Ex Parte Appenzeller et al

Patent Trial and Appeal Board

Sep 13, 2016

12752748 (P.T.A.B. Sep. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121752,748 04/01/2010 Andreas APPENZELLER
76960 7590 09/14/2016
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
10139/17802 (T01002US1) 3133
EXAMINER
JONES, DIANA S
ART UNIT PAPER NUMBER
3775
MAILDATE DELIVERY MODE
09/14/2016 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 ANDREAS APPENZELLER, ROBERT PRIGG,
TOM OVERES, and NICOLAS BOUDUBAN
Appeal2014-005849
Application 12/752,748
Technology Center 3700
Before JOHN C. KERINS, GEORGE R. HOSKINS, and LEE L. STEPINA,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
10, 12, 14, 15, 17, and 18. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Claims 11, 13, 16, and 19-22 have been withdrawn. Appeal Br. 13-15.
Appeal2014-005849
Application 12/752,748
CLAIMED SUBJECT MATTER
The claims are directed to a locking spiral anchoring system. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A bone screw, comprising:
a proximal head being configured to lockingly engage a
bone plate hole; and
a substantially helical shaft extending distally from the
head along a substantially helical path,
wherein the head and the shaft are rotatably coupled to
each other so that the shaft can rotate about a central longitudinal
axis thereof with respect to the head.
Appeal Br. 12. Referring to claim 1, Appellants' Summary of the Claimed
Subject Matter (Appeal Br. 2) cites Figure 1, which we reproduce below.
Appellants' Figure 1 depicts a bone screw 100 with first shaft 102 having
proximal head 104 sized and shaped to engage a driver to permit
manipulation of head 104. Spec. i-f 7. Head 104 is formed with an engaging
structure in the form of a hexagonal recess 106. Id.
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Application 12/752,748
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lieberman
Rubecamp
Orbay
US 6,953,462 B2 Oct. 11, 2005
US 2004/0172031 Al Sept. 2, 2004
US 2006/0009771 Al Jan. 12, 2006
REJECTIONS
(I) Claims 1, 2, 8-10, 12, 14, 15, 17, and 18 are rejected under 35
U.S.C. § 102(b) as anticipated by Lieberman.
(II) Claims 1---6, 8-10, 14, 15, and 17 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Rubecamp and Lieberman.2
(III) Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Rubecamp, Lieberman, and Orbay.
OPil'.JION
Rejection(!)
Claim 1 recites, in part, "a proximal head being configured to
lockingly engage a bone plate hole." Appeal Br. 12. The Examiner finds
that nut 360 of Lieberman meets this limitation. Final Act. 2 (citing
Lieberman, col. 8, 11. 25-26; Fig. 10).
Appellants assert that nut 3 60 of Lieberman is not configured to
engage a hole. See Appeal Br. 3---6. Specifically, Appellants state:
2 The Final Action lists claims 4 and 5 under a separate heading from the
heading for the rejection of claims 1-3, 6, 8-10, 14, 15, and 17 as
unpatentable over Rubecamp and Lieberman, but applies only the same
references. Final Act. 6, 8-9.
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Application 12/752,748
since the nut 360 of Lieberman engages the threaded outer
surface 330 of the apparatus 310 and remains outside the opening
352 of the plate 350, the nut 360 of Lieberman is not structured
to ever be received in or in any way to engage the opening 352
of the plate 350.
Appeal Br. 4 (emphasis omitted).
In response, the Examiner states, "Lieberman's head (360) is capable
of lockingly engaging a bone plate hole by being tightened against the bone
plate when the head and the shaft portion are rotated into engagement with
each other." Ans. 10-11.
In reply, Appellants set forth their interpretation of the term lockingly
engage in claim 1 as follows: "[ s ]pecifically, a head ... of a bone fixation
element (e.g., a bone screw) is said to lockingly engage a bone plate hole
when mechanical interaction between the head and the plate hole couples the
bone fixation element to the plate." Reply Br. 5.
