Ex Parte Galm et al

Patent Trial and Appeal Board

Feb 26, 2016

12952756 (P.T.A.B. Feb. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/952,756 11/23/2010 Andre Galm
76960 7590 02/26/2016
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.
10139/20602 (T00728US1) 2294
EXAMINER
SEVILLA, CHRISTIAN ANTHONY
ART UNIT PAPER NUMBER
3775
MAILDATE DELIVERY MODE
02/26/2016 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
Exparte ANDRE GALM, MARTIN LANGER, DIRKKERSTAN, and
CHRISTOF DUTOIT
Appeal2014-001650
Application 12/952,756
Technology Center 3700
Before WILLIAM A. CAPP, GEORGE R. HOSKINS, and
BRANDON J. WARNER, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Andre Galm et al. ("Appellants") 1 appeal under 35 U.S.C. § 134 from
the Examiner's decision rejecting claims 1-8, 11-16, 18-20, 23, and 24 in
this application. The Board has jurisdiction over the appeal under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART.
1 The Appeal Brief identifies Synthes USA, LLC, a wholly owned
subsidiary of Synthes, Inc., as the real party in interest. Appeal Br. 2. It
further identifies Johnson & Johnson, Inc. as the parent corporation of
Synthes, Inc. Id.
Appeal2014-001650
Application 12/952,756
CLAIMED SUBJECT MATTER
Claims 1 and 18 are independent. Claim 1 illustrates the subject
matter on appeal:
1. A bone fixation plate, comprising:
a plate body extending from a first end to a second end,
the first end being configured and dimensioned for placement
over a shaft of a bone, the second end being configured and
dimensioned for placement over an epiphysis of the bone, an
outer width of the plate body increasing from the first end to the
second end to substantially conform to dimensions of the bone;
an opening extending through the plate from a first surface
which, when the plate is mounted on the target bone in a desired
orientation, faces away from the bone to a second surface, which
when in the desired orientation, faces the bone, the opening being
positioned so that, when the plate is mounted over a target
portion of the bone, a fracture of the bone is visible therethrough
to aid in alignment of the bone plate, wherein a first side and a
second side of the opening extend parallel to respective lateral
sides of the plate body from a distal end of the opening to a
proximal end of the opening; and
first and second holes extending through the plate from the
first surface to the second surface, each of the first and second
holes being structured to lockingly engage a threaded head of a
bone fixation device inserted thereinto.
Appeal Br. 14 (Claims App.).
REJECTIONS ON APPEAL
Claims 1-8 and 11-16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Vasta (US 2008/0140127 Al, pub. June 12, 2008),
Ralph (US 2007/0123881 Al, pub. May 31, 2007), and Hawkes
(US 2006/0235405 Al, pub. Oct. 19, 2006).
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Appeal2014-001650
Application 12/952,756
Claims 18-20, 23, and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Huebner (US 2004/0102788 Al, pub. May 27, 2004) and
Wagner (US 6,719,759 B2, iss. Apr. 13, 2004).
ANALYSIS
A. Obviousness based on Vasta, Ralph, and Hawkes
(claims 1--8 and 11-16)
Claims 1--8and13-16
Appellants argue for the patentability of claims 1-8 and 13-16
together as a group. Appeal Br. 5-8. We select claim 1 as the representative
claim for our decision. See 37 C.F.R. § 41.37(c)(l)(iv).
In rejecting claim 1 as unpatentable over Vasta, Ralph, and Hawkes,
the Examiner finds Vasta discloses a bone plate 10 having an opening 70.
