Ex Parte Berger

Board of Patent Appeals and Interferences

Mar 21, 2011

10154923 (B.P.A.I. Mar. 21, 2011)

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.
10/154,923 05/28/2002 J. Lee Berger X-9379 2709
7590 03/22/2011
John S. Hale
c/o Gipple & Hale
6665-A Old Dominion Drive
McLean, VA 22101
EXAMINER
WOODALL, NICHOLAS W
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
03/22/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte J. LEE BERGER
__________

Appeal 2009-015060
Application 10/154,923
Technology Center 3700
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and STEPHEN WALSH,
Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims directed to a bone screw. The claims have been rejected as
anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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Application 10/154,923

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STATEMENT OF THE CASE
Claims 1, 3, 5-7, 27, and 29 are pending and on appeal. Claims 1, 27,
and 29 are representative (emphases added):
1. A cannulated torque receiving bone screw comprising:
an elongated cylindrical shank defining a throughgoing cylindrical
bore with a uniform diameter running the length of said shank and having a
proximal end and a distal end defining a plurality of flutes, said flutes
extending distally from said distal end at least partially into an outer surface
of body portion, a head integrally formed at the proximal end defining an
engagement structure therein in the form of a geometrically shaped recess
which is shaped to receive torque from a driver having a shape
complementary to the engagement structure of said geometrically shaped
recess; an external thread is formed on said shank outer surface, said
external thread extending to said distal end and an internal thread is formed
on a surface defining said throughgoing cylindrical bore, said internal thread
extending substantially the length of the inner throughgoing bore.

27. A cannulated torque receiving bone screw comprising:
an elongated cylindrical shank defining a throughgoing cylindrical
bore having one diameter running the length of said shank and having a
proximal end and a distal end, said distal end being provided with a
plurality of flutes, a head integrally formed at the proximal end defining an
engagement structure in the form of a geometrically shaped recess which is
shaped to receive torque from a driver having a shape complimentary to the
shape of the engagement structure of said geometrically shaped recess; said
distal end being formed with a tapered tip, an external thread is formed on
an outer surface of said shank and an internal thread is formed on a surface
defining said inner throughgoing cylindrical bore, said internal thread
extending substantially the length of the inner throughgoing bore; said
external thread formed on the outer surface of said shank extending along a
section of said shank to said distal end with the rest of the outer surface of
said shank being unthreaded.

29. A cannulated torque receiving bone screw comprising:
an elongated cylindrical shank defining a throughgoing cylindrical
bore having one diameter running the length of said shank and having a
proximal end and a distal end, a head integrally formed at the proximal end
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Application 10/154,923

