Ex Parte Frigg

Patent Trial and Appeal Board

Jun 7, 2017

13278805 (P.T.A.B. Jun. 7, 2017)

United States Patent and Trademark Office
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.
13/278,805 10/21/2011 Robert Frigg 10139/24002 (T01448US1) 5674
76960 7590
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
06/07/2017 EXAMINER
MERENE, JAN CHRISTOP L
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
06/07/2017 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 ROBERT FRIGG
Appeal 2016-003246
Application 13/278,805
Technology Center 1600
Before JEFFREY N. FREDMAN, TAWEN CHANG, and
RYAN H. FLAX, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a
fixation device. The Examiner rejected the claims as anticipated and as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Statement of the Case
Background
“[T]he present invention relates to a device comprising a fixation
element that may be used with a bone plate or intramedullary nail to treat
fracture in the epiphyseal portion of the bone” (Spec. 12).
1 Appellant identifies the Real Party in Interest as the DePuy Synthes
Products, Inc., a subsidiary of Johnson & Johnson (see App. Br. 2).
Appeal 2016-003246
Application 13/278,805
The Claims
Claims 7, 15, 20, 29, 30, and 32 are on appeal. Claim 7 is
representative and reads as follows:
7. A fixation device for treating an epiphyseal fracture,
comprising:
a shaft extending longitudinally along a central axis from
a first end to a second end;
a bone anchoring element pivotally coupled to the first
end of the shaft, the bone anchoring element receiving a ball at
the first end of the shaft to form a ball and socket joint so that,
the bone anchoring element is pivotable relative to the central
axis of the shaft, the bone anchoring element further including a
threading extending about an outer surface thereof for engaging
a fragmented portion of bone when inserted therein.
The issues
A. The Examiner rejected claims 7 and 15 under 35 U.S.C. § 102(b) as
anticipated by Lim2 (Ans. 2-4).
B. The Examiner rejected claims 7 and 15 under 35 U.S.C. § 102(e) as
anticipated by Keller3 (Ans. 4).
C. The Examiner rejected claim 20 under 35 U.S.C. § 102(b) as
anticipated by Keller (Ans. 5).
D. The Examiner rejected claims 29, 30, and 32 under 35 U.S.C. § 103(a)
as obvious over Keller and Tronzo4 (Ans. 5—7).
2 Lim et al., US 2006/0235414 Al, published Oct. 19, 2006.
3 Keller et al., US 2011/0066152 Al, published Mar. 17, 2011.
4 Tronzo et al., US 5,658,339, issued Aug. 19, 1997.
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Application 13/278,805
A. 35 U.S.C. § 102(b) over Lim
The Examiner finds Lim teaches “a fixation device” that comprises:
a shaft extending longitudinally along a central axis from a first
end to a second end (see fig below, paragraph 18); a bone
anchoring element (#24) pivotally coupled to the first end of the
shaft (paragraph 17, see also abstract, paragraph 2 where the
device is directed to a “joint” where the bone anchoring element
and shaft are pivotally coupled), the bone anchoring element
receiving a ball at the first end of the shaft to form a ball and
socket joint so that the bone anchoring element being pivotable
relative to the central axis of the shaft . . . and including a
threading extending about an outer surface thereof
(Ans. 2).
Appellant contends “Lim does not show or suggest a fixation device
for treating an epiphyseal fracture. . . . Nor is such a use described or
suggested in Lim and, in fact the device of Lim is in no way physically
suitable for such use” (App. Br. 4—5). Appellant contends Lim’s
device in its entirety is incapable of treating a fracture, much
less an epiphyseal fracture. That is, because the anchoring
element and the shaft are formed so that the ball screw 40
merely rests in the socket screw 20, the two screws are held in
place only by the pressure exerted by the adjacent vertebrae.
(Id. at 5). Appellant contends “the structural limitations imparted by the
recitation concerning treatment of an epiphyseal fracture indeed differentiate
the claimed invention from the structure of Lim” because “one structural
feature of the device recited in the claims is a component to draw and hold
the portions of the bone together for the bone healing process to commence”
(Reply Br. 5—6).
The issue: Does the evidence of record support the Examiner’s
conclusion that Lim anticipates claim 7?
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Application 13/278,805
Findings of Fact
1. Lim teaches an
intervertebral joint comprises a socket screw, a ball screw and
two support screws. The socket screw may include a ball
socket and an angularly disposed shaft. . . . The ball screw may
comprise a spherical head that mates with the ball socket on the
socket screw and a threaded shaft. . . . The ball screw may be
inserted at an angle into an inferior vertebra and engages with
the ball socket on the socket screw.
(Lim 12).
2. Figures 2 and 3 of Lim are reproduced below:
I ^--26
“FIG. 2 illustrates the socket screw 20. The socket screw 20 includes a ball
socket 22 and a threaded shaft 24. In one embodiment, the ball socket 22
and threaded shaft 24 may comprise one unitary member . . . FIG. 3
illustrates the ball screw 30. The ball screw 30 comprises a spherical head
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Application 13/278,805
32 and a threaded shaft 34. In one embodiment, the head 32 and threaded
shaft 34 may comprise one unitary member” (Lim H 17—18).
3. Figure 1 OB of Lim is reproduced below:
20
FIG, tOB
Figure 10B illustrates an “intervertebral joint 10 comprising only a socket
screw 20 and ball screw 30. The socket screw 20 includes a ball socket 22
and threaded shaft 24. . . . in FIG. 10B, the ball socket 22 is not tilted but,
instead, is aligned with the axis of the threaded shaft 24” (Lim 126).
Principles of Law
“A single prior art reference that discloses, either expressly or
inherently, each limitation of a claim invalidates that claim by anticipation.”
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Perricone v. Medicis Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir.
2005).
“It is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Analysis
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 2-4; FF 1—3) and agree that claims 7
and 15 are anticipated by Lim. We address Appellant’s arguments below.
Appellant contends “Lim does not show or suggest a fixation device
for treating an epiphyseal fracture” (App. Br. 4).
We do not find this argument persuasive and agree with the Examiner
that the preamble language in claim 7 reciting “for treating an epiphyseal
fracture” is an intended use recitation (see Ans. 7—8). Appellant does not
identify any claimed structure that is absent from Lim. Lim teaches a
longitudinal shaft coupled to a bone anchoring element, with a ball and
socket joint that is pivotable and where the bone anchoring element includes
threading on an outer surface as required by claim 7 (FF 1—3). “[Ajpparatus
claims cover what a device is, not what a device does.” Hewlett-Packard
Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990).
Appellant contends “the structural limitations imparted by the
recitation concerning treatment of an epiphyseal fracture indeed differentiate
the claimed invention from the structure of Lim” (Reply Br. 5).
We do not find this argument persuasive and agree with the Examiner
that “appellant has not provided any evidence which show or suggest that
Lim is incapable of maintaining fracture pieces together” (Ans. 8). That is,
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Application 13/278,805
even if the intended use was, counter to well-settled Federal Circuit
precedent as reflected by Shreiber, interpreted as a structural limitation, the
argument of Appellant’s attorney does not represent evidence that Lim
would lack the necessary capacity to treat epiphyseal fracture. “[Attorney
argument [is] not the kind of factual evidence that is required to rebut a
prima facie case of obviousness.” In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997).
Moreover, we agree with the Examiner that “the shaft of Lim is also
in the form of a screw (paragraph 17) that is also capable of extending
through bone fragment(s)” (Ans. 9). The threading on the outer surface of
both the Lim socket screw 20 and ball screw 30 are reasonably interpreted as
satisfying the requirement of claim 7 for “a threading extending about an
outer surface thereof for engaging a fragmented portion of bone when
inserted therein” (see FF 2). Appellant identifies no structure other than the
“threading” on the bone anchoring element that functions to engage the
fragmented bone, and Lim teaches threading on the socket screw for
engaging bone as shown in figure 10B (FF 3). Consequently, the evidence
of record supports the Examiner’s position that the fixation device of Lim
would inherently satisfy the “treating an epiphyseal fracture” intended use
recitation (see Ans. 9).
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that Lim
anticipates claim 7.
