Ex Parte Biscup

Board of Patent Appeals and Interferences

Jul 11, 2011

10828149 (B.P.A.I. Jul. 11, 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.
10/828,149 04/20/2004 Robert S. Biscup SPIN 200007US01 4062
27885 7590 07/11/2011
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
CARTER, TARA ROSE E
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
07/11/2011 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 ROBERT S. BISCUP
____________________

Appeal 2009-013773
Application 10/828,149
Technology Center 3700
____________________

Before: WILLIAM F. PATE III, JENNIFER D. BAHR, and
CHARLES N. GREENHUT, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-013773
Application 10/828,149
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
14, 25-36 and 54-62. App. Br. 1. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.

The claims are directed to a bone anchor prosthesis and system. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. A bone implant system to connect bone, cartilage, or
combinations thereof to a support system comprising a set of
head-pieces and a screw, nail or post, said screw, nail or post
having a head and lower portion, said head portion of said
screw, nail or post including a head connector, said set of head-
pieces including a plurality of different head-pieces, each of
said head-pieces in said set of head-pieces including an upper
portion and a head-piece connector, said head-piece connector
for each of said head-pieces having a similar configuration and
designed to be secured to said head connector on said head
portion of said screw, nail or post, at least one of said head-
pieces at least partially connected below said upper portion of
said head-piece, a plurality of said head-pieces in said set of
head-pieces having a differently configured upper portion
designed to connect to differing components of said support
system.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Michelson
Pisharodi
US 6,120,502
US 6,669,697 B1
Sep. 19, 2000
Dec. 30, 2003
Strobel US 2001/0007074 A1 Jul. 5, 2001

Appeal 2009-013773
Application 10/828,149
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REJECTIONS
Claims 1-6, 14, 25-30 and 54-62 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Pisharodi. Ans. 3.
Claims 7-11 and 31-35 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pisharodi and Michelson. Ans. 6.
Claims 12, 13 and 36 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pisharodi and Strobel. Ans. 8.

OPINION
The rejections of claims 1-3, 6-13, 54, 55, and 58 are affirmed.
We adopt the Examiner’s factual findings regarding claim 1 as our
own and we agree with the Examiner that the subject matter of claim 1
would have been obvious to one having ordinary skill in the art. Ans. 3-4.
We agree with the Examiner that the screws 34, washers 36 and nuts
38 are provided as a “set” wherein the user selects the appropriate washer,
read as a portion of the claimed “head-piece,” for the application. Ans.3,
contra App. Br. 11, 14. We also agree with the Examiner that by virtue of
each of the structures depicted in figures 4-9 of Pisharodi being a washer
they have a “similar configuration.” Contra App. Br. 11. We agree with the
Examiner that the claim does not require the “head-piece” to have a unitary
construction and therefore nut 38 is reasonably read as the claimed “head-
piece connector.” Contra App. Br. 11; Reply Br. 2-3. Claim 1 requires head-
pieces “connected” below their upper portion, not that the “connector” be
located below their upper portion. Since the hemispherical surface 41 of
Pisharodi’s screw 34 engages the concave surface 45 of the washer, the
washer is “connected” below its upper portion despite the fact that nut 38 is
on the opposite end of the washer. Pisharodi, col. 12, ll. 15-18; contra App.
Appeal 2009-013773
Application 10/828,149
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Br. 11-13. Since the accepted definition of the term “connected” is restricted
to neither a direct nor an indirect connection, and it is therefore applicable to
an indirect connection we also agree with the Examiner that even though
Pisharodi’s cross bar 32 is shown in Figure 12 connected opposite the
surface read by the Examiner as “the upper portion” it is still connected
thereto. See, e.g., Ullstrand v. Coons, 147 F.2d 698, 700 (CCPA 1945).
Further, Pisharodi suggests inverting the washer. Pisharodi, col. 9, ll. 8-15,
figs. 6-10; contra App. Br. 12-13.
Appellant separately mentions claims 2 and 3 (App. Br. 16, 17) but in
each case Appellant’s arguments are premised upon the notion that it was
improper for the Examiner to read Pisharodi’s nut 38 as the claimed
“connector” in rejecting claim 1. For the reasons discussed above, these
arguments are unpersuasive here as well.
Regarding claims 54 and 55, we agree with the Examiner that it would
have been obvious to rearrange Pisharodi’s washer so that the upper portion
includes a connection tower 50 with a spinal plate connector 49 since
Pisharodi suggests inverting the washer as noted above. Ans. 5-6. Appellant
points out that in the embodiment depicted in figure 11 of Pisharodi the
support system is entrapped between the washer and screw, but Appellant
does not address the Examiner’s position that it would have been obvious to
rearrange Pisharodi’s parts to arrive at the claimed subject matter. See
App. Br. 19-20; Reply Br. 7.
Regarding claim 58, Appellant argues that Pisharodi’s end 44 of
cross-bar 32 is not a “sleeve.” App. Br. 22; Reply Br. 9. Pisharodi’s end 44
is tubular and surrounds shoulder 50. Pisharodi, col. 9, ll. 40-45. Thus, we
see no reason to exclude it from the broadest reasonable interpretation of the
term “sleeve.” We find nothing in the language of the claim preventing
Appeal 2009-013773
Application 10/828,149
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Pisharodi’s end 44 from being read as a component of the implant system as
opposed to the support system. Contra App. Br. 22.
Appellant failed to persuade us that the Examiner erred in rejecting
claims 1-3, 54, 55 and 58. Additionally, Appellant has not presented separate
arguments regarding the Examiner’s rejections of claims 6-13, which depend
directly or indirectly from claim 1.

