Ex Parte H¿nni et al

Patent Trial and Appeal Board

Dec 19, 2016

12089006 (P.T.A.B. Dec. 19, 2016)

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.
12/089,006 06/09/2008 Markus H^nni 10139/14802
(00464-08PUS1
8154
76960 7590 12/19/2016
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
EXAMINER
BATES, DAVID W
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
12/19/2016 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 MARKUS HANNI, PETER TOGGWILER, and
NORBERT SUHM
Appeal 2015-002410
Application 12/089,006
Technology Center 3700
Before LINDA E. HORNER, ERIC C. JESCHKE, and
GORDON D. KINDER, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Markus Hanni et al. (Appellants)1 seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision, as set forth in the Final Action, dated
March 11, 2014 (“Final Act.”), rejecting claims 36^40, 43 48, and 50-58.2
We have jurisdiction under 35 U.S.C. § 6(b).
1 Appellants identify the real party in interest as DePuy Synthes Products,
LLC, which is a subsidiary of Johnson & Johnson, Inc. Appeal Br. 2.
2 Claims 41, 42, and 49 are pending and objected to as being dependent on
rejected base claim. Claims 59 and 60 are pending, but withdrawn from
consideration.
Appeal 2015-002410
Application 12/089,006
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
Appellants’ claimed subject matter relates to “an aiming device for
insertion of one or more Kirschner-wires.” Spec. I.3 Claims 36 and 44 are
the independent claims on appeal and are reproduced below.
36. An aiming device for insertion of a Kirschner-wire
to treat a target bone, comprising:
an aiming block permitting placement of a Kirschner-wire
against the target bone; and
a forceps connected to the aiming block, the forceps being
configured to clamp to the target bone, wherein the aiming block
can be put against the target bone while the forceps is clamped
to the bone.
44. An aiming device for insertion of a Kirschner-wire
to treat a target bone, comprising:
a) an aiming block permitting placement of a Kirschner-
wire against the target bone;
b) a guide member pivotally coupled to the aiming block,
the guide member configured to receive the Kirschner-wire; and
c) a fixing device coupled to the aiming block, the fixing
device configured to clamp to the target bone to maintain the
aiming block in a desired position relative to the target bone,
wherein the aiming block can be put against the target bone while
the fixing device is clamped to the bone.
3 Citations in this Decision to “Spec.” refer to the Specification as published
in International Publication WO 2007/041880.
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Application 12/089,006
REJECTIONS
The Final Action included the following grounds of rejection:
1. Claims 36^10 and 43 under 35 U.S.C. § 102(b) as anticipated by
Lenzo (US 5,133,715, issued July 28, 1992).
2. Claims 44^18 and 50-56 under 35 U.S.C. § 102(b)4 as anticipated
by Pytlak (US 3,626,513, issued December 7, 1971).
3. Claims 57 and 58 under 35 U.S.C. § 103(a) as unpatentable over
Pytlak.
ANALYSIS
First Ground of Rejection
The Examiner found that the device of Lenzo includes an aiming
block 30 and “forceps 20 being configured to clamp to the target bone.”
Final Act. 2-3 (citing Lenzo, Fig. 4, col. 4,11. 20-21 and 30-32). Appellants
argue that Lenzo’s surgical clamp is not “configured to clamp to the target
bone,” as called for in claim 36. Appeal Br. 5 (Appellants asserting Lenzo’s
“surgical clamp 20 holds the hooked member 24 in place, which in turn
holds the retaining plate 30 against bone fragment 40); id. at 6 (Appellants
arguing that Lenzo’s device is attached to the bone via a hook member 24
that penetrates the bone). The Examiner responds “the claim does not
require how the forceps are being clamped to the bone” and “[b]y clamping
the forceps to the bone between hook 24 and plate 30, the forceps 20 are
being clamped to the bone.” Ans. 6.
4 Although the Examiner mistakenly states the second ground of rejection as
being under pre-AIA 35 U.S.C. § 102(e) (Final Act. 3), the Pytlak patent
issued more than one year before the filing date of the application on appeal
and thus qualifies as prior art under pre-AIA 35 U.S.C. § 102(b).
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Application 12/089,006
We disagree with the Examiner’s reading of the language of claim 36.
Claim 36 calls for “forceps being configured to clamp to the target bone.” In
use, Lenzo’s hooked member 24 is anchored into a target bone, retaining
plate 30 is then slid over one end of stem 32 and positioned against bone
fragment 40, and then surgical clamp 20 is closed so that clamping elements
12 and 14 clamp about stem 28 to retain stem 28 and hooked member 24 in
fixed position and to retain retaining plate 30 firmly against bone fragment
40. Lenzo, col. 4,11. 3-26; Fig. 4. Lenzo’s surgical clamp 20 is not clamped
to the bone by virtue of being clamped around stem 28. Rather, hooked
member 24 is anchored in the bone and is kept in the anchored state via
clamping elements 12 and 14. Even if one were to determine that the
combination of hooked member 24 and retaining plate 30 act to clamp the
target bone, this clamping action does not result in surgical clamp 20 being
clamped to the target bone. For these reasons, we do not sustain the
rejection of independent claim 36, or its dependent claims 37-40 and 43,
under 35 U.S.C. § 102(b) as anticipated by Lenzo.
