Ex Parte Chiu

Patent Trial and Appeal Board

Aug 1, 2016

12025198 (P.T.A.B. Aug. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/025, 198 02/04/2008
1059 7590 08/02/2016
BERESKIN & PARR LLP/SEN,CRL, s,LL
40 KING STREET WEST
40th Floor
TORONTO, ON MSH 3Y2
CANADA
FIRST NAMED INVENTOR
Mark Hsien Nien Chiu
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.
16491-P2614USOO (#2) 1832
EXAMINER
NELSON, CHRISTINE L
ART UNIT PAPER NUMBER
3774
MAILDATE DELIVERY MODE
08/02/2016 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 MARK HSIEN NIEN CHIU
Appeal2014-006710 1
Application 12/025,1982
Technology Center 3700
Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1, 3-11, and 31. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("Br.," filed
December 2, 2013), the Examiner's Answer ("Ans.," mailed
March 25, 2014), and Final Office Action ("Final Act.," mailed
June 4, 2013).
2 Appellant identifies Emil Schemitsch as the real party in interest (Br. 3).
Appeal2014-006710
Application 12/025,198
CLAHvIED Il-.JVENTION
Appellant's claimed invention relates generally to "a device for
flexibly connecting bones, and a method of using the device for repairing the
syndesmotic joint of an ankle" (Spec. i-f 1 ).
Claim 1, reproduced below with added bracketed notations, is
illustrative of the subject matter on appeal.
1. A method for repairing a syndesmotic joint of an ankle
using a connector, the syndesmotic joint having a syndesmotic
space having a length spanning between a fibula and a tibia, the
method comprising:
a. providing the connector comprising an unitary nitinol
body and having, spaced sequentially, a first portion having bone
engagement members, a central portion and a second portion
having bone engagement members, the portions defining a
longitudinally extending axis, the connector having a rigidity that
is sufficient to secure the fibula and the tibia in a normal
anatomical position during swing phase of walking;
b. advancing the first portion sequentially through one of
the fibula and the tibia,
through the syndesmotic space to the other of the fibuia
and the tibia;
c. concurrently advancing and securing the first portion in
the one of the fibula and the tibia and the second portion of the
connector in the other of the fibula and tibia that does not contain
the first portion by applying a force to only one of the first and
second portions such that the length of the syndesmotic space is
maintained, and
whereby at least a portion of the central portion is
positioned in the syndesmotic space and the central
portion is not secured to the one of the fibula and the tibia.
2
Appeal2014-006710
Application 12/025,198
REJECTION
Claims 1, 3-11, and 31 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Muckter (US 2002/0198527, pub. Dec. 26, 2002) and
Jensen (US 2008/0177291, pub. July 24, 2008). 3
ANALYSIS
Independent claim 1 and dependent claims 3, 7, 9-11, and 31
We are not persuaded by Appellant's argument that the Examiner
erred in rejecting independent claim 1 under 35 U.S.C. § 103(a) because a
combination of Muckter and Jensen fails to disclose or suggest "[a]
connector comprising an unitary nitinol body," as recited by independent
claim 1 (Br. 12-13; see also id. 19-24). Instead, we agree with the
Examiner that the combination of Muckter and Jensen discloses the argued
limitation (see Final Act. 3--4 (citing Muckter i-fi-144, 46, 47, Figs. 5, 8;
Jensen i-fi-156, 61)).
Muckter is directed to "an implantable screw for stabilization of a
joint or a bone fracture comprising an elongated body with a proximal head
portion and a distal insertion portion having a thread, wherein the head
portion and the insertion portion are interconnected by a flexible shaft"
(Muckter i-f 12). Muckter discloses its implant design "guarantees transfer of
tensile forces almost exclusively, while bending moments, compressive
forces and transverse forces are not transmitted at all by the flexible shaft or
only to a slight extent" (id. i-f 15). Muckter further discloses that "[t]he
flexibility in the shaft area can be achieved by a wire cable, a wire bundle, a
3 Because claims 4---6 and 8 depend from claim 1, we treat claims 4--6 and 8
as rejected under§ 103(a) as unpatentable over Muckter and Jensen.
