Ex Parte Fernandez DellDownload PDFPatent Trial and Appeal BoardFeb 17, 201612294292 (P.T.A.B. Feb. 17, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/294,292 0313012009 Alberto A. Fernandez Dell'Oca 76960 7590 02/17/2016 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. 10139/03303 (00553-0SPUS 1 EXAMINER 8453 CHANG, OLIVIA C ART UNIT PAPER NUMBER 3775 MAILDATE DELIVERY MODE 02/17/2016 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) U-NITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALBERTO A. FERNANDEZ DELL'OCA Appeal2013-010905 Application 12/294,292 1 Technology Center 3700 Before LYNNE H. BROWNE, MARK A. GEIER, and JASON W. MELVIN, Administrative Patent Judges. MELVIN, Administrative Patent Judge. DECISION ON APPEAL This appeal arises under 35 U.S.C. § 134(a), from a rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellant identifies as the real party in interest Synthes USA, LLC, a wholly owned subsidiary of DePuy Synthes Products LLC, of which Johnson & Johnson, Inc., is the parent company. Appeal Br. 2. Appeal2013-010905 Application 12/294,292 BACKGROUND The claims are directed to locking bone plates with a controlled locking screw misalignment. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A bone plate system comprising: a bone plate having an upper surface, a lower surface, and a threaded hole extending through the upper and lower surfaces, the threaded hole having a central axis; and a drilling sleeve comprising an elongated body having a conically-shaped bore extending longitudinally there through and forming an inside wall in the body, the body having an end at the narrowest portion of the bore configured to attach to the threaded hole; wherein: with the drilling sleeve attached to the threaded hole so that the drilling sleeve is perfectly seated in the threaded hole, the inside wall forms an angle with the central axis of the threaded hole at which a bone plate screw having a head with a corresponding external thread thereon can be positioned and screwed into and out of the threaded hole without jamming or damaging any threads, wherein: with the sleeve attached to, and perfectly seated in, the threaded hole, the inside wall forms an angle with the central axis of the threaded hole that is equal to or less than a tolerance angle, the tolerance angle corresponding to an angle at or within which a bone plate screw having a head with a corresponding external thread thereon can be imperfectly seated at the threaded hole and screwed into and out of the threaded hole. Appeal Br. 16 (Claims App.). 2 Appeal2013-010905 Application 12/294,292 EVIDENCE The Examiner relies on the following evidence: Joos Ralph Jensen Mathieu I Orbay Mathieu II US 6,506,191 Bl US 2003/0083667 Al US 2004/0260291 A 1 US 2005/0043736 Al US 2006/0009771 A 1 US 2006/0058797 Al REJECTIONS Jan. 14,2003 May 1, 2003 Dec. 23, 2004 Feb.24,2005 Jan. 12,2006 Mar. 16, 2006 Appellant seeks our review of the following rejections: 1. Claims 1-5, 7-8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Mathieu I and Ralph. Final Act. 2-5 2. Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Mathieu I, Ralph, and Mathieu II. Final Act. 5. 3. Claims 9-12 and 14-17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over ~vfathieu I, Orbay, and Ralph. Final Act. 5-9. 4. Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Mathieu I, Ralph, Orbay, and Mathieu II. Final Act. 9. 5. Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the AAPA, Jensen, and Ralph. Final Act. 10- 11. 6. Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable over AAP A, Jensen, Ralph, and Joos. Final Act. 12. 3 Appeal2013-010905 Application 12/294,292 DISCUSSION Claims 1-5, 7, and 8 The Examiner finds that Mathieu I teaches most limitations of claim 1 "but fails to disclose a drilling sleeve with an elongated body." Final Act. 3--4. The Examiner finds that Ralph teaches the drilling sleeve and concludes that "it would have been obvious to one having ordinary skill in the art at the time the invention was made to combine the teaching of an elongated drilling sleeve as taught by Ralph, to the bone plate system as per Mathieu [I], in order to guide the drill at different angles." Id. at 4. Appellant argues first that Mathieu I fails to disclose a drill sleeve that limits the angles of the drill sleeve such that the screw can be imperfectly seated