Ex Parte Haidukewych

Patent Trial and Appeal Board

Nov 17, 2016

13068397 (P.T.A.B. Nov. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/068,397 05/10/2011 George J. Haidukewych
76960 7590 11/17/2016
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.
10139/27801 (T01748US1) 7513
EXAMINER
BATES,DAVIDW
ART UNIT PAPER NUMBER
3775
MAILDATE DELIVERY MODE
11/17/2016 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 GEORGE J. HAIDUKEWYCH
Appeal2015-003016
Application 13/068,397
Technology Center 3700
Before WILLIAM A. CAPP, MICHAEL L. WOODS, and
ARTHUR M. PESLAK, Administrative Patent Judges.
WOODS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
George J. Haidukewych ("Appellant") seeks our review under
35 U.S.C. § 134(a) of the final rejection of claims 1-23. Appeal Br. 1. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2015-003016
Application 13/068,397
CLAIMED SUBJECT MATTER
Appellant's invention relates to "a fixation clamp to stabilize a bone
fracture." Spec. 2, 11. 2-3. Claims 1 and 11 are independent and claim 1 is
reproduced below with emphasis to a certain claim limitation at issue in this
appeal.
1. A fixation clamp to stabilize a bone fracture,
compnsmg:
a first arcuate clamp member defining a first concave inner
surface shaped to correspond to an exterior surface of a shaft
portion of a long bone;
a second arcuate clamp member movably coupled to the
first arcuate clamp member and defining a second concave inner
surface shaped to correspond to the exterior surface of the shaft
portion of the bone;
a biasing element biasing the first and second arcuate
clamp member away from one another to receive the bone
therebetween; and
an adjustment device moving the first and second arcuate
members toward one another to tighten the first and second
arcuate members around the shaft portion of the bone.
Appeal Br. 8 (Claims App.) (emphasis added).
THE REJECTIONS
I. Claims 1-7, 11-17, 22, and 23 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Rogers (US 2,460,470, issued Feb. 1, 1949)
and Bonvallet (US 2003/0225416 Al, published Dec. 4, 2003). Final Act. 2.
II. Claims 8-10 and 18-21 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Rogers, Bonvallet, and Judet (US 4,263,904, issued
Apr. 28, 1981 ). Final Act. 6.
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Application 13/068,397
ANALYSIS
Rejection I: Claims 1-7, 11-17, 22, and 23 as
Unpatentable over Rogers and Bonvallet
Appellant contests the rejection of claims 1-7, 11-17, 22, and 23
collectively as a group. See Appeal Br. 6. In accordance with 37 C.F.R.
§ 41.37(c)(l)(iv), we select claim 1 as the representative claim to decide the
appeal of the rejection, with claims 2-7, 11-17, 22, and 23 standing or
falling with claim 1.
In rejecting claim 1, the Examiner relies on Rogers' forceps as
satisfying the claimed "fixation clamp," comprising, inter alia, "first arcuate
clamp member" 10 defining a "first concave inner surface" 22 shaped to
correspond to an exterior surface of a bone, and "second arcuate clamp
member" 11 defining a "second concave inner surface" 24 also shaped to
correspond to an exterior surface of a bone. Final Act. 2-3 (citing Rogers,
Fig. 1). To illustrate these findings, we reproduce Rogers' Figure 1, below:
As disclosed by Rogers, Figure 1 depicts "pliers-like forceps"
including handles 7, 8 pivotally connected at 9 and terminating at clamping
jaws 10, 11, which are "arcuately curved to conform to the bone structure"
22, 24. See Rogers; col. 2, 11. 21-25, 44--48, col. 3, 11. 7-14. As explained
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by the Examiner, "[w]ere the handles of Rogers biased apart, the clamp
members would be biased away from one another." Final Act. 3.
The Examiner also finds, however, that Rogers does not disclose the
claimed biasing element, and instead relies on Bonvallet's disclosure of a
"biasing element" 242 for biasing the handles apart. Final Act. 3 (citing
Bonvallet, Fig. 18). To illustrate this finding, we reproduce Bonvallet's
Figure 18, below:
including spring member 242 extending between handles 222, 224, where
spring member 242 biases handles 222, 224 away from another so that
spreader assembly 290 "is biased to a normally closed position." Bonvallet
ii 99.
Notably, spreading Bonvallet's handles 222, 224 apart closes the
spreader assembly, whereas spreading Rogers' handles 7, 8 apart opens
clamping jaws 10, 11.
In satisfying the claimed biasing member, the Examiner reasons that
It would have been obvious to one with ordinary skill in
the art at the time of the invention to substitute the adjustment
device and biasing member of Bonvallet for the adjustment
means 12 of Rogers. One would have done so to provide
[Rogers'] handles in an open position for the surgeon, which
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can be adjustably moved to provide a grip about the bone
portions. The biasing member would take up any slack in the
tool prior to the clamp portions being passed about the bone
portions.
Final Act. 3. The Examiner further explains that "[ t ]he combination was
being made such that the holding end of [Rogers'] handles would be biased
apart ... [and] that this would make the Rogers clamp prepared for the
surgeon's use without his needing to open the handles prior to use." Adv.
Act. 2.
In contesting the rejection, Appellant presents several arguments,
which we address separately, below.
First, Appellant argues that neither Rogers nor Bonvallet "show or
suggest a biasing element biasing 'first and second arcuate clamp member
away from one another to receive the bone there between,"' as recited in the
claim. Appeal Br. 4. Appellant asserts that Bonvallet instead discloses a
biasing member (spring member 242) that "biases hands 222, 224 away
from one another so that the spreader assembly 290 of spreader instrument
220 is biased to a normally closed position," which is contrary to the explicit
claim language. Id. (citing Bonvallet i-f 99).
Appellant's first argument is not persuasive, as nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
In the present case, the Examiner does not rely on either Rogers or
Bonvallet for individually disclosing a biasing element for biasing clamps
away from one another, as called for in the claim. Final Act. 3. Instead, the
Examiner admits that Rogers does not disclose a biasing element (id.) and
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further acknowledges that Bonvallet's spring biases the clamps to a
normally-closed position (Adv. Act. 2 ("[ w ]hile it may be true when viewing
Bonvallet on its own that the bias causes the working end to be closed ... ").
Importantly, the Examiner explains that "[ w ]ere the handles of Rogers
biased apart, the clamp members would be biased away from one another."
Final Act. 3. The Examiner's finding with respect to Rogers is correct.
Unlike in Bonvallet-where spreading handles 222, 224 apart spreads its
clamp members away from one another (see, e.g., Bonvallet i-f 99}-the
operation of Rogers' forceps is just the opposite. In particular, in Rogers, as
handles 7, 8 are spread apart, jaws 10, 11 are also spread apart. See, e.g.,
Rogers, Figs. 1, 4. To achieve these differing operations, Bonvallet's
instrument relies on multiple pivoting pins and articulations, while Rogers'
instrument relies on a single pin and single articulation. Compare Bonvallet,
Figs. 18, 19, with Rogers, Figs. 1, 4. Accordingly, adding Bonvallet's spring
to Rogers' forceps such that Rogers' handles are biased apart, as the
Examiner proposes, would satisfy the claimed limitation of a "biasing
element biasing the first and second arcuate clamp member away from one
another to receive the bone there between."
Second, Appellant also argues the Examiner's combination is based
on impermissible hindsight, as Rogers' device already has retaining nut 14
and retaining screw 12 to move clamping jaws 10, 11 to a desired position,
and that adding a biasing element would "provide no additional
functionality." Appeal Br. 5 (citations omitted). Appellant again points out
that Bonvallet biases the instrument in "a normally closed position," and that
there is no reason for providing Rogers' device, which already has an
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adjustment mechanism (i.e., retaining nut 14) with Bonvallet's biasing
element. Reply Br. 4.
Appellant's second argument is not persuasive, as Appellant's
hindsight argument is of no moment where, as here, the Examiner provided
a sufficient, non-hindsight reason to combine the references. See In re Cree,
818 F.3d 694, 702, n.3 (Fed. Cir. 2016).
In the present case, the Examiner explains that combining Bonvallet's
spring to Rogers' device-so that Rogers' handles are biased apart-"would
make []Rogers clamp prepared for the surgeon's use without his needing to
open the handles prior to use." Adv. Act. 2; see also Final Act. 3. Here, the
Examiner's reasoning is adequately articulated with rational underpinnings.
Furthermore, we disagree with Appellant's assertion that the proposed
modification "would provide no additional functionality" simply because of
the presence of Rogers' retaining nut 14 and retaining screw 12. See Appeal
Br. 4--5. Rather, and as explained correctly by the Examiner, Rogers'
retaining screw 12 and retaining nut 14 only limit "how wide the tool is
capable of opening" and that "the surgeon [still] has to manually open[]
Rogers tool prior to attachment to the bone." Ans. 8. Accordingly, the
additional functionality that the Examiner's modification provides will allow
a surgeon to use the forceps in a biased-to-open position, which is an
improvement over Rogers' unbiased tool. See id. at 7 ("the proposed
modification took Rogers' tool and improved upon it by providing the tool
to the surgeon in a biased-to-open position.").
Accordingly, we sustain the rejection of claim 1, and claims 2-7,
11-17, 22, and 23, which fall with claim 1, under 35 U.S.C. § 103(a) as
unpatentable over Rogers and Bonvallet.
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Rejection II: Claims 8-10 and 18-21 as
Unpatentable over Rogers, Bonvallet, and Judet
In contesting this rejection, Appellant relies only on the same
arguments discussed supra with respect to Rejection I. See Appeal Br. 6-7.
For the same reasons we sustain Rejection I, we also sustain the
rejections of claims 8-10 and 18-21under35 U.S.C. § 103(a) as
unpatentable over Rogers, Bonvallet, and Judet.
SUMMARY
The rejection of claims 1-7, 11-17, 22, and 23 under 35 U.S.C.
§ 103(a) as unpatentable over Rogers and Bonvallet is affirmed.
The rejection of claims 8-10 and 18-21under35 U.S.C. §103(a) as
unpatentable over Rogers, Bonvallet, and Judet 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)(l )(iv).
AFFIRMED
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