Ex Parte JOST et al

Patent Trial and Appeal Board

Aug 12, 2016

13011307 (P.T.A.B. Aug. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/011,307 0112112011 RetoJOST
76960 7590 08/15/2016
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.
10139/24101 (T01481US1) 4405
EXAMINER
GIBSON, ERIC SHANE
ART UNIT PAPER NUMBER
3776
MAILDATE DELIVERY MODE
08/15/2016 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 RETO JOST and GA VIN THOMAS
Appeal2014-003771
Application 13/011,307
Technology Center 3700
Before ANNETTE R. REIMERS, LISA M. GUIJT, and
ERIC C. JESCHKE, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Reto Jost and Gavin Thomas (Appellants)1 appeal under 35 U.S.C.
§ 134(a) from the rejection of claims 1-7, 10-19, and 21-24.2 Reply Br. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as DePuy Synthes Products,
LLC. App. Br. 2.
2 Claims 8, 9, and 20 have been cancelled. See Amendment after Final,
dated June 18, 2013; Adv. Act. 1, dated July 2, 2013.
Appeal2014-003771
Application 13/011,307
THE CLAIMED SUBJECT MATTER
Claims 1, 13, and 24 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A method for treating a fracture, comprising:
positioning a bone fixation device along a bone, the
bone fixation device including a first bone fixation
element receiving opening;
creating a first hole from an outer surface of the
bone through a lateral cortex thereof to a central portion
of the bone, the drill including a stop along a length
thereof positioned to prevent the hole from being drilled
beyond an estimated depth of a far lateral cortex, the first
hole corresponding to a position at which the first bone
fixation element receiving opening is to be located when
the bone fixation device is coupled to the bone in a
desired orientation;
inserting a probe through the first hole and pushing
the probe through the central portion of the bone until a
tip of the probe contacts an interior structure of the bone
providing resistance to penetration by the probe increased
relative to the central portion of the bone;
determining a first length of the portion of the probe
extending into the bone via the first hole; and
selecting a length of a first bone fixation element to
be inserted into the bone via the first bone fixation
opening based on the first length of the portion of the
probe extending into the bone via the first hole.
THE REJECTIONS3
Claims 13-17, 19, and 21-23 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Derouet (US 2009/0228047 Al; pub. Sept. 10, 2009)
3 In the Advisory Action dated July 2, 2013, the Examiner withdraws the
rejection of claims 13-17, 19, and 21-23 under 35 U.S.C. § 102(b), makes a
new rejection of the same claims under 35 U.S.C. § 103(a), as stated infra,
2
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Application 13/011,307
and Hartdegen (US 2006/0058796 Al; pub. Mar. 16, 2006). Adv. Act. 2;
Ans. 7.
Claims 1-5, 7, 10-12, and 24 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Derouet, Hartdegen, and Guyer (US 5,928,243; iss.
July 27, 1999). Adv. Act. 2; Ans. 2.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Derouet, Hartdegen, Guyer, and Dube (US 2009/0036933 Al; pub. Feb. 5,
2009). Ans. 6.
Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Derouet, Hartdegen, and Dube. Ans. 10.
OPINION
Claims 13-17, 19, and 21-23- Obviousness over Derouet and Hartdegen
Regarding independent claim 13, the Examiner finds, inter alia, that
Derouet discloses a probe "capable of providing tactile feedback upon
contact with interior structures of the bone," noting that Derouet's gauge 34
provides "tactile feedback, as its use is based on contact with bone" and that
"in the event of contact ... between the probe tip and the interior of the
bone," the surgeon "would be aware through the sense of touch that contact
has been made." Ans. 7-8, 12 (citing Derouet i-f 70). The Examiner
determines that Derouet fails to disclose "a stop along a length [of the drill]
positioned to prevent the hole from being drilled beyond an estimated depth
of a far lateral cortex" and relies on Hartdegen for disclosing drill bit 380
with stop 3 86 "to prevent over drilling." Id. at 8 (citing Hartdegen i-f 63, Fig.
and modifies the rejections of the remaining claims, as stated infra. See
Adv. Act. 1.
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Application 13/011,307
2 lB). The Examiner also determines that "stop 386 is used to prevent over
drilling; therefore, the stop is provided to limit a drilling depth such that it is
not possible to drill deeper than an estimated depth." Adv. Act. 2. The
Examiner reasons that it would have been obvious to modify Derouet's drill
"with a stop along a length thereof positioned to prevent the hole from being
drilled beyond an estimated depth of the lateral cortex in view of Hartdegen
[] in order to prevent over drilling into the bone." Ans. 8.
First, Appellants argue that "the Examiner has read beyond the
teachings of Hartdegen with respect to the stop 386," in that "Hartdegen
only indicates that the stop 386 is used to prevent over drilling," whereas
"claim 13 relates more specifically to providing a specific depth to be drilled
for the first bone fixation element." App. Br. 7.4 We disagree, in that the
Examiner determined that the prevention of over drilling also indicates that
there is a desire to drill to a specific or estimated depth (see Adv. Act. 2). 5
In addition, Appellants' argument does not address the Examiner's proposed
modification of Derouet' s drill to include a drill stop because in at least one
embodiment of Derouet the surgeon must stop drilling at a specific or
estimated depth: "until the head of the drill bit 31 reaches the opposite
cortical of the bone (for correct hooking of the screw 17 with the longest
possible grip)." Derouet i-f 64; see Ans. 11.
4 Appellants contend that "the recited stop in claim 13 ... defines the length
