Ex Parte Frigg et al

Patent Trial and Appeal Board

Oct 15, 2013

12092748 (P.T.A.B. Oct. 15, 2013)

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.
12/092,748 06/26/2008 Robert Frigg 10139/15202(00537-08PUS1) 5680
76960 7590 10/16/2013
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
EXAMINER
PLIONIS, NICHOLAS J
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
10/16/2013 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 and PASCAL SCHORI1
__________

Appeal 2012-003119
Application 12/092,748
Technology Center 3700
__________

Before TONI R. SCHEINER, ERIC GRIMES, and ERICA A. FRANKLIN,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
intramedullary implant and guide sleeve, which have been rejected as
anticipated or obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellants identify the Real Party in Interest as Synthes, Inc. (Appeal Br.
2).
Appeal 2012-003119
Application 12/092,748

2
STATEMENT OF THE CASE
Claims 19-39 are on appeal. Claims 19 and 28 are illustrative and
read as follows (emphasis added):
19. A device for implantation in a medullary space of a bone via a
curved insertion path, comprising:
a curved proximal portion extending along an arc substantially
similar to an arc of the curved insertion path, the proximal portion
including a coupling arrangement at a proximal end thereof adapted to
couple to a tool for one of intramedullary implantation and
explantation; and
a flexible distal portion extending from a distal end of the
proximal portion, the distal portion extending substantially straight in
an unstressed state and having flexibility sufficient to permit bending
along the arc of the insertion path substantially without permanent
deformation.

28. A guide sleeve for insertion of an implant into a medullary
space of a bone, comprising:
a distal portion which, when the guide sleeve is in an operative
position, extends into a medullary space of a bone along a curved
path;
a proximal portion which, when the guide sleeve is in the
operative position, extends out of a body to a proximal end which
remains accessible to a user;
an intermediary portion coupled between the proximal and
distal portions, the intermediary portion extending along a
predetermined curve corresponding to a curve along which an
intramedullary implant is to be inserted through the bone into the
medullary space; and
a lumen extending through the guide sleeve from a proximal
opening at the proximal end to a distal opening at a distal end of the
distal portion.

Appeal 2012-003119
Application 12/092,748

3
The claims stand rejected as follows:
• Claims 19, 21, 24, and 25 under 35 U.S.C. § 102(b) as anticipated
by Phillips2 (Answer 5);
• Claims 28, 29, and 35 under 35 U.S.C. § 102(b) as anticipated by
Durham ‘3923 (Answer 6);
• Claims 30-33 under 35 U.S.C. § 103(a) as obvious based on
Durham ‘392 (Answer 7);
• Claim 20 under 35 U.S.C. § 103(a) as obvious based on Phillips and
Camino4 (Answer 8);
• Claim 22 under 35 U.S.C. § 103(a) as obvious based on Phillips and
Lewallen5 (Answer 8);
• Claim 23 under 35 U.S.C. § 103(a) as obvious based on Phillips,
Lewallen, and DiPietropolo6 (Answer 9);
• Claims 26 and 27 under 35 U.S.C. § 103(a) as obvious based on
Phillips and Durham ‘5957 (Answer 10);
• Claim 34 under 35 U.S.C. § 103(a) as obvious based on Durham
‘392 and Jones8 (Answer 11); and
• Claims 36-39 under 35 U.S.C. § 103(a) as obvious based on Phillips
and Durham ‘392 (Answer 11).

2 Phillips, US 2002/0111629 A1, Aug. 15, 2002.
3 Durham, US 6,074,392, June 13, 2000.
4 Camino, US 6,656,187 B1, Dec. 2, 2003.
5 Lewallen, US 2004/0088056 A1, May 6, 2004.
6 DiPietropolo, US 4,751,922, June 21, 1988.
7 Durham et al., US 6,168,595 B1 Jan. 2, 2001.
8 Jones et al., US 2004/0193267 A1, Sept. 30, 2004.
Appeal 2012-003119
Application 12/092,748

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I.
The Examiner has rejected claims 19, 21, 24, and 25 as anticipated by
Phillips (Answer 5). The Examiner finds that Phillips discloses a device
meeting all of the limitations of claim 19, including “a flexible distal portion
(34) extending from a distal end of the proximal portion, the distal portion
extending substantially straight in an unstressed state (see Fig. 5) and having
flexibility sufficient to permit bending along the arc of the insertion path
substantially without permanent deformation (see Fig. 3)” (id.).
Appellants argue that “Phillips shows an intramedullary nail including
a distal portion that is curved along a length thereof in an unstressed state to
conform to a femoral curvature” (Appeal Br. 7) and that “that Phillips
neither shows nor suggests that the distal end section 34 extends
substantially straight in an unstressed state” (id. at 8).
We agree with Appellants that the Examiner has not shown that the
device disclosed by Phillips meets all of the limitations of claim 19. Claim
19 requires a distal portion (a) “extending substantially straight in an
unstressed state” and (b) “having flexibility sufficient to permit bending
along the arc of the insertion path substantially without permanent
deformation.”
Phillips discloses an intramedullary nail (Phillips 1, ¶ 9) in which
the central section . . . is curved in the sagital [sic] plane to
generally follow the curvature of a femur. . . . The proximal and
distal end sections are each bent laterally to one side of the
central section. The side to which the proximal and distal end
sections are bent depends on whether the nail will be used in a
right or left femur.
(Id. at 1-2, ¶ 10.)
Appeal 2012-003119
Application 12/092,748