When claim terminology is construed during examination, claims are
to be given their broadest reasonable interpretation consistent with the
specification, reading claim language in light of the specification as it would
be interpreted by one of ordinary skill in the art. In re Am. A cad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
All of Appellants' figures depicting the head of the bone screw depict
a generally cylindrical, but slightly tapered (conical) shape. See Figs. 1---6B,
7 A-9B. Most of these figures depict the head carrying external threads, but
Figure 4 depicts the head 418 without threads, and Appellants' Specification
teaches that the threads are optional. See Spec. i-f 13 (stating "It is noted
however that threading is not an essential requirement of the bone screw
400"). In this regard, the Specification states,
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Application 12/752,748
the bone screw according to the present invention may be formed
with a smooth conical head to permit insertion into a
corresponding smooth conical bone plate hole, thus locking the
head to the bone plate hole immediately upon contact without the
need for further rotation of the screw head in the bone plate hole.
Spec. i-f 6 (emphasis added). Thus, a smooth conical head can be used to
lock the head to the bone plate hole. Additionally, when the bone plate is
depicted in a drawing, it is depicted with a hole having an inner surface that
interacts with an outer circumferential surface of the head. See Figs. 4, 5,
6C, 8B, 9C.
Describing Figure 1, Appellants' Specification states, "[a]n outer wall
of the head 104 has a conical shape to permit locking engagement with a
correspondingly conical opening in a bone plate, as will be described in
greater detail hereinafter." Spec. i-f 7. Describing Figure 5, Appellants'
Specification states:
The head 508 is configured to lockingly engage the first plate
hole 502 to prevent the head 508 from further rotating relative to
the bone plate 500. Specifically, the conical shape of the first
plate hole 502 is sized and shaped to receive the conical head 508
by a frictional lock, as those skilled in the art will understand.
Spec. ,-r 10.
As for the conical shape, dependent claim 18 further limits claim 1,
stating, "[t]he bone screw according to claim 1, wherein the head tapers
conically towards the shaft at an angle between 2.8° and 20° ." Thus, claim
18 introduces a conical configuration and also limits the angle of the conical
configuration to a range of between 2.8° and 20°. See also withdrawn claim
20 (reciting "The bone fixation system according to claim 19, wherein the
interior wall of the bone plate hole is one of threaded and conically shaped to
lockingly engage the head"). Appeal Br. 15 (emphasis added).
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Application 12/752,748
In light of the Specification and Drawings, we agree with Appellants'
claim interpretation that "a head ... of a bone fixation element (e.g., a bone
screw) is said to lockingly engage a bone plate hole when mechanical
interaction between the head and the plate hole couples the bone fixation
element to the plate." Reply Br. 5. In light of the Specification, we also
construe the requirement that the head be configured to engage a hole in the
bone plate to require a head with an outer perimeter surface that is
configured to interact with an inner circumferential surface of the hole, such
as by coupling via one of threaded connection or a conically shaped surface.
We reproduce Figure 10 of Lieberman below.
Figure 10 of Lieberman depicts an exploded view of nut 360, plate 350 with
hole 352, and apparatus 310. Lieberman col. 8, 11. 25-28. As noted by
Appellants (see, e.g., Appeal Br. 4), nut 360 of Lieberman is not depicted as
interacting with any interior portion of hole 352. Instead, nut 360 is depicted
as remaining on the outside of hole 352 to interact with a surface of plate
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Application 12/752,748
350. We do not agree with the Examiner that "Lieberman's head (360) is
capable of lockingly engaging a bone plate hole by being tightened against
the bone plate when the head and the shaft portion are rotated into
engagement with each other" (Ans. 10-11) because contact with the surface
of bone plate 350, without contacting the interior surface of the hole, does
fall not within a proper construction of claim 1. Specifically, nut 360 is not
configured to produce any mechanical interaction between itself and the
plate hole that couples the bone fixation element to bone plate 350.
Accordingly, we do not sustain the Examiner's rejection of claim 1 and
claims 2, 8-10, 12, 14, 15, 17, and 18 depending therefrom as anticipated by
Lieberman.
Rejection (II)
In the rejection of claim 1 as unpatentable over Rubecamp and
Lieberman, the Examiner finds that "Rubecamp discloses a compression
bone screw having a proximal head (18) capable of lockingly engaging a
bone plate hole." Final Act. 6. The Examiner relies on Lieberman to teach
the substantially helical shaft. Final Act. 6.
