Ex Parte Deirmengian et alDownload PDFPatent Trial and Appeal BoardSep 16, 201612909220 (P.T.A.B. Sep. 16, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/909,220 10/21/2010 Carl Deirmengian 76960 7590 09/19/2016 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. 10139/20002 (T01212US1) 5499 EXAMINER HENSON, DEVIN B ART UNIT PAPER NUMBER 3736 MAILDATE DELIVERY MODE 09/19/2016 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 CARL DEIRMENGIAN, GEORGE MIKHAIL, and GLEN PIERSON Appeal2014-003808 Application 12/909,220 Technology Center 3700 Before JENNIFER D. BAHR, JOHN C. KERINS, and FREDERICK C. LANEY, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Carl Deirmengian et al. (Appellants) seek our review under 35 U.S.C. § 134(a) of the Examiner's final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal2014-003808 Application 12/909,220 THE INVENTION Appellants' invention is directed to a device for treating bone in a living body, and includes an implant and strain measuring sensors. Spec. i-f 2. Independent claim 1, reproduced below, is illustrative: 1. A device for treating bone in a living body, comprising: an implant configured for attachment to a bone; a first sensor measuring a strain on a first portion of the implant, the first portion of the implant being configured to be mechanically coupled to a weakened portion of a bone when the implant is coupled to the bone in a target position; and a second sensor isolated between two bone fixation element receiving holes of the implant measuring strain in a non- weakened portion of the bone. THE REJECTIONS ON APPEAL The Examiner has rejected: (i) claims 1-5, 7, 9-12, and 15-20 under 35 U.S.C. § 102(b) as being anticipated by Morgan '741 (US 8,083,741 B2, issued Dec. 27, 2011); 1 (ii) claims 6, 13, and 14 under 35 U.S.C. § 103(a) as being unpatentable over Morgan '741 in view of Morgan '597 (US 2008/0300597 Al, published Dec. 4, 2008); and (iii) claim 8 under 35 U.S.C. § 103(a) as being unpatentable over Morgan '741 in view of Avni (US 6,273,863 Bl, issued Aug. 14, 2001). 1 Underlying application Serial Number 11/147,750 was published as US 2006/0052782 Al, on March 9, 2006. 2 Appeal2014-003808 Application 12/909,220 ANALYSIS Claims 1-5, 7, 9-12, and 15-20--Anticipation by Morgan '741 The issue joined by Appellants and the Examiner is whether Morgan '7 41 discloses "a second sensor isolated between two bone fixation element receiving holes of the implant measuring strain in a non-weakened portion of the bone," as set forth in claim 1. See Appeal Br. 3---6; Ans. 10-14. Appellants maintain that, in Morgan '7 41, "no sensor [] is located in [a] portion of a bone plate which is installed over a non-weakened portion of the bone and is clearly not located between tow bone fixation element receiving holes to be installed over such a non-weakened portion." Appeal Br. 4. Appellants also maintain that Morgan does not disclose a second sensor that is isolated between two bone fixation element receiving holes. Id. at 4--5. The Examiner initially relies upon a general statement in Morgan '741 to the effect that sensors may be located at various locations on the implant plate, or may surround or be located within holes in the plate as a teaching of the claimed second sensor being isolated between two bone fixation element receiving holes. Final Act. 13; see also Ans. 10-11. Such broad statements are ineffective in establishing anticipation, in that anticipation requires that every element of the claimed invention be literally present, arranged as in the claim. Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 894 (Fed .Cir.), cert. denied, 469 U.S. 857 (1984); Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 771-72 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984). Further, the identical invention must be shown in as complete detail as is contained in the patent claim. Jamesbury Corp. v. Litton Industrial Products, Inc., 756 F.2d 1556, 1560 (Fed. Cir. 1985); Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). 