2016 Pat. App. LEXIS 1052
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`Patent Trial and Appeal Board
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`March 17, 2016, Decided
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`Appeal 2014-001781; Application 12/988,878; Technology Center 3700
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`Reporter
`2016 Pat. App. LEXIS 1052
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`Ex parte GERARD SCORTECCI 1
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`Notice:
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`ROUTINE OPINION. Pursuant to the Patent Trial and Appeal Board Standard Operating Procedure 2, the opinion
`below has been designated a routine opinion.
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`Core Terms
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`stock, bone, unpatentable, drill, coating, skin, adamantine, displace, conical, iss, vibrate, tip
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`Panel: Before JENNIFER D. BAHR, GEORGE R. HOSKINS, and AMANDA F. WIEKER, Administrative Patent
`Judges.
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`Opinion By: AMANDA F. WIEKER
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`Opinion
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`WIEKER, Administrative Patent Judge.
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`DECISION ON APPEAL
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`STATEMENT OF THE CASE
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`Gerard Scortecci ("Appellant") appeals under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-18
` We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
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`and 21.
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`We AFFIRM.
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`1 According to Appellant, the Real Party in Interest is the named inventor, Gerard Scortecci. Br. 1.
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`2 Claims 19-20 have been cancelled, and claims 22-24 have been withdrawn. Id.
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`2016 Pat. App. LEXIS 1052
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`Page 2 of 4
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`CLAIMED SUBJECT MATTER
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`The invention concerns a bone regeneration device. Spec. 1:15.
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`Claim 1 is illustrative of the subject matter on appeal, and recites:
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`1. A device for bone regeneration comprising:
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`an end section for endo-osseous penetration, the end section comprising a primary cylindrical section with a
`circular cross section and that is connected [*2] to a conical section ending in a tip, wherein the conical
`section and tip are adapted to displace skin and bone material laterally at the site of the endo-osseous
`penetration, without removing the skin and bone material, and wherein the end section has a coating of
`adamantine carbon with a mirror-polished surface .
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`Br. 13, Claims App. (emphasis added). Independent claim 21 contains similar language to that emphasized above
`in claim 1.
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`REJECTIONS The claims stand rejected as follows:
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`I. Claims 1-3, 5, 8, 12, and 13 under 35 U.S.C. § 103(a) as unpatentable over Leonard (US 4,580,979, iss.
`Apr. 8, 1986), Stock (US 5,271,696, iss. Dec. 21, 1993), and Jurewicz (US 5,706,906, iss. Jan. 13, 1998).
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`II. Claim 4 under 35 U.S.C. § 103(a) as unpatentable over Leonard, Stock, Jurewicz, and Holzapfel (US
`2003/0108417 A1, pub. June 12, 2003).
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`III. Claim 6 under 35 U.S.C. § 103(a) as unpatentable over Leonard, Stock, Jurewicz, Meloul (US 5,330,480,
`iss. July 19, 1994), and Deutchman (US 2005/0167261 Al, pub. Aug. 4, 2005).
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`IV. Claim 7 under 35 U.S.C. § 103(a) as unpatentable over [*3] Leonard, Stock, Jurewicz, and Kazahaya (US
`2006/0216515 A1, pub. Sept. 28, 2006).
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`V. Claims 8 and 9 under 35 U.S.C. § 103(a) as unpatentable over Leonard, Stock, Jurewicz, and Robertson
`(US 4,705,436, iss. Nov. 10, 1987).
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`VI. Claims 10 and 11 under 35 U.S.C. § 103(a) as unpatentable over Leonard, Stock, Jurewicz, and Huang
`(TW 516424, pub. Jan. 1, 2003).
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`VII. Claim 14 under 35 U.S.C. § 103(a) as unpatentable over Leonard, Stock, Jurewicz, and Beaty (US
`6,171,312 B1, iss. Jan. 9, 2001).
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`2016 Pat. App. LEXIS 1052
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`Page 3 of 4
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`VIII. Claims 15-18 under 35 U.S.C. § 103(a) as unpatentable over Leonard, Stock, Jurewicz, and Shelton (US
`2006/0257817 Al, pub. Nov. 16, 2006).
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`IX. Claim 21 under 35 U.S.C. § 103(a) as unpatentable over Leonard, Stock, Jurewicz, Meloul, Deutchman,
`and Holzapfel.
