Ex Parte Brunner et al

Patent Trial and Appeal Board

Jun 17, 2016

11318938 (P.T.A.B. Jun. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111318,938 12/22/2005 Peter Brunner
76960 7590 06/17/2016
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.
10139/11202 5486
EXAMINER
JOHANAS, JACQUELINE T
ART UNIT PAPER NUMBER
3733
MAILDATE DELIVERY MODE
06/17/2016 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 PETER BRUNNER and MARCEL FUHRER
Appeal 2014-005161 1,2
Application 11/318,938
Technology Center 3700
Before ANTON W. PETTING, PHILIP J. HOFFMANN, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1 and 3-30. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
According to Appellants, their invention is related to "a device for
detachably clamping fastening elements in a surgical fixing or repositioning
1 Our decision references Appellants' Specification ("Spec.," filed Dec. 22,
2005), Appeal Brief ("Appeal Br.," filed Dec. 30, 2013), and Reply Brief
("Reply Br.," filed Mar. 27, 2014), as well as the Examiner's Answer
("Answer," mailed Feb. 5, 2014).
2 According to Appellants, the real party in interest is Depuy Synthes
Products, LLC. Appeal Br. 2.
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Application 11/318,93 8
device." Spec. ii 2. Independent claims 1 and 28 are the only independent
claims under appeal. We reproduce, below, independent claim 1, as
representative of the appealed claims.
1. A clamping device, comprising:
a rod extending along a longitudinal axis from a first end
to a second end;
a first pair of clamping jaws operably associated with the
rod, the first pair of clamping jaws having an inner clamping jaw
and an outer clamping jaw, each of the inner clamping jaw and
the outer clamping jaw including a bore extending therein
parallel to and spaced a distance from the longitudinal axis of the
rod, the first pair of clamping jaws defining a fastening element
receiving channel extending therebetween transverse to the rod;
a second pair of clamping jaws operably associated with
the rod, the second pair of clamping jaws having an mner
clamping jaw and an outer clamping jaw; and
at least a first elastic element positioned in the bore
between the inner and outer clamping jaws of the first pair of
clamping jaws such that the first elastic element has a
longitudinal axis which is parallel to and spaced a distance from
the longitudinal axis of the rod on a side of the longitudinal axis
opposite the fastening element receiving channel, the first elastic
element being bendable so that the inner and outer clamping jaws
of the first pair of clamping jaws are movable relative to one
another.
Appeal Br., Claims App.
REJECTIONS AND PRIOR ART
The Examiner rejects claims 1, 3-13, and 22-30 under 35 U.S.C.
§ 103(a) as unpatentable over Walulik (US 2002/0026190 Al, pub. Feb. 28,
2002) and Mazzio (US 5,741,252, iss. Apr. 21, 1998).
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Application 11/318,93 8
The Examiner rejects claims 14--21 under 35 U.S.C. § 103(a) as
unpatentable over Walulik, Mazzio, and White (US 2001/0028148 Al, pub.
Oct. 11, 2001).
See Answer 2-16.
ANALYSIS
Independent claim 1, from which claims 3-27 depend, recites a
clamping device comprising, in part,
at least a first elastic element positioned in the bore between the
inner and outer clamping jaws of the first pair of clamping jaws
such that the first elastic element has a longitudinal axis which is
parallel to and spaced a distance from the longitudinal axis of the
rod on a side of the longitudinal axis opposite the fastening
element receiving channel, the first elastic element being
bendable so that the inner and outer clamping jaws of the first
pair of clamping jaws are movable relative to one another.
Appeal Br., Claims App. (emphases added). The Examiner finds, among
other things, that Walulik teaches numerous limitations of the claimed
clamping device, but does not teach either bores in the inner and outer
clamping jaws or an elastic element (see, e.g., Answer 3), and that Mazzio
teaches a clamping device with bores in the inner and outer clamping jaws,
as well as a compressible elastic element positioned in the bores (see, e.g.,
id. at 3--4). Although not entirely clear, it appears that the Examiner finds
that modifying Walulik's clamping device to include Mazzio's bores and
elastic elements would have resulted in a clamping device with an elastic
