Ex Parte Ihde

Patent Trial and Appeal Board

Jan 14, 2013

11506614 (P.T.A.B. Jan. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEFAN IHDE
____________

Appeal 2010-011624
Application 11/506,614
Technology Center 3700
____________

Before JAMES P. CALVE, RICHARD E. RICE, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 38-57. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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THE INVENTION
Appellant’s invention is an apparatus for bone fixation. Spec. 6, para.
[0024]. Claim 38, reproduced below, is illustrative of the subject matter on
appeal.
38. An apparatus for orthopedic anchoring, said
apparatus comprising:
a plurality of implants, each of said implants having an
intraosteal portion and an extraosteal portion, said intraosteal
portion comprising a base and a lower portion of a substantially
orthogonal post and said extraosteal portion comprising an
upper portion of said post, said implant being dimensioned such
that upon implantation into a bone, said extraosteal portion
extends outside of the bone;
at least two mesiostructures, each of said mesiostructures
having a first surface shaped to abut a bone, each of said
mesiostructures having a throughhole for receiving said
extraosteal portion of said implant and each of said
mesiostructures having one of a plate fixator or a plate fixator
receiver;
a plurality of caps, each of said caps having a fixation
interface with said extraosteal portion of said implant whereby
said mesiostructures can be fixed in a user selected position
against the bone by fixation of said cap to said extraosteal
portion of said implant when said extraosteal portion of said
implant is disposed within said throughhole of said
mesiostructure;
a long plate, said plate being comprised of a material
sufficiently rigid to fixate a fractured bone, said plate having
the other of said plate fixator or said plate fixator receiver for
each of said at least two mesiostructures, said plate fixator or
said plate fixator receiver being dimensioned to mate to mount
said long plate fixedly to said at least two mesiostructures;
whereby said implants, said at least two mesiostructures
and said plate may be rigidly disposed to fix a bone in a
substantially rigid position.
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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:

The following rejections are before us for review:
1. Claims 38, 39, 42, 43, 48, 49 and 56 are rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
2. Claims 38, 41-45 and 47-57 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Scortecci and Andrews.
3. Claims 39 and 40 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Scortecci, Andrews and Willoughby.
5. Claim 46 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Scortecci, Andrews and Hotta.
OPINION
Section 112 Indefiniteness Rejections
Claim 38
The Examiner rejected claim 38 because the terms “plate fixator” and
“plate fixator receiver” are unclear. Ans. 3. The term “plate fixator” is not
used, much less defined, in the Specification. The Examiner assigned the
following interpretations to “plate fixator” and “plate fixator receiver”:
plate fixator – any component capable of fixing a plate’s
position; and
plate fixator receiver – any component capable of
receiving any component capable of fixing a plate’s position.
Ans. 3.
Andrews
Scortecci
Willoughby
Hotta
US 4,741,698
US 4,789,337
US 5,873,721
US 7,258,545 B2
May 3, 1988
Dec. 6, 1988
Feb. 23, 1999
Aug. 21, 2007
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Appellant concedes the Examiner’s interpretation, stating: “[t]he
interpretation of the terms used in examination are appropriate.” App. Br.
13. In view of the agreement between the Examiner and Appellant on the
meaning of “plate fixator” and “plate fixator receiver,” and in the absence of
any findings or evidence that a skilled artisan would not understand what is
claimed when these terms are construed in light of Appellant’s Specification,
we do not sustain the Examiner’s rejection of claim 38 as indefinite.
Claim 39
The Examiner rejected claim 39 because the meaning of the terms
“male screw” and “female screw” are unclear. Ans. 4. The Examiner
assigned the following interpretations to “male screw” and “female screw:
male screw – screw; and
female screw – threaded hole.
Ans. 4. Appellant concedes the Examiner’s interpretation, stating:
“interpretation of female screw as a ‘threaded hole’ is appropriate.” App.
Br. 13. In view of this agreement, and in the absence of any findings or
evidence that a skilled artisan would not understand what is claimed when
these terms are construed in light of Appellant’s Specification, we also do
not sustain the Examiner’s rejection of claim 39 as indefinite.
Claim 42, 48, 49 and 56
The Examiner rejected claims 42, 48, 49, and 56, because they all
contain the term “basal implant” which lacks antecedent basis and therefore
it is unclear whether the claimed “basal implant” refers to the “implant” of
claim 38 or another implant. See Ans. 4. Appellant does not challenge the
Examiner’s finding that such term lacks antecedent basis. App. Br. 13.
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Accordingly, we sustain the Examiner’s rejection of claims 42 as indefinite,
48, 49 and 56. See M.P.E.P. § 2173(e).1
Claim 43
The Examiner rejected claim 43 because the term “mounted to be
nonparallel” is unclear to the Examiner. Ans. 4 (“Some feature of the
implants must be claimed, as currently, any two portions of the implants can
be interpreted to be non-parallel”). In response, Appellant argues that the
implants are recited to have a post and that the posts may either be parallel
or nonparallel. App. Br. 13. If Appellant wanted to limit claim 43 to
nonparallel posts, such a limitation could have been written into the claim,
but was not. We agree with the Examiner that this term is indefinite in that
it is unclear what the implants are non-parallel to and this term is susceptible
to two different interpretations, as argued by Appellant. Accordingly, we
sustain the Examiner’s rejection of claim 43 as indefinite.
Section 103 Obviousness Rejections2
Claims 38, 41, 44, 45, 47, 48 and 50-57 over Scortecci and Andrews
Appellant argues claims 38, 41, 43-45, 47, 48 and 50-57 as a group.
We select claim 38 as representative of the group. Claims 41, 44, 45, 47, 48
and 50 -57 stand or fall with claim 38. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011). 3

