Ex Parte Frigg et alDownload PDFPatent Trial and Appeal BoardMar 28, 201612532256 (P.T.A.B. Mar. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/532,256 11112/2009 Robert Prigg 76960 7590 03/28/2016 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. 10139/20102 6423 EXAMINER LAWSON, MATTHEW JAMES ART UNIT PAPER NUMBER 3775 MAILDATE DELIVERY MODE 03/28/2016 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, ALFRED NIEDERBERGER, and CHRISTOPH FUERST Appeal2014-001894 Application 12/532,256 Technology Center 3700 Before CHARLES N. GREENHUT, THOMAS F. SMEGAL, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Robert Prigg et al. (Appellants) 1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject claims 22-28 and 30-47. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 According to Appellants, the real party in interest is Synthes USA, LLC. Appeal Br. 2. Appeal2014-001894 Application 12/532,256 THE CLAIMED SUBJECT MATTER Claims 22, 40, and 45 are independent. Claim 22, reproduced below, is illustrative of the subject matter on appeal. 22. A bone plate having a longitudinal axis, comprising: a) an oblong base plate including an anchoring portion extending towards a first end of the base plate and a coupling portion extending towards a second end of the base plate; b) a first sliding plate connected to the coupling portion so that it is slideable relative to the coupling portion parallel to the longitudinal axis; and c) at least one first plate hole located in the anchoring portion and at least one second plate hole located in the sliding plate, wherein the base plate includes a first retaining arrangement limiting motion of the first sliding plate relative to the base plate in a direction perpendicular to a top surface of the bone plate while not impeding the sliding of the sliding plate relative to the base plate parallel to the longitudinal axis, wherein the base plate includes a second retaining arrangement limiting displacement of the first sliding plate relative to the base plate parallel to the longitudinal axis \vithin a range x > 0, the second retaining arrangement including at least one elongate aperture penetrating the base plate in a range of motion of the first sliding plate, the elongate aperture having a width b and a length 1 parallel to the longitudinal axis, wherein all plate holes arranged in the first sliding plate are located within a distance y parallel to the longitudinal axis, the distance y being smaller than the length l; wherein the at least one second plate hole includes a rigid locking arrangement allowing a rigid connection between a screw head of a bone screw insertable therein, wherein the first retaining arrangement includes an elongated recess penetrating into the base plate form the top surface to a depth T; wherein, at the depth T, a supporting surface extends parallel to the top surface such that the first sliding plate is 2 Appeal2014-001894 Application 12/532,256 supported at a gliding surface thereof perpendicularly to the top surface, and wherein the bone plate is mountable onto a bone and includes a bottom surface which, when the bone plate is mounted on the bone in a desired configuration, faces the bone. THE REJECTIONS2 Claims 22-28 and 32--44 stand rejected under 35 U.S.C. § 102(b) as anticipated by Morrison (US 6,280,445 B 1; iss. Aug. 28, 2001 ). Claims 30 and 31 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Morrison. Claims 45--47 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Morrison and Steiner (US 2002/0183752 Al; pub. Dec. 5, 2002). OPINION Claims 22-28 and 32--44-Anticipation Independent claim 22 and dependent claims 23-28 and 32-39 Regarding independent claim 22, the Examiner found, inter alia, that Morrison's elongated member 100 and stabilizer 115 correspond to the claimed base plate and sliding plate. Final Act. 3. The Examiner further found that Morrison discloses a first retaining arrangement that includes ledge 112, which limits the motion of the sliding plate (stabilizer 115) relative to base plate (elongated member 100) as claimed, and also an elongated recess penetrating into the base plate's top surface to a depth T. Id. at 4--5 (citing Morrison 5:65-67, 6:1-15, 7:64--65, Figs. 8a-8c, 8e). 2 The Examiner's rejection of claims 40--44 under 35 U.S.C. § 112, second paragraph, has been "resolved," and therefore, we consider this rejection withdrawn. See Adv. Act. mailed Apr. 26, 2013. 