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defining an engagement structure in the form of a geometrically shaped
recess which is shaped to receive torque from a driver having a shape
complimentary to the shape of the engagement structure of said
geometrically shaped recess; said distal end being formed with a tapered tip
defining a plurality of flutes, an external thread is formed on an outer surface
of said shank and an internal thread is formed on a surface defining said
throughgoing cylindrical bore, said internal thread extending substantially
the length of the throughgoing bore and an external thread formed on the
outer surface of said shank which extends the length of said shank.
Claims 1, 3, 5, 6, and 29 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Bramlet (U.S. Patent 5,976,139, issued November 2, 1999).
In addition, claims 1, 3, 5, 7, and 27 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Rosán (U.S. Patent 3,280,874, issued October
25, 1966).
FACT FINDINGS
1. Claim 27 requires a bone screw with “an elongated cylindrical
shank defining a throughgoing cylindrical bore having one diameter running
the length of said shank and having a proximal end and a distal end, said
distal end being provided with a plurality of flutes, . . . said distal end being
formed with a tapered tip.” According to the plain language of the claim,
the tapered tip and flutes are located on the distal end of the shank, i.e., they
are part of the shank portion of the bone screw. The claim also requires the
cylindrical bore to have “one diameter” running from the proximal end to
the distal end of the shank, thus, the diameter of the bore must stay the same
as it passes through the tip, since the tapered tip is part of the shank.
2. Similarly, claim 29 requires “an elongated cylindrical shank
defining a throughgoing cylindrical bore having one diameter running the
length of said shank and having a proximal end and a distal end, . . . said
distal end being formed with a tapered tip defining a plurality of flutes.”
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Again, according to the plain language of the claim, the tapered tip and
flutes are part of the shank portion of the bone screw. The claim also
requires the cylindrical bore to have “one diameter” running from the
proximal end to the distal end of the shank, thus, the diameter must stay the
same as it passes through the tip, since the tapered tip is part of the shank.
3. Claim 1, however, requires “an elongated cylindrical shank
defining a throughgoing cylindrical bore with a uniform diameter running
the length of said shank and having a proximal end and a distal end defining
a plurality of flutes” on one hand, while also requiring that “said flutes
extend[ ] distally from said distal end.” Since the same flutes cannot be
defined by the distal end of the shank, and at the same time, extend distally
from the shank, the claim is internally inconsistent.
4. All of the claims on appeal require “flutes,” but that term is not
defined in the Specification. The Examiner, on the other hand, has provided
a dictionary definition of flutes “as either 1: something long and slender or
2: a rounded groove” (Ans. 6).
5. Bramlet discloses a cannulated bone compression screw,
depicted in Figure 65, and reproduced immediately below:

Figure 65 is a longitudinal section of Bramlet’s compression screw
630. “[T]he compression screw 630 is provided with an elongated
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[threaded] shank portion 632 and an enlarged head portion 633” (Bramlet,
col. 25, ll. 34-36). “[T]he screw 630 furthermore defines an elongated bore
640 that opens at opposite ends to the socket 637 and the leading end 635 of
screw 630” (id. at col. 25, ll. 61-63). In addition, “the distal or leading end
635 of the screw 630 is provided with a series of radial through slots 643,
644, 645, and 646 that are arranged in generally normal relation relative to
each other and which extend axially inwardly from the fray or distal end
635” (id. at col. 25, l. 65 - col. 26, l. 2).
6. “[A]s shown in [Bramlet’s] FIG. 65, the internal bore 640 and
the internal threading 642 narrow toward the fray or distal end . . . 635 of
screw 630 in the area of the slots 643, 644, 645, and 646 for purposes to be
described hereinafter” (Bramlet, col. 26, ll. 4-7).
7. Rosán discloses a “one-piece insert[ ] designed to be anchored
in bores in material relatively softer than the insert material (Rosán, col. 1, ll.
16-18), depicted in Figure 1, and reproduced immediately below:

Figure 1 of Rosán depicts insert 21, “said insert comprising a tubular
body 22 provided with external threads 23 and a threaded bore 24. Bore 24
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. . . is countersunk at 25 at the forward or lower end of the insert and is
countersunk at 26 at the rearward or upper end thereof” (Rosán, col. 3, ll.
58-65).
8. Rosán also discloses a self-tapping screw, depicted in Figure
12, and reproduced immediately below:

Figure 12 depicts “self-tapping insert 38 embodying the basic
principles of the insert 21” (Rosán, col. 3, ll. 62-63). “The insert is tapered
at its forward end 39 . . . The side wall of the insert contains recesses 42 . . .
the leading edges of the threads of the recesses 42 perform a thread-cutting
function as the insert is screwed into a bone” (id. at col. 3, ll. 63-70).
ANTICIPATION: BRAMLET
The Examiner rejected claims 1, 3, 5, 6, and 29 as anticipated by
Bramlet. The Examiner finds that Bramlet describes:
[A] cannulated torque receiving screw (630) intended for
insertion into a bone comprising . . . an elongated cylindrical
shank (632); the shank having an integrally formed planar head
(633) located at a proximal end and defining . . . a boundary of
a plurality of flutes (643, 644, 645, 646) found in the tip (the tip
extending from the shank where flutes 643, 644, 645, and 646
begin) at a distal end extending distal of the shank . . . the shank
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thus defines in inner bore (640) with a uniform (one
unchanging) diameter running the length of the shank . . . and
the tip of the screw (630) is tapered . . .
(Ans. 3-4).
Claim 29
If we understand the Examiner’s rationale, it is that the tip of
Bramlet’s screw is not part of the shank, so the fact that the internal bore
narrows as it passes through the tip does not run afoul of claim 29’s
requirement for “one diameter” running the length of the shank.
However, as discussed above, claim 29 requires “an elongated
cylindrical shank defining a throughgoing cylindrical bore having one
diameter running the length of said shank and having a proximal end and a
distal end, . . . said distal end being formed with a tapered tip defining a
plurality of flutes.” Thus, according to the language of claim 29, the length
of the shank includes the tip and flutes (FF2). Since the throughgoing
cylindrical bore has “one diameter” running the length of the shank (from
the proximal end to the distal end of the shank) and the tip is part of the
shank, it follows that the diameter of the cylindrical bore must remain the
same as it passes through the tip in order to meet the limitations of claim 29.
However, Figure 65 of Bramlet shows that “the internal bore 640 and
the internal threading 642 narrow toward the fray or distal end . . . 635 of
screw 630 in the area of the slots 643, 644, 645, and 646” (FF5). Therefore,
we agree with Appellant that the bore in Bramlet’s screw “does not have a
uniform diameter running the length of the shank” (App. Br. 5) as the term
“shank” is used in claim 29. Moreover, we find that the Examiner’s
assertion that Bramlet’s screw has a tapered tip (as further required by claim
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29) is not supported by the evidence of record (see, e.g., Figure 65 of
Bramlet).
The rejection of claim 29 as anticipated by Bramlet is reversed.
Claims 1, 3, 5 and 6
These claims stand on a different footing than claim 29. Appellant
contends that the bore in Bramlet’s screw has “different diameters with the
throughgoing bore tapering inward or narrowing toward the tip or distal
end,” rather than “a uniform diameter running the length of the shank” (App.
Br. 5). However, the language of claim 1 (and its dependent claims 3 and 5-
7) is internally inconsistent with respect to the shank portion of the screw
(compare/contrast FF3 with FF1 and FF2). Therefore, we cannot determine
whether or not Bramlet anticipates the invention of claims 1, 3, 5, and 6.
Accordingly, we vacate the rejection of claims 1, 3, 5, and 6 as
anticipated by Bramlet and enter a new ground of rejection below under
35 U.S.C. § 112, second paragraph.
OBVIOUSNESS: ROSÁN
The Examiner rejected claims 1, 3, 5, 7, and 27 as unpatentable over
Rosán. The Examiner finds that Figures 1-5 of Rosán depict:
[A] screw device comprising: a cylindrical threaded shank (22)
with an unthreaded section (28); and internally threaded
throughbore (25) having a uniform . . . diameter . . . ; an
integral head . . . with a planar top surface . . . located at a
proximal end of the screw; the outer periphery of the head
capable of being engaged by hand or with a tool such as pliers;
and a geometrically shaped recess (49 . . .) . . . for interacting
with a similarly shaped driving tool; a tip containing the bottom
countersunk portion integrally formed at the distal end; and the
screw is capable of being inserted into bone.
(Ans. 4-5.)
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The Examiner acknowledges that Rosán “fails to include flutes in the
