Ex Parte MATHIEU et alDownload PDFPatent Trials and Appeals BoardMay 13, 201913919522 - (D) (P.T.A.B. May. 13, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/919,522 06/17/2013 Claude MATHIEU 76960 7590 05/13/2019 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. 10139/11608 2583 EXAMINER CARTER, TARA ROSE E ART UNIT PAPER NUMBER 3773 MAIL DATE DELIVERY MODE 05/13/2019 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 CLAUDE MATHIEU, ROBERT PRIGG, and HARALD SANER1 Appeal2018-007054 Application 13/919,522 Technology Center 3700 Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and LEE L. STEPINA, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a Decision on Appeal, under 35 U.S.C. § 134(a), from the Examiner's final rejection of claims 52-70. App. Br. 1. Claims 1-51 have been canceled. See App. Br. 19 (Claims Appendix). We have jurisdiction under 35 U.S.C. § 6(b ). For the reasons explained below, we find error in the Examiner's rejections of these claims. Accordingly, we REVERSE the Examiner's rejections. 1 "This application is assigned to DePuy Synthes Products, Inc." App. Br. 2. We proceed on the basis that, for the purposes of this Appeal, DePuy Synthes Products, Inc. is the "Appellant." Appeal2018-007054 Application 13/919,522 CLAIMED SUBJECT MATTER The disclosed subject matter "relates to a device for osteosynthesis, and more particularly, to a fixation device, such as a bone plate, having a polyaxial bushing and screw assembly for securing such a device to bone." Spec. ,r 2. Claims 52 and 62 are independent. Claim 52 is illustrative of the claims on appeal and is reproduced below. 52. A bone plate system, comprising: a bone plate having a bottom surface for contacting bone, an upper surface and a non-circular through hole extending from the bottom surface to the upper surface; and a bushing mounted within the through hole, the bushing including a central bore sized and shaped to receive a bone fixation element, a non-circular shape of the bushing in a plane orthogonal to a central axis of the central bore is substantially the same shape as the through hole so that the bushing is secured against rotation relative to the bone plate about its central axis; wherein the bone fixation element has a shaft for anchoring within a bone and a head sized and shaped to be lockingly received within the central bore. REFERENCES Allison US 2,549,998 Dall et al. US 5,665,089 Pohndorf et al. US 5,904,683 Richelsoph US 6,017,345 Wagner et al. US 6,030,389 (hereinafter "Wagner '389") Eisermann et al. US 6,342,055 B 1 Wagner et al. US 2002/0058939 Al (hereinafter "Wagner '939") 2 Apr. 24, 1951 Sept. 9, 1997 May 18, 1999 Jan.25,2000 Feb.29,2000 Jan.29,2002 May 16, 2002 Appeal2018-007054 Application 13/919,522 THE REJECTIONS ON APPEAL 2 Claims 52, 58---60, and 69 are rejected under 35 U.S.C. § 102(b) as anticipated by Dall. Claim 53 is rejected under 35 U.S.C. § 103(a) as unpatentable over Dall and Allison. Claims 54, 55, and 61 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dall and Wagner '939. Claim 56 is rejected under 35 U.S.C. § 103(a) as unpatentable over Dall and Pohndorf. Claim 57 is rejected under 35 U.S.C. § 103(a) as unpatentable over Dall, Pohndorf, and Richelsoph. Claims 62---68 and 70 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dall, Wagner '939, Pohndorf, and Richelsoph. ANALYSIS The rejection of claims 52, 58-60, and 69 as anticipated by Dall Independent claim 52 (and hence dependent claims 58-60 and 69) is directed to a bone plate having a non-circular through hole, and a bushing mounted within this through hole. Claim 52 specifically recites that the shape of the bushing "is substantially the same shape as the through hole" 2 The Examiner withdrew the following four grounds of rejection: (a) the rejection of claims 52, 54, 55, 58-61, and 69 under 35 U.S.C. § 102(b) as anticipated by Wagner '389; (b) the rejection of claim 53 under 35 U.S.C. § 103(a) over Wagner '389 and Eisermann; ( c) the rejection of claim 56 under 35 U.S.C. § 103(a) over Wagner '389 and Pohndorf; and, (d) the rejection of claims 57, 62-68, and 70 under 35 U.S.C. § 103(a) over Wagner '389, Pohndorf, and Richelsoph. 3 Appeal2018-007054 Application 13/919,522 and that this is "so that the bushing is secured against rotation relative to the bone plate." Appellant argues that Dall's corresponding bushing (see Dall's fixation means 3 8) does not have substantially the same shape as Dall's corresponding through hole (see Dall's opening 44). 