Ex Parte Modi

Patent Trial and Appeal Board

Dec 21, 2016

13033320 (P.T.A.B. Dec. 21, 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.
13/033,320 02/23/2011 Abhishek Modi 10139/20402 (T01198US1) 8620
76960 7590
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
12/21/2016 EXAMINER
SHIRSAT, MARCELA
ART UNIT PAPER NUMBER
3776
MAIL DATE DELIVERY MODE
12/21/2016 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 ABHISHEK MODI
Appeal 2014-0067781
Application 13/033,3202
Technology Center 3700
Before JOSEPH A. FISCHETTI, AMEE A. SHAH, and
MATTHEW S. METERS, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1—6.3 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Throughout this opinion, we refer to the Appellant’s Appeal Brief
(“Appeal Br.,” filed Oct. 23, 2013), Reply Brief (“Reply Br.,” filed May 23,
2014), and Specification (“Spec.,” filed Feb. 23, 2011), and to the
Examiner’s Answer (“Ans.,” mailed Apr. 16, 2014) and Final Office Action
(“Final Act.,” mailed June 14, 2013).
2 According to the Appellant, the real party in interest is “DePuy Synthes
Products, LLC. Johnson & Johnson, Inc. is the parent corporation of DePuy
Synthes Products, LLC.” Appeal Br. 2.
3 Claims 7—15 are withdrawn.
Appeal 2014-006778
Application 13/033,320
STATEMENT OF THE CASE
The Appellant’s invention is directed to “devices for treating fractures
and, in particular, to a device including a spiked tip to be used in
combination with a bone plate to facilitate reduction of a fracture.” Spec.
12.
Claim 1, the only independent claim, is illustrative of the subject
matter on appeal, and is reproduced below:
1. A system for treating a bone, comprising:
a bone plate extending longitudinally from a first end to a
second end and including a plurality of openings extending
therethrough;
a first hook member including a head sized and shaped to
be lockingly received within a first one of the openings at the
first end of the bone plate, the first hook member further
including a spiked portion extending distally from the head to a
sharp bone engaging distal end which, when the head is
lockingly received within the first opening, projects distally
from the bone plate toward a first target portion of bone to be
engaged thereby to temporarily maintain the first target of bone
in a desired spatial relation to the bone plate; and
a second hook member received within a second one of
the openings at the second end of the bone plate, the first and
second openings being separated by a distance selected to
preliminarily fixate the bone plate to provide compression
across a fracture of the bone.
Appeal Br., Claims App.
REJECTIONS
I. Claims 1^4 and 6 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Frigg (US 6,206,881 Bl, iss. Mar. 27, 2001). Final
Act. 2.
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Application 13/033,320
II. Claim 1 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Lin (US 2004/0236333 Al, pub. Nov. 25, 2004). Id. at 4.
III. Claim 1 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Allen (US 2006/0129151 Al, pub. June 15, 2006). Id. at 5.
IV. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Frigg and Thomas (US 5,413,444, iss. May 9, 1995). Id.
at 6.
V. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lin. Id. at 7.
ANALYSIS
Rejection I—Anticipation by Frigg
Rejection IV— Obviousness over Frigg and Thomas
The Appellant contends the Examiner’s rejection of independent
claim 1 is in error because Frigg does not disclose the first and second hook
members as recited. Appeal Br. 3. Specifically, the Appellant argues that
Frigg does not disclose a structure “for temporarily maintaining the bone
plate on the bone before permanent fixation by the screws” nor a structure
for “preliminarily fixing the bone plate to provide compression across a
fracture or any structure capable of functioning in this manner.” Id. at 3^4.
After careful review of the Appellant’s arguments presented in the Appeal
and Reply Briefs, we find the Appellant’s contention unpersuasive for at
least the reasons discussed below.
The Examiner finds that Frigg discloses the structure of the first and
second hook members as claimed. See Final Act. 2—3; Ans. 7—8.
Specifically, the Examiner finds that Frigg discloses a first hook member
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including a head sized to be lockingly received within a first opening, i.e., a
head with threads that engage the threads in the hole, and including a spiked
portion as claimed. Id. (citing Frigg, Figs. 1—4, 8, col. 2,11. 24—28). The
Examiner finds Frigg discloses a second hook member received within a
second opening that is separated by a distance selected. Id. (citing Frigg,
Figs. 1, 4, col. 1,11. 23—24, 60—67, and claim 1). The Examiner construes
“to temporarily maintain the first target of bone in a desired spatial relation
to the bone plate” and “to preliminary fixate the bone plate to provide
compression across a fracture of the bone” as intended uses of the first and
second hook elements. See id.; Ans. 7—8. Thus, the Examiner finds that the
structure of the first hook is capable of performing the intended use of
temporarily maintaining the bone plate in that the screw of Frigg can be
removed, and the structure of the second hook is capable of performing the
intended use providing compression during the temporary fixation. See
Final Act. 8; Ans. 8.
