Smith & Nephew largely loses appeal at CAFC related to Reciprocating rotary arthroscopic surgical instrument
Claims of a Smith & Nephew patent were at issue in
re-examination 95/001,933. Of interest was that a later-appearing
independent claim was found to be anticipated, while an earlier claim
was merely found obvious. Smith & Nephew did prevail on an "analogous art" issue.
Claim 1:
A surgical instrument, comprising:
a cutting member including an implement for cutting tissue; and a drive coupled to the cutting member to simultaneously rotate, translate, and reciprocate the cutting member in response to only a rotational force applied to the drive in a single direction and to cut tissue during simultaneous rotation and translation of the cutting member;
wherein the drive includes a drive member attached to the cutting member, the drive member including a helical groove, and the drive includes a translation piece disposed in the groove such that rotary driving of the drive member results in simultaneous reciprocation of the drive member relative to the translation piece.
Claim 32:
A surgical instrument, comprising:
a cutting member including an implement for cutting tissue; a drive coupled to the cutting member to simultaneously rotate, translate, and reciprocate the cutting member in response to only a rotational force applied to the drive in a single direction and to cut tissue during simultaneous rotation and translation of the cutting member;
and an outer tubular member, the cutting member being received within the outer tubular member, the outer tubular member including a cutting window disposed proximate to a tip of the outer tubular member.
As to the outcome:
The Patent Trial and Appeal Board affirmed the rejection
of claims 1–16, 19–22, and 25–33 of U.S. Patent
No. 7,226,459 as anticipated or obvious in light of the
prior art.
The anticipation argument touched claims 32-33:
Therefore, we affirm the determination that Middle
anticipates claims 32 and 33.
The Middle reference was mentioned in obviousness arguments:
The Board found that Middle discloses most of the
limitations of claims 1–16, 19, and 25–31, but does not
disclose a “drive member including a helical groove.”
Middle instead discloses a cam groove “which bends
towards one end . . . , such as a continuous sine wave.”
As to obviousness
Finally, we turn to Rejections 5 and 8, in which the
Board affirmed the rejection of claims 1–2, 4–14, 19–22,
25, and 27–31 as obvious based on the combinations of
Galloway with Middle and Kaplan. Smith & Nephew
argues that Galloway is not analogous art. We agree.
Galloway is titled, “Reciprocating Apparatus and Cam
Follower for Winding a Package.” J.A. 878. “This invention
relates to the production of glass fibers, and in particular,
to winding a glass fiber strand to form packages.”
Id. at 1:21–23. Galloway discloses a reciprocating apparatus
with a helical groove. Id. at 2:19–21. The Board
found that Galloway was relevant to solving the technical
problem of converting rotational motion into simultaneous
rotational, translational, and reciprocal motions. J.A. 40.
Because Middle teaches that the shape of the cam groove
can be modified to vary the number of reciprocations per
rotation of the drive piston, the Board found that a person
of skill in the art would seek out teachings regarding
relevant cam grooves. Id. at 40–41.
To determine if a prior art reference is analogous, we
consider “(1) whether the art is from the same field of
endeavor, regardless of the problem addressed, and (2) if
the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent
to the particular problem with which the inventor is
involved.” In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992).
“A reference is reasonably pertinent if, even though it
may be in a different field from that of the inventor’s
endeavor, it is one which, because of the matter with
which it deals, logically would have commended itself to
an inventor’s attention in considering his problem.” Id. at
659.
re-examination 95/001,933. Of interest was that a later-appearing
independent claim was found to be anticipated, while an earlier claim
was merely found obvious. Smith & Nephew did prevail on an "analogous art" issue.
Claim 1:
A surgical instrument, comprising:
a cutting member including an implement for cutting tissue; and a drive coupled to the cutting member to simultaneously rotate, translate, and reciprocate the cutting member in response to only a rotational force applied to the drive in a single direction and to cut tissue during simultaneous rotation and translation of the cutting member;
wherein the drive includes a drive member attached to the cutting member, the drive member including a helical groove, and the drive includes a translation piece disposed in the groove such that rotary driving of the drive member results in simultaneous reciprocation of the drive member relative to the translation piece.
Claim 32:
A surgical instrument, comprising:
a cutting member including an implement for cutting tissue; a drive coupled to the cutting member to simultaneously rotate, translate, and reciprocate the cutting member in response to only a rotational force applied to the drive in a single direction and to cut tissue during simultaneous rotation and translation of the cutting member;
and an outer tubular member, the cutting member being received within the outer tubular member, the outer tubular member including a cutting window disposed proximate to a tip of the outer tubular member.
As to the outcome:
The Patent Trial and Appeal Board affirmed the rejection
of claims 1–16, 19–22, and 25–33 of U.S. Patent
No. 7,226,459 as anticipated or obvious in light of the
prior art.
The anticipation argument touched claims 32-33:
Therefore, we affirm the determination that Middle
anticipates claims 32 and 33.
The Middle reference was mentioned in obviousness arguments:
The Board found that Middle discloses most of the
limitations of claims 1–16, 19, and 25–31, but does not
disclose a “drive member including a helical groove.”
Middle instead discloses a cam groove “which bends
towards one end . . . , such as a continuous sine wave.”
As to obviousness
Finally, we turn to Rejections 5 and 8, in which the
Board affirmed the rejection of claims 1–2, 4–14, 19–22,
25, and 27–31 as obvious based on the combinations of
Galloway with Middle and Kaplan. Smith & Nephew
argues that Galloway is not analogous art. We agree.
Galloway is titled, “Reciprocating Apparatus and Cam
Follower for Winding a Package.” J.A. 878. “This invention
relates to the production of glass fibers, and in particular,
to winding a glass fiber strand to form packages.”
Id. at 1:21–23. Galloway discloses a reciprocating apparatus
with a helical groove. Id. at 2:19–21. The Board
found that Galloway was relevant to solving the technical
problem of converting rotational motion into simultaneous
rotational, translational, and reciprocal motions. J.A. 40.
Because Middle teaches that the shape of the cam groove
can be modified to vary the number of reciprocations per
rotation of the drive piston, the Board found that a person
of skill in the art would seek out teachings regarding
relevant cam grooves. Id. at 40–41.
To determine if a prior art reference is analogous, we
consider “(1) whether the art is from the same field of
endeavor, regardless of the problem addressed, and (2) if
the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent
to the particular problem with which the inventor is
involved.” In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992).
“A reference is reasonably pertinent if, even though it
may be in a different field from that of the inventor’s
endeavor, it is one which, because of the matter with
which it deals, logically would have commended itself to
an inventor’s attention in considering his problem.” Id. at
659.
posted by Lawrence B. Ebert at 5:13 PM
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