other arguments regarding claim 8 do not confront the
evidence, as discussed above, that one would have been motivated to
provide the drill guide of Burkhart ‘451 with the triangular handle shown in
Figure 1 of Bonutti, and that Bonutti’s triangular handle has a certain
number of ribs 120 next to recess 102 on one surface of the handle, while a
second surface has an additional number of ribs 146 without a recess. In
other words, as pointed out by the Examiner, “the grooves on one face of the
handle are unique.” (Ans. 9.) Contrary to Appellants’ assertion, the
differences in number of grooves and the presence/absence of a recess 102
on different surfaces of the triangular handle would have rendered the
plurality of grooves (comprising ribs 120 or ribs 146) on the handle of
Bonutti useful as tactile reference marks.
For these reasons, and for the same reasons discussed above regarding
claim 1, we find that Appellants have not rebutted the prima facie case of
obviousness of claim 8 over Burkhart ‘451 in view of Bonutti.
Conclusion of Law
We conclude that Figure 1 of Bonutti discloses a tactile reference
mark that “comprises a plurality of grooves” as recited in claim 8, thereby
rendering claim 8 prima facie obvious over Burkhart ‘451 in view of
Bonutti. We further find that the record before us does not provide
sufficient evidence of secondary considerations, when weighed with the
evidence of obviousness, to rebut the prima facie case established by the
Examiner.
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Application 10/951,107

12
SUMMARY
We affirm the rejection of claims 1 and 8 under 35 U.S.C. §103(a) as
obvious over Burkhart ‘451 in view of Bonutti. Because they are not
separately argued, claims 2-3, 6, 7, 9-11, 13, 15, and 16 fall together with
claim 1. Appellants do not assert that the Examiner’s rejection of claims 4,
5, 12, and 14 is improper, nor identify any error by the Examiner regarding
these claims. We therefore also affirm the rejection of claims 4, 5, 12, and
14 as obvious over Burkhart ‘451 in view Bonutti and Burkhart ‘333 for the
reasons discussed above, and for the reasons of record as stated by the
Examiner.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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