Final Act. 2-3; see, e.g., Vasta, Fig. 1. The Examiner finds Vasta fails to
disclose opening 70 either (a) is positioned so a bone fracture is visible
through the opening to aid in alignment of the plate, or (b) has first and
second sides extending parallel to respective lateral sides of plate 10. Final
Act. 3. The Examiner determines Ralph discloses a bone plate 2, 3, 4, 5
having an opening 79 positioned so a bone fracture is visible through the
opening to aid in alignment of the plate, and it would have been obvious to
use Vasta's opening 70 in a similar manner "in order to facilitate positioning
bone portions." Id.; see, e.g., Ralph, Fig. 7, i-fi-17, 36, 52, 54. The Examiner
further determines Hawkes discloses a bone plate 110 having a cut-out 310
with left and right sides that are parallel, respectively, to left and right sides
of plate 110, and it would have been obvious to modify Vasta's opening 70
to have such a structure "in order to facilitate access to tissue behind"
Vasta's plate 10. Final Act. 3--4; see, e.g., Hawkes, Fig. 8A, i135.
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Application 12/952,756
Appellants argue it would not have been obvious to have modified
Vasta's opening 70 to have the claimed parallel sides because Vasta has
mounting screw holes 33 on either side of hourglass-shaped opening 70.
Appeal Br. 6-7; Reply Br. 3--4. According to Appellants, "Vasta teaches
that the mounting screw holes 33 are necessary to allow the plate 10 to
address a wider range of fracture locations," and allow for fixation and
support of more proximal fractures. Appeal Br. 6 (emphasis added) (citing
Vasta i-f 39); Reply Br. 3--4. In Appellants' view, modifying Vasta's
opening 70 to include the claimed parallel sides would require removal of
mounting screw holes 33, thereby removing desired advantages of Vasta's
plate 10. Appeal Br. 6-7; Reply Br. 3--4.
These arguments are not persuasive. We agree with the Examiner's
finding that Vasta does not disclose the specific orientation of mounting
screw holes 33 and opening 70 shown in Vasta's Figure 1 is "necessary," as
Appellants assert. Final Act. 9 ("Vasta does not disclose an hourglass shape
[of opening 70] is the only shape that accommodates screw holes (33).");
Adv. Act. 2 ("Removal of the mounting screws 33 is not required when
making sides of cavity 70 parallel."); Ans. 9-10. The Examiner's finding is
supported by Vasta's repeated description that mounting screw holes 33
"may" provide for more secure attachment of plate 10 to bone, and/ or
fixation to more proximal fractures. Vasta i-f 39. We further agree with the
Examiner's determination that, assuming arguendo that mounting holes 33
would need to be removed to modify opening 70 to have the claimed parallel
sides, a person of ordinary skill in the art would appreciate plate 10 would
still have several other mounting holes 31, 51, 52, 53, 54 to mount plate 10
to a bone, and still have the benefit of tissue access provided by the parallel
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Application 12/952,756
sides. Ans. 9; see, e.g., Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165
(Fed. Cir. 2006) ("[A] given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate
motivation to combine.").
Appellants further argue "it is not clear how the openings shown in
Ralph and Hawkes would be incorporated into" Vasta's plate 10. Appeal
Br. 7-8; Reply Br. 4--5. In particular, Appellants note the respective
openings of Ralph and Hawkes are both defined by bone plate portions that
are movable relative to one another. Appeal Br. 7. Appellants contend
modifying Vasta' s bone plate 10 to be composed of moveable portions as in
Ralph and Hawkes would require substantial changes to plate 10, so Vasta
would no longer be suitable for its intended purpose of fixating fractures in
the distal volar radius. Id. According to Appellants, a person of ordinary
skill in the art would not have looked to Ralph and Hawkes to modify an
opening such as Vasta's that does not include moveable parts, to address a
problem not addressed by either Ralph or Hawkes. Id. Appellants further
assert incorporating any features of Ralph's or Hawkes' s openings requires
incorporation of the movable plate portions. Id. at 7-8; Reply Br. 4--5.
We are not persuaded by Appellants' arguments that modifying
Vasta's opening 70 so that a bone fracture is visible through the opening to
aid in alignment of the plate, and to have the claimed parallel sides to
facilitate access to tissue behind the plate, requires the use of moveable plate
portions. Appellants do not cite any evidence in support of this proposition.