1 “A claim which refers to ‘said aluminum lever,’ but recites only ‘a
lever’ earlier in the claim, is indefinite because it is uncertain as to the lever
to which reference is made.” Id.
2 In view of our decision to affirm the Examiner’s rejection of claims
42, 43, 48, 49 and 53 under section 112, second paragraph, we do not reach
the Examiner’s rejection of these claims under section 103.
3 Appellant includes one paragraph under the heading “Dependent
claims” at the bottom of page 28 of the Appeal Brief. We do not consider
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The Examiner finds that Scortecci teaches an apparatus for orthopedic
anchoring comprising a plurality of implants with respective intraosteal and
extraosteal portions dimensioned so that the extraosteal portion extends
outside of the bone. Ans. 5. The Examiner further finds that Scortecci
discloses at least two mesiostructures shaped to abut a bone and having a
throughhole for receiving the extraosteal portion of the implant. Id. The
Examiner further finds that Scortecci discloses a plurality of caps that have a
fixation interface as claimed. Ans. 5-6.
The Examiner acknowledges that Scortecci lacks a long, rigid plate as
claimed. Ans. 6. However, the Examiner finds that Andrews discloses
several devices for orthopedic anchoring that include mesiostructures (fig. 9,
frame 46) and a long, rigid plate as claimed (detachable bar 48). Id.
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art to incorporate the long plate (detachable bar) of
Andrews with the multiple implants of Scortecci as the plate would have
predictably provided for improved security of the interconnection between
the components of the implant. Ans. 7. The Examiner further notes that
notwithstanding that Appellant’s invention may be directed to a different
intended use than the prior art, the components of Andrews could be used to
fix a fractured mandible. Id.
In traversing the Examiner’s rejection Appellant raises a number of
arguments that we shall address one at a time.

