Ex Parte Hartdegen et al

Patent Trials and Appeals Board

Aug 5, 2013

10940396 - (D) (P.T.A.B. Aug. 5, 2013)

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.
10/940,396 09/14/2004 Vernon R. Hartdegen E3383-00135 (702.192.01) 6375
8933 7590 08/06/2013
DUANE MORRIS LLP - Philadelphia
IP DEPARTMENT
30 SOUTH 17TH STREET
PHILADELPHIA, PA 19103-4196
EXAMINER
SCHAPER, MICHAEL T
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
08/06/2013 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 VERNON R. HARTDEGEN, KEVIN WONG, and
ROBERT M. FENCL
____________

Appeal 2011-010492
Application 10/940,396
Technology Center 3700
____________

Before ERIC GRIMES, MELANIE L. McCOLLUM, and
ULRIKE W. JENKS, Administrative Patent Judges.

JENKS, Administrative Patent Judge

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
and device for moving two adjacent bone pieces together to reduce a
fracture. The Examiner has rejected the claims for obviousness. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appeal 2011-010492
Application 10/940,396

2
STATEMENT OF THE CASE
The Specification is directed to reducing fractures with a compression
brace having two fastener retaining portions with a hole to receive a fastener
as well as a pair of bridge members that are attached between the retaining
portions. The fasteners that secure the compression brace to the bone have a
lengthwise shaft sized to pass through the fastener hole and an upper portion
that is sized to fit into the hole of the brace (Spec. 4).
Claims 16-18 and 23-33 on appeal, and can be found in the Claims
Appendix of the Appeal Brief (App. Br. 21-24). Claim 16 is illustrative of
the claims on appeal, and reads as follows:
16. A surgical device for pressing and retaining adjacent bones
against one another, such as to reduce a fracture, comprising:
a compression brace,
said compression brace having at least two fastener retaining
portions, each said fastener retaining portion having a fastener hole
therethrough for receiving a fastener, said fastener hole having an
internal thread,
a pair of bridge members positioned between and extending
from surfaces of said fastener retaining portions, said bridge members
spaced apart from one another to thereby form a compression opening
between said fastener retaining portions, and
at least two fasteners, each said fastener having a lengthwise
shaft sized to pass through said fastener hole and a head portion sized
and configured to retain said fastener in said fastener hole, an upper
thread on said shaft adjacent said head of said fastener for engaging
said internal thread in said fastener hole to thereby maintain said
fastener in a substantially fixed relation to said fastener retaining
portion, and a lower thread for engaging bone.

Appeal 2011-010492
Application 10/940,396

3
The Examiner has rejected the claims as follows:
I. claims 16, 17, 20, 21, 23-25, and 33, under 35 U.S.C. § 103(a)
as unpatentable over Nicola1 and Harris;2
II. claim 18 under 35 U.S.C. § 103(a) as unpatentable over Nicola
and Harris in further view Leung;3
III. claims 16 and 26-32, under 35 U.S.C. § 103(a) as unpatentable
over Groiso4 and Harris.

I. The Issue: Obviousness over Nicola and Harris
The Examiner takes the position that:
Nicola discloses the claimed invention except for the fastener
hole having an internal thread; an upper thread on said shaft
adjacent said head of said fastener for engaging said internal
thread in said fastener hole to thereby maintain said fastener in
a substantially fixed relation to said fastener retaining portion,
i.e. a locking means.
(Ans. 4-5.) The Examiner finds that Harris discloses a locking screw
mechanism for orthopedic applications (id. at 5-6). The Examiner concludes
that it would have been obvious for one of ordinary skill in the art “to have
modified the device of Nicola with a bone plate system wherein the
fastener hole has an internal thread . . . in view of Harris for locking the
screw into the fastener for backout prevention and maintaining the fastener's
angle with respect to the plate” (id. at 6).

1 Toufick Nicola, US 2,580,821, issued Jan. 1, 1952.
2 Peter M. Harris, US 2003/0153919 Al, published Aug. 14, 2003.
3 Takkwong Ross Leung et al., US 2005/0277937 Al, published Dec. 15,
2005.
4 Jorge A. Groiso, US 5,947,999, issued Sep. 7, 1999.
App
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Appeal 2011-010492
Application 10/940,396

7
FF 6. Harris disclosed that the benefit of a locking screw is improved
pull out strength:
One problem that may be encountered with implants that
are fastened to the bone using a screw is that there may be too
much play between the screw and the implant, or that the screw
may back out of the implant. . . . Locking mechanisms help to
ensure that the screw does not back out of the plate. If a screw
backs out of an implant depending on the placement there may
be a risk that it may project beyond the top surface of the
implant into a sensitive biological area.
(Harris 1: ¶ 0004.)

Principle of Law
“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). As expressly
recognized in KSR, any art recognized need or problem can provide a reason
for combining claim elements. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007).

Analysis
Appellants contend that “Nicola does not teach or suggest a surgical
device including at least two fastener retaining portions each of which
includes an internally threaded fastener hole or a pair of spaced apart bridge
members positioned between and extending from surfaces of said fastener
retaining portions.” (App. Br. 7.)
We are not persuaded. Claim 16 requires “a pair of bridge members
positioned between and extending from surfaces of said fastener retaining
Appeal 2011-010492
Application 10/940,396

8
portions, said bridge members spaced apart from one another to thereby
form a compression opening between said fastener retaining portions.” The
Examiner interprets that the claim allows the bridge members to contain a
spacer (Ans. 10). See In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989)
(“[D]uring patent prosecution when claims can be amended, ambiguities
should be recognized, scope and breadth of language explored, and
clarification imposed.”). The Examiner finds that Nicola’s bone fastening
device provides “two bridge members, and are spaced apart by ref. no. 3.”
(Ans. 10; see also FFs 1, 2.) We find the Examiner’s interpretation of the
claim limitation reasonable. We agree with the Examiner that the claim, as
presented, does not specify that the bridge member cannot be held apart by a
spacer as shown in Nicola’s figures (FFs 1, 2).
Appellants contend that there is no motivation to combine the
references because:
[I]t is not advantageous to thread the openings since it fixes the
relative angle between the screw and the plate. Consequently,
threading openings in bone plates limits the ability of a surgeon
during surgery to account for different bone sizes, bone quality
(an important factor in screw fixation), bone morphology,
fracture size, and the number of bone fragments.
(App. Br. 8.)
We are not persuaded. We agree with the Examiner’s conclusion that
it would have been obvious for one of ordinary skill in the art “to have
modified the device of Nicola with a bone plate system wherein the fastener
hole has an internal thread . . . in view of Harris for locking the screw into
the fastener for backout prevention and maintaining the fastener's angle with
respect to the plate.” (Ans. 6.)
Appeal 2011-010492
Application 10/940,396

9
“[O]bviousness must be determined in light of all the
facts, and there is no rule that a single reference that teaches
away will mandate a finding of nonobviousness. Likewise, a
given course of action often has simultaneous advantages and
disadvantages, and this does not necessarily obviate motivation
to combine. See [Winner Int'l Royalty Corp. v. Wang, 202 F.3d
1340,] 1349 n. 8 [(Fed.Cir.2000)] (“The fact that the motivating
benefit comes at the expense of another benefit, however,
should not nullify its use as a basis to modify the disclosure of
one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one
another.”).
Medichem, S.A. v. Rolabo, S.A., 437 F.3d 1157, 1165 (Fed. Cir. 2006).
Nicola disclosed attaching the bone plate, an orthopedic implant, with
screws (FF 2), while Harris also disclosed attaching orthopedic implants
with screws, specifically, locking screws (FF 3). In addition, Harris
expressly recognizes that a “locking mechanism helps ensure that the screw
does not back out of the plate” (FF 6). Thus, Harris provides motivation to
use locking screws in an orthopedic implant. We agree with the Examiner’s
conclusion that based on Harris it would have been obvious to substitute
locking screws for the regular screws used in Nicola’s bone plate system.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Appellants contend that “Harris explicitly teaches that screw 20
includes a single continuous thread 50, i.e., not first (upper) and second
(lower) threads as disclosed in claim 16.” (App. Br. 8.)
We are not persuaded. The Examiner “notes that the claim language
does not state that the threads need to be separate and distinct from each
other.” (Ans. 10.) Even though Harris may use a single continuous screw
thread the screw, nevertheless, has “two regions or sections 52, 54 along the
longitudinal length of the screw that have differing thread configurations.”
Appeal 2011-010492
Application 10/940,396

10
(FF 5.) “The first area 52 is a bone engaging area which has a buttress
configuration known in the art as a cancellous thread.” (Harris 3: ¶ 0021.)
“The second area of threads 54 forms a locking area that preferably extends
over a length that generally corresponds to the length of the mating threads
or female threads 14 within the through bore 13.” (Id. at ¶ 0022.) Harris
thereby provides that the screw threads have two separate engagements.
“[T]he thread runs out to an insertion tip 56 which further may include one
or more flutes 58 so that the screw is self-tapping. In addition, the thread
runs to the distil [sic] end having the head 18.” (Harris 2: ¶ 0020; Ans. 5;
see also FF 4.)
We conclude that the Examiner has met the burden of presenting a
prima facie case based on the combination of Nicola and Harris. Because
the Examiner presents a prima facie case of obviousness, we consider
whether Appellants submit sufficient evidence or argument in rebuttal. In re
Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993). Evidence rebutting a prima
face case of obviousness may include “[e]vidence of unexpected results.”
Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1369 (Fed. Cir. 2007). “For
objective [evidence of secondary considerations] to be accorded substantial
weight, its proponent must establish a nexus between the evidence and the
merits of the claimed invention.” Wyers v. Master Lock Co., 616 F.3d 1231,
1246 (Fed. Cir. 2010) (quoting In re GPAC Inc., 57 F.3d 1573, 1580 (Fed.
Cir. 1995), emphasis and bracketed material added by the Wyers court).
Appellants contend that their showing of (1) unexpected results (App.
Br. 9-10), (2) commercial success (id. at 10-12), and (3) copying by others
(id. at 12-16) are sufficient to overcome a conclusion of obviousness.
Appeal 2011-010492
Application 10/940,396

11
Appellants argue that improved bending stiffness of their product is
unexpected. Specifically, that the “CLAW® compression plate has a
bending stiffness of about 15.8 N/mm, which is considerably higher than the
bending stiffness of Applicant's own CHARLOTTETM compression staple
(about 11.5 N/mm).” (App. Br. 9; see also McCombs-15 Declaration ¶4.)
We are not persuaded that the McCombs-1 Declaration provides
evidence of unexpected results sufficient to overcome the prima facie case
even though it provides that Appellants’ commercial product with the
locking screws has a higher bending stiffness than their commercial staple
product (McCombs-1 Declaration ¶4). “One way for a patent applicant to
rebut a prima facie case of obviousness is to make a showing of ‘unexpected
results,’ i.e., to show that the claimed invention exhibits some superior
property or advantage that a person of ordinary skill in the relevant art would
have found surprising or unexpected.” In re Soni, 54 F.3d 746, 750 (Fed.
Cir. 1995). The Examiner finds that “Appellant has failed to show that the
assumedly unexpected results of the claimed invention has a significance
equal to or greater than the expected properties of invention.” (Ans. 11.)
Appellants acknowledge that “it was expected that the use of screws rather
than fixed legs would provide greater pull out strength, and this proved to be
the case. . . . However, higher bending strength and stiffness was not one of
the expected advantages of the new design. . . . Applicant expected that the
plates would have about the same bending strength and stiffness as unibody
compression staples.” (App. Br. 9-10.) Here the expected properties as

5 McCombs Declaration, signed October 24, 2007 (McCombs-1),
referencing Exhibits B-G.
Appeal 2011-010492
Application 10/940,396