3 See App. Br. 11-12; Reply Br. 6-7. The Examiner references a passage in Dall stating that opening 44 is configured to "define an engagement formation delimiting a socket in the opening 44." Final Act. 9 (replicating Dall 4:3-24); see also Ans. 4 (replicating Dall 4:3-29). However, the delimiting that occurs is with respect to the socket, not the larger opening around the socket. Thus, this passage does not indicate that opening 44 and fixation means 3 8 ( which engage the socket formation) are "substantially the same shape" as recited. Dall also discusses the relative geometry between opening 44 and fixation 3 Appellant additionally argues that Dall's fixation means 38 is rotatable within Dall's opening 44, contrary to claim 52. See App. Br. 9-11; Reply Br. 3---6. Dall describes a problem with prior devices that "tend[] to provide relatively little resistance to some forms of displacement, e.g. relative rotation of components." Dall 1:55-57. Dall teaches that although "[a] screwed connection is commonly quite good at resisting relative displacement such as rotation," such resistance is reduced "where the bone is weak." Dall 1:61---63. To address this problem, Dall teaches an assembly that positions "screw fixation means" (i.e., able to resist relative rotation) where the bone is strong. See Dall 2:7-28. Dall specifically teaches that "first and second fixation means [have] complementary mutual engagement formations so that they can be located together to form a composite fixation means capable of fixation." Dall 2: 18-21. Thus, we are not persuaded by Appellant's contention that "Dall never discloses or suggests that the single- screw fixation means 38 received in the rounded taper portions 50 of the opening 44 is prevented from rotating" as recited. App. Br. 9. 4 Appeal2018-007054 Application 13/919,522 means 38. See Dall 4:19-24. Dall states that the distance between tapered faces 54 of the fixation means "substantially corresponds to" the distance between tapers 50 of opening 44, and that the adjoining sides of the fixation means 38 "is substantially narrower than the opening 44" in that such sides are only equal to the "longitudinal extent of the taper portions 50" in opening 44. Dall 4:19-24; see also Dall Figs. 3, 4. Thus, there is merit to Appellant's assertion "that the gaps left in the opening 44 when the single- screw fixation means 38 is received therein attest to this clear difference in shape." App. Br. 12; Reply Br. 6; see also Dall Fig. 2. In view of the above, the Examiner has not established by a preponderance of the evidence that Dall anticipates the limitation of "a bushing mounted within the through hole, the bushing ... is substantially the same shape as the through hole so that the bushing is secured against rotation relative to the bone plate" ( emphasis added). In other words, while it is understood that Dell's bushing is secured against rotation relative to the bone plate (see supra), Dell's bushing is not "substantially the same shape as the through hole" as also recited. We do not sustain the Examiner's rejection of claims 52, 58-60, and 69 as being anticipated by Dall. The rejection of (a) claim 53 as unpatentable over Dall and Allison; (b) claims 54, 55, and 61 as unpatentable over Dall and Wagner '939; (c) claim 56 as unpatentable over Dall and Pohndorf; and, (d) claim 57 as unpatentable over Dall, Pohndorf and Richelsoph For each rejection, the Examiner relies on the teachings of Dall "as applied to claim 52" and relies on the additional references for teaching the additional limitations recited in these dependent claims. See Final Act. 16- 20. We do not sustain these rejections since the additional references are not relied upon to cure the above defect of Dall. 5 Appeal2018-007054 Application 13/919,522 The rejection of claims 62-68 and 70 as unpatentable over Dall, Wagner '939, Pohndorf, and Richelsoph Independent claim 62 includes limitations similar to that discussed above regarding independent claim 52. 4 The Examiner relies on Dall for teaching this limitation. See Final Act. 21. The Examiner relies on Wagner '939, Pohndorf, and Richelsoph for teachings directed to other limitations of claim 62, not this one. See Final Act. 22-23. Accordingly, consistent with the above, we are not persuaded Dall teaches the limitation directed to "a shape of the bushing being substantially the same as a shape of the through hole." We do not sustain the Examiner's rejection of claims 62-68 and 70 as being obvious over Dall, Wagner '939, Pohndorf, and Richelsoph. DECISION The Examiner's rejection of claims 52-70 under 35 U.S.C. § 103(a) is reversed. REVERSED 4 Claim 62 recites "a shape of the bushing being substantially the same as a shape of the through hole such that the bushing is non-rotatable ... relative to the through hole." 6 Copy with citationCopy as parenthetical citation