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Thus, in Phillips’ device, the distal portion is bent to one side or the
other, depending on whether it is intended for use in a left or right femur,
relative to the central section. The Examiner argues, however, that the
purpose of the bend (74) between the distal portion and central
portion[ ] of the nail is so that the distal portion can be bent
from its unstressed, straight position to a curved position to
follow the insertion path, and thus, make entry of the distal
portion easier (see Phillips, paragraph [0034]). Thus, in an
unstressed state, the distal portion of the nail extends
substantially straight.
(Answer 14.)
We disagree with the Examiner’s reasoning. Phillips describes its
device has having permanently bent proximal and distal end sections.
Although Phillips states that the nail “may be custom bent by the surgeon
just prior to use” (Phillips 3, ¶ 32), it also describes “a manual bending
device” (id. at 3, ¶ 35) that is required to carry out the bending. The
Examiner has not provided evidence sufficient to support the finding that
Phillips’ device includes a distal portion that both extends straight in an
unstressed state and has sufficient flexibility to permit bending without
permanent deformation.
Claims 21, 24, and 25 depend on claim 19. We therefore reverse the
rejection of claims 19, 21, 24, and 15 as anticipated by Phillips.
II.
The Examiner has rejected claims 28, 29, and 35 as anticipated by
Durham ‘392 (Answer 6). The Examiner finds that Durham ‘392 discloses a
guide sleeve meeting all of the limitations of claim 28, including an
“intermediary portion extending along a predetermined curve corresponding
Appeal 2012-003119
Application 12/092,748

6
to a curve along which an intramedullary implant is to be inserted through
the bone into the medullary space (see Fig. 4c)” (id.).
Appellants argue that Durham ‘392 “discloses a flexible reamer which
conforms to any path through which it is slid such that the flexible reamer
does not extend along a predetermined curve” (Appeal Br. 9).
We agree with Appellants that the Examiner has not shown that the
device disclosed by Durham ‘392 includes an “intermediary portion
extending along a predetermined curve,” as required by claim 28. Durham
‘392 discloses “a flexible drill or reamer . . . which includes a hollow
flexible drill or reamer element 16 in which the curved pin 12 is received
and which bends or flexes so to accommodate the curvature of the pin”
(Durham ‘392, col. 4, ll. 47-50). Durham ‘392 states that the “curvature of
the pin 12 is preset and fixed and the pin 12 is inserted into the bone to
provide a guide path for a drill or reamer so as to enable insertion of a
fixation device such as an intermedullary rod or nail” (id. at col. 4, ll. 41-45).
Thus, the reamer (guide sleeve) described by Durham ‘392 does not
have a predetermined curve, as required by claim 28, but instead is flexible
and bends to accommodate the curvature of a pin that provides the guide
path for the reamer.
The Examiner reasons that
[g]iving the term “predetermined” its broadest reasonable
interpretation . . . , the claim only requires that the intermediary
portion of the guide sleeve achieve[s] a curved shape that is
determined ahead of time for it to have. The intermediary
portion of the sleeve of Durham [‘392] is capable of achieving
such a predetermined shape, as shown in Fig. 4C, for example.
The claim does not require that [the] intermediary portion of the
guide sleeve have a curve prior to insertion.
Appeal 2012-003119
Application 12/092,748

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(Answer 15.)
We disagree with the Examiner’s reasoning. The Specification
consistently describes the disclosed guide sleeve as having a fixed, curved
shape. See Spec. 3:5-9 (“[T]he guide sleeve . . . consists of a tube which
forms a circular arc like a circular sector. . . . [T]he diameter of the tube, the
diameter of the circular arc as well as the length of the circular arc is
dependent on the application.”); 4:22-24 (“The guide sleeve . . . is provided
with at least one curvature in the intermediary piece.”); 5:11 (“[T]he radius
RF of the circular arc like curvature of the intermediary piece is equal to the
radius RI of the circular arc like curvature of the first end portion of the
implant.”).
Thus, we agree with Appellants that the broadest reasonable
interpretation of “a predetermined curve,” as required by claim 28, is a
“curvature that exists prior to insertion of the guide sleeve into the insertion
path of the bone” (Appeal Br. 9). The flexible reamer disclosed by Durham
‘392, which bends to accommodate the curve of a curved pin, lacks this
property, and therefore does not meet all of the limitations of claim 28.
Claims 29 and 35 depend on claim 28. We therefore reverse the
rejection of claims 28, 29, and 35 as anticipated by Durham ‘392.
III.
The Examiner has rejected claims 20, 22, 23, 26, 27, 30-34, and 36-39
as obvious based Phillips, Durham ‘392, and additional prior art (Answer
7-13). The Examiner relies on Phillips and Durham ‘392 as disclosing the
implant of claim 19 and the guide sleeve of claim 28, respectively, and finds
Appeal 2012-003119
Application 12/092,748

8
that the cited references collectively would have made obvious the
limitations of the rejected claims.
Claims 36 and 38 are the other independent claims on appeal and
include the same relevant limitations as claims 19 and 28. As discussed
above, Phillips and Durham ‘392 do not disclose those limitations, and the
Examiner has not provided a reasoned basis for concluding that the missing
limitations would nonetheless have been obvious. We therefore reverse the
rejections of claims 36 and 38.
Claims 20, 22, 23, 26, 27, 30-34, 37, and 39 depend on one of claims
19, 28, 36, or 38. We therefore reverse the rejections of these claims as
well.
SUMMARY
We reverse all of the rejections on appeal.

REVERSED

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