Second Ground of Rejection
The Examiner found that Pytlak discloses the structure called for in
claim 44, and determined that it is capable of the intended use as an aiming
device for insertion of a Kirschner-wire to treat a target bone. Final Act. 4;
Adv. Act. 2 (Examiner finding that “[tjhere is no reason that the Pytlak
device cannot be attached to any properly sized component, including a bone
of proper size”); Ans. 9 (Examiner finding that the claimed device is “not a
new invention in view of Pytlak”).
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Application 12/089,006
Appellants argue that “[mjerely ‘capable of the recited use is not the
appropriate standard.” Appeal Br. 7 (citing In re Giannelli, 739 F.3d 1375
(Fed. Cir. 2014)). The issue presented by this rejection is similar to the issue
before the court in In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997).
Schreiber’s patent application claimed a popcorn dispensing device that was
conically shaped with a large opening to fit on a container and a smaller
opening at the opposite end through which popped popcorn could pass. Id.
at 1474. Claim 1, directed to the device, was rejected as anticipated by the
Harz patent, which disclosed a spout for nozzle-ready canisters that is useful
for dispensing oil from an oil can. Id. at 1475. The Board, on appeal from
the Examiner’s adverse decision, affirmed the rejection and concluded that
several of the recitations in the claim merely set forth the function and
intended use of the top and did not require any structural feature other than
those taught by Harz and found that Harz’s oil dispensing device was
capable of dispensing popcorn in the manner claimed. Id. at 1476. The
court affirmed the Board’s decision, stating that although Harz did not
address the use of the disclosed structure to dispense popcorn, “the absence
of a disclosure relating to function does not defeat the Board’s finding of
anticipation.” Id. at 1477 (stating “[i]t is well settled that the recitation of a
new intended use for an old product does not make a claim to that old
product patentable”). The court held that “Schreiber’s contention that his
structure will be used to dispense popcorn does not have patentable weight if
the structure is already known, regardless of whether it has ever been used in
any way in connection with popcorn.” Id. The court further held that “the
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Application 12/089,006
question whether a reference is analogous art is irrelevant to whether that
reference anticipates.” Id. at 1478.
As in Schreiber, the fact that Appellants here claim they have
discovered a new use, i.e., aiming device for insertion of a Kirschner-wire in
a target bone, for a known device, i.e., aiming device (tool guide) for
placement of a drill bit in wood, does not make a claim to that old device
patentable. Thus, Appellants’ argument (Appeal Br. 7) that Pytlak fails to
disclose that its aiming device could be used to place a Kirschner-wire in a
target bone is not persuasive of error in the Examiner’s anticipation
rejection. Likewise, Appellants’ argument (Appeal Br. 8) that “one skilled
in the art would not have looked to Pytlak to obtain an orthopaedics device”
is also not persuasive of error.
Schreiber further argued to the court that the functional limitations of
the claim5 6distinguished the claimed subject matter from Harz. 128 F.3d at
1478. The court stated that “choosing to define an element functionally, i.e.,
by what it does, carries with it a risk.” Id. The court then explained that:
where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent characteristic
of the prior art, it possesses the authority to require the applicant
to prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on.
5 For instance, the claim recited that the top “allows several kernels of
popped popcorn to pass through at the same time,” and that the taper of the
top is such “as to by itself jam up the popped popcorn before the end of the
cone and permit the dispensing of only a few kernels at a shake of a package
when the top is mounted on the container.” Id.
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Application 12/089,006
Id. (quoting In re Swinehart, 439 F.2d 210, 213 (CCPA 1971)). The Court
determined that the examiner correctly found Harz’s device inherently was
of a size and shape sufficient to perform the recited functions, and found that
“the burden shifted to Schreiber to show that the prior art structure did not
inherently possess the functionally defined limitations of his claimed
apparatus.” Id.
In the present case, we agree with the Examiner that the aiming block
disclosed in Pytlak is inherently capable of “permitting placement of a
Kirschner-wire against the target bone” and the fixing device of Pytlak is
inherently capable of “clamp[ing] to the target bone to maintain the aiming
block in a desired position relative to the target bone, wherein the aiming
block can be put against the target bone while the fixing device is clamped
to the bone,” as called for in claim 44. See Ans. 9 (Examiner finding that
“Pytlak has taught a device which reads on appellant’s claimed structural
limitations and is capable of performing applicant’s claimed functional
limitations”). Although the aiming device of Pytlak is intended to be used
against a workpiece such as a staircase handrail, we see no reason why the
same device could not be used as an aiming device on other workpieces,
such as a target bone, without any modification to the structure or the
method of using the structure for its specified objective. In other words,
Pytlak is designed to be used as an aiming device for inserting a member
into a workpiece at a particular angle, and thus is capable of being used to
insert a wire in a workpiece such as a bone.