in the bone plate. Appeal Br. 6. The Examiner, however, relies on Ralph as teaching the claimed drilling sleeve. Final Act. 4. Thus, Appellant's first argument fails to apprise us of error in the Examiner's rejection. Next, Appellant argues that Ralph fails to teach a drilling sleeve that controls the angle of the drill to a "particular angle and orientation selected to overcome the problem of jamming encountered in conventional devices." Appeal Br. 7; see also id. (arguing that Ralph "fails to address the problem of jamming caused by [] angular insertion" at angles other than 90 degrees). As the Examiner points out, however, Ralph teaches a drilling sleeve with a conically shaped bore. Final Act. 4. The conical drilling sleeve of Ralph limits the angles over which the drill may enter the bone, so we do not agree with Appellant that Ralph lacks the structural aspects of the claimed drilling sleeve. See Ralph ,-i 10 ("The conical angle of the conical bore establishes the extent to which the collet shaft can be angled."). Thus, in our view, the 4 Appeal2013-010905 Application 12/294,292 conical drilling sleeve of Ralph maintains the drill within a certain angle and therefore prevents angles that exceed an excessive departure from perpendicular. Appellant's Specification provides no particular guidance regarding exactly what angle may be appropriate or how a person of ordinary skill in the art would determine the maximum permitted angle. See Spec. iii! 12 ("' [C]ontrolled misalignment,' provides satisfactory mechanical performance while avoiding the jamming between the plate hole and the locking screw"), 29 ("The tolerance angle is the maximum angle as measured from the central axis of the threaded plate hole at which a bone plate screw can be positioned at the plate hole and the threaded head of the bone plate screw still screwed into and out of the threaded hole."); see also Ans. 13 (noting that "'imperfect seating' is not specifically define by the applicant and is therefore open to interpretation"); Spec. iJ 31 ("[L Jocking screw is imperfectly seated at a threaded hole when the thread on head is offset from and only substantially parallel to the thread of threaded hole.") (reference numerals omitted). Thus, Appellant has no reasonable basis on which to argue that claim 1 requires a "particular angle" that is missing from Ralph. Additionally, claim 1 recites the tolerance angle as "an angle at or within which a bone plate screw having a head with a corresponding external thread thereon can be imperfectly seated in the threaded hole and screwed into and out of the threaded hole." Appeal Br. 16 (Claims App.) (emphasis added); see also Ans. 12-13. Thus, the claim does not affirmatively require that a screw be imperfectly seated when used with the claimed bone-plate system. Given the limited disclosure in the Specification 5 Appeal2013-010905 Application 12/294,292 and the permissive claim language, the Examiner does not err in finding that the prior art disclosed imperfect seating. Appellant also argues that the tolerance angle-the angle that the drilling sleeve permits the drill to deviate from the axis of the hole in the bone plate-must be "predetermined." See Appeal Br. 3--4; Reply Br. 4. But the claim does not recite a "predetermined" angle to any extent more than that the drilling sleeve has a conical bore to limit the angle of a drill. See Appeal Br. 16 (Claims App.). Nothing in the claimed device precludes using the device to drill at an angle less than the limit established by the drilling sleeve-this is true in the device of claim 1 to the same extent as it is in the device of the Examiner's rejection. Thus Appellant's argument regarding the angle being "predefined" does not apprise us of error. For these reasons, we sustain the rejection of claim 1. We also sustain the rejection of claims 2-5, 7, and 8, which depend from claim 1 either directly or indirectly, and which Appellant argues together with claim 1. See Appeal Br. 8. Claim 6 The Examiner finds that Mathieu II teaches the additional limitations of claim 6, which depends form claim 1. Final Act. 5. Appellant argues only that Mathieu II fails to cure the deficiencies with the rejection of claim 1. Appeal Br. 9. Therefore, because we sustain the rejection of claim 1, we also sustain the rejection of claim 6. Claims 9-12 and 14-1 7 "[Independent] Claim 9 