Ex Parte Falahee

Board of Patent Appeals and Interferences

Oct 21, 2011

10807999 (B.P.A.I. Oct. 21, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/807,999 03/24/2004 Mark H. Falahee FLH-11702/29 4663
25006 7590 10/21/2011
GIFFORD, KRASS, SPRINKLE,ANDERSON & CITKOWSKI, P.C
PO BOX 7021
TROY, MI 48007-7021
EXAMINER
PHILOGENE, PEDRO
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
10/21/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte MARK H. FALAHEE
________________

Appeal 2010-000096
Application 10/807,999
Technology Center 3700
________________

Before KEN B. BARRETT, EDWARD A. BROWN and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-000096
Application No. 10/807,999

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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a), from a final
rejection of claims 1 and 3-12. Claims 2 and 13 were canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

The Claimed Subject Matter
The claimed subject matter is directed to a bone anchor and a
connector/elbow that engages a stabilizing rod. Independent claim 6 is
illustrative of the claims on appeal and is reproduced below:

6. An orthopaedic fixation system, comprising:
a bone anchor having proximal and distal ends and wherein the
proximal end is substantially at the surface of a bone once in position;
and
a connector having portion that engages with the bone anchor
once in position and an arm that engages with an existing stabilizing
rod.

Independent claim 1 is similar to claim 6 with the exception that claim
1 lacks the requirement that the proximal end be substantially at the surface
of the bone once in position but includes the limitation that the bone anchor
have outwardly advancing tangs or barbs. Independent claim 9 also lacks
the requirement that the proximal end be substantially at the surface of the
bone but requires an elbow rather than a connector that engages with an
existing rod.

References Relied on by the Examiner
Hunt US 324,768 Aug. 18, 1885
Steffee US 4,648,388 Mar. 10, 1987
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Application No. 10/807,999

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The Rejections on Appeal
1. Claims 6, 8, 9 and 11-12 are rejected under 35 U.S.C. § 102(b) as
anticipated by Steffee (Ans. 3).
2. Claims 1, 3-5, 7 and 10 are rejected under 35 U.S.C. § 103(a) as being
obvious over Steffee and Hunt (Ans. 4).

ISSUE
Does Steffee disclose an anchoring system employing a bone anchor
whose proximal end is substantially at the surface of the bone once in
position and a connector/elbow that engages an existing stabilizing rod?
Also, has the Examiner established that one of ordinary skill in the art at the
time of the invention would have had reason to form an anchoring system
employing a bone anchor having outwardly advancing tangs or barbs when it
was known to employ a projecting tang or barb for fixation purposes?

ANALYSIS
Claims 6, 8, 9, 11 and 12 as being anticipated by Steffee
Appellant separately argues independent claim 6 and Appellant
groups claims 8 and 9 together and separately argues that group (App. Br. 2-
3). These claims will be addressed below. Dependent claims 11 and 12 are
not separately argued and will stand or fall with claim 9.
Claim 6
Independent claim 6 requires a bone anchor having proximal and
distal ends “and wherein the proximal end is substantially at the surface of a
bone once in position.” Claim 6 also requires “a connector” that engages an
existing stabilizing rod. The Examiner states that Steffee discloses a
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Application No. 10/807,999

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connector that engages a stabilizing rod and that the proximal end of
Steffee’s bone anchor “is positionable near or at a surface of a bone” (Ans.
3). The Examiner also states that the claim limitation directed to the
proximal end of the bone anchor being at or near the surface of a bone “is
just functional language, it is a step of how the anchor is intended to be
used” (Ans. 6).
Regarding the Examiner’s assertion of functional and intended use
language, Appellant disagrees stating that “the language of the claim clearly
establishes a structural relationship” because the proximal end of the bone
anchor (a structure) is located substantially at the surface of a bone once in
position (a structural relationship) (see App. Br. 3). We are persuaded by
Appellant’s contention that this claim limitation is directed to structural
language. However, the structural relationship is defined with functional
language.
Regarding the Examiner’s statement that Steffee’s anchor “is
positionable” as claimed, Appellant contends that Steffee’s “system would
not work” if Steffee’s screw 52 “were screwed in entirely” because Steffee
requires “that a threaded portion remain[] exposed” (App. Br. 3). Claim 6
requires a proximal end of the anchor to be “substantially at the surface of a
bone” and Appellant’s specification states that the proximal end of the screw
anchor is “preferably flush or deep to the bone surface” (Spec. 2:6). Our
reviewing court in Liebel-Flarsheim Co. v. Medrad, Inc., has provided
instruction that claims should not be limited to preferred embodiments1.

1 “Even when the specification describes only a single embodiment, the
claims of the patent will not be read restrictively unless the patentee has
demonstrated a clear intention to limit the claim scope using ‘words or
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Application No. 10/807,999

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We find no words of manifest exclusion or restriction by Appellant that
would limit the reasonably broad interpretation of claim 6 by one of ordinary
skill in the art as encompassing a proximal end “at” the bone surface as well
as extending, to some degree (i.e. “substantially at”), above or below this
surface. Accordingly, we are not persuaded that claim 6 requires Steffee’s
screw to be “screwed in entirely” which would render Steffee “non-
utilitarian” and hence unable to anticipate claim 6 as Appellant asserts (App.
Br. 3). Based on the record presented, we do not find the Examiner
mistakenly found that the proximal end of Steffee’s screw “is positionable”
“substantially at the surface of a bone” as claimed. We sustain the
Examiner’s rejection of claim 6.
Claims 8 and 9
Dependent claim 8 (which depends from claim 6) further requires that
“the connector is an elbow.” Independent claim 9 requires an “elbow” rather
than the connector specified in claim 6. The Examiner states that “Steffee
clearly shows what can be considered an elbow, e.g. part 104” which Steffee
describes as a clamp half (Ans. 6; Steffee 4:57-58). Appellant contends that
Steffee’s clamp half “is not an ‘elbow’” and that “Steffee neither teaches nor
suggests ‘an elbow,’ such that anticipation is not established” (App. Br. 3-4).
Appellant’s Specification identifies “elbow” as “variable-axis/angled”
(Spec. 2:8-9, see also 2:26 and 3:7). The Specification also states that
“[a]lthough an angle of 90° between the rod and bone 604 is shown,
different angles may be used” (Spec 4:20-21). A common and broad

expressions of manifest exclusion or restriction.’” Liebel-Flarsheim Co. v.
Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004).
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Application No. 10/807,999

