Ex Parte Andermahr et al

Patent Trial and Appeal Board

Jun 20, 2016

12694953 (P.T.A.B. Jun. 20, 2016)

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.
12/694,953 01/27/2010 Jonas Andermahr 10139/19901 (01208US1) 6935
76960 7590 06/20/2016
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
EXAMINER
JONES, DIANA S
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
06/20/2016 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JONAS ANDERMAHR, FLORA MAUCH,
CLAUDIA REICHLE, and PHILIPP BRUN
____________

Appeal 2014-002075
Application 12/694,9531
Technology Center 3700
____________

Before BIBHU R. MOHANTY, BART A. GERSTENBLITH, and
TARA L. HUTCHINGS, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jonas Andermahr et al. (“Appellants”) appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 1, 2, and 5–15.2 We
have jurisdiction under 35 U.S.C. § 6(b).

1 Appellants identify “DePuy Synthes Products, LLC,” which is a wholly
owned subsidiary of Johnson & Johnson, Inc., as the real party in interest.
Appeal Br. 2.
2 Claims 1, 2, and 5–20 are pending. Claims 3 and 4 were cancelled, and
claims 16–20 were withdrawn pursuant to Appellants’ non-election of those
claims in their Response filed December 9, 2011.
Appeal 2014-002075
Application 12/694,953

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Claimed Subject Matter
Claims 1 and 11 are the independent claims on appeal. Claim 1 is
illustrative of the claimed subject matter and is reproduced below.
1. A bone fixation plate, comprising:
an elongated body contoured to conform to the anatomy
of a clavicle, the elongated body comprising a head at a first
end and a shaft extending therefrom to a second end, the second
end further comprising a reduced diameter tapered tip
configured to permit insertion of the elongate body through a
minimally invasive incision formed adjacent the clavicle, the
head including a lateral extension disposed between the first
end and the second end, the lateral extension contoured to rest
on a target region of a lateral end of the clavicle, the lateral
extension having a width greater than a substantially uniform
width of the shaft;
a first plate hole extending through the shaft from a
proximal face to a distal face, the first plate hole formed as a
combination hole; and
a second plate hole extending through the head from the
proximal face to the distal face, the second plate hole being
threaded
Appeal Br., Claims App. 1.
Rejections
Appellants seek review of the following rejections:
I. Claims 1, 2, and 5–10 are rejected under 35 U.S.C. § 102(b) as
anticipated by Horan (US 2007/0233106 A1, pub. Oct. 4, 2007);
II. Claims 11–14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Horan and McGarity (US 2007/0213726 A1,
pub. Sept. 13, 2007); and
III. Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Horan, McGarity, and Lower (US 4,573,458, iss. Mar. 4, 1986).

Appeal 2014-002075
Application 12/694,953

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SUMMARY OF DECISION
We REVERSE.
ANALYSIS
Rejection I
The Examiner finds that Horan teaches each and every element of
claims 1, 2, and 5–10. Ans. 2–4. Claim 1 is directed to “[a] bone fixation
plate, comprising: . . . an elongated body contoured to conform to the
anatomy of a clavicle, the elongated body comprising a head . . . including a
lateral extension . . . contoured to rest on a target region of a lateral end of
the clavicle.” Appeal Br. 12, Claims App. The Examiner finds “no
structural difference between the claimed invention bone plate and the prior
art’s bone plate.” Ans. 8. In particular, the Examiner finds that Horan
teaches a bone fixation plate comprising “an elongated body capable of
conforming to the anatomy of a clavicle” and a “head including a lateral
extension (36) capable of being contoured to rest on a target region of a
lateral end of the clavicle.” Id. at 2 (emphases added).
Appellants assert that claim 1 requires the elongated body of the bone
plate to have “a contour and a shape that conforms to a clavicle,” and that
the claim does not “merely recite an intended use.” Appeal Br. 5.
In response, the Examiner finds that the language of the claim relating
to the clavicle is “functional” and merely “a recitation of intended use.”
Ans. 8.
We agree with Appellants that the recitation “contoured to conform to
the anatomy of a clavicle,” and particularly the recitation of “contoured,” is
not merely an intended use, but rather connotes specific structure—that of a
clavicle. Horan discloses an “improved tibial plateau leveling osteotomy
Appeal 2014-002075
Application 12/694,953

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plate.” Horan [57]. The Examiner’s finding that Horan teaches a bone
fixation plate comprising “an elongated body capable of conforming to the
anatomy of a clavicle” (id. at 2 (emphasis added)), does not indicate that
Horan is, in fact, so contoured. Accordingly, we do not sustain the
Examiner’s rejection of claim 1 and claims 2 and 5–10, which depend from
claim 1.
Rejection II
Independent claim 11 is directed to a system for attaching a bone
fixation device to a bone, and similarly recites “a bone plate having an
elongated body contoured to conform to the anatomy of a clavicle.” Appeal
Br., Claims App. 2–3. The Examiner makes the same finding with respect to
Horan as applied to this limitation of claim 11. Ans. 5–7. Accordingly, for
the reasons discussed in the context of Rejection I, we do not sustain
Rejection II.
Rejection III
Claim 15 depends from claim 11. Appeal Br., Claims App. 3. The
Examiner relies upon Horan to the same extent as discussed in Rejection II.
Ans. 7. Accordingly, for the reasons discussed in the context of Rejection II,
we do not sustain Rejection III.
DECISION
We reverse the Examiner’s decision rejecting claims 1, 2, and 5–15.

REVERSED