Appellants argue that Pytlak’s device would not be used on a target
bone because the bone is harder than wood. Appeal Br. 8. We agree with
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Application 12/089,006
the Examiner that the hardness of the workpiece is immaterial to the claimed
aiming device. Ans. 9. Claim 44 calls for an aiming block that lies against
the target bone, a guide member to guide a Kirschner-wire, and a fixing
device that clamps around the target bone. It does not call for a member that
is capable of piercing a bone. As such, the hardness of the workpiece does
not distinguish the claimed aiming device from the structure of Pytlak.
The Examiner further states that “something capable of doing a
claimed function is inherently ‘configured to’ do that function, whether it
was intended to, or not.” Ans. 9. We agree with the Examiner in this
instance. The issue presented by the rejection in this case is unlike the issue
before the court in In re Giannelli, 739 F.3d 1375 (Fed. Cir. 2014). In
Giannelli, the question before the court was whether the patent application’s
claim language reciting a “first handle portion adapted to be moved from a
first position to a second position by a pulling force ... in a rowing machine”
was rendered obvious by a prior art chest press machine. The court looked
to the written description of the application and determined that the phrase
“adapted to” in view of the specification, has a narrower meaning than
“capable of’ or “suited for.” Id. at 1379 (contrasting the narrower meaning
of “adapted to” as meaning “made to,” “designed to,” or “configured to,”
with the broader meaning of “capable of’ or “suitable for”). See also Aspex
Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir.
2012) (holding that “adapted to” in the claim at issue had the narrower
“configured to” meaning, which required elements to be “designed or
configured to accomplish the specified objective, not simply that they can be
made to serve that purpose”). The Court in Giannelli determined that the
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Application 12/089,006
prior art chest press machine did not have handles adapted to be pulled in a
rowing motion because such a motion of the handles was contraindicated by
the prior art itself, and that the proper inquiry the Board should have made
was “whether it would have been obvious to modify the prior art apparatus
to arrive at the claimed rowing machine.” Giannelli, 739 F.3d at 1380.
Unlike in Giannelli, the Examiner is not proposing that the prior art
Pytlak device be used for a different specified objective than what it was
designed to accomplish or be modified to do so. Pytlak’s device is designed
to guide a member into a workpiece. Appellants have not met their burden
to rebut the Examiner’s finding that Pytlak’s device, without modification, is
configured to guide a Kirschner-wire into a target bone in the manner
claimed. For these reasons, we sustain the rejection of claim 44 under
35 U.S.C. § 102(b) as anticipated by Pytlak. Appellants do not present any
separate arguments for the patentability of claims 45-58 and 50-56. Appeal
Br. 10. As such, these dependent claims fall with claim 44. 37 C.F.R.
§ 41.37(c)(l)(iv).
Third Ground of Rejection
Claim 57 depends from claim 44 and recites “wherein at least one of
the aiming block and the guide member is made of a radiolucent material.”
Appeal Br. 16 (Claims App.). Claim 58 depends from claim 57 and recites
that the radiolucent material is formed of PEEK. Id. The Examiner
determined that the claimed subject matter would have been obvious as a
matter of design choice on the basis of its suitability for the intended use.
Final Act. 5 (Examiner finding that “one would have chosen PEEK to
choose a material which is lighter weight than metal”). Appellants contest
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Application 12/089,006
this rejection, asserting “the Examiner has failed to [cite] any evidence in
support of this conclusory statement” and the Examiner has engaged in
“impermissible hindsight reconstruction of the invention.” Appeal Br. 11.
We agree with Appellants that the Examiner’s stated reason to modify
the device of Pytlak to make it of a radiolucent material is insufficient. The
Examiner has not provided adequate evidence of a known problem in the art
that would have prompted a person of ordinary skill in the art to make
Pytlak’s device out of a lighter weight material. Further, the Examiner has
not explained adequately why it would have been obvious to one having
ordinary skill in the art to select a radiolucent material, such as PEEK, were
one looking to make Pytlak’s device lighter. For these reasons, we do not
sustain the rejection of claims 57 and 58 under 35 U.S.C. § 103(a) as
unpatentable over Pytlak.
DECISION
The decision of the Examiner to reject claims 44 48 and 50-56 is
AFFIRMED. The decision of the Examiner to reject claims 3 6—40, 43, 57,
and 58 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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