Smith & Nephew, Inc., Covidien LP v. Hologic, Inc.

Docket No. 2017-1008

January 30, 2018


Brief summary: Board’s decision of one anticipation and two obviousness rejections affirmed; another obviousness rejection reversed and remanded as being based on non-analogous art.

Summary: S&N appealed Board decision affirming the examiner’s rejection of certain claims of US 7,226,459 relating to a “Reciprocating Rotary Arthroscopic Surgical Instrument” having “a drive coupled to the cutting member to simultaneously rotate, translate, and reciprocate” it after inter partes reexamination. The FC panel explaind that it reviews the Board’s legal conclusions de novo and its factual findings for substantial evidence (“[o]bviousness” being “a legal question based on underlying factual determinations” (Rambus, FC 2013); the “Board’s ultimate claim construction” are reviewed “de novo and its underlying factual determinations involving extrinsic evidence for substantial evidence” (Microsoft, FC 2015)). S&N challenged the Board’s construction of “simultaneously rotate, translate, and reciprocate” on which the Board relied on in its affirmance of the anticipation rejection. The FC panel disagreed the Board’s construction of “reciprocate” and “translate” “renders important claim limitations superfluous” and that it “properly applied the plain meanings of both terms”. The FC panel also found S&N’s proposed construction not to be “the broadest reasonable construction” (Cuozzo, US 2016) and concluded the specification supported the Board’s construction as “[t]he patent does not provide any specialized definition of the terms that would requie a departure from the plain meaning” (Thorner, FC 2012). The FC panel therefore affirmed the anticipation rejection. S&N also disputed the Examiner’s/Board’s first obviousness conclusion, arguing the prior art does not teach “less than one reciprocation per rotation.” The Board found the prior art (Middle) disclosed “most of the limitations” but instead of a “drive member including a helical groove…discloses a cam groove”, but also “that the shape of the cam groove can be modified to vary the number of reciprocations”. And it concluded that “a person of ordinary skill in the art would have been motivated to modify Middle’s device to use the helical groove” disclosed in other references (Kaplan, Saadat, or Spear) “because this would achieve less than one reciprocation per rotation” (“a predictable variation that was within the skill of thos in the art, which would have yielded predictable results”). The FC panel found the Board’s conclusions to be supported by substantial evidence (including expert testimony), and explained that “obviousness does not require the prior art to specifically disclose less than one reciprocation per rotation”. The Board also affirmed a second obviousness rejection “over Kaplan in view of the knowledge of a skilled artisan”, and the FC panel found the Board properly explained its position (e.g., “cited the Examiner’s finding that helical grooves…were well known in the art”, “predictable results” (KSR, US 2007). S&N also argued a third obviousness rejection was based on non-analogous art (Galloway). The FC panel explained that analogous prior art is “reasonably pertinent…because [] the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem” (In re Clay, FC 1992 (“patented invention and prior art reference related to the petroleum industry” but “used in very different environments”)). The FC panel agreed with S&N that the Board “erred by too narrowly construing the problem addressed by the ‘459 patent” and found Galloway, which was “directed to winding glass fiber”, not to be analogous art, and reversed the obviousness decision as to certain claims (claims 20-22).

This entry was posted in Analgous Art, Anticipation (35 USC 102), Obviousness, Reexamination. Bookmark the permalink.

Leave a Reply

Fill in your details below or click an icon to log in: Logo

You are commenting using your account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )

Connecting to %s

This site uses Akismet to reduce spam. Learn how your comment data is processed.