The rejections of claims 4, 5, 14, 25-36, 56, 57, and 59-62 are reversed.
Regarding claims 4, 56 and 57 the Examiner appears to improperly
rely on per se rules of obviousness. See In re Ochiai, 71 F.3d 1565, 1572
(Fed. Cir. 1995) (reliance on per se rules of obviousness that eliminate the
need for fact-specific analysis of claims and prior art is legally incorrect). If
Pisharodi’s threaded portion 39 were replaced with female threads, or if
Pisharodi’s nut were located below the washer or integrated into it, as
suggested by the Examiner, we fail to see how Pisharodi could possibly
continue to function for its intended purpose of affixing spinal stabilizers
with a full range of adjustability. See Pisharodi, col. 10, ll. 60-64; Reply Br.
6-8. Thus, the Examiner has failed to articulate reasoning with a rational
underpinning as to why the claimed subject matter would have been obvious
to one having ordinary skill in the art in light of the teachings of Pisharodi.
Regarding claims 14 and 25, the Examiner contends that Pisharodi’s
threaded portion 39 and longitudinal passage 48 constitute “marking[s] to
indicate that said head and said screw, nail or post belong to a same family
or type.” Ans. 5. The Specification states that “[m]any types of markings can
be used including, but not limited to, a number code, a letter code, a symbol
code, a color code or combinations thereof.” Spec. 8:26-27. Although this is
not a limiting example nor an express definition of the term “marking,” we
Appeal 2009-013773
Application 10/828,149
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cannot agree with the Examiner that when read in light of the Specification,
one of ordinary skill in the art would have understood the term “marking” to
include Pisharodi’s threaded portion 39 and longitudinal passage 48. Further,
the Examiner has not adequately explained, and it is not apparent from the
reference, how the cited structures are capable of performing the recited
function of “indicat[ing] that said head and said screw, nail or post belong to
a same family or type.”
For these reasons we are constrained to reverse the Examiner’s
rejection of claims 4, 14, 25, 56 and 57. Since the Examiner relies on the
same reasoning, we must also reverse the rejections of dependent claims 26-
30 and 59-62. Since neither Michelson nor Strobel as applied by the
Examiner cures the deficiencies note above we are also constrained to
reverse the rejections of claims 31-36.

DECISION
The rejections of claims 1-3, 6-13, 54, 55, and 58 are affirmed.
The rejections of claims 4, 5, 14, 25-36, 56, 57, and 59-62 are
reversed.

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)(1)(iv).

AFFIRMED-IN-PART

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