Appellants assert, "the threaded component 18 of Rubecamp is
intended to engage a bone fragment, not a bone plate hole." Appeal Br. 8.
Appellants further assert that Rubecamp teaches that "threaded component
18 is screwed out of the corresponding bone fragment. Since the bone screw
10 as a whole, including the component 18, is to be screwed into bone
fragments, it follows that threaded component 18 does not engage a bone
plate hole, specifically lockingly or otherwise." Appeal Br. 8 (citations
omitted).
In response, the Examiner states "Rubecamp' s externally threaded
component ( 18) is capable of lockingly engaging a bone plate hole. Again
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Application 12/752,748
the prior art does not have to explicitly or implicitly disclose a bone plate
hole, since a bone plate is not positively recited." Ans. 11.
In reply, Appellants state:
Rubecamp discloses that "the compression bone screw 10 can be
screwed-as a whole into the two bone fragments to be joined .... "
(Emphasis added) [Rubecamp] i-f [0054]. Specifically,
Rubecamp explicitly discloses that the threaded component 18 is
screwed out of the corresponding bone fragment. Id. at i-f [0056].
Since the bone screw 10 as a whole, including the component 18,
is to be screwed into bone fragments, it follows that threaded
component 18 does not engage a bone plate hole, specifically
lockingly or otherwise. Nor is it in any way configured to do so.
Rubecamp neither describes nor suggests a bone plate and clearly
presupposes parts configured to engage bone - not bone plates or,
more specifically, bone plate holes. Furthermore, in view of the
holding in In re Giannelli, this explicit description in Rubecamp
provides contrary evidence that there is any analogous
component capable of engaging a bone plate hole.
Reply Br. 7-8 (citing In re Giannelli, 739 F.3d 1375 (Fed. Cir. 2014)).
We are not persuaded by Appellants' arguments on this point.
Appellants point to no structure that distinguishes persuasively threaded
component 18 of Rubecamp from the proximal head configured to lockingly
engage a bone plate hole recited in claim 1. As the Examiner notes, the
absence of the teaching of a bone plate in Rubecamp does not affect the
structure of threaded component 18, which meets Appellants' own definition
of what it means to be configured to lockingly engage a bone plate, i.e.,
configured to provide a mechanical interaction between the head and the
plate hole that couples the bone fixation element to the plate. See Reply Br.
5. Appellants' argument that threaded component 18 is intended to thread
into a bone fragment rather than a bone plate relies on the intended use of
threaded component 18. Any structural difference between threaded
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Application 12/752,748
component 18 in Rubecamp and proximal head 104 described in Appellants'
Specification (see Fig. 1; see also Appeal Br. 2 (Summary of Claimed
Subject Matter)) is not like the difference between the row exercise machine
claimed in In re Gianelli and the bench press machine cited in the rejection
of claim 1 of Gianelli' s application.
We reproduce Figure 5B of Rubecamp below.
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Application 12/752,748
Figure 5B of Rubecamp depicts a bone screw with threaded component 18
on top of shank 12 and force-receiving structure (cross recess 44) on the top
of threaded component 18. Rubecamp i-f 59.
Similarly, Appellants' Figure 1, referenced in Appellants' Summary
of the Claimed Subject Matter (Appeal Br. 2), depicts bone screw 100 with
first shaft 102 including proximal head 104 sized and shaped to engage a
driver to permit manipulation of head 104 via an engaging structure
(hexagonal recess 106). Spec. i-f 7. Appellants identify no pertinent
structural difference between threaded component 18 of Rubecamp and the
proximal head recited in claim 1. To accept Appellants' argument that "the
threaded component 18 of Rubecamp is intended to engage a bone fragment,
not a bone plate hole" would be similar to distinguishing one threaded bolt
from a substantially identical threaded bolt on the basis of the intended use
of the bolts.
In Gianelli, the Federal Circuit held that the phrase "adapted to" had a
meaning narrower than "capable of," and "the relevant question before the
Board was whether the apparatus described in the [prior art] was "made to,'
'designed to,' or 'configured to,'' allow the user to perform a rowing
exercise by pulling on the handles as claimed [in the rejected claim]."
