Ex Parte Jackson

Patent Trial and Appeal Board

Sep 18, 2012

10142614 (P.T.A.B. Sep. 18, 2012)

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.
10/142,614 05/09/2002 Roger P. Jackson 10,162 2111
7590 09/19/2012
John C. McMahon
PO Box 30069
Kansas City, MO 64112
EXAMINER
WOO, JULIAN W
ART UNIT PAPER NUMBER
3773
MAIL DATE DELIVERY MODE
09/19/2012 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 ROGER P. JACKSON
____________

Appeal 2010-006842
Application 10/142,614
Technology Center 3700
____________

Before STEFAN STAICOVICI, JAMES P. CALVE, and
SCOTT A. DANIELS, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
1-15, 17, 18, and 21. Notice of Appeal. Claims 16, 19, and 20 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2010-006842
Application 10/142,614

2
CLAIMED SUBJECT MATTER
Claim 1 is representative of the claimed subject matter on appeal:
Claim 1 A closure plug in combination with an open-headed
medical implant having a pair of spaced arms with a
discontinuous, helically wound interior guide and advancement
structure thereon; said plug comprising:
a) a body sized and shaped to be received between the
arms of the implant head; said body having a radially
outward surface that has a mating guide and
advancement structure thereon that is sized and shaped
to rotatably mate with the interior guide and
advancement structure of the arms of the implant;
b) said body having a top surface and a bottom surface;
said top surface of said body having at least one
removal aperture therein sized and shaped to receive a
removal tool; said aperture extending axially from the
bottom surface to the top surface of said body and
opening onto the top surface thereof;
c) said aperture being spaced from and positioned between
both a central axis of said body and a periphery of said
body; and
d) a break-off head breakably and axially joined to said
body and adapted to receive an installation tool for
operably rotating said body; said head being joined to
said body by a torque limiting region that causes said
head to break from the body, when a preselected torque
is applied to said head; said break-off head being free
of pass through openings that axially align with said
apertures so as to operably block axial access to said
aperture from above said break-off head by the removal
tool until said break-off head breaks from said body.

REJECTIONS
Claims 1-7, 10-15, and 21 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sherman (US 5,797,911; iss. Aug. 25, 1998), Dent
Appeal 2010-006842
Application 10/142,614

3
(GB 2,140,523 A; pub. Nov. 28, 1984) and Johnson (US 1,300,275; iss. Apr.
15, 1919).
Claims 8, 9, 17, and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sherman, Dent, Johnson, and Wagner (US 5,334,203; iss.
Aug. 2, 1994).
ANALYSIS
Claims 1-7, 10-15, and 21 as unpatentable over Sherman, Dent, and
Johnson
The Examiner found that Sherman discloses a closure plug as claimed
but lacks a removal aperture in the top surface of the plug body that is sized
and shaped to receive a removal tool. Ans. 3-4. The Examiner found that
Dent discloses a similar device with a closure plug having a pair of apertures
20 positioned between a central axis of the body and a periphery of the body.
Ans. 4 (citing figs. 14-16). The Examiner concluded that it would have been
obvious to modify the plug body of Sherman to include at least one removal
aperture in the top surface of the body to “allow convenient removal of the
plug or closure from a patient’s body should a surgeon decide that the
implant needs to be removed or repositioned.” Ans. 4-5. The Examiner also
found that the modified Sherman device does not disclose an aperture that
extends axially from the bottom surface to the top surface or is configured
such that the break-off head blocks axial access to the apertures. Ans. 5.
The Examiner found that Johnson teaches a plug with a body having an
aperture that extends through the entire length of the body (i.e., from the
bottom surface to the top surface) and concluded that it would have been
obvious “to form and position the apertures of the body of the plug of
Sherman et al. in view of Dent (without pass through openings in the break-
Appeal 2010-006842
Application 10/142,614