3 Appeal2014-001894 Application 12/532,256 Specifically, the Examiner considers the top surface of ledge 112 as a top surface of the bone plate, which therefore defines the upper boundary of the elongated recess, and the top surface of ledge 114 as the bottom boundary of the elongated recess. Ans. 3. The Examiner determined that Morrison describes, at depth T, a supporting surface (lower ledge 114) that extends parallel to the base plate's top surface such that the sliding plate (stabilizer 115) is supported as claimed. Final Act. 5 (citing Morrison, Fig. 8c ). The Examiner also found that Morrison discloses a second retaining arrangement (slot 108) that limits displacement of the sliding plate relative to the base parallel to the base's longitudinal axis, including an elongate aperture of width b ("B") and length 1 ("L"), which penetrates the base plate in a range of motion of the sliding plate, as claimed. Id. at 4--5, 7 (citing the Examiner's Annotated Figure 8c of Morrison, which depicts a bottom view of the plate illustrated in Figure 8a (see Morrison 3:7-8)). In particular, the Examiner's Annotated Figure 8c of Morrison more precisely defines the open-ended, elongate aperture formed in the bottom surface of elongated member 100 as the elongate aperture of the second retaining arrangement. See Final Act. 7. 3 3 We understand with respect to the Examiner's Annotated Figure 8c of Morrison that the Examiner intended length "L" to define the length of the open-ended, elongate aperture formed in the bottom surface of elongated member 100, in view of the Examiner's findings with respect to the first retaining arrangement and comparison to dimension "Y" of the area bounded by ledge 112, as depicted in the figure. See Final Act. 7. As such, the Examiner's annotation on the left-hand side of the double arrow indicating length "L" mistakenly stops short of the end of the bone plate (elongated member 100). 4 Appeal2014-001894 Application 12/532,256 First, Appellants argue that the Examiner erred in finding that ledges 112, 114 correspond to the claimed first retaining arrangement because "ledges 112, 114 are clearly separated from one another along the slot 108." Appeal Br. 6-7. Appellants contend that the Examiner found that "ledge 112 is analogous to the recess extending to a depth T." Appeal Br. 6. Appellants' argument appears to misapprehend the Examiner's findings, as clarified in the Examiner's Answer and as discussed supra, which identifies the elongated recess of the first retaining arrangement as being defined by the top surface of ledge 112 (upper boundary), the top surface of ledge 114 (bottom boundary), and the sidewalls extending therebetween. Although Appellants argue that one skilled in the art "would not have analogized the ledge 112 to the top surface [of the bone plate] when it is clearly separated from the top surface by a depth (i.e., a depth equivalent to a height of the projection 138 seated thereon)," the Examiner correctly found that the top surface of ledge 112 is part of and forms the top surface of the bone plate (elongated member 100), notwithstanding the placement of washer 130 with projection 138 into slot 108. Reply Br. 3; Ans. 3; Morrison 8:27-32, 61---62, Fig. 8c. Moreover, in view of the Examiner's identification of the bottom surface of ledge 112, which extends from the side walls of the elongated slot, as limiting motion of the sliding plate relative the base as claimed, the Examiner correctly determined that claim 22 does not preclude the elongated recess of the first retaining arrangement from having side walls with an irregular shape. Ans. 3. In fact, the irregular shape of the side walls of the elongated recess of first retaining arrangement 5 of Appellants' invention, namely, the linear enlargement of the side walls toward bottom surface 10 or dove-tail guidance 19, is described as the structure that limits 5 Appeal2014-001894 Application 12/532,256 the motion of Appellants' sliding plate relative to the base plate. See Spec. 8; Appeal Br. 14 (Claims App.), Claim 26. Appellants' argument also does not apprise us of error in the Examiner's finding that the top surface of ledge 114 is a supporting surface at depth T. See Reply Br. 3. Second, Appellants argue that "neither the ledge 112 nor the ledge 114 is capable