3 Appeal2014-003808 Application 12/909,220 The Examiner also provides an annotated version of Figure 2 of Morgan '741, illustrating what is regarded as being a non-weakened portion of a bone, as well as the placement of a sensor or sensors on an implant plate that are "located/isolated to measure strain in a non-weakened portion of the bone." Final Act. 13. Appellants reply that their understanding of the Examiner's positon relative to Figure 2 is that sensors 50 shown near a top edge of bone plate 10 correspond to the claimed second sensor. Appeal Br. 5. That is our understanding as well. Appellants, however, point out that those sensors 50 on the top portion of the plate are each associated with a plate hole which receives a bone fixation element, and thus are not isolated from the holes as claimed. Id. The Examiner does not directly address this alleged deficiency, instead pointing out that a broadest reasonable interpretation of "isolated" may be broader than Appellants' proffered meaning. Ans. 12. Further, the Examiner shifts focus to Figure 3 of Morgan, provides an annotated version thereof, and finds that various sensors surrounding a bone fixation element receiving hole are between, and isolated or set apart from, other bone fixation element receiving holes that do not have surrounding sensors. Id. at 13. The Examiner's position is unavailing. Appellants and the Examiner appear to agree that the term isolated is generally accepted to mean "set or placed apart, detached or separated so as to be alone." Appeal Br. 6; Ans. 12. In the context of the present invention, Appellants take the position that the recitation of the second sensor being "isolated" requires the sensor "to be disposed on the implant sufficiently separated from the two bone fixation holes by itself with no relation to other 4 Appeal2014-003808 Application 12/909,220 holes of the implant." Appeal Br. 4-5. Although the Examiner is correct that such language is not provided in any definitional sense in the Specification, the Specification does make clear that the notion of the sensor being isolated is so that the strain measured by the sensor is affected only by the load placed on the bone. Claim 1 similarly requires that the second sensor measure strain in a non-weakened portion of a bone, and not strain affected by loads in addition to those placed on the bone. In contrast, Morgan '741 discusses the sensors in Figure 3 as being used to measure compression of the implant plate to the underlying bone, in order to determine whether remedial action in the form of replacement of the plate or the fastening screws may be required. Morgan '741, col. 5, 11. 11-15, 11. 37--46. It appears from Morgan '741 that this compression is advantageously measured around the periphery of the holes through which the fastening screws are installed, and thus the sensors are not isolated from the loads imposed by those screws on the plate such that the sensor can measure strain on a non-weakened portion of a bone. As such, we do not sustain the Examiner's rejection of claim 1 based on anticipation by Morgan '7 41. Independent claims 11 and 15 include similar limitations to those discussed with respect to claim 1, and the rejection is not sustained as to those claims. The same is true of claims 2-10, 12-14, and 16-20, which depend from one of claims 1, 11, and 15. Claims 6, 13, and 14--Unpatentable over Morgan '7 41 and Morgan '597 The Examiner relies on the same erroneous findings as to Morgan '7 41 as in the anticipation rejection of claim 1 discussed above, and does not rely on Morgan '597 to cure the deficiencies noted. For the same reasons as 5 Appeal2014-003808 Application 12/909,220 presented above, the rejection of claims 6, 13, and 14 as being unpatentable over Morgan '741 and Morgan '597 is not sustained. Claim 8--Unpatentable over Morgan '741 and Avni The Examiner relies on the same erroneous findings as to Morgan '7 41 as in the anticipation rejection of claim 1 discussed above, and does not rely on Avni to cure the deficiencies noted. For the same reasons as presented above, the rejection of claim 8 as being unpatentable over Morgan '7 41 and A vni is not sustained. DECISION The rejection of claims 1-5, 7, 9-12, and 15-20 under 35 U.S.C. § 102(b) as being anticipated by Morgan '741 is reversed. The rejection of claims 6, 13, and 14 under 35 U.S.C. § 103(a) as being unpatentable over ~v1organ '741 in view of ~v1organ '597 is reversed. The rejection of claim 8 under 35 U.S.C. § 103(a) as being unpatentable over Morgan '741 in view of Avni is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation