Ex Parte Grady et al

Patent Trial and Appeal Board

Sep 8, 2014

12832466 (P.T.A.B. Sep. 8, 2014)

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.
12/832,466 07/08/2010 Mark P. GRADY JR. 10139/01828 4504
76960 7590 09/09/2014
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
EXAMINER
HAMMOND, ELLEN CHRISTINA
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
09/09/2014 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 MARK P, GRADY, JR., KEITH A. MAYO, JEFF W. MAST,
BRETT R. BOLHOFNER, and KENNY KOAY
__________

Appeal 2012-003823
Application 12/832,466
Technology Center 3700
__________

Before DONALD E. ADAMS, LORA M. GREEN, and
ULRIKE W. JENKS, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL
This is a decision on appeal1 under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 82–96 and 98–101. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellants, the application is assigned to Synthes USA, LLC,
which is a wholly owned subsidiary of Synthes, Inc. the real party in interest
(App. Br. 2).
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Application 12/832,466

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STATEMENT OF THE CASE
The Specification discloses “bone plates and systems for stabilization
and/or compression of bone fractures” (Spec. 1 ¶ 002). Claim 82 is
representative of the claims on appeal and reads as follows:
82. A bone plate, comprising:
a plate body having an upper surface and a lower surface, the plate
body including a first hole extending therethrough from the upper surface to
the lower surface, the hole including three regions separated from one
another along a length of the first hole, the first and third regions of the first
hole being non-threaded, and a second middle region of the hole between the
first and third regions including threading, wherein the first region has, in a
direction from the upper surface to the lower surface, an inward taper that is
present around an axis of the hole, and the third region is, in a direction from
the upper surface to the lower surface, tapered outward.

Issue
The Examiner has rejected claims 82–96 and 98–101 under 35 U.S.C.
§ 103(a) as obvious over the combination of Wolter2 and Fernandez.3
Claims 83–96, 98, 99, and 101 have not been argued separately from claim
82, and, therefore, stand or fall with that claim. 37 C.F.R. § 41.37(c)(1)(vii)
We thus focus our analysis on independent claim 82.
The issue presented is: Has the Examiner established by a
preponderance of the evidence that the combination of Wolter and
Fernandez would have made obvious the modification of the third region of
Wolter’s bone plate hole to include an outward taper, to thereby arrive at the
bone plate of claim 82?

2 Wolter, US 6,974,461 B1, patented Dec. 13, 2005.
3 Fernandez, US 2005/0165400 A1, published July 28, 2005.
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Findings of Fact
FF1. The Examiner finds Wolter discloses a bone plate with a body
that includes a first hole extending “from the upper surface to the lower
surface, the hole including three regions separated from one another along a
length of the first hole” (Ans. 5 (citing Wolter at Fig. 2)).
FF2. The Examiner finds that the first and third regions are non-
threaded and the second middle region includes threading (id. (citing Wolter
at col. 5, ll. 8–11)).
FF3. The Examiner finds that the third region is tapered outward in a
direction from the upper to the lower surface, i.e., discloses that “the hole
can expand conically or spherically” (id. (citing Wolter at col. 3, ll. 8–16)).
FF4. The Examiner finds that Wolter discloses that the hole “can be
shaped to enable a bone screw to be oriented obliquely to the bone plate” (id.
at 7 (citing Wolter at col. 2, ll. 21–27) (emphasis removed)).
FF5. The Examiner finds that Wolter also discloses that the hole “can
expand conically or spherically or have a portion thereof which expands
conically or spherically” (id. (citing Wolter at col. 3, ll. 8–16)).
FF6. Wolter discloses a “fixation system for bones having a force
support with . . . at least one hole which is oriented obliquely to the force
support . . . [such that] a bone screw inserted into the hole may be given an
optimal position in the bone region associated therewith” (Wolter, col. 2, ll.
15–18).
FF7. Wolter discloses that, in “addition or instead, the fixation system
may have at least one hole oriented perpendicularly to the force support, but
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particular measures . . . still enable a bone screw to be oriented obliquely”
(id. at col. 2, ll. 23–27).
FF8. Figure 2 of Wolter is shown below:

