Ex Parte Medoff

Patent Trial and Appeal Board

Dec 30, 2016

13103658 (P.T.A.B. Dec. 30, 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.
13/103,658 05/09/2011 Robert J. Medoff 4249-022 9722
51500 7590 01/04/2017
PATZIK, FRANK & SAMOTNY LTD.
150 SOUTH WACKER DRIVE
SUITE 1500
CHICAGO, IL 60606
EXAMINER
SEVILLA, CHRISTIAN ANTHONY
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
01/04/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT J. MEDOFF
Appeal 2015-001364
Application 13/103,658
Technology Center 3700
Before: EDWARD A. BROWN, BENJAMIN D. M. WOOD, and
FREDERICK C. LANEY, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-001364
Application 13/103,658
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1-28. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
The claims are directed to a contoured bone plate for fracture fixation
having hook members. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A bone plate for fixing fractures
having a small terminal fragment, comprising:
an elongated body having a first end, a
substantially linear, elongated second region
terminating at a second end, and flared region
disposed between the first end and the second
region, the flared region having a first
predominantly longitudinal axis disposed at an
angle relative to a predominantly longitudinal
axis of the substantially linear, elongated
second region;
at least one hook member proximate the first
end and having a prong region having a second
predominantly longitudinal axis;
wherein the first predominantly longitudinal
axis and the second predominantly longitudinal
axis are substantially parallel to each other.
App. Br. 22 (Claims App.).
REFERENCES
THE INVENTION
Konstantinou
Getscher
Berger
Ginn
Hanson
US 3,554,193
US 3,824,995
US 5,674,222
US 6,110,190
US 6,635,060 B2
Jan. 12, 1971
July 23, 1974
Oct. 7, 1997
Aug. 29, 2000
Oct. 21,2003
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Application 13/103,658
REJECTIONS
Claims 1, 2, 4-8, 10-13, and 28 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Getscher and Berger. Final Act. 2.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Getscher, Berger, and Ginn. Id. at 6-8.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Getscher, Berger, and Konstantinou. Id. at 8.
Claims 14-20 and 22-25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Getscher and Ginn. Id. at 8-11.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Getscher, Ginn, and Konstantinou. Id. at 11.
Claim 26 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Getscher, Berger, and Hanson. Id. at 12.
Claim 27 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Getscher, Berger, Ginn, and Hanson. Id. at 12-13.
ANALYSIS
Appellant argues the rejections in two groups. Group 1 consists of the
rejections of claims 1-13 and 26-28, which are based primarily on the
combination of Getscher and Berger. App. Br. 10; Final Act. 2-8, 12-13.
Group 2 consists of the rejections of claims 14-25, which are based
primarily on the combination of Getscher and Ginn. App. Br. 10; Final Act.
8-11. We address each group separately.
Group 1, Claims 1—13 and 26—28
Appellant treats independent claim 1 as representative of the claims
subject to the Group 1 rejections. App. Br. 10.
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Application 13/103,658
In the Final Action the Examiner found that plate portions 16 and 18
of Getscher’s trochanteric plate 10 correspond to the claimed “flared
region.” Final Act. 3; see Getscher, Fig. 6, 2:3-7. Appellant disputes this
finding. App. Br. 11. According to Appellant, the Specification “clearly
and repeatedly defines ‘flared’ to mean the same as ‘angled.’” Id. at 11-12
(citing Spec., 5:3-6, 10:13-16, Fig. 2C). Appellant asserts that it is
improper to consider Getscher’s portions 16 and 18 to be a “single, overall
angled, or flared region.” Id. at 14. In the Answer the Examiner disagrees
that claim 1 excludes portions 16 and 18 from being a single “flared region.”
Ans. 11.
Appellant has not persuaded us that the Examiner erred in finding that
portions 16 and 18 of Getscher’s trochanteric plate 10 correspond to the
claimed “flared region.” The Specification does not expressly define “flared
region.” The excerpts on which Appellant relies to support its contention
that “flared” means “angled” actually describe a specific embodiment of the
invention, not the invention itself, and do not expressly limit the meaning of
“flared.” Therefore, we decline to limit the meaning of “flared region” on
the basis of these excerpts.1 See In re Bigio, 381 F.3d 1320, 1325-26 (Fed.