of the first hole." App. Br. 7; see also Reply Br. 4. However, claim 13
merely recites the drill including a stop "along a length thereof' (i.e., the
stop is positioned along a length of the drill bit). App. Br. Claims App.
(emphasis added).
5 Claim 13 recites "the drill including a stop ... positioned to prevent the
hole from being drilled beyond an estimated depth of a far lateral cortex."
App. Br. Claims App. (emphasis added).
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Application 13/011,307
Appellants further submit that because the Examiner relies on Derouet
for teaching a probe (Derouet' s gauge 34) and because Derouet teaches a
probe is used when the surgeon drills completely through the bone radius,
the Examiner's reasoning that a drill stop is advantageous when Derouet's
surgeon does not drill completely through the bone is irrelevant. See Reply
Br. 3--4; see Derouet i-fi-164, 69-70. Again, we disagree. Derouet teaches a
kit or set of devices for reducing a bone fracture, which the surgeon uses
when drilling to the opposite cortical of the bone or entirely through the
bone radius, and the teachings of Derouet do not exclude the use of gauge 34
to determine the depth of a hole when drilled to the opposite cortical of the
bone. See Derouet i-fi-f l; see also In re Fritch, 972 F.2d 1260, 1262 (Fed.
Cir. 1992) (A reforence is prior art for aU that H teaches to those of ordinary
skill in the art.).
Second, Appellants argue that Derouet's "gauge 34 is used
exclusively with a drill hole that has been previously made through the
entire thickness of the bone," and "[t]herefore, the gauge of Derouet is in
no[] way configured to contact any interior structure of the bone, no[r] is any
contact with any interior bone structure contemplated." App. Br. 8.
Although Appellants correctly argue that Derouet discloses use of gauge 34
"[i]f the surgeon runs completely through the [bone] radius R when making
the drill hole" (Derouet i169), such that end hook 39 is used "to hook the
opposite cortical of the bone, through the drill-hole provided, this hooking
enabling to determine the exact depth of the drill-hole" (id. at i170),
Appellants fail to address the Examiner's finding that Derouet's gauge 34
with end hook 39 would be capable of providing tactile feedback upon
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Application 13/011,307
contact with interior structures of the bone, as required by claim 13. See
Ans. 7-8, 12. Thus, we are not apprised of error in the Examiner's finding.
Accordingly, we sustain the Examiner's rejection of independent
claim 13. Appellants chose not to present separate arguments for the
patentability of dependent claims 14--17, 19, and 21-23, and therefore, we
also sustain the Examiner's rejection of these dependent claims. See App.
Br. 9; Reply Br. 6.
Claims 1-5, 7, 10--12, and 24-0bviousness over Derouet, Hartdegen, and
Guyer
Regarding independent claims 1 and 24, the Examiner generally relies
on Derouet and Hartdegen, as applied to independent claim 13 as stated
supra. Ans. 2-3. The Examiner further relies on Guyer for disclosing bone
probe 10 with probing end 26 "for contacting an interior surface of a bone so
the surgeon can determine the depth of the bone opening" and for
"detect[ing] surface irregularities on the interior surface of the bone." Ans.
3 (citing Guyer col. 3, 11. 36-41, col. 4, 11. 1-3). The Examiner reasons, inter
alia, that it would have been obvious "to replace the depth probe of Derouet
[] with the depth probe of Guyer[,] ... such that depth measurements can be
taken by a surgeon while also being able to detect surface irregularities on
the interior surface of the bone," and that "one of ordinary skill in the art
would have a reasonable expectation of success" in doing so. Ans. 3--4, 13.
Appellants argue that "since Derouet always utilizes a drill hole that
extends through the entire bone, an interior of the bone is never intended to
be contacted and such contact would serve no purpose." App Br. 12; Reply
Br. 9. However, Appellants' argument ignores the teaching in Derouet
wherein the surgeon drills "until the head of the drill bit 31 reaches the
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Application 13/011,307
opposite cortical of the bone" (Derouet if 64) and the Examiner's reasoning
that using the probe of Guyer in the system of Derouet and Hartdegen
"would have yielded a device that not only takes depth measurements, but
also provides the additiona[al] benefit of permitting detection of surface
irregularities on the interior of the bone." Ans. 13.
Accordingly, we sustain the Examiner's rejection of independent
claims 1 and 24. Appellants chose not to present separate arguments for the
patentability of dependent claims 2-5, 7, and 10-12, and therefore, we also
sustain the Examiner's rejection of these dependent claims.
Claims 6 and 18-0bviousness over Derouet, Hartdegen, Guyer, and Dube
Claims 6 and 18 depend from independent claims 1 and 13.
Appellants chose not to present separate arguments for the patentability of
claims 6 and 18. App. Br. 12-14; Reply Br. 10-11.6 Because we sustain the
Examiner's rejection of independent claims 1 and 13, we also sustain the
Examiner's rejection of claims 6 and 18 for the reasons stated supra.
DECISION
The Examiner's rejections of claims 1-7, 10-19, and 21-24 are
AFFIRMED.
6 Regarding claim 6, Appellants contend that "Dube does not disclose or
suggest ever contacting an interior of the vertebra to determine a length of a
bone fixation element nor a drill having a stop and the related recited
features." Reply Br. 10. However, the Examiner relies on the combined
teachings of Derouet, Hartdegen, and Guyer for these limitations. See Ans.
6-7.
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Appeal2014-003771
Application 13/011,307
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
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