Ex Parte Evans et alDownload PDFPatent Trials and Appeals BoardMay 22, 201914203605 - (D) (P.T.A.B. May. 22, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/203,605 03/11/2014 Peter J. Evans 26294 7590 05/24/2019 TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P. 1300EASTNINTH STREET, SUITE 1700 CLEVELAND, OH 44114 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. CCF-021707 US ORD 8910 EXAMINER BOLES, SAMEH RAAFAT ART UNIT PAPER NUMBER 3775 NOTIFICATION DATE DELIVERY MODE 05/24/2019 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketing@tarolli.com rkline@tarolli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETER J. EV ANS and BRET E. HARTZELL Appeal2018-008973 Application 14/203,605 Technology Center 3700 Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and SEAN P. O'HANLON, Administrative Patent Judges. O'HANLON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's decision, as set forth in the Final Office Action dated September 19, 2017 ("Final Act."), rejecting claims 1-9 and 41--48 under 35 U.S.C. § 102(a)(2) 1 Appellant is the Applicant, The Cleveland Clinic Foundation, which, according to the Appeal Brief, is the real party-in-interest. Appeal Br. 2. Appeal2018-008973 Application 14/203,605 as being anticipated by Yalizis (US 2013/0338722 Al, pub. Dec. 19, 2013). 2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). SUMMARY OF THE DECISION We REVERSE enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 4I.50(b). SUMMARY OF THE INVENTION Appellant's claimed invention relates to a fastener for securing bones together. Spec. ,r 2. Claim 1, the sole independent claim, is reproduced below from page 9 (Claims Appendix) of the Appeal Brief: 1. A fastening device for compressing first and second bones together comprising: a first member configured to extend entirely through the first bone and including a shaft having a threaded portion and an unthreaded portion, the threaded portion having an outer diameter that is not larger than the diameter of the unthreaded portion; and a second member having a first threaded portion for securing to the second bone and a second threaded portion for engaging the threaded portion of the first member while the first member extends entirely through the first bone to secure the first and second members together and compress the first and second bones, the entire unthreaded portion being radially exposed to the first bone when the first and second members are secured together compressing the first and second bones. ANALYSIS For the reasons discussed below in the new ground of rejection, we determine that claims 1-9 and 41--48 are indefinite. Having determined that 2 Claims 10-40 are withdrawn. Final Act. 1; Appeal Br. 2. 2 Appeal2018-008973 Application 14/203,605 these claims are indefinite, we cannot sustain the rejection of these claims under 35 U.S.C. § 102(a)(2) because to do so would require speculation as to the scope of the claims. See In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred in affirming an anticipation rejection of indefinite claims); see also In re Steele, 305 F.2d 859, 862---63 (CCP A 1962) (holding that the Board erred in affirming a rejection of indefinite claims under 35 U.S.C. § 103(a) because the rejection was based on speculative assumptions as to the meaning of the claims). It should be understood, however, that our decision in this regard is based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejection. New Ground of Re} ection Pursuant to our authority under 3 7 C.F .R. § 41. 50(b ), we enter a new ground of rejection of claims 1-9 and 41--48 under 35 U.S.C. § 112(b) as being indefinite. A claim is indefinite when h contains language that is "ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention." In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014); see also In re McAward, Appeal 2015-006416, 2017 WL 3669566, *5 (PTAB Aug. 25, 2017) (precedential). The indefiniteness determination is "based on the perspective of one of ordinary skill in the art in view of the entire written description and developing prosecution history." Packard, 751 F.3d at 1312. Claim 1 recites, in relevant part, "a first member configured to extend entirely through the first bone." Appeal Br. 9 (Claims App.). This language 3 Appeal2018-008973 Application 14/203,605 renders the claim indefinite because the scope of a first member that is "configured to extend entirely through the first bone" is unclear. Appellant's Specification describes that first member 40 extends length L 1 along axis 42 from head 50 at first end 44 to second end 46. Spec. ,r,r 22-23. First member 40 includes shaft 60 having a circular cross-section, and including unthreaded portion 62 and threaded portion 64. Id. ,r 23. The Specification describes that, in use, first member 40 is inserted into passage 134 drilled through the entire length of first bone 120, and shaft 60 passes entirely through first bone 120 so that threads 66 of threaded portion 64 may engage threads 108 of second member 80 in second bone 140. Id. ,r,r 27, 31- 32. Head 50 has a larger diameter than shaft 60 to prevent the entirety of first member 40 from passing through first bone 120. Id. ,r,r 31-32, Fig. 4C. Rotating head 50 advances first member 40 into second member 80 and controls the level of compression between first bone 120 and second bone 140. Id. ,r 32. Because head 50 engages an exterior surface of first bone 120 such that first member 140 is free of threaded engagement with first bone 120, the compression imparted by fastening device 20 can be adjusted over time during use. Id. ,r,r 31, 33, Fig. 4C. Thus, the Specification explains that the claim language "configured to extend entirely through the first bone" is a structural limitation defining the length of the first member. Namely, the first member must be long enough to extend entirely through the first bone and engage the internal threads of the second member positioned in the second bone. The length of the first member must also be suitable for compressing the first and second bones as the first and second members are threaded together, as required by the claims. However, Appellant's 4 Appeal2018-008973 Application 14/203,605 Specification does not provide a definition or reference for detennining what length or range of lengths would satisfy the above requirements. Although the Specification describes exemplary values for the diameter of the first member shaft (see id. ,r 23), the Specification does not describe any particular values for the length of the first member. The Specification also describes that the first bone may be a distal phalanx of a hand (see, e.g., id. ,r 26), but does not specify any values of length for this bone. Moreover, even a specifically-recited bone such as the distal phalanx would vary in length among individuals ( e.g., the length of a distal phalanx of a child would likely be different than that of an adult). In other words, whether or not the first member extends entirely through a first bone depends wholly on the length of the particular bone in a particular human or animal in which the device is to be used. Given such subjectivity, one of ordinary skill in the art would not be able to ascertain the metes and bounds of "a first member configured to extend entirely through the first bone" without speculating. In short, the present application does not provide a clear, unambiguous, and objective standard by which to ascertain the metes and bounds of "a first member configured to extend entirely through the first bone" as recited in claim 1. See Packard, 751 F.3d at 1311. Dependent claims 2-9 and 41--48 inherit this problematic ambiguity. 3 3 Dependent claims 8 and 9 each recite, in relevant part, that "the first bone is a distal phalanx." Appeal Br. 10 (Claims App.). As discussed above, the recitation of a specific bone does not remedy the aforementioned lack of clarity with respect to the limitation recited in base claim 1. 5 Appeal2018-008973 Application 14/203,605 Accordingly, we conclude that claims 1-9 and 41--48 are indefinite under 35 U.S.C. § 112(b) for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. DECISION The Examiner's decision to reject claims 1-9 and 41--48 as being anticipated by Y alizis is reversed. \Ve enter a new ground of rejection of claims 1-9 and 41--48 under 35 U.S.C. § 112(b) as being indefinite. FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner .... (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. 6 Appeal2018-008973 Application 14/203,605 Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure§ 1214.01. 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). REVERSED; 37 C.F.R. § 4I.50(b) 7 Copy with citationCopy as parenthetical citation