We agree with the Examiner’s claim construction. Claim 1 is directed
to an apparatus, i.e., a system, comprising a bone plate, a first hook member,
and a second hook member. The bone plate requires the structural elements
of a first end and a second end and a plurality of openings between. The
first hook member requires the structural elements of a head that is sized and
shaped such that it can be lockingly received within a first opening on the
bone plate, and a spiked portion extending distally from the head to a sharp
bone engaging distal end, which, when the head in lockingly received in the
opening, projects from the plate toward a bone. The second hook member
requires structure being received within a second opening of the bone plate.
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Application 13/033,320
The Appellant’s arguments that “to be engaged thereby to temporarily
maintain the first target of bone in a desired spatial relation to the bone
plate” is a structural element such that “the hook member 102 is structurally
differentiated from permanent fixation elements such as bone screws and
pins” (Appeal Br. 4, see also id. at 5) and that “preliminarily fixating the
bone plate to provide compression” is also a structural element {id. at 4
(emphasis omitted)) are unpersuasive. The Appellant has not shown how
being temporarily fixed affects the structure of the first hook member and
has not shown how fixating the bone plate to provide compression affects
the structure of the second hook member. The Specification provides that
“hook member 102 facilitates a preliminary fixation, allowing compression
across the fracture using the bone plate 104 as a tension band.” Spec. | 8.
Further, the Specification provides
The sharp tip 130 [of hook member 102] is pressed into this
target portion of bone to hold the bone plate 104 and this target
portion of bone in a desired spatial relationship to one another, at
least until the plate 104 is permanently coupled to the various
portions of the bone. The sharp tip 130 may be impacted into the
bone and/or engaged with a pre-drilled hole in the bone.
The user then engages the target portions of bone with the
corresponding hook members 102 to temporarily hold the bone
fragments in place. For example, the hook members 102 may be
impacted into the target portions of the bone using a bone tamp,
a mallet and/or other impaction device. Alternatively, the bone
may be pre-drilled with small holes corresponding to a position
of each of the hook members 102 such that the sharp tips 130
engage the pre-drilled holes when the plate 104 is placed over
and pressed into the bone.
Id. at || 11, 13. The Specification, thus, provides that the hook elements are
to be used by the user for the purpose of temporarily fixing the bone plate
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and allowing compression. The Specification, including the claim, does not
provide that the structure of the hook element is configured differently for a
temporary fixation than for a permanent fixation, or for providing
compression or not. That the hook members can be impacted using a mallet
or engaged into pre-drilled holes indicates that there is no structural
difference between a structure for temporary fixation and a structure for
permanent fixation. The Appellant’s statement that claim 1 recites
“structural features, particularly shape and size, that allow for the
performance of the desired functionality in a manner not achievable with
standard bone screws or pins” (Appeal Br. 5) is not supported. Although
claim 1 recites structural shape features of a spiked portion and an end that
projects distally, claim 1 does not recite structural features that differentiate
the functionality. Thus, we find that “to temporarily maintain the first
target” and “to preliminarily fixate the bone plate to provide compression”
are intended uses of the hook elements.
As such, we are not persuaded by the Appellant’s argument that the
bone screw of Frigg does not meet the claimed first and second hook
elements. We first note that preliminarily fixing the hook element before
bone screws permanently couple the plate to the bone (see Appeal Br. 5) is
not recited in claim 1. Furthermore, the step of preliminarily fixing the
element does not distinguish the structure of the element for the reasons
discussed above. The Appellant does not provide adequate evidence or
technical reasoning why the element of Frigg is not capable of being
removed, i.e., being temporary, and is not capable of allowing compression
using the bone plate.
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For the above reasons, we are unpersuaded of error on the part of the
Examiner in rejecting claim 1 as anticipated by Frigg. Thus, we sustain the
Examiner’s § 102 rejection as anticipated by Frigg of independent claim 1,
and also of dependent claims 2-4 and 6 that were not argued separately (see
Appeal Br. 6).
The Appellant contends the Examiner’s rejection of dependent
claim 5 under § 103(a) as obvious over Frigg and Thomas is in error because
Thomas does not cure the deficiencies of Frigg. Id. at 9. Because we find
no deficiency in the Examiner’s rejection as anticipated by Frigg, we are
unpersuaded of error on the part of the Examiner in rejecting claim 5 as
obvious over Frigg and Thomas. Thus, we sustain the Examiner’s § 103
rejection of dependent claim 5 as obvious over Frigg and Thomas.
