Ex parte Frigg

Board of Patent Appeals and Interferences

Mar 22, 2001

08325629 (B.P.A.I. Mar. 22, 2001)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 36
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ROBERT FRIGG
__________
Appeal No. 1999-0713
Application 08/325,629
___________
HEARD: March 8, 2001
___________
Before ABRAMS, MCQUADE, and GONZALES, Administrative Patent
Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Robert Frigg originally took this appeal from the final
rejection of claims 8 through 17. The appellant has since
canceled claim 8, amended claims 9, 15 and 17, and added claim
18. The appeal now involves claims 9 through 17. New claim
18, the only other claim pending in the application, stands
objected to, presumably because it depends from a rejected
base claim.
Appeal No. 1999-0713
Application 08/325,629
2
THE INVENTION
The invention relates to “a spinal column fixation
device” (specification, page 1). Representative claim 15
reads as follows:
15. A spinal column fixation assembly comprising a
longitudinal support piece having a longitudinal axis, a
fixation device having an anchoring element for fixation to a
bone and a head section formed as a single piece with said
anchoring element, said head section having a channel for
receiving said support piece and a slot extending through said
fixation device along an axis transverse to the axis of a
support piece positioned in said channel, said assembly
further comprising a tension stable fastening element
extending through said slot and around said support piece to
secure said support piece in said channel.
THE PRIOR ART
The references relied on by the examiner as evidence of
obviousness are:
Partridge 4,119,091 Oct. 10,
1978
Puno et al. 4,805,602 Feb. 21,
1989
(Puno)
Eitenmuller et al. 5,108,399 Apr. 28,
1992
(Eitenmuller)
Appeal No. 1999-0713
Application 08/325,629
The above rejections of claims 9 through 17 were entered1
as new grounds of rejection in the main answer, superseding
the various rejections set forth in the final rejection.
Claim 14 depends from canceled claim 8, an informality2
which is deserving of correction in the event of further
prosecution before the examiner.
3
THE REJECTIONS
Claims 10 through 17 stand rejected under 35 U.S.C. § 103
as being unpatentable over Puno in view of Partridge.
Claim 9 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Puno in view of Partridge and Eitenmuller.
Attention is directed to the appellant’s main and reply
briefs (Paper Nos. 22 and 25) and to the examiner’s main and
supplemental answers (Paper Nos. 23 and 30) for the respective
positions of the appellant and the examiner with regard to the
merits of these rejections.1
DISCUSSION
I. Grouping of claims
Pursuant to 37 CFR § 1.192(c)(7), the appellant states
(see page 3 in the reply brief) that the claims as currently
rejected should be grouped as follows: Group I - claims 11,
14, 15, 16 and 17; Group II - claims 10, 12 and 13; and Group2
III - claim 9. In accordance with this grouping and the
Appeal No. 1999-0713
Application 08/325,629
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corresponding arguments in the briefs, claims 11, 14, 16 and
17 shall stand or fall with claim 15, claims 10 and 13 shall
stand or fall with claim 12 and claim 9 shall stand or fall
alone.
II. Group I - claims 11 and 14 through 17
Puno, the examiner’s primary reference, discloses “an
apparatus for posterior internal fixation of the spine”
(column 1, lines 6 and 7). In general, the apparatus includes
a stainless steel rod 18 adapted to span the vertebrae to be
immobilized and a series of stainless steel anchors 16
designed to secure the vertebrae to the rod (see Figure 1).
Of particular interest is the embodiment shown in Figures 7
and 8 wherein each of the anchors comprises a transpedicular
screw 21 and a rod support 116. As described by Puno,
rod support 116 includes a U-shaped head 117 which
defines a rod-receiving channel 118 having a depth
which exceeds the diameter of the rod 18. The rod
18 engages the channel 118 and is secured within the
channel 118 by wires 120 which extend through bores
122 transverse to the longitudinal axis of the rod
18. The head 116 includes on its underside, two
fillets 124 which act to grip the bone. In the
second embodiment, the rod support 116 is
countersunk 123 to accommodate the screw head 30.
. . . [T]he screw may be an integral portion
of the anchor. It is preferable however, that the
screw is a separate member having . . . freedom of
movement [column 6, lines 7 through 20].
Appeal No. 1999-0713
Application 08/325,629
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Puno responds to all of the limitations in representative
claim 15 except arguably the one calling for a tension stable
fastening element extending through a slot and around the
support piece to secure the support piece in the channel. In
the Puno
apparatus, wires 120 extend through bores 122 and around the
support piece (rod 18) to secure the support piece in channel
118.
The appellant’s contention that Puno is additionally
deficient because it teaches away from the limitation
requiring the head section to be formed as a single piece with
the
anchoring element is not persuasive. All of the disclosures
in a reference must be evaluated for what they fairly teach
one of ordinary skill in the art, even those phrased in terms
of a non-preferred embodiment. In re Boe, 355 F.2d 961, 965,
148 USPQ 507, 510 (CCPA 1966). Puno’s disclosure of an
integral anchor, i.e., an integral anchoring element (screw
21) and head section (rod support 116), although not
preferred, nonetheless would have suggested an anchoring
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Application 08/325,629
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element and head section formed as a single piece as recited
in claim 15.
To the extent that Puno’s wires 120 do not constitute a
tension stable fastening element as recited in claim 15,
Partridge discloses a plastic tie adapted to wrap around and
secure the parts of a fractured bone. In Partridge’s words,
the tie
comprises an elongate flexible strap 1 having
ratchet teeth 2 on one face thereof. A widened
portion 3 is provided at one end of the strap, the
portion 3 containing a slot 4 of sufficient width to
receive the strap 1 when the end of the strap is
bent round and passed through the slot. Extending
into the slot 4 is a tongue 5 which acts as a pawl
engaging the ratchet teeth when the strap is passed
through the slot to prevent withdrawal of the strap
therefrom [column 1, lines 54 through 62].
It is not disputed that the Partridge tie is a tension
stable fastening element of the sort recited in the appealed
claims.
According to the examiner, it would have been obvious “in
view of Partridge, to use a fastening element that is movable
only in one direction to replace the fastener 120 of Puno et
al in order to be able to more easily and securely tighten the
fixation device into place” (main answer, page 5; supplemental
answer, pages 5 and 6).
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Application 08/325,629
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The examiner’s conclusion here is well founded.
Partridge’s description (see column 2, lines 18 through 20) of
the self-evident ease with which the tie can be applied would
have provided the artisan with ample suggestion to use such
ties in place of Puno’s wires 120, in conjunction with
suitably sized and disposed slots in Puno’s rod support 116,
to facilitate the securement of the rod support to rod 18.
Thus, the fair teachings of Puno and Partridge belie the
various lack of motivation arguments advanced by the
appellant.
The related contention that the age of the Puno and
Partridge references demonstrates non-obviousness (see page 8
in the reply brief) is also unconvincing. The mere age of
references is not indicative of the unobviousness of their
combination, absent evidence that, notwithstanding knowledge
of the references, the art tried and failed to solve the
problem. In re Wright, 569 F.2d 1124, 1127, 193 USPQ 332, 335
(CCPA 1977). The record in this application contains no such
evidence.
In light of the above, the differences between the
subject matter recited in claim 15 and the prior art are such
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Application 08/325,629
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that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary
skill in the art. Therefore, we shall sustain the standing 35
U.S.C. § 103 rejection of claim 15, and of claims 11, 14, 16
and 17 which stand or fall therewith, as being unpatentable
over Puno in view of Partridge.
III. Group II - claims 10, 12 and 13
Independent claim 12 recites a spinal column fixation
device comprising a single piece anchoring element and head
section, a plurality of transverse slots in the head section,
and a tension stable fastening element adapted to be
positioned in one of the slots for attaching the fixation
device to a longitudinal support piece. The fastening element
is further defined as comprising a belt formed in a loop and a
closure element on the belt movable along the belt in one
direction only to reduce the size of the loop.
For the reasons discussed above, and notwithstanding the
appellant’s hindsight arguments to the contrary, the combined
teachings of Puno and Partridge would have suggested the
subject matter recited in claim 12. Therefore, we shall
sustain the standing 35 U.S.C. § 103 rejection of claim 12,
Appeal No. 1999-0713
Application 08/325,629
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and of claims 10 and 13 which stand or fall therewith, as
being unpatentable over Puno in view of Partridge.
IV. Group III - claim 9
Claim 9 depends from claim 15 and recites that the
anchoring element, head section and longitudinal support piece
are titanium and the fastening element is resorbable plastic.
In rejecting this claim (see pages 5 and 6 in the main answer
and pages 5 through 7 in the supplemental answer), the
examiner concludes that these features would have been obvious
in view of (1) the well known orthopaedic utilization of
titanium and (2) the teachings of Eitenmuller with respect to
resorbable plastics. The appellant challenges the rejection
only to the extent the examiner relies on Eitenmuller (see
pages 10 and 11 in the reply brief).
Eitenmuller evidences the conventional practice of making
surgical implants from bio-resorbable polymers. The advantage
of this practice is that such polymers eventually will break
down
into substances naturally occurring in the body and be
expelled with the metabolic circulation, thereby eliminating
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Application 08/325,629
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the need for a second operation to remove the implant (see
Eitenmuller at column 1, lines 5 through 44).
Given these well known aspects of bio-resorbable implant
polymers, the examiner’s conclusion that it would have been
obvious to further modify the spinal fixation apparatus
disclosed by Puno by making the plastic tie suggested by
Partridge of a resorbable plastic is sound.
Accordingly, we shall sustain the standing 35 U.S.C. §
103 rejection of claim 9 as being unpatentable over Puno in
view of Partridge and Eitenmuller.
V. Additional matter for the examiner’s consideration
Claim 18 depends from claim 15 and recites that the
anchoring element has a major axis intersected by the slot
through which the tension stable fastening element extends.
As discussed above, the combined teachings of Puno and
Partridge would have suggested using plastic ties of the type
disclosed by Partridge in place of Puno’s wires 120, in
conjunction with suitably sized and disposed slots in Puno’s
rod support 116, to facilitate the securement of the rod
support to rod 18. It is not apparent why these same
teachings would not have suggested,
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Application 08/325,629
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as a simple matter of common sense, the use of a single,
centered tie and slot in the Puno device, thereby arriving at
the subject matter recited in claim 18. The appellant’s
position that the invention defined in claim 18 is
additionally patentable as
compared with the subject matter recited in parent claim 15
(see pages 11 and 12 in the reply brief) rests on the premise
that Puno’s screw and rod support are separate elements. As
pointed out above, however, this premise is refuted by Puno’s
disclosure that the screw and rod support can be made
integral. Upon return of the application to the technology
center, the examiner should reconsider the patentability of
claim 18 over the prior art and either enter an appropriate
rejection or explain why the claimed subject matter is
patentable.
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Application 08/325,629
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SUMMARY
The decision of the examiner to reject claims 9 through
17 is affirmed.
AFFIRMED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
)
) APPEALS AND
JOHN P. MCQUADE )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
Appeal No. 1999-0713
Application 08/325,629
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JPM/kis
JOHN B. PEGRAM
FISH & RICHARDSON
45 ROCKEFELLER PLAZA
NEW YORK, NY 10111