Cir. 2004) (“Absent claim language carrying a narrow meaning, the PTO
should only limit the claim based on the specification or prosecution history
when those sources expressly disclaim the broader definition.”) (citation
omitted); SuperGuide Corp. v. DirecTVEnterps., Inc., 358 F.3d 870, 875
(Fed. Cir. 2004) (holding that “a particular embodiment appearing in the
1 Even if we agreed with Appellant that “flared” means “angled,” the
portions of Getscher’s bone plate labeled 16 and 18, combined, can
reasonably be said to be “angled.”
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Application 13/103,658
written description may not be read into a claim when the claim language is
broader than the embodiment”) (citation omitted). Essentially, Appellant
asks us to read the “substantially linear” limitation that applies to the
claimed “second region” also to the claimed “flared region.” The
Specification, however, does not expressly or implicitly disclaim a broader
definition of “flared region” that would cover regions that are not
substantially linear. Further, Appellant does not point us to any evidence
that the plain meaning of “flared” or “flared region” should be so narrowly
construed. Thus, if Appellant desires that the claimed “flared region” be
limited to a substantially linear region, as the claimed “second region” is,
then such a limitation should be made explicit.
Appellant next argues that “Berger adds nothing to Getscher.”
App. Br. 14. According to Appellant, claim 1 requires that “both the flared
region and the prong region . . . have longitudinal axes set at the same angle
relative to elongated body,” and because neither Getscher nor Berger teaches
this limitation, the combination cannot do so. Id. at 14. We are not
persuaded that the Examiner erred in this regard. First, we are not persuaded
that neither Getscher nor Berger teaches the above requirement. As
discussed above, the Examiner deemed Getscher’s portions 16 and 18 as
corresponding to the “flared region,” and thus found that the longitudinal
axis of Getscher’s flared region is parallel to the longitudinal axis of
Getscher’s prong region. Appellant has not convinced us that these findings
are erroneous. We are also not persuaded that “Berger adds nothing to
Getscher.” Berger teaches an “angled forked bone plate” consisting of a
“longitudinal shaft piece,” at one end of which “two prongs ... are attached
in [fork-like] fashion.” Berger, 1:4, 3:36-38, Fig. 1. “The . . . prong-facing
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Application 13/103,658
part of the shaft is bent back ... to attain a better fit to the anatomy of the
femur.” Id. at 3:43^16. Appellant has not persuaded us that combining this
teaching with Getscher would necessitate changing the relationship between
the longitudinal axes of Getscher’s flared region and its prong region.
Finally, Appellant has not shown that the Examiner’s reason for
combining Getscher and Berger, “to provide a suitable geometry for a bone
plate” (Ans. 5-6), is erroneous. We understand the Examiner’s position to
be that a person of ordinary skill in the art at the time of the invention would
have been motivated to shape bone plates to conform to the shape of the
bone on which the plate is to be attached. The record supports this position.
Getscher, for example, shows that its hooked bone plate is designed to
closely match the contour of the femur. Getscher, 2:29-31, Fig. 2. This is
significant because Getscher’s bone plate is intended to treat bone fractures
similar to those that Appellant’s bone plate is intended to treat: In
Getscher’s case, the reattaching of the greater trochanter fragment to the
shaft of the femur. Id. at 1:11-12, 23-25. Berger teaches that hooked bone
plates are “adaptable to a variety of applications,” not just femur repairs. Id.
at 1:5-6, 10-13. Thus, modifying Getscher’s hooked bone plate to treat
similar fractures of other bones would have constituted a “predictable
variation” of Getscher, within the skill of a person of ordinary skill in the art
at the time of the invention. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 417 (2007) (“If a person of ordinary skill can implement a predictable
variation [of a work], § 103 likely bars its patentability.”). Moreover,
modifying Getscher to conform to the lateral malleolus of the fibula would
result in the configuration recited in claim 1. Spec. 11:3-16. Thus, as the
Examiner states, such modification would have required determining
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“optimum or workable ranges” of the angles between the longitudinal axes,
“involving only routine skill in the art.” Ans. 14.
Because Appellant has not shown that the Examiner erred in
determining that claim 1 would have been obvious over Getscher and
Berger, we sustain that rejection. Likewise, we sustain the rejections of
dependent claims 2-13 and 26-28.
