Ex Parte Wolford et al

Board of Patent Appeals and Interferences

May 31, 2012

11387282 (B.P.A.I. May. 31, 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.
11/387,282 03/23/2006 Todd A. Wolford SMI0125.US 4880
41863 7590 05/31/2012
TAYLOR IP, P.C.
P.O. Box 560
142. S Main Street
Avilla, IN 46710
EXAMINER
COMSTOCK, DAVID C
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
05/31/2012 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 TODD A. WOLFORD,
MARK NORDMAN, and WARREN SCOTT GAREISS
__________

Appeal 2011-002365
Application 11/387,282
Technology Center 3700
__________

Before TONI R. SCHEINER, LORA M. GREEN, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner‟s rejection of claims 1-19.
1
We have jurisdiction under 35 U.S.C.
§ 6(b).

1
Claims 20-22 are also pending, but stand withdrawn from consideration
(App. Br. 5).
Appeal 2011-002365
Application 11/387,282

2
STATEMENT OF THE CASE
The present invention relates to a pin-driven angled surgical driver
(Spec. 2). Angled surgical drivers are used in joint replacement surgery (id.
at 1). According to the Specification, an “advantage of the present invention
is that there is no central locating/linking pin” (id. at 2). The Specification
states that “[p]ins . . . are generally cylindrical in nature being bent at
approximately a midpoint thereof” (id. at 4).
Claim 1 is representative of the claims on appeal, and reads as follows
(emphasis added):
1. An angled surgical driver, comprising:
a first rotatable member rotatable about a first rotational axis;
a second rotatable member angularly associated with said first
rotatable member, said second rotatable member being rotatable about a
second rotational axis;
an angled housing rotatably connected to said first rotatable member
and said second rotatable member; and
a plurality of pins drivingly connecting said first rotatable member to
said second rotatable member, there being no pin located on both said first
rotational axis and said second rotational axis.

Claim 12, the other independent claim, also requires “a plurality of
pins drivingly connecting said first rotatable member to said second
rotatable member, there being no pin centered on both said first axis and said
second axis.” Thus, although we focus our analysis on claim 1, the issues
are the same with respect to claim 12.
The following grounds of rejection are before us for review:
Appeal 2011-002365
Application 11/387,282

3
I. Claims 1-5 and 7-19 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Chiu.
2

II. Claim 6 stands rejected under 35 U.S.C. § 103(s) as being rendered
obvious by the combination of Chiu and Williams.
3

We reverse.

ANALYSIS
As to the anticipation rejection, the Examiner finds that Chiu teaches
“a plurality of pins („24‟) drivingly connecting the first rotatable member to
the second rotatable member (Figs. 3 and 4 inset)” (Ans. 4).
Figure 3 of Chiu is reproduced below:

2
Chiu, US 2004/0045417 A1, published Mar. 11, 2004.
3
Williams, US 4,578,083, issued Mar. 25, 1986.
Appeal 2011-002365
Application 11/387,282

4

Figure 3 is an exploded perspective view of a grip structure for fixing an
angled socket (Chiu, p. 2, ¶18). Chiu teaches that there is “a linking bar 23
mounted between the driven body 21 and the drive body 22, and multiple
drive bars 24 mounted between the driven body 21 and the drive body 22”
(id. at 2, ¶25).

Appeal 2011-002365
Application 11/387,282

5
Appellants argue that Chiu does not teach or suggest an angled
surgical driver wherein there is no pin located on the first and second
rotational axes (App. Br. 9-10). Appellants assert that in the apparatus of
Chiu, there is a linking bar mounted between the driven body and the drive
body, and the apparatus rotates around the linking bar (id. at 10). Appellants
further assert that “[a]s can be clearly seen in the figures, the linking bar of
the prior art reference is positioned on the rotational axis of both the drive
body and the driven body so that the driving bars can be utilized to drive the
driven body” (id.). Appellants argue that the linking bar in Chiu
corresponds to a “pin,” and is thus a pin located on a rotational axis, which is
inconsistent with what is recited in the last clause of claim 1 (id. at 9-10).
Appellants assert that the Examiner‟s finding that the linking bar of
Chiu is not a pin as set forth in the claims is at odds with the instant
Specification, which defines “a „pin‟ as being generally cylindrical, being
bent at an angle at approximately a midpoint of its length” (id. at 11).
Appellants assert that as seen in Figure 3 of Chi, bars 23 and 24 meet the
definition of pin as set forth in the instant Specification, with bar 23 being
located on the rotational axis and bars 24 being located thereabout (id.).
Appellants assert further that if one were to extend the Examiner‟s finding
that a bar is not a pin, it “would . . . lead to the conclusion that the plurality
of pins in Appellants‟ claim are not the same as the bars of Chiu, which
would then be another limitation of Appellants‟ claim that is not taught in
the cited prior art” (Reply Br. 2).
Appeal 2011-002365
Application 11/387,282

6
The Examiner responds that the claims allow for additional structure
due to the use of the transition phrase “„comprising‟” (Ans. 9). The
Examiner further finds:
Element 23 is a separate and distinct element. It is identified in
the reference as a “linking bar.” Since it is a distinct element
with a separate purpose, name, and reference numeral, it is not
precluded by the negative limitation of the claim. As even
further evidence that the claims do not preclude the separate
structure of element 23, the claims recite a plurality of pins
“drivingly connecting” the members. Elements 24 were
identified as the pins and they are called “drive bars” in the
reference. These correspond to the language “drivingly
connecting” in the claims. However, element 23 is neither
referred to as a pin nor as a “drive bar.” Rather, this separate
structure is referred to as a “linking bar.” Therefore, for this
additional reason, there is no basis for asserting that the
additional distinct structure of element 23, a “linking bar,” is
somehow precluded by the claims, which are directed to the
drivingly connected “pins.”

(Id.)
We conclude that Appellants have the better position. Claim 1 is
drawn to an angled surgical driver comprising “a plurality of pins drivingly
connecting said first rotatable member to said second rotatable member,
there being no pin located on both said first rotational axis and said second
rotational axis.” As shown in Figure 3 above, the bars of Chiu appear to
have the same structure, with, as found by the Examiner, the multiple drive
bars 24 corresponding to the plurality of pins required by the claim. The
Examiner‟s position appears to be that the linking bar 23 is not a pin because
it is not called a pin or a drive bar. The Examiner does not dispute, however,
that the linking bar is mounted between the driven body and the drive body
Appeal 2011-002365
Application 11/387,282

7
at the first rotational axis of the first rotatable member and the second
rotational axis of the second rotatable member.
The issue is thus whether the negative limitation that there be no pin
located on both said first rotational axis and said second rotational axis
exclude the presence of the linking bar 23. We conclude it does. As noted
above, the linking bar appears to have the same structure as the drive bars in
Figure 3, and each meets the limitation of a “pin” as set forth in the
Specification. Moreover, as argued by Appellants, if the Examiner is of the
opinion that the structure of the linking bar does not meet the definition of a
pin as set forth in the Specification, then neither do the drive bars 24, and
thus the apparatus taught by Chiu would not meet the limitation of “a
plurality of pins drivingly connecting said first rotatable member to said
second rotatable member,” and the rejection would again have to be
reversed.
As to the obviousness rejection, the Examiner relies on Williams to
meet a different limitation than that discussed above (Ans. 8), and thus does
not remedy the deficiencies of Chiu as discussed above.

SUMMARY
We reverse both rejections on appeal.

REVERSED

cdc