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Application 13/278,805
B. 35 U.S.C. § 102(e) over Keller
The Examiner finds:
Keller discloses a fixation device (Fig 1) for treating an
epiphyseal fracture, comprising: a shaft (#50a) extending
longitudinally along a central axis from a first end (#5 4a) to a
second end (#52a, Fig 2); and a bone anchoring element (#34)
pivotally coupled to the first end of the shaft, the bone
anchoring element receiving a ball (#54a) at the first end of the
shaft to form a ball and socket joint (ball and socket, abstract,
paragraph 50, 46) so that the bone anchoring element being
pivotable relative to the central axis of the shaft (abstract,
paragraph 50) and including a threading (threads #36,
paragraph 59) extending about an outer surface thereof for
engaging a fragmented portion of bone when inserted therein
(Fig 1,3).
(App. Br. 4).
Appellant contends “the implant of Keller includes a distal shaft
pivotally coupled to a proximal shaft via three adjustment rods with no ball
and socket joint and with no portion of the proximal shaft received in any
item corresponding to the recited bone anchor” (App. Br. 6). Appellant
contends:
[T]he implant of Keller includes a distal shaft pivotally coupled
to a proximal shaft via three adjustment rods that do not form a
ball and socket joint as claimed and with no portion of the
proximal shaft received in any item corresponding to the recited
bone anchor. Keller discloses that the tapered entrance walls
64a-c of sockets 62a-c cooperate with necks 56a-c of
adjustment rods 50a-c to limit pivoting movement of
adjustment rods 50a-c in sockets 62a-c. Keller, ii [0054],
Thus, the movement of the second portion 34 relative to the
first portion 32 in Keller is limited to specific directions and
does not allow full rotary motion as permitted by a ball and
socket joint. Therefore, the orthopedic assembly of Keller is
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Application 13/278,805
not equivalent to a ball and socket joint as one skilled in the art
will reasonably understand one to be.
(Reply Br. 7).
The issue: Does the evidence of record support the Examiner’s
conclusion that Keller anticipates claim 7?
Findings of Fact
4. Figure 1 of Keller is reproduced below:
Figure 1 depicts
orthopedic assembly 10 includes a support structure in the form
of intramedullary nail 12 that is shown implanted into a
prepared intramedullary canal 28 of femur 20 and secured in
place with distal screws 14 ... .
With orthopedic assembly 10 implanted into femur 20, lag
screw 30 and intramedullary nail 12 cooperate to anchor the
fractured head 24 of femur 20 to shaft 26 of femur 20. . . .
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Application 13/278,805
second portion 34 of lag screw 30 is configured to move
relative to first portion 32 of lag screw 30 about at least one
pivot axis. In the illustrated embodiment, second portion 34 of
lag screw 30 is configured to move relative to first portion 32 of
lag screw 30 about a plurality of pivot axes 58a, 586, 58c
(Keller 1138, 40, 41)
5. Figure 2 of Keller is reproduced below
Sockets 62a, 626, 62c, of second portion 34 include tapered
entrance walls 64a, 646, 64c, as shown in FIG. 2. With
threaded adjustment rods 50a, 506, 50c, positioned within
threaded throughbores 60a, 606, 60c, of first portion 32, heads
54a, 546, 54c, extend beyond first portion 32 and are received
within sockets 62a, 626, 62c, of second portion 34. Heads 54a,
546, 54c, are configured to rotate within corresponding sockets
62a, 626, 62c.
(Keller 146).
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6. Keller teaches:
With adjustment rod 50a translated axially forward of the other
adjustment rods 506, 50c, second portion 34 pivots downward
about pivot axis 58a overheads 54a, 546, 54c, to define angle
alpha (a) at junction 42 between second longitudinal axis 40
and first longitudinal axis 38, as shown in FIG. 1. With
adjustment rod 50a translated backward of the other adjustment
rods 506, 50c, second portion 34 pivots upward about pivot axis
58a over heads 54a, 546, 54c, to define angle beta (P)
(Keller 1 50).
Analysis
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 4; FF 4—6) and agree that claims 7
and 15 are anticipated by Keller. We address Appellant’s arguments below.
Appellant contends “the implant of Keller includes a distal shaft
pivotally coupled to a proximal shaft via three adjustment rods with no ball
and socket joint and with no portion of the proximal shaft received in any
item corresponding to the recited bone anchor” (App. Br. 6).