Moreover, the test for obviousness is not whether the features of a secondary
reference (i.e. moveable plates defining an opening) may be bodily
incorporated into the structure of the primary reference, but rather what the
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Application 12/952,756
combined teachings of those references would have suggested to a person of
ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). The
Examiner relies on Ralph and Hawkes for disclosing different uses of an
opening in a bone plate, and opening shapes related thereto, and sets forth
reasons why such uses and shapes would be beneficial in the use of Vasta's
opening 70. See Final Act. 3--4; Adv. Act. 2; Ans. 10. Appellants have not
apprised us of error in these determinations.
For the foregoing reasons, we sustain the rejection of claims 1-8 and
13-16 as unpatentable over Vasta, Ralph, and Hawkes.
Claim 11
Claim 11 depends from claim 1, to add "a variable angle compression
hole ... comprising a first compression opening adjacent and open to a
second compression opening." Appeal Br. 16 (Claims App.). The Examiner
finds Vasta's slot 32 corresponds to the claimed compression hole. Final
Act. 5; see, e.g., Vasta, Fig. 1, i138. According to the Examiner, "[s]lot 32 is
capable of receiving a bone screw at multiple angles," and a recitation of an
intended use of the claimed invention must result in a structural difference
from the prior art to patentably distinguish the claimed invention. Adv.
Act. 2; Ans. 10. Further according to the Examiner, Vasta's slot 32
comprises first and second compression openings that are adjacent and open
to each other. Final Act. 5 (providing annotations to Vasta Figure 1 to
identify the openings).
Appellants argue the Examiner errs in finding Vasta's slot 32 is
configured to receive a bone screw at a variable angle. Appeal Br. 8-9;
Reply Br. 5---6. Vasta describes slot 32 as functioning to allow longitudinal
movement of plate 10 with respect to the shaft of a mounting screw disposed
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Appeal2014-001650
Application 12/952,756
in slot 32, and Appellants contend insertion of a screw into slot 32 "at an
angle relative to a central axis thereof' would impede such movement.
Appeal Br. 8-9 (citing Vasta i-f 38). Further according to Appellants, Vasta's
slot 32 does not comprise two openings adjacent and open to one another,
but rather is "a single hole or slot." Id. at 9.
We are not persuaded of Examiner error. It is apparent from the
elongated nature and beveled side walls of Vasta's slot 32, as illustrated in
Figures 1 and 3a, that slot 32 is capable of receiving a screw at variable
angles. Indeed, the structure of Vasta's slot 32 is substantially identical to
the structure of non-threaded portion 128 of Appellants' hole 126, which is
described as capable of receiving a screw at variable angles. Spec. i-fi-1 10,
12; Appellants' Figs. 1-2. In particular, a screw could pass through Vasta's
slot 32 at variable angles, with the axis of the screw remaining within the
plane that bifurcates the symmetrical left and right portions of plate 10, as
viewed in Figure 1, without impeding longitudinal movement of plate 10.
Appellants' contention that insertion of a screw into slot 32 "at an angle
relative to a central axis thereof' would impede longitudinal movement of
plate 10 is not persuasive because it is not commensurate in scope with
claim 11. Claim 11 does not specify that the variable angles are relative to a
central axis.
As to the claimed first and second "openings" that are "adjacent and
open to" each other, we agree with the Examiner's finding that Vasta's
slot 32 has such openings. Final Act. 5; Ans. 10. Claim 11 does not specify
any structure that separates the recited first and second openings. Vasta's
elongated slot 32 can receive a screw at many positions within slot 32,
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Appeal2014-001650
Application 12/952,756
which, under a broadest reasonable construction, each comprise a different
"opening" that are open and adjacent to another "opening."
For the foregoing reasons, we sustain the rejection of claim 11 as
unpatentable over Vasta, Ralph, and Hawkes.
