Ex Parte Frigg et al

Patent Trial and Appeal Board

Feb 25, 2016

12989571 (P.T.A.B. Feb. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/989,571 10/25/2010 Robert Prigg
76960 7590 02/25/2016
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.
10139/14303 9987
EXAMINER
COLEY, ZADE JAMES
ART UNIT PAPER NUMBER
3775
MAILDATE DELIVERY MODE
02/25/2016 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)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT PRIGG and URS HULLIGER
Appeal2014-000581
Application 12/989,571
Technology Center 3700
Before CHARLES N. GREENHUT, LISAM. GUIJT, and
JASON W. MELVIN, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
3-8, and 12-15. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to a variable angle fixation element system.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A device for stabilizing portions of bone, comprising:
a plate configured to be coupled to a target portion of bone
including a first hole extending therethrough from a proximal
surface to a distal, bone-facing, surface thereof;
Appeal2014-000581
Application 12/989,571
a first rigid member received within the first hole, the rigid
member sized relative to the first hole to be rotatable
therewithin about an axis substantially perpendicular to a
proximal-distal axis of the first hole, the first rigid member
including a first bore extending therethrough from a proximal
opening to a distal opening, the first bore being sized and
shaped to receive a first bone fixation element to be inserted
through the plate into the target portion of bone; and
a first deformable member coupling a distal end of the first
rigid member to a distal end of the plate.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Duncan
Prigg
us 5,690,631
US 2004/0220570 Al
REJECTIONS
Nov. 25, 1997
Nov. 4, 2004
Claims 12 and 13 are rejected under 35 U.S.C. § 112, 2nd paragraph.
Final Act. 2.
Claims 1, 6-8, 12, and 13 are rejected under 35 U.S.C § 102(b) as
being anticipated by Prigg. Final Act. 3.
Claims 1, 3---6, and 12-15 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Duncan. Final Act. 5.
Claims 14 and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Prigg and Duncan. Final Act. 6.
OPINION
Regarding claims 12 and 13, the Examiner rejected the claims for
insufficient antecedent basis and lack of clarity in claim language. Final
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Application 12/989,571
Act. 2. Appellants have not argued the rejections. App. Br. 3. The
rejections of claims 12 and 13 under 35 U.S.C. § 112, 2nd paragraph are,
therefore, summarily affirmed. See, e.g., In re Berger, 279 F.3d 975 (Fed.
Cir. 2002) (in which the Board affirmed an uncontested rejection of claims
under 35 U.S.C. § 112, second paragraph, and on appeal the Federal Circuit
affirmed the Board's decision and found that the appellant had waived his
right to contest the indefiniteness rejection by not presenting arguments as to
error in the rejection on appeal to the Board). See also Hyatt v. Dudas, 551
F.3d 1307, 1314 (Fed. Cir. 2008) ("the applicant can waive appeal of a
ground of rejection").
Regarding the rejection of claim 1 as anticipated by Prigg, the
Examiner determined that Prigg teaches bone plate 100 having first rigid
member 4. Final Act. 3. The Examiner further determined that Prigg
teaches connecting legs 5 as deformable members. Ans. 3, citing Prigg,
paras. 12, 29. Appellants argue connecting leg 5 is not a deformable
member and must maintain a rigid structure to permit swivel element 4 to
pivot about an axis created by the connecting legs. App. Br. 4.
Prigg discloses connecting elements 5 are "dimensioned so that elastic
deformation thereof permits an angularly fixed rotation of the swivel
element." Prigg, para. 29. Deformation of the legs does not impede the
function, as suggested by Appellants; rather, Prigg discloses it is the elastic
deformation that permits the rotation of swivel element 4.
The Examiner also determined connecting leg 5 couples a distal end
of swivel element 4 to a distal end of plate 100. Final Act. 3--4. The
Examiner reasoned that a line may be drawn horizontally through the middle
of plate 3 in Figure IA to separate a "proximal end" extending from this line
to top surface 13 and a "distal end" extending from this line to bottom
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Appeal2014-000581
Application 12/989,571
surface 14. Ans. 3--4; Final Act. 4. Appellants argue the connecting legs are
disposed in a substantially middle position between the proximal and distal
surfaces of the bone plate. App. Br. 6.
We agree that the Examiner's first interpretation of the term "distal
end" is not unreasonably broad. 1 A distal end is broader than a distal surface
and may include the portion of a component located in the direction of the
distal surface, as suggested by the Examiner. The portions of connecting leg
5, swivel 4, and bone plate 3 located below the Examiner's proposed line are
located toward the distal surface and thus are the distal ends of the respective
components. Appellants argue the distal end is a terminal point on the distal
surface. App. Br. 6. Appellants appear to be arguing the face of the distal
surface must perform the coupling; however, the term "distal end" is not so