12
acknowledged by Appellants, and recognized by the prior art would be
improving pull out strength (App. Br. 9-10; FF 6).
What is missing from the Declaration is an analysis showing that the
improved bending stiffness is the result of the features of the claimed
invention (locking screws in combination with a compression brace having
fastener retaining portions connected by bridge members) rather than, for
example, the plate’s shape or dimensions, or the composition from which it
is made. There has to be a nexus between the unexpected property and the
claimed invention. See In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011)
(“Where the offered secondary consideration actually results from
something other than what is both claimed and novel in the claim, there is no
nexus to the merits of the claimed invention.”).
In addition, “when unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.” In re Baxter-Travenol Labs., 952 F.2d 388, 392, 21
USPQ2d 1281, 1285 (Fed. Cir. 1991). Appellants assert that the claimed
invention showed unexpectedly higher bending strength in comparison to
their own CHARLOTTETM compression staple, but the McCombs-1
Declaration does not provide a description of that product that would allow a
determination of whether it is closer to the instantly claimed product than the
product described by Nicola. Appellants therefore have not shown that their
allegedly unexpected results were obtained in a comparison to the closest
prior art.
Appellants argue that the McCombs-1 and -2 Declarations show
commercial success of the commercialized CLAW® plates (App. Br. 11;
Appeal 2011-010492
Application 10/940,396

13
McCombs-1 and McCombs-26 Declarations). Specifically, Appellants
contend that the “CLAW® plates continued to outsell Applicant's
CHARLOTTE™ compression staples despite having an average sales price
that is approximately three (3) times the sales price of the CHARLOTTE™
compression staples.” (Id.)
We are not persuaded that either the McCombs-1 or -2 Declarations
provides evidence of commercial success that outweighs the evidence
supporting the Examiner’s rejection. The Declarations show an increasing
sales trend for the CLAW® plates (McCombs-1, Exhibit C; McCombs-2,
Exhibit A) in comparison to the CHARLOTTE™ compression staples. The
Examiner finds that “Appellant has failed to show that the commercial
success of the claimed invention is not a result in a shift in advertising,
especially since the CHARLOTTETM staple is marketed to allegedly be less
effective than the CHARLOTTETM CLAWTM plate, as seen in Exhibit B.”
(Ans. 11.) What is missing from the Declarations is a nexus showing that
the increasing sales are a result of the features of the claimed invention and
not just due to the effort of advertisements. Commercial success is relevant
in the obviousness context only if it is established that the sales were a direct
result of the unique characteristics of the claimed invention, as opposed to
other economic and commercial factors unrelated to the quality of the
claimed subject matter. In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996),
citing Cable Elec. Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1026-
1027 (Fed. Cir. 1985). In other words, a nexus is required between the sales
and the merit of the claimed invention, and no such nexuses has been shown
by Appellants.

6 McCombs Declaration, signed June 22, 2010 (McCombs-2).
Appeal 2011-010492
Application 10/940,396

14
Appellants argue that the McCombs-1 Declaration shows copying of
the CLAW® plates. (App. Br. 12-15.) Specifically, that “[b]etween about
May 2005 - July 2007, there were no other devices like the CLAW®
compression plate on the market” until July 12, 20077 when Integra received
FDA approval for their Uni-CP™ plating system. (App. Br. 11-12.)
Appellants point out that:
[T]he UNI-CpTM plate includes a compression brace having at
least two fastener retaining portions, each said fastener
retaining portion having a fastener hole therethrough for
receiving a fastener, said fastener hole having an internal thread
[Surfix Locking Technology includes an internally threaded
hole that engages the threads of threaded fastener], a pair of
bridge members positioned between and extending from
surfaces of said fastener retaining portions [see bridge members
extending between fastener retaining portions].
(App. Br. 12-13, brackets in original.)
We are also not persuaded by Appellants’ contention of copying by
Integra/Newdeal. The Examiner finds that “Appellant has failed to provide
other evidence of non-obviousness by copying, e.g. competitors copying the
invention after failing to produce a suitable solution, or the presence of
identical invention made (Appellant alleges ‘substantial [equivalence]’ has
been made).” (Ans. 12.) We agree with the Examiner’s position in that the
Appellants have not shown that the competitors have made an identical
product. Here, as pointed out by Appellants the Integra/Newdeal product
may be substantially similar to the claimed product (App. Br. 13),
nevertheless, there are differences between the claimed product and the
Integra/Newdeal product. The Integra/Newdeal product differs from the