Group 2, Claims 14 25
Independent claim 14 is similar to independent claim 1, except that it
requires “at least two hook members proximate the first end, each of the
hook members having an associated apex,” wherein “the distance between
the second end and the apex of one of the hook members is greater than the
distance between the second end and the apex of another of the hook
members.” App. Br. 23 (Claims App.). According to Appellant, this
limitation requires a bone plate having a particular “asymmetrical
configuration.” Id. at 15. Claims 15-25 ultimately depend from claim 14.
In the Final Action, the Examiner noted that Getscher does not teach
this limitation, but found that “Ginn discloses a medical device wherein
lengths of structures may be equal or unequal.” Final Act. 9 (citing Ginn,
8:1-5). The Examiner further found that “[i]t would have been obvious to
one having ordinary skill in the art at the time the invention was made to
combine the teaching of lengths of structures being equal or unequal, as
taught by Ginn, to the first distance and the second distance as per Getscher,
in order to provide a relative relationship between dimensions.” Id. The
Examiner additionally asserted that “it would have been an obvious matter
of design choice to increase or decrease the first distance since such a
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Application 13/103,658
modification would have involved a change in the size of a component,
which is within the level of ordinary skill in the art.” Id.
In response, Appellant argues that Ginn is not analogous art, and that
“a person of ordinary skill in the art of bone fracture fixation, attempting to
address Appellant’s clearly identified problem [repairing fractures close to
the end of a bone], cannot reasonably be expected or motivated to consult
the art of instruments for detaching or manipulating blood vessels in the
course of coronary bypass surgery.” App. Br. 17-18. Appellant further
argues that claim 14 does not “involve any change in the length or size of
any component or structure,” but rather “recites a bone plate having an
asymmetrical configuration” that is “accomplished by varying the respective
positioning of the substantially identically-sized hook members relative to a
common reference point—the second end of the bone plate.” Id. at 20.
In the Answer the Examiner contends that “Ginn is only relied upon
as an example of a teaching that lengths of components may be the same or
different, a simple teaching broadly applicable to any medical device having
components of approximately similar length.” Ans. 12. Further, according
to the Examiner, “[b]oth the Getscher and Ginn references pertain to devices
for holding tissue” and both Getscher and Ginn “are classified in class 606,
surgery.”
We do not sustain this rejection because the Examiner has not set
forth a sufficient reason to combine Getscher and Ginn. To establish a
prima facie case that a claim is obvious based on teachings of multiple prior
art references, the Examiner must articulate some reasoning with “some
rational underpinning to support the legal conclusion of obviousness.” In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (citation omitted). We do not
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consider “providing] a relative relationship between dimensions” to satisfy
this requirement. See Ans. 7-8. The Examiner has not identified evidence,
in Ginn or otherwise, suggesting that a person of ordinary skill in the art
would have had reason to change the distance from the second end to one of
the hook apex’s as recited in claim 14. While the Examiner may be correct
that the “lengths of components may be the same or different,” that does not
provide a reason why a person of ordinary skill in the art would modify
Getscher’s bone plate to meet the requirements of claim 14. See Belden Inc.
v. Berk-TekLLC, 805 F.3d 1064, 1075 (Fed. Cir. 2015) (holding ttmtKSR
“does not establish that it suffices for obviousness that a variation of the
prior art would predictably work, but requires consideration of whether . . .
the hypothetical skilled artisan would recognize the potential benefits and
pursue the variation” (citing KSR, 550 U.S. at 417)).
Nor do we agree that the Examiner has shown that such modification
is a “design choice,” because there is no evidence that making the change
would not change the performance or operation of the device. See In re Gal,
980 F.2d 717, 719 (Fed. Cir. 1992) (finding of obvious design choice
precluded when claimed structure and the function it performs are different
from the prior art). On the contrary, the Specification indicates that the
resulting asymmetrical configuration permits the hook members and the
hook plate overall “to more closely approximate the often asymmetric
contour of the distal surface of the fibula at the lateral malleolus.” Spec.
13:22-14:2.
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DECISION
For the above reasons, the Examiner’s rejection of claims 1-13 and
26-28 under 35 U.S.C. § 103(a) as unpatentable is affirmed, and the
rejection of claims 14-25 under 35 U.S.C. § 103(a) as unpatentable 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)(l)(iv).
AFFIRMED-IN-PART
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