3
Appeal2014-006710
Application 12/025,198
cord, a spiral or multiple webs and by fibers" (id. i1 19). In this regard, we
note that Muckter discloses that "[t]he wire cable or the wire bundle is
fixedly connected in the head part as well as in the threaded part through
suitable connection methods (e.g., pressed, glued, soldered or welded
connections)" (id. i-f 40). Figure 5, depicted below, includes "a bone
screw 15, whose shaft 16 is designed in the form of a spiral" (id. i-f 44).
Figure 5 of Muckter is reproduced below:
Fit. 5
15
I
Figure 5 depicts "a bone screw, whose shaft is configured to be
flexible in the manner of a spiral spring" (id. i-f 29).
Jensen is directed to an orthopedic connector system which utilizes
"an anchor element configured to be anchored in bone and having a
selectively bendable hinge region" (Jensen i-f 7). Jensen discloses that its
"anchor element may be structured as a bone screw" with external thread,
which "may be a continuous rib or may be interrupted such that the external
thread is composed of two or more discrete thread segments" (id. i-f 46).
Jensen discloses that its connector may be formed using the same materials
or different materials and may be formed by "NiTinol" among other
materials (id. i-f 56). Jensen further discloses that
[ d]isposing the anchor elements may include advancing a leading
anchor element first through a more proximal (closer and/or
more accessible) of the bone members and then into a more distal
4
Appeal2014-006710
Application 12/025,198
(spaced and/ or less accessible) of the bone members. The
leading anchor element may be placed in its respective bone
member at about the same time as a bridge member of the
connector device, or the bridge member may be placed in the
bone member before (or after) the leading anchor element.
(Id. if 61).
Appellant also argues that the Examiner improperly "relies upon a
meaning of 'connector' in part (a) [of independent claim 1] that is different
from the meaning of connector in part ( c )"of independent claim 1 (Br. 12-
13). More particularly, Appellant argues:
[a]ccording to the rejection, Muckter bone screw 15 (Muckter
Figure 5) is the "connector" of part (a) of claim 1, satisfying the
condition of being, or having, a "unitary ... body" as recited in
claim 1.
At the same time, portion ( c) of claim 1 requires that the
first and second portions of the "connector" both be advanced by
applying a force to only one of the first portions, "such that the
length of the syndesmotic space is maintained.["]
However, Muckter tells the reader at para. [0044], last
sentence:
"The shaft length is limited by a wire cable, a wire bundle,
a chain, a fiber or flexible pin (not show) preferably arranged in
the spiral."
If item 15 of Muckter is interpreted as being the "unitary
body" of part (a) of claim 1 then the last sentence of para. [0044]
tells the reader that Muckter item 15, alone, does not satisfy the
condition of portion ( c) of claim 1.
If, by contrast, the embodiment of Figure 5 of Muckter
maintains the length of the syndesmotic space as required by part
( c) of claim 1, e.g., by using a wire bundle or other means of the
last sentence of para. [0044 ], then the interpretation of the
"connector" must also include that bundle or means, and so does
not satisfy the "unitary body" portion (a) of claim 1.
(Br. 12-13). We cannot agree.
5
Appeal2014-006710
Application 12/025,198
In making this determination, we note that Appellant's Specification
is silent as to any special definition for the term "unitary." We note that the
ordinary and customary meaning of the term "unitary" is: "1. Of or relating
to a unit. 2. Having the nature of a unit; whole" (see Random House
Kemerman Webster's College Dictionary, Random House, Inc. (2010),
accessed at http://www.thefreedictionary.com/unitary (last visited on July
26, 2016). We also note that there is no indication in Appellant's
Specification that "unitary" has a meaning other than this ordinary and
customary meaning. In fact, we find the ordinary and customary meaning of
the term to be consistent with Appellant's Specification, which discloses that
"the entirety of connector 10 may be made from nitinol, or only central
portion 14 may be made from nitinol. For example, first and second
portions may be made from stainless steel, and may be affixed to central
portion 14, for example by welding" (Spec. i-f 55).