narrow as to limit the claim in this manner. If Appellants wished to limit the
claim in this way, Appellants could have referred to the surface as done in
other portions of the claim. Absent evidence or claim language indicating
the contrary, we presume different terms, "surface" and "end," do not carry
identical meanings. The rejection of claim 1 over Prigg is therefore
affirmed.
The rejection of claims 6-8, 12, and 13 over Prigg has only been
argued based on their dependence from claim 1. App. Br. 8. We therefore
affirm the rejections of claims 6-8, 12, and 13 as well.
1 The Examiner's second, alternative interpretation, is unreasonably broad
because, even in light of the fact that this limitation relates to an intended
use, there is no indication as to why the distal surface in the second of the
Examiner's annotated figures would reasonably be regarded as "bone-
facing." We need not, and do not, rely on this alternate claim construction in
affirming the Examiner's anticipation rejection based on Prigg.
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Appeal2014-000581
Application 12/989,571
Regarding the rejection of claim 1 as anticipated by Duncan, the
Examiner determined that Duncan teaches bone plate 40 having a first hole,
void 78 (see Ans. 8, annotating Duncan Figure 5)2, a first rigid member
(straight plate 66), and a first deformable member (linking member 44).
Final Act. 5. Appellants argue void 78 is merely an empty space between
the straight plates and not a hole extending from a proximal surface to a
distal surface of the plate. App. Br. 9. Void 78 is depicted as being a hollow
area within plate 40 which occupies a space from the top surface to the
bottom surface. Duncan, Fig. 5. Appellants do not direct our attention to
any claim language or definition of the claim term "hole" requiring,
expressly or implicitly, anything more than the structure of the void as
depicted in Duncan. We therefore agree that the Examiner reasonably
construed the claim term "hole" to include Duncan's void.
Appellants argue straight plate 66 is not received within the void 78
and is not sized relative to the first hole to rotate therein. App. Br. 10-11.
Straight plate 66 is located within the outer walls of void 78 and is thus
received in void 78. Regarding rotation, the Examiner provides an example
of twisting the straight plate, indicating that there will be some flexion due
to the linking portions having less material and also due to the flexible and
malleable material from which it is constructed. Final Act. 9, citing Duncan,
Fig. 5 and col. 4, 11. 39--47. We agree with the Examiner's analysis of
2 The Examiner regards the square region as the hole or void, citing
reference numeral 78. It is not clear if Duncan uses reference numeral 78 to
refer to the square or triangular regions. If the latter, the void identified by
the Examiner essentially consists of two of these triangular regions and the
space occupied by internal angled straight plate 66. In either case, we
maintain herein the Examiner's convention, referring to void 78 in the
singular. We further note that, in the Examiner's annotation, plate 66 is not
shown within the annotated void, presumably for clarity.
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Application 12/989,571
Duncan. Duncan teaches the plate may be shaped to conform to the
curvature of the skull. Duncan, col. 4, 11. 45--4 7. Rotation of plate 66 about
the claimed axis is evidenced by the capability of the entire plate 40 to be
curved to conform to the skull. Further, we are not apprised by Appellants
as to anything relating to the size of the plate with respect to the void that
prevents this. Accordingly, we agree with the Examiner that plate 66 is
reasonably regarded as "sized relative to the first hole to be rotatable
therewithin," as recited in claim 1.
Appellants argue linking member 44 provides a decoupling or cutting
feature, not a coupling feature. App. Br. 11-12. However, the ability to cut
linking members 44 does not preclude them from performing a coupling
function. Duncan depicts linking members 44 as connecting straight plate
66 to periphery plates 56 and 58. Duncan, Fig. 5.
Appellants additionally argue that the Examiner improperly relies on
the Figures, which are not to scale and have no particular spatial orientation,
for inferring coupling of the distal ends. App. Br. 12. The Examiner notes
that Figure 6 depicts the bottom surfaces are flush from the hole to the
linking member. Ans. 7. Duncan supports this interpretation of Figure 6,
indicating that the plate 40 has a uniform thickness 54. Duncan, col. 4,
11. 61---62. Thus, the bottom surface depicted in Figure 6 will be the bottom
surface for the straight plate 66 and linking member 44 and as a result, the
coupling between the components is performed along this surface.
For the reasons above, the rejection of claim 1 over Duncan is
affirmed.
All remaining arguments are premised on dependency.
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Appeal2014-000581
Application 12/989,571
DECISION
The Examiner's rejections of claims 1, 3-8, and 12-15 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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