We do not find this argument persuasive because Keller expressly
teaches: “Heads 54a, 546, 54c, are configured to rotate within corresponding
sockets 62a, 626, 62c” (FF 6) and these heads are shown as balls in figure 2
of Keller (FF 5). Keller also depicts a proximal shaft anchored in bone in
figure 1 (FF 4 (elements 34 and 36)). Thus, contrary to Appellant’s
argument, Keller discloses both ball and socket joints and a proximal shaft
anchored to bone.
Appellant contends:
[Translation of adjustment rod 50a means that second portion
34 may only be moved upward and downward relative to the
first portion 32, whereas translation of adjustment rod 50b
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Application 13/278,805
means that second portion 34 my only be oriented sided to
sided and upward and downward relative to the first portion 32.
Such limited movement is contrary to a ball and socket joint,
which those skilled in the art would understand to be a joint in
which a ball moves within a socket to allow rotary motion in
every direction within certain limits.
(App. Br. 7).
We find this argument unpersuasive because the claim includes no
requirement that the ball and socket joint must allow “rotary motion in every
direction,” nor does Appellant’s Specification provide any definition of ball
and socket joint that would allow this limitation to be read into the phrase
“ball and socket joint.” See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(“[Ajppellanf s arguments fail from the outset because . . . they are not based
on limitations appearing in the claims.”)
Appellant contends:
Pivotal movement of each individual rod/socket combination in
Keller is relative to a longitudinal axis of that rod which ... is
parallel to but separated radially from the longitudinal axis of
the first portion 32 of the lag screw 30 ... In contrast, assuming
the first portion 32 is analogous to the shaft of the claims and
the second portion 34 is analogous to the bone anchoring
element of the claims, claim 7 recites that “the bone anchoring
element is pivotable relative to the central axis of the shaft.”
(Reply Br. 9).
We do not find this argument persuasive because Keller teaches that
depending upon the settings of the axial rods, “second portion 34 pivots
downward about pivot axis 58a'” or “second portion 34 pivots upward about
pivot axis 58a'” (FF 6). These pivots are necessarily relative to the central
shaft axis since any pivot occurs due to rotation of ball joints 54a, 54b, 54c,
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within corresponding sockets 62a, 62b, 62c (FF 4). As the Examiner points
out:
Fig. 7 discloses how the ball and socket joint operate, where the
bone anchoring element #34 articulates against the ball #54a of
the shaft when the shaft #50a is rotated and also when the shaft
#50a is held stationary while the other shafts #50b and #50c are
actuated. In other words, whether shaft #50a is actuated or the
other shafts #50b and #50c are actuated, the bone anchoring
element #34 still articulates against the shaft #50a via ball #54a
in multidirectional rotary movements.
(Ans. 10).
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that
Keller anticipates claim 7.
C. 35 U.S.C. § 102(b) over Keller
Appellant does not separately argue this rejection. The Examiner
provides sound fact-based reasoning explaining why Keller anticipates claim
20 (see Ans. 5). Having affirmed the anticipation rejection of claim 7 over
Keller for the reasons given above, we also find Keller anticipates claim 20
for the reasons given by the Examiner.
D. 35 U.S.C. § 103(a) over Keller and Tronzo
Appellant does not separately argue this rejection. The Examiner
provides sound fact-based reasoning explaining why Keller and Tronzo
render claims 29, 30, and 32 obvious (see Ans. 5—7). Having affirmed the
anticipation rejection of claim 7 over Keller for the reasons given above, we
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also find Keller and Tronzo render claims 29, 30, and 32 obvious for the
reasons given by the Examiner.
SUMMARY
In summary, we affirm the rejection of claim 7 under 35 U.S.C.
§ 102(b) as anticipated by Lim. Claim 15 falls with claim 7.
We affirm the rejection of claim 7 under 35 U.S.C. § 102(e) as
anticipated by Keller. Claim 15 falls with claim 7.
We affirm the rejection of claim 20 under 35 U.S.C. § 102(b) as
anticipated by Keller.
We affirm the rejection of claims 29, 30, and 32 under 35 U.S.C.
§ 103(a) as obvious over Keller and Tronzo.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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