Claim 12
Claim 12 depends from claim 11, to add "the first compression
opening is substantially circular and the second compression opening is
substantially oval." Appeal Br. 16 (Claims App.). The Examiner finds
Vasta's slot 32 has such openings. Final Act. 5 (providing annotations to
Vasta Figure 1 to identify the openings). The Examiner further relies on the
breadth afforded by the term "substantially" in claim 12. Ans. 11.
Appellants argue the Examiner errs because Vasta' s slot 32 "is formed
via a single oval opening," not one circular opening and one oval opening.
Appeal Br. 10; Reply Br. 7.
We are persuaded of Examiner error. We appreciate that the term
"substantially" permits some deviation from a purely circular or a purely
oval opening, but even so, the first opening identified by the Examiner is not
substantially circular. See Final Act. 5. Rather, the identified first opening
is defined by a semi-circular wall in a top portion, with two straight walls
extending therefrom to form a bottom portion. Therefore, we do not sustain
the rejection of claim 12 as unpatentable over Vasta, Ralph, and Hawkes.
B. Obviousness based on Huebner and Wagner
(claims 18-20, 23, and 24)
In rejecting claim 18 as unpatentable over Huebner and Wagner, the
Examiner finds Huebner discloses a bone plate 52 having an opening 140.
Final Act. 6-7; see, e.g., Huebner, Fig. 6. The Examiner finds Huebner fails
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Application 12/952,756
to disclose opening 140 is positioned so a bone fracture is visible through the
opening to aid in alignment of the plate. Final Act. 7. The Examiner finds
Wagner discloses a bone plate 1, 2 having an opening 4A with a width DQ of
3 mm and a length DL of 5.2 mm, defining a square 3x3 mm passage. Final
Act. 8 (citing Wagner, Fig. 1, 4:38--40, 4:51-54). The Examiner determines
it would have been obvious to apply Wagner's teachings to Huebner "in
order to facilitate receiving a fastener." Id. Further according to the
Examiner, "an aperture including a 3 mm by 3 mm void would be capable of
permitting visualizing a fracture," for example a fracture of about I mm.
Adv. Act. 2; Ans. 11.
Appellants argue "Wagner does not show or suggest any opening
through which a fracture would be visible." Appeal Br. 12; Reply Br. 9.
Appellants note Wagner's elongated hole 4A is described as a hole for
receiving a bone screw, and contend Wagner does not disclose or suggest
hole 4A would in any way provide visualization of a fracture therethrough.
Appeal Br. 12 (citing Wagner, 4:38--40). Appellants submit a 3x3 mm hole
would not provide sufficient visualization to aid in alignment of the bone
plate, as required by claim 18. Appeal Br. 12; Reply Br. 9.
We agree with Appellants that a preponderance of the evidence does
not support the Examiner's finding that a bone surgeon would be capable of
looking through a 3x3 mm screw hole in a bone plate to view a bone fracture
to aid in alignment of the bone plate. Such an opening is too small to
perform the recited function. Even assuming a surgeon could (somehow)
see a bone fracture through a 3x3 mm screw hole, the claim further requires
such sighting is "to aid in alignment of the bone plate," which is not
established on the record before us. We, therefore, determine the Examiner
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Application 12/952,756
errs in finding Wagner's opening 4A is positioned so that a bone fracture is
visible therethrough to aid in alignment of the bone plate, as required by
claim 18. Claims 19, 20, 23, and 24 directly or indirectly depend from
claim 18, and the rejection of these claims does not cure the deficiency as to
claim 18. Final Act. 8-9. Therefore, we do not sustain the rejection of
claims 18-20, 23, and 24 as unpatentable over Huebner and Wagner.
DECISION
The rejection of claims 1-8 and 11-16 as unpatentable over Vasta,
Ralph, and Hawkes is affirmed as to claims 1-8, 11, and 13-16, and
reversed as to claim 12.
The rejection of claims 18-20, 23, and 24 as unpatentable over
Huebner and Wagner is 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)(l )(iv).
AFFIRMED-IN-PART
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