Gianelli, 739 F.3d at 1379-1380. The Federal Circuit also held that
Gianelli' s specification stated that Gianelli' s exercise machine enabled a
certain alignment with the user's body parts and provided other benefits
during a rowing motion. Id. at 1380. Describing the prior art, the Federal
Circuit stated
There is no question that the '44 7 patent does not have
handles that are adapted to be pulled in a rowing motion. The
'44 7 patent's written description describes the exercise
machine's structure as allowing a movement that "simulates as
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Application 12/752,748
natural a human musculoskeletal outward pushing motion as
possible while maintaining proper biomechanical alignment of
the user's joints."
Id. (citations omitted). Thus, the prior art in Gianelli provided alignment of
the user's joints during pushing, whereas the claimed exercise machine
provided such benefits during performance of a rowing, or pulling, motion.
Further, the Court stated, "anyone who has used exercise machines knows
that a sure-fire way to cause injury is to use a machine in a manner not
intended by the manufacturer." Id. Accordingly, in Gianelli, although the
handles in the prior art in Gianelli may have been capable of being pulled in
some manner, the prior art disclosed only a use of the machine in a manner
opposite to the claimed invention.
In contrast, Rubecamp teaches threaded component 18, which is fully
able to lockingly engage a bone plate as claimed, i.e., able to provide
mechanical interaction between the head and a bone plate hole that couples
the bone fixation element to the bone plate. See Reply Br. 5. We do not
agree with Appellants' argument that use of threaded component 18 of
Rubecamp for the function recited in claim 1 is contraindicated. Although
Rubecamp discloses using threaded component 18 with a bone fragment,
unlike the circumstances in Gianelli, such use is not in conflict with the
function recited in claim 1. Rather, the functions of (i) threading into a bone
plate and (ii) threading into a bone are not so different as to require different
structure.
As for the ability to remove threaded component 18 (see Appeal Br. 8,
stating that "threaded component 18 is screwed out of the corresponding
bone fragment"), Appellants' construction of the term "lockingly engage"
requires "coupling," not permanent coupling with no possibility for removal.
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See Reply Br. 5. We agree with that construction, for the reasons provided
above. Accordingly, Appellants' argument on this point is not persuasive.
We have considered all of Appellants' arguments for the patentability
of claim 1 over the Examiner's proposed combination of Rubecamp and
Lieberman, but we do not find them to be persuasive. Accordingly, we
sustain the Examiner's rejection of claim 1 as unpatentable over Rubecamp
and Lieberman.
Claim 3
Appellants make similar arguments regarding the use of threaded
component 18 with a bone fragment rather than a bone plate (Appeal Br. 9),
and we remain unpersuaded.
Appellants also assert that "the threading 3 8 [of threaded component
18] is designed as self[-]tapping to engage the bone fragment" without
providing any persuasive argument as to why such a feature would prevent
or even discourage the use of threaded component 18 with a bone plate.
Appeal Br. 9. Indeed, claim l does not specify whether the bone plate hole
is threaded or not, and Appellants' Specification teaches that the interior
surface of the bone plate hole may be unthreaded. See Spec. i-f 6. Thus,
Appellants do not apprise us of Examiner error in relying on threaded
component 18 of Rubecamp (even if its threading 3 8 is self-tapping) to teach
a proximal head as recited in claims 1 and 3. Accordingly, we sustain the
Examiner's rejection of claim 3 as unpatentable over Rubecamp and
Lieberman.
Claims 2, 6, 8-10, 14, 15, and 17
Appellants do not make separate arguments for the patentability of
claims 2, 6, 8-10, 14, 15, and 17. See Appeal Br. 8-10. Accordingly, these
claims fall with claim 1.
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Rejection (111)
Appellants rely on the arguments made for claim 1 in relation to
Rejection (II). Appeal Br. 10. Claim 7 depends from claim 1 and falls for
the reasons discussed above with respect to Rejection (II).
DECISION
(I) The rejection of claims 1, 2, 8-10, 12, 14, 15, 17, and 18 as
anticipated by Lieberman is reversed.
(II) The rejection of claims 1---6, 8-10, 14, 15, and 17 as
unpatentable over Rubecamp and Lieberman is affirmed.
(III) The rejection of claim 7 as unpatentable over Rubecamp,
Lieberman, and Orbay is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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