embodiment discussed previously” (id. at 5), but finds that Rosán’s Figure
12 “shows a similar embodiment having self-tapping flutes (42) . . . [and]
also discusses that the use of recess (49) and flutes (42) is one combination
foreseeable” (id.). The Examiner concludes that it would have been obvious
“to include self-tapping flutes in the Figures 1-5 embodiment, which would
advantageously provide a self-tapping capability” (id.).
Claim 27
Again, if we understand the Examiner’s rationale, it is that the integral
countersunk portions of the internal throughbore of Rosán’s screw are not
part of the shank, so the fact that the internal bore widens at the proximal
and distal ends does not run afoul of claim 27’s requirement for “one
diameter” running the length of the shank.
However, as discussed above, claim 27 requires “an elongated
cylindrical shank defining a throughgoing cylindrical bore having one
diameter running the length of said shank and having a proximal end and a
distal end, said distal end being provided with a plurality of flutes, . . . said
distal end being formed with a tapered tip.” Thus, according to the language
of claim 27, the length of the shank includes the tip and flutes (FF1). Since
the throughgoing cylindrical bore has “one diameter” running the length of
the shank (from the proximal end to the distal end of the shank) and the tip is
part of the shank, it follows that the diameter of the cylindrical bore must
remain the same as it passes through the tip in order to meet the limitations
of claim 27.
However, Figure 1 of Rosán shows that “[b]ore 24 . . . is countersunk
at 25 at the forward or lower end of the insert and is countersunk at 26 at the
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rearward or upper end thereof” (FF7). While we agree with the Examiner
that Rosán suggests combining the features of the embodiments depicted in
Figures 1 and 12, we find that Rosán doesn’t disclose an internal bore with
“one diameter” running the length of the shank, as required by claim 27.
As we disagree with the Examiner’s findings on this point, and the
Examiner has not otherwise explained why it would have been obvious to
modify the bore in Rosán’s insert to have “one diameter” running the length
of the shank, we will reverse the rejection of claim 27 as unpatentable over
Rosán.
Claims 1, 3, 5 and 7
These claims stand on a different footing than claim 27. Appellant
contends that Rosán doesn’t disclose a bore with a uniform diameter running
the length of the shank or insert. However, the language of claim 1 (and its
dependent claims 3, 5 and 7) is internally inconsistent with respect to the
shank portion of the screw (compare/contrast FF3 with FF1 and FF2).
Therefore, we cannot determine whether or not bore 24 in Rosán’s insert
reads on the throughgoing cylindrical bore of claims 1, 3, 5, and 7.
Accordingly, we vacate the rejection of claims 1, 3, 5, and 7 as
unpatentable over Rosán and enter a new ground of rejection below under
35 U.S.C. § 112, second paragraph.
NEW GROUND OF REJECTION
Under the provisions of 37 C.F.R. § 41.50(b), we enter the following
new ground of rejection: Claims 1, 3, and 5-7 are rejected as indefinite
under 35 U.S.C. § 112, second paragraph.
As discussed above, Claim 1 requires “an elongated cylindrical shank
defining a throughgoing cylindrical bore with a uniform diameter running
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the length of said shank and having a proximal end and a distal end defining
a plurality of flutes” on one hand, while also requiring that “said flutes
extend[ ] distally from said distal end.” Since the same flutes cannot be
defined by the distal end of the shank, and at the same time, extend distally
from the shank, the claim is internally inconsistent (FF3), and therefore
indefinite.
CONCLUSION
The rejection of claims 1, 3, 5, 6, and 29 under 35 U.S.C. § 102(e) as
anticipated by Bramlet is reversed with respect to claim 29, and vacated with
respect to claims 1, 3, 5, and 6.
The rejection of claims 1, 3, 5, 7, and 27 under 35 U.S.C. § 103(a) as
unpatentable over Rosán is reversed with respect to claim 27, and vacated
with respect to claims 1, 3, 5, and 7.
However, we enter a new ground of rejection of claims 1, 3, and 5-7
as indefinite under 35 U.S.C. § 112, second paragraph.
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TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner . . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record
. . . .

REVERSED; 37 C.F.R. § 41.50(b)

dm

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JOHN S. HALE
C/O GIPPLE & HALE
6665-A OLD DOMINION DRIVE
MCLEAN, VA 22101