element that both compresses as well as inherently (i.e., necessarily) is
capable of curving, each of which teaches the claimed "bendable" elastic
element (see, e.g., id. at 17-19). Appellants argue that an elastic element
that compresses is not "bendable" as required by claim 1 (see, e.g., Reply
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Application 11/318,93 8
Br. 2-5), and that l'vfazzio 's elastic element is not necessarily capable of
curving just because it is compressible (see, e.g., id. at 5---6). Based on our
review, as set forth below, we do not sustain the rejection of independent
claim 1. Further, inasmuch as the Examiner does not establish, for example,
that any other reference used in the rejections of dependent claims 3-27
remedies the deficiency in the rejection of independent claim 1, we also do
not sustain the rejections of claims 3-27.
It is well established that "the PTO must give claims their broadest
reasonable construction consistent with the specification." In re ICON
Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citations
omitted). In this case, there is no express definition of "bendable" in
Appellants' Specification. Nonetheless, Appellants' Specification describes
that "at least one clamping jaw 6, 7, 8, 9 of each of the pairs of clamping
jaws 4, 5 may be tilted" relative to other clamping jaws (Spec. i-f 18), and
Appellants' Figure 2 shows elastic means 40 in the form of rod 41 that is
curved (rather than compressed) when clamping jaws 6 and 8 are tilted
relative to one another. See Reply Br. 3--4. Further, Appellants
Specification appears to differentiate bendable from compressible, stating
that "[i]t should be noted that the elastic means 40 may be bendable as well
as compressible." Spec. i-f 26; see also Appeal Br. 3--4. It is not entirely
clear whether the Examiner finds that the definition of "bendable" as "to
cause of submit or yield" encompasses "compressing" because, for example,
portions of Mazzio's elastic element would yield if installed in Walulik's
clamping device. See, e.g., Answer 4--5, 17-22 (citing dictionary.com).
Regardless, we conclude that the claim term "bendable," when interpreted in
light of Appellants' Specification, requires that the elastic element is able to
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Application 11/318,93 8
curve. Thus, we do not sustain the rejection based on l'vfazzio 's teaching of
an elastic element that compresses.
Further, inasmuch as the Examiner fails to establish that Mazzio's
elastic element is necessarily or inherently capable of curving, we do not
sustain the rejection of claim 1 on that basis. More particularly, the
Examiner determines the following:
[The] Examiner maintains that a compressible material is a
material that may be caused to curve as a thorough search has
been conducted to find any solid material that may be
compressible but not bendable and no such material exists.
Therefore it is an inherent property of a compressible material to
be capable of being bent (bendable) or being caused to curve (as
Applicant has defined "bendable"). Examiner asserts that a
material that can be compressed or squeezed (yields to forces
which [sic] reduce the material volume) would also yield to a
localized force, a force which would push on one location but not
other locations along the surface of material-thereby causing the
material to curve. This compressible material property of the
shoulder portion (51) of the elastic element (50+5 l) of Mazzio,
disclosed in Mazzio (coL 4; in. 29-32) and admitted by Appiicant
in page 7 of Appeal Brief, renders the shoulder portion inherently
bendable or capable of being bent.
Answer 19. We disagree with the Examiner's determination that a
compressible material is inherently curvable, and the Examiner does not
provide a citation to any evidence supporting this determination.
For the above reasons, we do not sustain the rejections of claims 1 and
3-27. Independent claim 28 recites a limitation similar to that discussed
above with respect to claim 1. Thus, we do not sustain the rejection of claim
28, or the rejection of its dependent claims 29 and 30, for reasons similar to
those discussed above.
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Application 11/318,93 8
DECISION
We REVERSE the Examiner's obviousness rejections of claims 1
and 3-30.
REVERSED
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