Ex Parte Dell

Patent Trial and Appeal Board

Mar 24, 2016

13000228 (P.T.A.B. Mar. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/000,228 12/20/2010 Alberto A. Fernandez Dell'oca
76960 7590 03/24/2016
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.
10139/19602 1436
EXAMINER
CHANG, OLIVIA C
ART UNIT PAPER NUMBER
3775
MAILDATE DELIVERY MODE
03/24/2016 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 ALBERTO A. FERNANDEZ DELL'OCA
Appeal2014-001774
Application 13/000,228 1
Technology Center 3700
Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-8. Claims 9-13 have been withdrawn. Final
Act. 2. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellant, the real party in interest is the assignee
"DePuy Synthes Products, LLC[,] which is a wholly owned subsidiary of
Synthes, Inc." Appeal Br. 2. Additionally, the Appellant states that
"Johnson & Johnson, Inc. is the parent corporation of Synthes, Inc." Id.
Appeal2014-001774
Application 13/000,228
Claimed Subject Matter
Claim 1, the sole independent claim on appeal, is representative of the
subject matter on appeal and is reproduced below.
1. A device for the positioning of a bone plate against a target
portion of bone, comprising:
first and second arms pivotally connected to one another
at a first joint, a distal end of each of the first and second arms
defining a gripping surface configured to grip a target portion of
bone therebetween, portions of the first and second arms
proximal of the first joint extending substantially in a first plane;
an extension member coupled to the first and second arms
at the first joint, the extension member including a first section
extending distally from the first joint substantially parallel to the
first plane and a second section extending distally from the first
section angled relative to the first section so that when the first
and second arms are in a desired configuration gripping a target
portion of bone, the second section extends substantially parallel
to a surface of the target portion of bone;
a compression mechanism coupled to the second section,
the compression mechanism including a coupling member
coupled bet\'l/een the second section of the extension member and
a compression plate including a distal surface configured to
engage a proximal surface of a bone plate to be coupled to the
bone, the coupling member being movable relative to the second
section of the extension member to move the compression plate
toward and away from the second section.
Rejections
Claims 1, 2, 6, and 8 are rejected under 35 U.S.C. § 102(b) as
anticipated by Golling (US 550,879, iss. Dec. 3, 1895).
Claims 3-5 are rejected under are rejected under 35 U.S.C. § 103(a)
as unpatentable over Golling.
Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Golling and Klintmalm (US 5,019,092, iss. May 28, 1991).
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Appeal2014-001774
Application 13/000,228
ANALYSIS
Independent claim 1 calls for a device including, among other things,
first and second arms, and an extension member having a first section and a
second section. See Appeal Br., Claims App. More particularly, claim 1
reqmres:
an extension member coupled to the first and second arms
at the first joint, the extension member including a first section
extending distally from the first joint substantially parallel to the
first plane and a second section extending distally from the first
section angled relative to the first section so that when the first
and second arms are in a desired configuration gripping a target
portion of bone, the second section extends substantially parallel
to a surface of the target portion of bone.
Id. (emphases added). The emphasized recitations include functional
recitations that further limit the relationship between claimed structures, i.e.,
the first section and the second section of the extension member and the first
and second arms. But see Adv. Act. 2, mailed June 20, 2013.
The Examiner finds that claim 1 is anticipated by Golling. Final
Act. 2. In rejecting claim 1, the Examiner finds, among other things:
an extension member (I) coupled to the first [(a)] and second
[(b)] arms at the first joint (FIG. 5), the extension member
including a first section (see Figure A below) extending distally
from the first joint substantially parallel to the first plane [(plane
of line 8-8, FIG. 5)] and a second section (see Figure A below)
extending distally from the first section angled relative to the first
section so that when the first and second arms are in a desired
configuration gripping a target portion of bone, the second
section extends substantially parallel to a longitudinal axis of the
target portion of bone ....
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Appeal2014-001774
Application 13/000,228
Final Act. 2-3 (emphasis added).2 The Examiner's reference to "Figure A
below" is directed to Golling's Figure 5 with annotations including two
circular shapes around generally non-overlapping portions of bracket I. See
Golling 2, 11. 81-82. Figure A is reproduced below:
Figun~ A: Device of Gol:ing.
Figure A depicts a longitudinal central sectional view of Golling's device for
ringing hogs. Golling 1, 1. 35. Figure A also depicts a first circular shape
surrounding a portion of bracket I, which the Examiner identifies as the
''~. ' ' • ,, 1 1 • ' 1 • 1 1 1. 1. (""("" '
t< irs1 secuon, ana aep1c1s a secona circurnr snape surrounamg a mnerem
portion of bracket I, which the Examiner identifies as the "Second section."
The Appellant contends that the Examiner erred in finding that
Golling discloses the extension member as required by claim 1. Appeal
Br. 8-9. More specifically, the Appellant contends:
The Examiner's interpretation requires the assumption of several
circumstances not disclosed or suggested in Golling: (1) a bone
2 The italicized portion of the quotation appears to be directed to a further
limitation of claim 6, which in-part recites, " ... the second section extends
substantially parallel to a longitudinal axis of the target portion of bone"
(Appeal Br., Claims App.). The Examiner does not reference in the Final
Action, mailed April 15, 2013, or the Answer, the broader language of claim
1, "the second section extends substantially parallel to a surface of the target
portion of bone" (id.).
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Appeal2014-001774
Application 13/000,228
is assumed to extend along the line 1-1 within the magazine E
and (2) the bone is assumed to be gripped in some manner by the
jaws "A" and "B." Accordingly, the bone is oriented such that a
surface thereof is assumed to be substantially parallel to the line
1-1. If this is the case, no part of the bracket "I" of Golling is
ever oriented parallel to the bone and a surface thereof. Using
the above description of the bracket "I," the corresponding first
section is oriented perpendicular to the bone, the first part of the
second section is oriented angled to the bone, and the second part
of the second section is oriented perpendicular to the bone. That
is, no part of the bracket "I" is ever oriented parallel to the bone.
Appeal Br. 9 (emphases added). The Appellant's contention is persuasive.
The Examiner fails to respond to the Appellant's contention. As such,
we are left to guess if the Examiner agrees or disagrees with the Appellant's
assumptions. Further, the Examiner suggests that a bone can be oriented in a
way so that all of the functional limitations associated with the extension
member are met (see Adv. Act. 2, Ans. 6-7), but fails to articulate sufficient
details of how such is possible. Hence, we are forced to speculate how the
second circular shape surrounding a portion of Go lling' s bracket I could
correspond to all of the functional recitations of claim 1 associated with the
extension member. In other words, based on the Examiner's findings, we
determine that a person of ordinary skill in the art would fail to ascertain
from the record how a bone could be placed in Golling's device to perform
the functional recitations of claim 1, which further limit the relationship
between claimed structures, i.e., the first section and the second section of
the extension member and the first and second arms. As a specific example,
the Examiner's finding that the second circular shape surrounding a portion
of Golling' s bracket I corresponds to the second section of the extension
member, as required by claim 1, fails to be adequately supported.
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Appeal2014-001774
Application 13/000,228
Thus, the Examiner's rejection of claim 1, and dependent claims 2, 6,
and 8, as anticipated by Golling is not sustained.
The remaining rejections based on Golling alone or in combination
with Klintmalm rely on the same inadequately supported finding discussed
above. As such, we do not sustain the rejections of claims 3-5 as
unpatentable over Golling, and claim 7 as unpatentable over Golling and
Klintmalm.
DECISION
We REVERSE the Examiner's decision rejecting claims 1-8.
REVERSED
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