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definition of “elbow” is “something bent like an elbow” 2. This definition is
consistent with its usage in the Specification, both of which incorporate
angularity. Steffee only discloses clamps that extend linearly (radially) from
the rod (Steffee Figs. 5 and 6). The Examiner does not indicate where
Steffee teaches, expressly or inherently, an elbow as claimed. Accordingly,
we reverse the Examiner’s rejection of claims 8 and 9 as well as the
rejection of dependent claims 11 and 12.
Claims 1, 3-5, 7 and 10 as being unpatentable over Steffee and Hunt
Appellant argues claims 1 and 10 as a group (App. Br. 4). For the
reasons below, we address claims 1 and 10 separately. Dependent claims 3-
5 and 7 are not separately argued and will stand or fall with their parent
claim.
Claim 1
Independent claim 1 requires the bone anchor to have “outwardly
advancing tangs or barbs to assist with fixation.” The Examiner states that
Steffee does not disclose this structure and instead relies on Hunt for
teaching “screws with an outwardly tang or barb in order to lock the screw
after it has been screw[ed] home” (Ans. 4). The Examiner states that “there
is no requirement that a motivation to make the modification be expressly
articulated” and that “Hunt provides enough suggestion and motivation” for
one skilled in the art to provide “the screw of Steffee, with tangs or barbs in
view of Hunt, in order to lock the screw in position” (Ans. 5).
Appellant states that “the examiner bears the initial burden of
presenting a prima facie case of obviousness” (App. Br. 4). Our reviewing

2 Webster’s Encyclopedic Unabridged Dictionary of the English Language
458 (1989).
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Application No. 10/807,999

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court has stated that “all that is required of the office to meet its prima facie
burden of production is to set forth the statutory basis of the rejection and
the reference or references relied upon in a sufficiently articulate and
informative manner as to meet the notice requirement of [35 U.S.C.] § 132”
(In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011)). In the present case, we
deem that the Examiner has set forth the statutory basis of the rejection and
has identified the references in a sufficiently articulate and informative
manner as to meet the necessary notice requirement. We are not persuaded
by Appellant’s contention.
Appellant also alleges that the Examiner resorted to improper
hindsight to reconstruct the invention from the prior art (App. Br. 5). Hunt
states that his invention “may be used for any purpose where it is desirable
to lock the screw or bolt to its seat” (Hunt 1:24-26). Regarding screws
embedded in a patient’s bone, it is reasonable for one skilled in the art to
desire that such screws remain fastened. The Appellant has not shown that it
is unreasonable for one skilled in the art to modify Steffee’s screw to be
secured as per Hunt “in order to lock the screw in position” as stated by the
Examiner (Ans. 5). Accordingly, Appellant’s assertion of hindsight is not
persuasive.
Appellant also alleges that “Hunt represent[s] non-analogous art”
because Appellant’s field of endeavor is “bone anchoring” whereas “Hunt’s
field of endeavor is, perhaps, ‘anti-tampering.’” (App. Br. 5, see also Reply
Br. 1)(italics in original). We disagree. Even employing Appellant’s “anti-
tampering” field of endeavor for Hunt, such a broad field would encompass
Appellant’s “bone anchoring” field when addressing claim 1’s “orthopaedic
fixation system” and more specifically “tangs or barbs to assist with
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Application No. 10/807,999

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fixation.” Furthermore, both Hunt and Appellant address the similar
problem of fixing a screw in place. Consequently, Hunt is also reasonably
pertinent to the particular problem with which the inventor was concerned.
We thus agree with the Examiner that Hunt is “within the field of the
inventor’s endeavor” and that “providing tangs or barbs to a screw to assist
with fixation is a problem clearly related to the Hunt reference” (Ans. 6).
Based on the record presented, we sustain the Examiner’s rejection of claim
1 and dependent claims 3-5 and 7.
Claim 10
Claim 10 depends from claim 9 and requires an “elbow.” As
indicated above, the Examiner states that “Steffee clearly shows what can be
considered an elbow, e.g. part 104” (Ans. 6). However, the Examiner has
not indicated where the combination of Steffee and Hunt teaches or suggests
angularity as previously discussed. Accordingly, for the reasons stated
above, we reverse the Examiner’s rejection of claim 10.

CONCLUSION
Steffee does disclose an anchoring system employing a bone anchor
whose proximal end is substantially at the surface of the bone and a
connector (but not an elbow) that engages an existing stabilizing rod.
Furthermore, the Examiner has established that one of ordinary skill in the
art at the time of the invention would have had reason to form an anchoring
system employing a bone anchor having outwardly advancing tangs or barbs
when it was known to employ a projecting tang or barb for fixation
purposes.

Appeal 2010-000096
Application No. 10/807,999

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DECISION
The Examiner’s rejection of claims 1 and 3-7 is affirmed. The
Examiner’s rejection of claims 8-12 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

MP