Ex Parte Frigg

Patent Trial and Appeal Board

Jun 19, 2015

12017666 (P.T.A.B. Jun. 19, 2015)

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.
12/017,666 01/22/2008 Robert Frigg 10139/06604 6776
76960 7590 06/19/2015
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
EXAMINER
COLEY, ZADE JAMES
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
06/19/2015 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 2012-010581
Application 12/017,6661
Technology Center 3700
____________

Before LORA M. GREEN, ROBERT A. POLLOCK, and
ELIZABETH A. LaVIER, Administrative Patent Judges.

LaVIER, Administrative Patent Judge.

DECISION ON APPEAL

Appellant seeks reversal of the Examiner’s rejections of claims 64–83,
pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
For the reasons set forth below, we AFFIRM-IN-PART.
BACKGROUND
The Specification relates to bone plates. (Spec. ¶ 2.) Claims 64 and
83 are representative:

1 Appellant states the real party in interest is Synthes, Inc. (Appeal Br. 2.)
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64. A bone plate, comprising:
a first fixation element receiving hole extending therethrough
from an outer surface to a bone facing surface of the plate, the
first hole including a first substantially circular segment
defining a first segment axis and at least one thread for
engaging a head of a fixation element inserted therethrough, the
at least one thread extending along a wall of the first segment
over an angle of at least 180° with respect to the first segment
axis and a second segment open to the first segment, a length of
the second segment in a direction parallel to a longitudinal axis
of the plate being longer than a diameter of the first segment
and longer than a width of the second segment in a direction
substantially perpendicular to the longitudinal axis, the width of
the second segment being longer than the diameter of the first
segment.

83. A bone plate, comprising:
a first fixation element receiving hole extending therethrough
from an outer surface to a bone facing surface of the plate, the
first hole including a first substantially circular segment
defining a first segment axis, a wall of the first segment
including a fixation element engaging structure for engaging a
head of a fixation element inserted therethrough, the engaging
structure extending along a wall of the first segment over an
angle of at least 180° with respect to the first segment axis and
a second segment open to the first segment, the second segment
including a curved recess adjacent to the outer surface for
engaging a head of a fixation element inserted thereinto to
provide compression of fractured bone fragments coupled to the
plate.
(Appeal Br. 23 (Claims App.) (emphases added).)
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REJECTIONS
The Examiner maintains the following rejections on appeal:
1. Claim 83 is rejected under 35 U.S.C. § 102(b) as anticipated by
Johnston.2 (Ans. 5.)
2. Claims 64–71 and 73–82 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Johnston, Frigg,3 Wolter,4 and Talos.5 (Ans. 5.)
3. Claim 72 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Johnston, Frigg, Wolter, Talos, and Baker.6 (Ans. 10.)
DISCUSSION
A. Rejection 1: Anticipation
Johnston describes a bone plate for fixation of an olecranon fracture.
(Johnston Abstract.) Figure 3 of Johnston is set forth below:

2 Johnston, US 3,716,050 (issued Feb. 13, 1973).
3 Frigg et al., US 6,206,881 B1 (issued Mar. 27, 2001).
4 Wolter, US 6,322,562 B1 (issued Nov. 27, 2001).
5 Talos et al., US 5,709,686 (issued Jan. 20, 1998).
6 Baker et al., US 5,569,251 (issued Oct. 29, 1996).
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Figure 3 of Johnston depicts a perspective view of the olecranon plate 20.
Several of the apertures (26, 32, and 34) “are of the keyhole type and include
slot extensions 26’ and 32’ extending in opposite directions along the long
flange 22. . . .” (Johnston col. 2, l. 24–27.) The apertures have beveled
counter-bores for receiving screws having heads with beveled undersurfaces.
(Id. at col. 3, ll. 35–38.) In rejecting claim 83 as anticipated by Johnston, the
Examiner finds:
Johnston discloses a bone plate (Fig. 3) comprising a fixation
element receiving hole (Fig. 3; 32) that extends through the
plate. This receiving hole is substantially circular and the wall
has an engaging structure (col. 2, lines 34-38) for the head of
the fixation element. The circular segment covers an angle
greater than 180 degrees with respect to the axis. The second
segment (Fig. 3; 32’) is open to the first segment and it has a
curved recess that is adjacent to the outer surface (Fig. 3)
capable of engaging with the head of a fixation element and it
could provide compression of fractured bone fragments coupled
to the bone plate.
(Ans. 5.)
Appellant presents two arguments, neither of which is persuasive.
Accordingly, we affirm the Examiner’s rejection of claim 83 as anticipated
by Johnston for the reasons of record, and as explained further herein.
First, Appellant asserts that Johnston fails to disclose “a fixation
element engaging structure for engaging a head of a fixation element
inserted therethrough” (see Appeal Br. 4–6; Reply Br. 2–5), but this
argument mistakenly reads structural requirements into a functional
limitation. Indeed, while Appellant insists that “the term ‘for engaging’
denotes an actual state of configuration and structure” (Reply Br. 3),
Appellant does not describe what that structure is, only what it does (see id.).
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We agree with the Examiner that claim 83 “does not require Johnston to
indicate whether the head of the screw engages any part of the aperture
because this is an intended use limitation[;] [t]he wall of Johnston just has to
be capable of a screw head engaging with it,” and that Johnston’s wall
“includes a structure that can engage with many things,” including a fixation
element such as a screw. (Ans. 11.) Appellant’s citation to the Specification
as allegedly imparting a structural restriction on “for engaging” (see Reply
Br. 3–4 (citing Spec. 7, ll. 8–13, Fig. 3) is not persuasive in part because the
cited passages are exemplary, not definitional.
Second, Appellant argues that Johnston does not teach a “second
segment including a curved recess adjacent to the outer surface for engaging
a head of a fixation element inserted thereinto.” (See Appeal Br. 6–8; Reply
Br. 5–6.) However, Appellant’s argument seems to focus on the shape of
the edge of the aperture in Johnston, i.e., in a direction perpendicular to the
bone plate. (See, e.g., Reply Br. 5 (“[t]he bottom half of the screw [] also
appear[s] to be conical in shape, thereby necessitating the apertures 26, 32,
and 34 to include a linear disposition”).) In contrast, we understand the
Examiner’s position to rely on the curved shape of the extended segment of
the aperture itself, i.e., a curve in a direction parallel to the bone plate. (See
Ans. 12) In particular, the Examiner finds that:
The second segment (Fig. 3; 32’) does indicate in Figure 3 that
the extension 32’ is a recess. It is a recess that comes off the
larger first segment 32. . . . It is clear in Figures 2 and 3 that the
recess is curved. Note how the extension portion (‘the second
segment’) is not squared off.
(Id.)
We find no error in the Examiner’s interpretation, as claim 83 only
requires the curved recess be “adjacent” to the outer surface, which broadly
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encompasses the types of curvature envisioned by the Examiner as well as
by Appellant. Appellant suggests that the Examiner’s reliance on the figures
of Johnston to teach the curved recess is inappropriate pursuant to
Hockerson-Halberstadt, Inc. v. Avia Group International. (See Appeal Br.
7; Reply Br. 6.) But Hockerson stands for the proposition that “patent
drawings do not define the precise proportions of the elements and may not
be relied on to show particular sizes if the specification is completely silent
on the issue.” 222 F.3d 951, 956 (Fed. Cir. 2000) (citing In re Wright, 569
F.2d 1124, 1127 (CCPA 1977)). Here, the Examiner relies on the figures of
Johnston for the general shape of the aperture, not its precise dimensions.
B. Rejections 2 and 3: Obviousness
Per the highlighted elements of claim 64 recited supra, claim 64
includes three proportionality requirements: the second segment must be (1)
longer than the diameter of the first segment, (2) longer than its own width,
and (3) wider than the diameter of the first segment. The Examiner relies
solely on Figure 3 of Johnston to teach the first two of these requirements.
(See Ans. 5–6.)7 Here, Appellant’s citation to Hockerson is on point, as
there is no indication that Figure 3 of Johnston is to scale. The Examiner’s
other references do not cure this deficiency of Johnston, and so we reverse
rejection of claim 64. Each of claims 65–82 depends directly or indirectly
on claim 64. (See Appeal Br. 13–16.) Accordingly, we also reverse the
rejections of claims 65–82.

7 The Examiner subsequently cites column 2, lines 45–53 of Johnston in
discussing the angle of the screw with respect to the hole (see Ans. 13), but
this passage is silent regarding the relative dimensions of the apertures.
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CONCLUSION
The Examiner’s final rejection of claim 83 under 35 U.S.C. § 102(b)
is affirmed for the reasons of record. The Examiner’s final rejections of
claims 64–82 under 35 U.S.C. § 103(a) are 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)(1)(iv).

AFFIRMED-IN-PART

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