the substance of this paragraph to constitute a separate argument for
patentability of the dependent claims. See 37 C.F.R. § 41.37(c)(vii).
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TSM Test
Appellant asserts that the Examiner failed to establish a prima case of
obviousness. App. Br. 16. Appellant asserts that the Examiner must
establish that some suggestion or motivation exists to modify the references
to achieve the presently claimed invention. Id. More particularly, however,
Appellant argues that there is no teaching, suggestion or motivation in any of
the prior art references of record to combine basal implants with
mesiostructures and plates to hold a broken bone during healing. App. Br.
25. In the case of KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) , the
Supreme Court effectively abolished the so-called “TSM” test as a rigid rule
limiting the obviousness inquiry. Id. at 419. Our supervising court now
requires a more flexible approach to the obviousness inquiry. See, e.g.,
Perfect Web Tech., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329-1330 (Fed.
Cir. 2009).
Level of Skill in the Art
Appellant argues that the Examiner’s Office Action is deficient for
failure to define the level of ordinary skill in the art. App. Br. 20. We
disagree. The absence of specific findings on the level of skill in the art
does not give rise to reversible error “where the prior art itself reflects an
appropriate level and a need for testimony is not shown.” Okajima v
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In the instant case, the
Examiner’s obviousness conclusion is succinctly summarized in the
following passage from the Answer.
. . . The rejection basically states that the combination of the
device of Scortecci, which taught two structures, one within the
bone and one without, and the device of Andrews, which has
taught two structures, both outside of the bone, would have
been sufficient to allow one with ordinary skill in the art at the
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time of the invention to achieve Appellant's invention. One
would have wanted to do this to provide additional fixation
between the individual elements of Scortecci (Andrews, col. 2,
lines 35-38). When used in combination, three elements are
suggested when the two references are combined as has been
done in the rejection, and as would have been obvious to one
with ordinary skill in the art the time of the invention.
Appellant additionally states that the device of the
combination would have failed to have fixated the bone
structure sufficiently. This argument is based upon an intended
use of the device of the combination. The combination device
is only required to be able to achieve the task to meet the
claimed limitations. Appellant's own arguments on pp. 26 of
the brief have admitted that the bar can be rigid, making the
combination capable of performing fixation of a bone.
Ans. 14-15.
By outlining what one would know from the references, the Examiner
has established the level of skill in the art in the way that is typically met
during examination and Appellant has failed to argue or provide a persuasive
basis for a different finding. See Ex parte Jud, 85 USPQ2d 1280 (BPAI
2007). Here, the Examiner’s discussion of the prior art references in the
final Office Action and Answer is sufficient to put the Appellant on notice
about what the Examiner thought one of skill in the art would have known
and why. See Jud at 1283-1285.
Abutment of Bone
Appellant argues that element 8 of Scortecci does not abut bone. App.
Br. 14-15. This argument is not persuasive. There is no requirement in
claim 38 that the mesiostructures abut bone. What is claimed is that the
mesiostructures have “a first surface shaped to abut a bone.” App. Br.,
Clms. App’x. We interpret this limitation as being directed to the shape of
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the mesiostructures, not what the mesiostructures abut, which forms no part
of claim 38.
Plate, Plate Fixator and Plate Fixator Receiver – Statement of Intended Use
Appellant argues that Scortecci lacks a plate and plate fixator. App.
Br. 15. Appellant accuses the Examiner of finessing this limitation by
relegating structural elements to mere statements of intended use. Id. This
argument is unpersuasive because the Examiner relied on Andrews, not
Scortecci, as disclosing a plate. Ans. 6. Andrews also supplies the hardware
for fixing the plate to the frame (mesiostructure).
The dental implant of FIG. 9 comprises frame 46 which is
attached to mandible 16, detachable bar 48, and denture 50.
Frame 46 bears four internally-threaded posts 52a-52d.
Detachable bar 48 has four complementary holes 54a-54d
which fit about the upper ends of internally-threaded posts 52a-
52d. Detachable bar 48 then is affixed to frame 46 via screws
56a-56d which penetrate through holes 54a-54d, respectively,
of frame 48 and thence into posts 52a-52d, respectively, of
frame 46.
Andrews, col. 5, ll. 2-11.
The Appellant challenges the Examiner’s observation that the
Appellant’s designation of device components as “plate fixators” and “plate
fixator receivers” are statements of intended use. App. Br. 15, 23.
Appellant misapprehends the Examiner’s position and, in so doing, relies on
provisions of the M.P.E.P. that are inapposite to the issue at hand. See App.
Br. 23-24. Appellant’s Specification teaches the use of countersinks that
receive a male screw or bolt. Spec. 12, para. [00081]. Designating a screw
or bolt as a “plate fixator” and a countersink as a “plate fixator receiver”
does not alter the essential character of screws, bolts, and countersinks as
mechanical connection means. Using screws, bolts, and countersinks to
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mechanically fasten a bone fixation plate into position instead of a dental
prosthesis is nothing more than a new intended use for an old device. In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well settled that the
recitation of a new intended use for an old product does not a make a claim
to that old product patentable”).
Structural Rigidity for Bone Fixation
Appellant argues that “fixation” means to hold two pieces of broken
bone together. App. Br. 15.4 Appellant argues that Andrews teaches soft,
malleable materials that would be inoperable for fixation of a fracture. Id.
Andrews lists suitable materials for its primary components. Andrews, Col.
6, ll. 35-39. The list includes surgical cobalt-chromium alloys, surgical
titanium, gold, and silver. Id. Appellant admits that this list includes
structurally rigid metals. App. Br. 26. A person of ordinary skill in the art
desiring to use the teachings of Scortecci and Andrews to fix a broken
mandible would find it obvious to choose a sufficiently rigid material from
the list in column 6 of Andrews.
Throughhole Limitation
Appellant argues that Scortecci’s mesiostructures lack a
“throughhole” within the meaning of claim 1. App. Br. 26. The Examiner
responds by directing Appellant to Figure 3 of Scortecci which depicts a
hole through the entirety of element 8. Ans. 12. In addition, the Examiner
notes that frames 46 in Figure 9 of Andrews have throughholes. Ans. 13.
The Examiner’s evidence is persuasive on this point, and Appellant has not
apprised us of error in that finding by the Examiner.