7 McCombs-1, Exhibit F
Appeal 2011-010492
Application 10/940,396

15
claimed product in that it uses a screw and locking washer system instead of
a single locking screw “having . . . an upper thread on said shaft adjacent
said head of said fastener for engaging said internal thread in said fastener
hole . . . and a lower thread for engaging bone,” as claimed.
Specifically,“‘[t]he rigidity of the ‘legs’ is obtained using the Newdeal
Locking System including a screw and a washer.” (App. Br. 14; see also
McComb-1, Exhibit D, E, and G.) The Integra sales brochure indicates that
they are using the Surfix technology system in their plates; this system relies
on a threaded lipped socket, a (bone) screw and a locking screw (washer)
(McComb-1, Exhibit D, G). As Appellants concede, “the SURFIX®
locking system used on the Integra UNI-CPTM compression plate splits the
locking screw into two parts consisting of a screw and a lock screw” (Appeal
Br. 14). Thus, the separate locking screw/washer system is one difference
between the Integra/Newdeal product and the claimed product. What is
missing from the McComb-1 Declaration is any evidence showing that the
success of the Appellants’ product has a relation to the claimed features and
that the competitors’ product uses these same feature to achieve their
success.
We conclude that the evidence cited by the Examiner supports a prima
facie case of obviousness with respect to claim 16, and Appellants have not
provided sufficient evidence of secondary considerations that outweighs the
evidence supporting the prima facie case. As Appellants do not argue the
claims separately, claims 17, 20, 21, 23-25, and 33 fall with claim 16. 37
C.F.R. § 41.37 (c)(1)(vii).

Appeal 2011-010492
Application 10/940,396

16
II. The Issue: Obviousness over Nicola, Harris and Leung
The Examiner recognizes that neither Nicola nor Harris provide a
system where the “upper thread comprises double lead threads, said double-
lead threads providing selective locking of said fastener in said fastener
hole.” (Ans. 7.) The Examiner relies on Leung for this feature and
concludes that it would have been obvious to “have modified the device of
Nicola and Harris with a bone plate system wherein said upper thread of the
fastener comprises double lead threads, said double-lead threads providing
selective locking of said fastener in said fastener hole in view of Leung for
the predictable reason of increased backout strength.” (Id.)
The issue is: Does the preponderance of evidence of record support
the Examiner’s conclusion of obviousness with the combination of Nicola,
Harris and Leung?

Findings of Fact
FF 7. Leung disclosed that:
Engagement of the threaded head 24 with the ridges 22
functions to orient the bone screw 20A relative to the plate
member 12 and to fix the bone screw 20A relative to the plate
member 12. Given the orientation of the circular ridges, the
bone screw 20A is resultingly oriented with its longitudinal axis
Al generally perpendicular to the plane defined by the plate
member 12. In the embodiment illustrated [Fig. 3], the head 24
of the first bone screw 20A includes a double lead thread 26.
(Leung 2: ¶ 0027; Ans. 7.)
FF 8. Leung disclosed the use of double lead threads.
App
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App. Br. 1
lead thre
double lea
ystem
the ridges
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ung
rs that
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al device a
7.)
ase based
e are also
h Leung
7). We
ads to the
d threads

s

Appeal 2011-010492
Application 10/940,396

18
providing selective locking of said fastener in said fastener hole in view of
Leung for the predictable reason of increased backout strength.” (Ans. 7,
13.)
We are also not persuaded by Appellants’ contention that “Leung
highlights the advantages of providing a surgeon with flexibility in
positioning bone screws in a patient by explicitly teaching that the spherical
head of a screw is not to be threaded such that the bone screw can engage
the bone at various angles with respect to the plate member.” (App. Br. 17.)
“The prior art’s mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Leung
provides that the “[e]ngagement of the threaded head 24 with the ridges 22
functions to orient the bone screw 20A relative to the plate member 12 and
to fix the bone screw 20A relative to the plate member 12.” (FF 7.) Leung
also discloses using multiple screws where some have the threaded head and
other do not. Specifically, the “spherical shape of the head 28 cooperates
with the ridges 22 to allow the second bone screw 20B to angulate relative to
the plate member 12. . . .[and] can be engaged with the bone at a variable
angle.” (Leung 2: ¶ 0029.) Leung recognizes that this use differs from that
of screws with threaded heads that provide a fixed relationship. Even with
this fixed relationship the double lead thread feature of Leung allows for
some angulation of the fixed screw with the plate (FF 8.)
We conclude that the evidence cited by the Examiner supports a prima
facie case of obviousness with respect to claim 18, and as discussed above
Appeal 2011-010492
Application 10/940,396

19
(I) Appellants have not provided sufficient evidence of secondary
considerations that outweighs the evidence supporting the prima facie case.

