Ex Parte Fernandez Dell

Patent Trial and Appeal Board

Feb 17, 2016

12294292 (P.T.A.B. Feb. 17, 2016)

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.).
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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.
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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
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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
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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
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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
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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.
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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
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