Figure 2 shows “a bone plate having a perpendicular hole and two obliquely
oriented holes at the central portion of a tubular bone in a longitudinal
section” (id. at col. 4, ll. 29–31).
FF9. Wolter discloses that “holes 14, 17, 18 have an element 21, 22,
23 to fix a bone screw, which can be configured as a deformable ridge or lip
or edge or as a preformed thread (deformable or not), in an angularly stable
fashion” (id. at col. 5, ll. 8–11).
FF10. Wolter discloses that “[i]f the element 21, 22, 23 . . . is of a
deformable design there is an additional possibility to fix the bone screws in
the holes 14, 17, 18 at different orientations with regard to the hole axes 15,
19, 20” (id. at col. 5, ll. 18–22).
FF11. Wolter discloses that “the angularly stable joints . . . can have
the deformable element or thread formed . . . in a hole which expands
conically or spherically or a portion thereof and/or at the underside of a
screw head of the bone screw which is to be inserted into the hole” (id. at
col. 3, ll. 8–12).
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FF12. Wolter discloses that “[i]f the hole has an adjoining cylindrical
portion the diameter thereof may be dimensioned such that it allows to
obliquely orient a shank of the bone screw therein” (id. at col. 3, ll. 12–15).
FF13. The Examiner finds that “Wolter does not explicitly disclose a
through hole shaped like an hourglass” (Ans. 7).
FF14. The Examiner finds that Fernandez discloses a bone plate
“comprising a through hole shaped like an hourglass . . . with a diameter that
matches that of a screw spherical head and allows for a surgeon-selected
angle, e.g., oblique, of a bone screw relative to the bone plate” (id., citing
Fernandez at Fig. 5).
FF15. The Examiner finds that the Fernandez hole includes “three
regions separated from one another along a length of the first hole, with a
second middle region . . . of the hole situated between the first and third
regions” (id. (citing Fernandez at Fig. 5)).
FF16. The Examiner finds that the first region of the Fernandez hole
has an inward taper in a direction from the upper to the lower surface (id. at
8).
FF17. The Examiner finds that the third region of the Fernandez hole
is tapered outward in a direction from the upper to the lower surface (id. at
8–9).
FF18. Fernandez discloses “a bone fixation device with [a] through
hole with an hourglass shape, made by the combination of a partial sphere
and two frustoconical holes . . . [such that a] bone screw can be inserted
through the bore hole of the fixation device at variable orientations”
(Fernandez ¶ 15).
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FF19. Fernandez discloses that the “the hourglass shape of the plate
hole 5 is mandatory in order to allow space for the screw 7 to be inserted at a
tilt” (id. at ¶ 35).
FF20. The Examiner concludes that it would have been obvious to
one having ordinary skill in the art to modify Wolter’s bone plate hole “to be
shaped like an hourglass . . . [as] taught by Fernandez, in order to enhance
the security of the plate [attachment] . . . to a bone by providing maximum
bone purchase between the bone screw and the bone” (Ans. 9).
FF21. The Examiner reasons that, if the bone plate hole “is located
very close to the fracture line[,] it may be necessary to insert a bone screw at
an oblique angle to avoid contact with the actual fracture line” (id.).
FF22. According to the Examiner, the “hourglass shaped hole
facilitates engagement between a screw head and the bone plate which
results in ‘a strong locking of the screw at a selected orientation, e.g.,
obliquely, within the hole in a single surgical action’” (id.).
Analysis
Appellants argue that “it would not have been obvious to one of
ordinary skill in the art to have modified the third region of the hole of
Wolter to have included an outward taper, as Wolter specifically teaches a
third region which is cylindrical to provide an angularly stable fixation of a
bone screw inserted therein” (App. Br. 4). Appellants argue that “Wolter
and Fernandez teach away from one another since Wolter discloses a hole
configured to provide an angularly stable fixation of a bone screw while
Fernandez discloses a variable angle hole” (id. at 5). Appellants argue that
the Wolter holes extend through the bone plate “in predetermined
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orientations so that bone screws may be inserted therein only along the axes
of the holes - i.e., the user is unable to select the angle of insertion of any
bone screw” (id., citing Wolter at col. 5, 11. 3–5). Appellants argue that the
holes “include elements . . . such as a ridge, lip or edge to provide an
angularly stable fixation of the bone screw” (id., citing Wolter at col. 5, 11.
8–11) and that “a third region which is tapered outward from the upper
surface to the lower surface would prevent a bone screw inserted through the
hole of Wolter from being fixed in an angularly stable configuration” (id.).
Appellants’ arguments are not persuasive. Wolter discloses bone
plates with both perpendicular holes and obliquely oriented holes that
facilitate optimal attachment of the bone plate to the bone (FFs 6 and 7).
Wolter discloses that the holes also have an element to fix a bone screw in
an angularly stable fashion, which may be a deformable ridge, lip, edge, or
thread such that the deformable elements allow for fixation of the bone
screws at different orientations with regard to the hole axes (FFs 9 and 10).
Thus, contrary to Appellants’ arguments, Wolter does disclose the insertion
of screws in the bone plate holes at variable angles. Further, Wolter also
discloses that an adjoining cylindrical portion, or third region of the hole,
should have a dimension that allows the oblique orientation of a shank of the
bone screw (FF 12). Fernandez discloses that hour-glass shaped holes in
bone plates are mandatory for the tilted insertion of bone screws (FF 19).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “[T]he
[obviousness] analysis need not seek out precise teachings directed to the
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specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” Id. at 418. “If a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.” Id. at 417. In
determining whether obviousness is established by combining the teachings
of the prior art, “the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.” In re Keller, 642
F.2d 413, 425 (CCPA 1981). Like our appellate reviewing court, “[w]e will
not read into a reference a teaching away from a process where no such
language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v.
C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006).
Here, Wolter discloses holes in bone plates that accommodate screws
with variable orientations and discloses that a cylindrically shaped third
region should be sized to accommodate obliquely oriented screws (see FFs
6, 7, 10, 12). Thus, it would have been obvious for one of skill in the art to
apply the Fernandez hour glass shape for bone plate holes to the Wolter bone
plate holes because Fernandez explicitly discloses that such a shape is
specifically adapted to accommodate obliquely oriented or tilted bone
screws (see FFs 18, 19). Such a modification of Wolter, in view of
Fernandez, would have been no more than the implementation of a
predictable variation.
As to claim 100, Appellants argue that the claim is not rendered
obvious by the combination of Wolter and Fernandez for the same reasons
discussed in regard to claim 82 (App. Br. 7). Those arguments are not found
to be convincing for the reasons set forth above.
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Conclusion of Law
The preponderance of the evidence supports the Examiner’s
conclusion that the combination of Wolter and Fernandez would have made
obvious the modification of the third region of the Wolter bone plate hole to
include an outward taper and thereby arrive at the bone plate of claim 82.
SUMMARY
We affirm the rejection of claims 82 and 100 under 35 U.S.C.
§ 103(a). Claims 83–96, 98 and 99 were not separately argued and fall with
claim 82. Claim 101 was not separately argued and falls with claim 100.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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