III. The Issue: Obviousness over Harris and Groiso
The Examiner takes the position that:
Groiso discloses a method of compressing and retaining
first and second adjacent bones together . . .
. . . except for said fastener hole having an internal
thread; and said fastener having an upper thread on said shaft
adjacent said head of said fastener for engaging said internal
thread in said fastener hole to thereby maintain said fastener in
a substantially fixed relation to said fastener retaining portion.
(Ans. 7-9.) The Examiner looks to Harris for “a bone plate system wherein
said fastener hole has an internal thread (14 on 13); and said fastener having
an upper thread (see FIG. 2 [FF 3]) on said shaft adjacent said head of said
fastener for engaging said internal thread in said fastener hole.” (Ans. 9.)
The Examiner concludes that it would have been obvious to have “modified
the method and device of Groiso with a bone plate system wherein said
fastener hole has an internal thread. . .” in view of Harris “for backout
prevention and maintaining the fastener’s angle with respect to the plate.”
(Id.)
The issue is: Does the preponderance of evidence of record support
the Examiner’s conclusion of obviousness in the combination of Groiso in
view of Harris?

Findings of Fact
FF 9. Groiso disclosed a bone plate having bridge members extending
from the fastening surface.
App
App

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exten
(Gro

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ether by c
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pp. Br. 19
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Appeal 2011-010492
Application 10/940,396

21
(FF 5.) “The first area 52 is a bone engaging area which has a buttress
configuration known in the art as a cancellous thread.” (Harris 3: ¶ 0021.)
“The second area of threads 54 forms a locking area that preferably extends
over a length that generally corresponds to the length of the mating threads
or female threads 14 within the through bore 13.” (Id. at ¶ 0022.)
Appellants contend that the skilled artisan “would have understood
that it is advantageous not to thread the fixation holes of a bone plate to
provide a surgeon with flexibility in the angle at which screws are to be
received through the fixation holes as inherently taught by Nicola, Leung,
and Groiso.” (App. Br. 19.)
Groiso disclosed attaching the bone plate, an orthopedic implant, with
screws (FF 9), while Harris also disclosed attaching orthopedic implants
with screws, specifically, locking screws (FF 3). In addition, Harris
expressly recognizes that a “locking mechanism helps ensure that the screw
does not back out of the plate” (FF 6). We agree with the Examiner’s
conclusion that based on Harris it would have been obvious to substitute
locking screws for the regular screws used in Groiso’s bone plate system.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Appellants contend that the “Groiso reference does not teach or even
suggest removing the staple legs and replacing the legs with screws or
threading the apertures defined by the wings.” (Reply Br. 8.)
We are not persuaded. Claim 16 does not exclude the addition of
staple legs to the surgical device. Thus, it would not be necessary for the
references to disclose or suggest removing the staple legs from Groiso’s
device as asserted by Appellants.
Appeal 2011-010492
Application 10/940,396

22
We conclude that the evidence cited by the Examiner supports a prima
facie case of obviousness with respect to claim 16 in view of Groiso and
Harris. As discussed above (I) Appellants have not provided evidence of
secondary considerations that outweighs the evidence supporting the prima
facie case. Appellants do not argue the claims separately, and claims 26-32
fall with claim 16. 37 C.F.R. § 41.37 (c)(1)(vii).

SUMMARY
We affirm the rejection of claims 16, 17, 20, 21, 23-25, and 33, under
35 U.S.C. § 103(a) as unpatentable over Nicola and Harris.
We affirm the rejection of claim 18 under 35 U.S.C. § 103(a) as
unpatentable over Nicola and Harris in further view Leung.
We affirm the rejection of claims 16 and 26-32, under 35 U.S.C.
§ 103(a) as unpatentable over Groiso and Harris.

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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