Thus, given its broadest reasonable interpretation, claim 1 only
requires that "the connector comprising an unitary ... body" "relat[ e] to a
unit" or "[h ]ave the nature of a unit," i.e., "be affixed ... for example by
welding" (see id.). As such, Muckter' s disclosure regarding the use of a
wire bundle or other means to maintain syndesmotic space while a force is
applied to only one of the first portions, as required by limitation ( c) of
independent claim 1 (see Muckter i-f 44; see also id., Fig. 5), does not
preclude it from reading on "the connector comprising an unitary ... body,"
as also required by limitation (a) of independent claim 1, because Muckter
discloses "[t]he wire cable or the wire bundle is fixedly connected in the
head part as well as in the threaded part through suitable connection methods
(e.g., pressed, glued, soldered or welded connections)" (id. i-f 40). Therefore,
6
Appeal2014-006710
Application 12/025,198
in contrast to Appellant's arguments (see e.g., Br. 19--24), we agree with the
Examiner that the combination of Muckter and Jensen discloses the
"connector" having a unitary body required by limitations (a) and ( c) of
independent claim 1, under a broadest reasonable interpretation (see Ans. 5).
Appellant also argues that Jensen fails to disclose or suggest "the
feature of driving only the 'first portion' of the connector to advance both
the first and second portions of the connector" because, for example, Jensen
indicates "that a 'central portion' is located between the 'first portion' and
the 'second portion'" and "the 'second portion' might correspond to the
second or trailing or partner anchor of Jensen" (Br. 14--15). However, as the
Examiner points out, Jensen is only relied upon to the extent it discloses
"applying force to one end of the device, and the use ofNitinol" (Ans. 6). In
this regard, we note that the Examiner relies on Muckter, not Jensen, to
disclose "a first portion having bone engagement members, a central portion
and a second portion having bone engagement members," as recited by
limitation (a) of claim 1 (see Final Act. 3--4).
Appellant further argues that Jensen teaches away from modifying
Muckter's disclosure regarding an implantable screw "for augmenting
stabilization of bone joints" (Muckter i-f 3) with Jensen's orthopedic
connector system which utilizes "an anchor element configured to be
anchored in bone and having a selectively bendable hinge region" (Jensen
i-f 7) because "Jensen teaches, and claims, that the first end (i.e., leading
anchor 142) and the second end (i.e., trailing anchor 144) [are] not unitary"
(Br. 15-18). However, Appellant's teaching away argument is not
persuasive at least because Appellant does not point to any passage in Jensen
that "criticize[s], discredit[s] or otherwise discourage[s]" Jensen's disclosure
7
Appeal2014-006710
Application 12/025,198
regarding the use of different materials, such as NiTinol, in an implantable
device (see Jensen i-f 56) or the application of force to only one of a first and
second portions (see Ans. 6) from addressing the argued limitations. See In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art does not teach
away from claimed subject matter merely by disclosing a different solution
to a similar problem unless the prior art also criticizes, discredits or
otherwise discourages the solution claimed).
Appellant additionally argues that the Examiner's proposed
combination ofMuckter and Jensen would not have been obvious to one of
ordinary skill in the art because "[t]he combination results in the destruction
of function" ofMuckter or Jensen (Br. 18-19). More particularly, Appellant
argues that "[t]o combine any embodiment of Jensen with Muckter either (a)
destroys the separateness that is essential to Jens en's invention; or (b)
destroys the unitary body connection of the unitary body of Muckter Figure
5" (id. 19).
Appellant's argument is not persuasive at least because it appears
based on the bodily incorporation of the features of Jensen into the Muckter
connector device. The test for obviousness is not whether the features of
one reference may be bodily incorporated into the structure of another
reference. Instead, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art.
See In re Keller, 642 F.2d 413, 425 (CCPA 1981). See also In re Sneed,
710 F.2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review.").
8
Appeal2014-006710
Application 12/025,198
In view of the foregoing, we sustain the Examiner's rejection of
independent claim 1 under 35 U.S.C. § 103(a). We also sustain the rejection
of dependent claims 3, 7, 9--11, and 31, which are not argued separately.
Dependent claims 4-6 and 8
Appellant argues that claims 4---6 and 8 are allowable for the same
reasons set forth with respect to independent claim 1 (Br. 24 ). We are not
persuaded for the reasons set forth above that the Examiner erred in rejecting
independent claim 1 under 35 U.S.C. § 103(a). Therefore, we sustain the
Examiner's rejection under 35 U.S.C. § 103(a) of claim 4---6 and 8 for the
same reasons set forth above with respect to claim 1.
DECISION
The Examiner's rejections of claims 1, 3-11, and 31 are 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)(l )(iv).
AFFIRMED
9