4 Notwithstanding, Appellant otherwise concedes that a “plate fixator”
is a device to fixate a plate, not a plate to fixate a bone. App. Br. 13.
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Fixation Interface
Appellant argues that the prior art fails to teach a “fixation interface”
as claimed. App. Br. 27. The Examiner responds by stating that it would
have been obvious to one with ordinary skill in the art at the time of the
invention to incorporate a threaded interface between cap and implant due to
the fact that threaded interconnections between elements were commonly
known in the art. Ans. 9, citing Willoughby, col. 3, line 60 – col. 4, line 2.
The Examiner further states a fixation interface is interpreted as an interface
which allows fixation between two elements and that this limitation is met
by the connection of cap 9 to mesiostructure 8 of Scortecci. Ans. 13. We
are not persuaded that the Appellant has demonstrated error in the
Examiner’s finding that a fixation interface is taught or suggested by the
prior art, for example Scortecci.5
We have considered the Appellant’s other arguments and find them to
be non-persuasive. In view of the foregoing discussion, we sustain the
Examiner’s rejection of claims 38, 41, 43-45, 47, 48 and 50-57 as
unpatentable under 35 U.S.C. § 103(a).

5 To the extent that the “fixation interface” limitation is not literally
satisfied by Scortecci, a finding that we are not inclined to make on this
record, the number and variety of threaded connection means disclosed in
Scortecci and Andrews strongly suggest that modifying a combination based
on Scortecci and Andrews so that the threads on the extraosteal portion of
the orthogonal posts would pass through a hole in the mesiostructure and
then connect to a threaded cap is well within the ambit of ordinary creativity
of the person of ordinary skill in the art. KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton”).
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Claims 40 and 46
Claims 40 and 46 depend directly from claim 38, but were subjected
to different grounds of rejection than claim 38. Ans. 9-10. Appellant does
not argue claim 40 or claim 46 separately from claim 38. See App. Br. 28.
Consequently, claims 40 and 46 stand or fall with claim 38. We sustain the
Examiner’s rejection of claims 40 and 46 as unpatentable under 35 U.S.C.
§ 103(a).

DECISION
The decision of the Examiner to reject claims 38 and 39 under 35
U.S.C. § 112, second paragraph is reversed.
The decision of the Examiner to reject claims 42, 43, 48, 49 and 56
under 35 U.S.C. § 112, second paragraph is affirmed.
The decision of the Examiner to reject claims 38-41, 44-47, 50-55 and
57 as unpatentable under 35 U.S.C. § 103(a) is affirmed.

AFFIRMED

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