Ex Parte Dell

Patent Trial and Appeal Board

Sep 20, 2016

13310244 (P.T.A.B. Sep. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/310,244 12/02/2011 Alberto A. Fernandez Dell'Oca
76960 7590 09/20/2016
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.
10139/27404 (T01735US1) 8957
EXAMINER
JONES, DIANA S
ART UNIT PAPER NUMBER
3775
MAILDATE DELIVERY MODE
09/20/2016 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
Appeal2015-000322 1
Application 13/310,2442
Technology Center 3700
Before KEVIN W. CHERRY, BRADLEY B. BAY AT, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed
June 30, 2014) and Reply Brief ("Reply Br.," filed Sept. 29, 2014), and the
Examiner's Answer ("Ans.," mailed July 31, 2014) and Final Office Action
("Final Act.," mailed Feb. 12, 2014).
2 Appellant identifies DePuy Synthes Products, LLC as the real party in
interest. App. Br. 2.
Appeal2015-000322
Application 13/310,244
CLAIMED INVENTION
Appellant's claimed invention relates to surgical "devices for bone
fixation using a cable cerclage technique." Spec. i-f 2.
Claims 1 and 8 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A crimp configured to fix a cable about a bone,
compnsmg:
a body extending from a proximal end to a distal end;
a first channel extending through the body from the
proximal end to the distal end, the first channel being sized and
shaped to permit a cable to be slid therethrough;
a second channel extending through the body from the
proximal end to the distal end, the second channel being sized
and shaped to permit a cable to be slid therethrough; and
a deformable extension attached to the proximal end of the
body, the extension including a lumen aligned with the second
channel and sized and shaped to permit the cable to be slid
therethrough.
REJECTION
Claims 1-15 are rejected under 35 U.S.C. § 102(b) as anticipated by
Dell'Oca (WO 2010/011718 Al, pub. Jan. 28, 2010).
ANALYSIS
Independent Claims 1and8, and Dependent Claims 2-7 and 9-15
We are persuaded by Appellant's argument that the Examiner erred in
rejecting independent claims 1 and 8 under 35 U.S.C. § 102(b) because
Dell'Oca does not disclose "a deformable extension attached to the proximal
end of the body, the extension including a lumen aligned with the second
channel and sized and shaped to permit the cable to be slid therethrough," as
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Appeal2015-000322
Application 13/310,244
recited in claim 1, and similarly recited in claim 8. App. Br. 3-5; see also
Reply Br. 2--4.
Dell'Oca relates to a minimally invasive treatment of a fracture by
circling a cable around the fractured bone and crimping a crimp over the
cable to hold the cable in place via a small incision through the skin.
Dell'Oca i-f 2. The system of Dell'Oca includes a plate positioned along a
bone, a cable that circles the plate and the bone, and a crimp that fixes the
cable at a desired tension about the plate and bone. Id. i-f 7. The crimp
further comprises a cable block that receives a portion of the cable
therethrough and a deformable member "that may be positioned adjacent the
cable block." Id. More particularly, the deformable member is positioned
adjacent an opening of a second lumen at a proximal end of the cable block
with a distal end of the deformable member abutting a proximal end of the
cable end and crushed over the cable. Id. i-f 12.
The Examiner takes the position that the "deformable member [of
Dell'Oca] is a continuation of [the cable block] 106 and is fixed to the
proximal end [of the cable block] through actuation of the cerclage tool."
Ans. 8. In this regard, the Examiner finds that applying tension to the
cerclage tool causes crushing of the deformable member over the cable so
that the deformable member is held against the cable block, and, thus, this
contact constitutes being "attached to the proximal end of the body," as
recited in claim 1, and similarly recited in claim 8. Id. at 7 (citing Dell'Oca
i-f 14). We disagree.
The term "attached" is not explicitly defined in the Specification.
However, Appellant offers a dictionary definition for "to attach" as "to fix or
fasten itself or adhere." App. Br. 5 (citing Webster's Third New
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Appeal2015-000322
Application 13/310,244
International Dictionary, 1986). We adopt the definition provided by
Appellant as the ordinary and customary meaning of the term, as it would be
understood by a person of skill in the art. There is no indication in the
Specification that Appellant has given the term a meaning different from its
ordinary and customary meaning.
With this definition in mind, we conclude that a person of ordinary
skill in the art would understand from the Specification that a deformable
member abutting a cable block by virtue of being slid into position along the
cable does not constitute being "attached" to the cable box, as required by
claim 1 and claim 8. Moreover, once the deformable extension is crushed
over the cable to fix the cable at the desired tension, as the Examiner's
proposed interpretation requires, the lumen would not be "sized and shaped
to permit the cable to be slid therethrough," as recited in claim 1, and
similarly recited in claim 8.
In view of the foregoing, we do not sustain the Examiner's rejection
of claims 1 and 8 under 35 U.S.C. § 102(b ). For the same reasons, we also
do not sustain the Examiner's rejection of claims 2-7 and 9-15, which
depend therefrom.
DECISION
The Examiner's rejection of claims 1-15 under 35 U.S.C. § 102(b) is
reversed.
REVERSED
4