of meeting the ... limitations of claim 22." Appeal Br. 7. In particular, Appellants submit that the bottom wall of ledge 112, which limits motion of the sliding plate relative to the base plate, "does not meet the limitation of 'an elongated recess penetrating into the base from the top surface to a depth T'" and that "ledge 114 does not meet the limitation of 'an elongated recess penetrating into the base plate from the top surface to a depth T." Appeal Br. 7-8. However, these arguments again misapprehend the Examiner's findings with respect to Morrison's elongated slot, as identified by the Examiner and discussed supra, wherein ledge 112 extends into the elongated slot from side walls of the elongated slot, but does not alone define it. Third, Appellants argue that because "slot 108 extends completely through the member 100, those of skill in the art would not have been motivated to interpret an arbitrary portion of the slot 108 (i.e., the ledge 114) as extending from a top surface of the member 100." Reply Br. 3. We disagree. Morrison teaches one skilled in the art that an elongated recess may penetrate from the top surface of the bone plate to a supporting surface (ledge 114 ), at a depth T, to provide a support for a sliding plate (or stabilizer 115), as discussed supra. See Morrison 7:64---67, Fig. 8c. Moreover, Appellants' invention includes additional elongate aperture 9 6 Appeal2014-001894 Application 12/532,256 which, taken together with elongated recess 30, provides a slot with irregular side walls that extends entirely through base plate 3. See Spec., Fig. 3. Finally, Appellants argue that the Examiner "seeks to use the same slot 108 to meet the limitations of both the first and second retaining arrangements." Reply Br. 4. However, as discussed supra, we understand that the Examiner relies on Morrison's open-ended aperture formed in the bottom of elongated member 100 as corresponding to the claimed second retaining arrangement, which does not form a part of the first retaining arrangement as identified by the Examiner. See Final Act. 4--5, 7. Accordingly, we sustain the Examiner's rejection of independent claim 22. Appellant chose not to present separate arguments for the patentability of dependent claims 23-28 and 32-39, and therefore, we also sustain the Examiner's rejection of claims 23-28 and 32-39. Appeal Br. 9; Reply Br. 5. Independent claim 40 and dependent claims 41--44 Appellants submit that "claim 40 and its dependent claims 41 - 44 are allowable over Morrison for the same reasons noted above with respect to claim 22." Appeal Br. 10; Reply Br. 6. Because we sustain the Examiner's rejection of independent claim 22, we also sustain the Examiner's rejection of independent claim 40, for the reasons discussed supra, and also dependent claims 41--44. Claims 30 and 31- Obviousness over Morrison Appellants argue that claims 30 and 31, which depend from independent claim 22, are patentable for at least the reasons set forth supra with respect to claim 22. Because we sustain the Examiner's rejection of 7 Appeal2014-001894 Application 12/532,256 independent claim 22, we also sustain the Examiner's rejection of dependent claims 30 and 31 for the reasons discussed supra. Independent claim 45 and dependent claims 46 and 47- 0bviousness over Morrison and Steiner Appellants chose to rely on their arguments as presented for independent claim 22. Appeal Br. 11; Reply Br. 7-8. Accordingly, Appellants conclude that "Morrison fails to teach or suggest a first retaining arrangement as recited in claim 45" and that "Steiner fails to cure this deficiency in Morrison." Appeal Br. 11; Reply Br. 7-8. Appellants further conclude that "[b]ecause claims 46 - 47 depend from and therefore include all of the limitations of claim 45, ... these claims are also allowable for the same reasons." Appeal Br. 11; Reply Br. 7-8. Because we sustain the Examiner's rejection of independent claim 22, we also sustain the rejection of independent claim 45, for the reasons stated supra, and also claims 46 and 47, which depend from claim 45. DECISION The Examiner's decision to reject claims 22-28 and 32--44 under 35 U.S.C. § 102(b) is AFFIRMED. The Examiner's decision to reject claims 30, 31, and 45--47 under 35 U.S.C. § 103(a) is 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 8 Copy with citationCopy as parenthetical citation