4
off head), such that the aperture is positioned between a central axis of the
body and a periphery of the body and extends through the entire length of
the body” because “[s]uch an aperture would allow a pin of a removal tool to
securely hold the plug during turning and removal of the plug.” Ans. 5.
Appellant argues that Sherman, Dent, and Johnson teach a skilled
artisan to provide access to the apertures in the plug at all times even when
the break-off head is in place. App. Br. 12. Appellant argues that none of
these references teaches the key element of the invention—a break-off head
that blocks access to removal apertures in the closure body. Reply Br. 3.
Appellant also argues that this feature prevents a surgeon from deliberately
or accidentally over-torquing a closure by accessing removal apertures in the
closure instead of torquing just the break-off head until it breaks off from the
closure at proper torque. Reply Br. 4; App. Br. 12.
The Examiner has not pointed to any teaching in Sherman, Dent, or
Johnson of a break-off head that is free of pass through openings being used
with a closure plug having apertures such that the break-off head operably
blocks axial access to the apertures in the closure body until the break-off
head breaks from the body as called for in independent claims 1, 10, and 21.1
The Examiner found that Sherman and Dent “do not disclose that the
aperture . . . [is] configured such that the break-off head blocks axial access
to the apertures.” Ans. 5. The Examiner relied on Johnson to disclose a

1 Claim 10 calls for a closure body “having at least one axially extending
aperture therein with said aperture opening onto said body top and being
sized and shaped to receive a removal tool.” Claim 21 calls for a closure
body with “said top of said body having at least one axially aligned aperture
therein opening onto the top thereof and being sized and shaped to receive a
removal tool.”
Appeal 2010-006842
Application 10/142,614

5
plug with an aperture extending through the entire length of the body of the
plug, but not to disclose a break off head. Figs. 3-5. The Examiner found
that Sherman discloses “the break-off head as claimed” (i.e. without any
pass through openings) and relied on Dent and Johnson “mainly for their
teachings regarding the offset apertures in the closure body, not for their
teachings regarding a break-off head.” Ans. 7. We agree that adding Dent’s
axial holes 20 to Sherman’s plug body 55 may help a surgeon to remove the
plug, as the Examiner found. Ans. 5. However, the Examiner has not
explained why a skilled artisan would modify only the plug 55 of Sherman
to include axial holes when Dent uses axial openings 20 in a plug body 14B
of a screw only in conjunction with a break-off head 14A that also includes
axial holes 20 that are aligned with the axial holes in the plug body 14B.2
Figs. 9, 14, 15. The Examiner’s selection of only the apertured closure body
14B of Dent’s two-section screw is based on impermissible hindsight using
Appellant’s disclosure. The Examiner’s finding that “Dent teaches, at least
in fig. 15, a body (without a break-off head) having offset apertures for the
purpose of unscrewing of the body” demonstrates this fact because Dent
discloses this embodiment initially in Figure 14 as a screw with a first drive
section 14A with axial holes 20 and a second section 14B with aligned axial
holes 20 and Figure 15 illustrates the screw “when the section 14A has been

2 The axial holes 20 provide a way to implant a screw with a circular head
by using a special tool with two pins that engage holes 20 in the break-off
head 14A to turn the screw and shear off the break-off head 14A and later
using the same tool to remove the plug 14B. Page 2, ll. 46-52 and 69-75;
fig. 9. Dent also discloses the use of axial holes 20 in a break-off head 14A
and a frusto-conical plug body 14B wherein a first special tool with two pins
is used to drive the screw and a different tool with two pins is used to
unscrew the frusto-conical screw. Page 2, ll. 97-118; figs. 14-16.
Appeal 2010-006842
Application 10/142,614

6
sheared from the remainder as shown in Figure 15.” Page 2, ll. 112-118.
While Johnson discloses a special wrench with an eccentric longitudinal pin
16 that aligns with an eccentric hole 13 in a screw head 11 so that the screw
can only be removed by the special wrench (page 1, col. 37-41; figs. 1-5),
Johnson does not block this hole 13 with a break-off head or other device
because the eccentric hole 13 in the screw head 11 also is used to insert the
screw and “has a particular advantage in small size screws because the screw
has sufficient frictional engagement with the pin 16 to be held thereby so
that a ready means of holding the screw during insertion is provided.” Page
1, ll. 97-102. Thus, the Examiner has used Appellant’s disclosure to pick
and choose features from the prior art to reconstruct the claimed invention.
Thus, we cannot sustain the rejection of claims 1-7, 10-15, and 21. The
addition of Wagner does not remedy the deficiencies of Sherman, Dent, and
Johnson as discussed supra. Accordingly, the rejection of claims 8, 9, 17,
and 18 likewise cannot be sustained.
DECISION
We REVERSE the rejection of claims 1-15, 17, 18, and 21.

REVERSED

hh