Rejection II—Anticipation by Lin
Rejection V— Obviousness over Lin
The Appellant contends the Examiner’s rejection of independent
claim 1 is in error because Lin does not disclose the first and second hook
members as recited. Appeal Br. 7. Specifically, the Appellant argues that,
as argued with reference to the rejection regarding Frigg, Lin does not
disclose “that the cleats are in any way suited for preliminarily fixing a plate
60 and, more specifically, fixing the plate 60 in a manner that would provide
compression across a fracture of the bone.” Id.
The Examiner finds Lin discloses the bone plate as claimed, a first
hook member of a cleat including a head sized and shaped to be lockingly
received within a first opening and a spiked portion extending distally, and a
second hook member received within a second opening at a distance selected
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to preliminarily fixate the plate to provide compression. Final Act. 4—5
(citing Lin, Figs. 5a, 5e, 5f, ]Hf 43, 48). The Examiner finds that Lin’s cleats
are capable of performing the intended uses of the temporarily fixation and
compression of the fracture, and thus discloses the claimed structure. Ans.
9-10.
The Appellant’s arguments are unpersuasive. As discussed above,
temporarily maintaining and preliminarily fixing to provide compression are
intended uses of the first and second hooks. Lin discloses that the aperture
for mounting a cleat may be threaded, whereby the cleat can be threaded into
the plate. Lin || 39, 43; see also Ans. 9. Thus, as with Frigg, the Appellant
does not provide adequate evidence or technical reasoning why the cleat of
Lin is not capable of being removed, i.e., temporary, and of preliminarily
fixing the plate to provide compression.
For the above reasons, we are unpersuaded of error on the part of the
Examiner in rejecting claim 1 as anticipated by Lin. Thus, we sustain the
Examiner’s § 102 rejection as anticipated by Lin of independent claim 1.
The Appellant contends the Examiner’s rejection of dependent
claim 5 under § 103(a) as obvious over Lin based on the dependency from
claim 1. Appeal Br. 10. Thus, for the same reasons we sustain the rejection
of claim 1, we also sustain the Examiner’s § 103 rejection of dependent
claim 5 as obvious over Lin.
Rejection III—Anticipated by Allen
The Appellant contends the Examiner’s rejection of independent
claim 1 is in error because Allen does not disclose the first and second hook
members as recited. Appeal Br. 8. Specifically, the Appellant argues that,
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Application 13/033,320
as argued with reference to the rejections regarding Frigg and Lin, Allen
does not disclose “any structure for temporarily maintaining the bone plate
50 on the bone, particularly with a temporary maintenance on a first target of
the bone in a desired spatial relation to the bone plate 50” and does not
disclose “preliminarily fixating the bone plate 50 to provide compression.”
Id.
The Examiner finds Allen discloses the bone plate as claimed, a first
hook member of a cleat including a head sized and shaped to be lockingly
received within a first opening and a spiked portion extending distally, and a
second hook member received within a second opening at a distance selected
to preliminarily fixate the plate to provide compression. Final Act. 5—6
(citing Allen, Figs. 1, 5A, 5B, 148). The Examiner finds that Allen’s
structure is capable of performing the intended uses of temporarily fixation
and compression of the fracture because “the bone plate 50 can have a
plurality of holes 3 along its length to receive compression screw 70,” and
“since the screws are not stated to be permanently affixed to the bone plate
50[,] it is reasonable to interpret that they are capable of being removed by
the surgeon during the procedure should it be necessary,” and thus discloses
the claimed structure. Ans. 10—11.
The Appellant’s arguments are unpersuasive for reasons similar to
those discussed above. Allen discloses that a compression screw with a head
and threaded shaft is inserted within a hole of the bone plate. Allen 148.
Thus, as with Frigg, the Appellant does not provide adequate evidence or
technical reasoning why the compression screw of Allen is not capable of
being removed, i.e., temporary, and of preliminarily fixing the plate to
provide compression.
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For the above reasons, we are unpersuaded of error on the part of the
Examiner in rejecting claim 1 as anticipated by Allen. Thus, we sustain the
Examiner’s § 102 rejection as anticipated by Allen of independent claim 1.
DECISION
The Examiner’s rejections of claims 1—4 and 6 under 35 U.S.C.
§ 102(b) are AFFIRMED.
The Examiner’s rejections of claim 5 under 35 U.S.C. § 103(a) are
AFFIRMED.
No time period of 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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