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`ANALYSIS
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`The Examiner finds that Leonard discloses a device, shown in Figure 1, that includes a conical section ending in a
`tip (Figure 1, element 4). Final Act. 3. The Examiner finds that this tool is capable of "displac[ing] skin and bone
`material laterally . . . without removing the skin and bone material," [*4] as required by claim 1. Id. The Examiner
`finds that although Leonard's tool may drill holes using vibration, "the user does not have to turn on the vibration
`to make a hole. If you simply press a conical piece of stainless steel with enough force it will pierce through soft
`tissue and/or bone and the skin and bone will be forced to displace laterally. " Ans. 3; see also id. at 2. The
`Examiner finds that Leonard's tool is locked into place, does not rotate, and does not include cutting flutes. Id. at
`3-4. The Examiner also finds that Stock teaches a tool bit with an adamantine coating, and concludes that it
`would have been obvious to one skilled in the art to coat Leonard's tool with adamantine carbon, to provide a
`high resistance to wear. Final Act. 4.
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`Appellant contends that Leonard discloses a device for holding a drill, and that the drill is not capable of
`functioning as claimed. Br. 4-5. Specifically, Appellant argues that a drill "grinds the material being drilled so that
`the material is removed, not displaced laterally. " Id. at 4; see also id. at 5 ("[A] drill uses rotating abrasion or cutting
`to remove the material. . . ."). Appellant contends that Leonard's [*5] drill "would include cutting and/or abrasive
`faces that apparently are not shown in [Leonard's] Figure." Id. at 5. Finally, Appellant contends that it would not
`have been obvious to add an adamantine coating to Leonard's tool because Stock discloses a tool bit for
`removing material, whereas claim 1 requires that material is not removed. Id. at 7.
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`We are not persuaded by Appellant's arguments. Claim 1 is drawn to an apparatus. "[A]pparatus claims cover what
`a device is, not what a device does" Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir.
`1990). If a prior art structure is capable of performing the claimed intended use, then it meets the claim. See, e.g.,
`In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Here, the Examiner finds that Leonard's tool 4 includes a
`conical portion and tip, as claimed, and is capable of being pressed against tissue and bone so as to displace
`that material. Final Act. 3; Ans. 2-3. Appellant has not explained persuasively how Appellant's structure differs from
`that disclosed by Leonard or how Leonard's conical portion and tip, when pressed against skin [*6] and bone in
`the absence of vibration, would not cause lateral displacement.
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`Appellant's suggestion that Leonard's device must include cutting flutes that remove material is unsupported. Br. 4.
`Leonard discloses that tool 4 is locked in place and is caused to vibrate by mechanism 2. Ans. 3; Leonard 1:53-55,
`2:3-4. Appellant has not identified any evidence in the record to suggest that the locked and vibrating drill also
` See Ans. 3-4.
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`includes cutting flutes that necessarily remove material when pressed against skin or bone.
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`3 Appellant relies on FR 82/18545 to provide details regarding the type of drill utilized in Leonard's device. Br. 6-7. This is
`inappropriate, as FR 82/18545 is not incorporated by reference. Leonard 1:7-8. Furthermore, these arguments are unpersuasive
`as they fail to distinguish Appellant's claimed structure from that disclosed by Leonard.
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`2016 Pat. App. LEXIS 1052
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`Page 4 of 4
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`We are also unpersuaded by Appellant's argument against the combination of Leonard and Stock. The Examiner
`finds that Stock discloses a tool bit having [*7] an adamantine coating, which provides high wear resistance.
`Final Act. 4; Stock 1:35-36. Appellant does not dispute this finding. In light of this uncontested finding, we see no
`error in the Examiner's conclusion that a person of ordinary skill in the art would be motivated to apply Stock's
`coating to Leonard's tool, to add a high resistance to wear. Final Act. 4. Indeed, we agree with the Examiner that
`"[r]egardless of how the tool is being used, a skilled artisan would certainly appreciate adding the adamantine
`carbon coating with a mirror polished surface, in order to increase the tool's resistance to wear. " Ans. 4.
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`For the above reasons, Appellant fails to apprise us of error in the rejection of claim 1. Appellant presents the same
`arguments for independent claim 1 and independent claim 21. Br. 4-11; see id. at 8 ("The argument for allowance of
`claim 21 is the same as for claim 1."). Appellant does not present separate argument for claims 2-18. Thus, for the
`same reasons, Appellant also fails to apprise us of error in the rejections of claims 2-18 and 21.
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`DECISION
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`The rejections of claims 1-18 and 21 are AFFIRMED.
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`No time period for taking any subsequent action in connection [*8] with this appeal may be extended under 37
`C.F.R. § 1.136(a)(1)(iv).
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`AFFIRMED
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`End of Document
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