recites limitations substantially similar to claim l ." Appeal Br. 9. The Examiner finds that Orbay teaches the limitations of claim 9 beyond those recited in claim 1, which relate to the 6 Appeal2013-010905 Application 12/294,292 bone plate screw. Final Act. 6-7. Appellant first argues that Orbay fails to cure the deficiencies argued with the rejection of claim 1. Appeal Br. 10. Because we do not agree with those asserted deficiencies, Appellant's argument does not apprise us of error in the rejection of claim 9. In addition, Appellant argues that "Orbay also fails to teach or suggest a drilling sleeve that permits insertion of a bone screw into a plate hole at a tolerance angle selected to permit only imperfect seating." Appeal Br. 10. The Examiner, however, relies on Ralph as teaching the claimed drilling sleeve. Final Act. 7. Thus, this argument by Appellant also does not apprise us of error in the rejection of claim 9. Accordingly, we sustain the rejection of claim 9, and claims 10-12 and 14-17, which depend from claim 9 and which Appellant argues together with claim 9. See Appeal Br. 10. Claim 13 Claim 13 depends from claim 9, and for claim 13, Appellant relies on the arguments made for claim 9. Appeal Br. 11. Accordingly, we sustain the rejection of claim 13 for the same reasons discussed supra regarding claim 9. Claims 18 and 19 The Examiner finds that AAP A substantially teaches the limitations of independent method claim 18 but "fails to disclose drilling an angularly misaligned [hole] through the guidance of a conical sleeve." Final Act. 10- 11. The Examiner finds that Jensen teaches that aspect of the claim, in combination with the conical drilling sleeve of Ralph. Id. at 11. Appellant argues that Jensen fails to disclose "imperfect seating" of the screw into the drilled hole and screw plate because "the mere disclosure 7 Appeal2013-010905 Application 12/294,292 of an angular insertion of a drill into an aperture in Jensen is not sufficient to overcome the imperfect seating requirement of claim 18." Appeal Br. 12. The Examiner, however, does not rely on Jensen in isolation and Appellant's arguments therefore is not responsive to the rejection. In particular, the Examiner relies on the combination of Ralph's conical sleeve to maintain a particular angle for the drilling and screwing operation of Jensen. Final Act. 11. Further, the Examiner points to Jensen's disclosure that a screw may be advanced into the hole once drilled, to secure the bone plate to the screw; therefore, Jensen teaches that the screw engages with the misaligned hole as claimed. Final Act. 11 (citing Jensen iii! 57, 60). Thus, Appellant's argument does not apprise us of error in the rejection. Appellant further argues that any disclosure in Jensen of imperfect seating of the bone screw would not occur "as a consequence of ... perfect seating" of the drilling sleeve in the bone plate as claimed. Appeal Br. 12- 13. But Appellant's argument is not commensurate with the scope of the claim. See In re Self, 671F.2d1344, 1348 (CCPA 1982) (rejecting arguments "not based on limitations appearing in the claims"). Claim 18 recites that the "perfect seating" of the drilling sleeve in the threaded hole of the bone plate causes the inner wall of the drilling sleeve to "form[] an angle with the central axis of the drilled hole that is equal to or less than a tolerance angle." Appeal Br. 20 (Claims App.). This limitation is met when the conical drilling sleeve of Ralph engages with the hole in the bone plate of AAP A, and as the Examiner notes, "an angle less than a tolerance angle includes a perfectly seated screw." Final Act. 10-11. Thus, Appellant has not apprised us of error in the Examiner's rejection. 8 Appeal2013-010905 Application 12/294,292 Accordingly, we sustain the rejection of claim 18, and claim 19, which depends from claim 19 and which Appellant argues together with claim 18. See Appeal Br. 13-14. Claim 20 For claim 20, Appellant argues only that Joos fails to cure the deficiency with the rejection of claim 18. Appeal Br. 14. Because Appellant's arguments do not apprise us of error in the rejection of claim 18, we likewise sustain the rejection of claim 20. DECISION For the above reasons, the Examiner's rejection of claims 1-20 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv). AFFIRMED 9 Copy with citationCopy as parenthetical citation