Ex Parte Mutchler

Board of Patent Appeals and Interferences

May 28, 2010

10761185 (B.P.A.I. May. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte AUSTIN W. MUTCHLER
____________________

Appeal 2009-005348
Application 10/761,185
Technology Center 3700
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Decided: May 28, 2010
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Before JENNIFER D. BAHR, STEVEN D.A. McCARTHY
and MICHAEL W. O’NEILL, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s 1
decision finally rejecting claims 1-5 and 7-32. We have jurisdiction under 2
35 U.S.C. § 6(b). 3
The Examiner entered a new ground of rejection in the Answer, 4
rejecting claims 1-5, 10 and 21 under § 102(b) as being anticipated by5
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Application 10/761,185

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Ackeret (US 6,319,253 B1, issued Nov. 20, 2001). (Ans. 2). The Examiner 1
properly gave notice of the new ground of rejection. (Id.; Ans. 11). A 2
Technology Center Director approved the new ground of rejection. (Ans. 3
13). As the Answer indicated (Ans. 11-12), the Appellant was required to 4
respond to the new ground within two months in either of two ways: 1) 5
reopen prosecution (see 37 CFR § 41.39(a)(2)(b)(1)); or 2) maintain the 6
appeal by filing a reply brief as set forth in 37 CFR 41.41 (see 37 CFR 7
§ 41.39(a)(2)(b)(2)), “to avoid sua sponte dismissal of the appeal as to the 8
claims subject to the new ground of rejection.” (Ans. 12). According to the 9
record before us, the Appellant does not appear to have exercised either 10
option. 11
Accordingly, we DISMISS the appeal as to the claims subject to the 12
new ground of rejection, namely, claims 1-5, 10 and 21. 13
Although the appeal is dismissed as to claim 1, the claim is illustrative 14
of the subject matter of the remaining claims on appeal: 15
1. An intermedullary nail for use with a 16
first fastener and a second fastener for use in 17
orthopaedic surgery, said nail comprising a body 18
defining a longitudinal axis thereof, the body 19
having a continuous edge defining an aperture 20
therethrough, the continuous edge having opposed 21
straight parts and curved parts, the aperture having 22
a first portion defined by the opposed straight parts 23
of the continuous edge for cooperation with the 24
first fastener to provide dynamic fixation and 25
having two spaced cylindrical end portions defined 26
by the curved parts of the continuous edge for 27
cooperation with the second fastener to provide 28
static fixation, the first portion of the aperture 29
lying between the cylindrical portions of the 30
aperture, the cylindrical portions of the aperture 31
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having widths greater than the distance between 1
the opposed straight parts of the continuous edge 2
defining the first portion of the aperture, the 3
aperture being symmetrical about a longitudinal 4
axis extending between the cylindrical portions 5
and between the straight parts of the edge. 6
We sustain the rejection of claim 8 under 35 U.S.C. § 103(a) as being 7
unpatentable over Ackeret and Sohngen (US 2003/0195515, publ. Oct. 16, 8
2003). We do not sustain the rejections of claims 11-16, 18, 20, 22-27, 29, 9
31 and 32 under 35 U.S.C. § 103(a) as being unpatentable over Ackeret and 10
Sohngen. 11
We also sustain the rejection of claim 7 under § 103(a) as being 12
unpatentable over Ackeret and Emilio (US 5,814,047, issued Sep. 29, 1998) 13
and the rejection of claim 9 under § 103(a) as being unpatentable over 14
Ackeret, Sohngen and Emilio. We do not sustain the rejections of claims 17, 15
19, 28 and 30 under § 103(a) as being unpatentable over Ackeret, Sohngen 16
and Emilio. 17
18
The Rejection of Claim 8 Under § 103(a) as Being Unpatentable Over 19
Ackeret and Sohngen; the Rejection of Claim 7 Under § 103(a) as Being 20
Unpatentable Over Ackeret and Emilio; and the Rejection of Claim 9 Under 21
§ 103(a) as Being Unpatentable Over Ackeret, Sohngen and Emilio 22
Claims 7 and 8 each depend from claim 1 while claim 9 depends from 23
claim 8. Parent claim 1 recites “the aperture being symmetrical about a 24
longitudinal axis extending between the cylindrical portions and between the 25
straight parts of the edge.” When entering the new ground of rejection in the 26
Answer, the Examiner made a finding that Ackeret’s aperture or locking 27
hole 1 is symmetrical about a longitudinal axis extending between the 28
cylindrical portions and between the straight parts of the edge. 29
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Regarding the symmetry of the aperture, if one 1
considers the axis of ref. 3 in Fig. 1a as the 2
‘longitudinal axis’ of the claims and one rotates the 3
nail as shown by ninety degrees, then the 4
longitudinal axis will split the entire slot in two 5
symmetrical portions, one on the left and one on 6
the right. By rotating the entire nail shown in Fig. 7
1a by ninety degrees, the slot is bilaterally 8
symmetrical about the longitudinal axis of ref. 3. 9
10
(Ans. 3). The Appellant elected not to file a Reply Brief challenging this 11
finding. Since the finding is unchallenged, we adopt the finding as our 12
own.1 13
The Appellant contends that any proposed modification of the 14
aperture or locking hole 1 disclosed in Ackeret would have rendered the 15
locking hole 1 unsatisfactory for the intended purpose of receiving spiral 16
blades. (Br. 7-8; see also Br. 10 and 11). The argument is moot: Since 17

1 Alternatively, we observe that claim 1 recites that the aperture is
symmetrical about the longitudinal axis. The term “symmetrical about the
longitudinal axis” is sufficiently broad to encompass an aperture having a
shape which does not change if rotated 180° around the longitudinal axis.
This interpretation of the term “symmetrical about the longitudinal axis” is
consistent with the Specification since the apertures shown, for example, in
Figures 1 and 7 of the Appellant’s drawing figures appear to be rotationally
symmetric about the longitudinal axes 116 and 416.

Ackeret describes the elongated passage 4 of the locking hole 1 as
running diametrically transversely to the longitudinal axis 3. Ackeret also
describes the passage 6 as diametrically crossing the nail 2. (Ackeret, col. 2,
ll. 51-67). Figure 1a of Ackeret depicts the borehole 5 as running parallel to
the elongated passage 4. These observations imply that the shape of any
cross-section of the locking hole 1 in any plane perpendicular to the
longitudinal axis would remain unchanged were the nail 2 rotated 180°
around the longitudinal axis. In other words, Ackeret’s aperture or locking
hole 1 is symmetrical about the longitudinal axis 3.
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Ackeret discloses an intermedullary nail including an aperture which is 1
“symmetrical about a longitudinal axis extending between the cylindrical 2
portions and between the straight parts of the edge,” the Examiner need 3
propose no modification of Ackeret’s nail to meet this limitation. We 4
sustain the rejections under § 103(a) of claim 7 as being unpatentable over 5
Ackeret and Emilio; of claim 8 as being unpatentable over Ackeret and 6
Sohngen; and of claim 9 as being unpatentable over Ackeret, Sohngen and 7
Emilio. 8
9
The Rejections of Claims 11-16, 18, 20, 22-27, 29, 31 and 32 Under 10
§ 103(a) as Being Unpatentable Over Ackeret and Sohngen and the 11
Rejections of Claims 17, 19, 28 and 30 Under § 103(a) as Being 12
Unpatentable Over Ackeret, Sohngen and Emilio 13
Claim 11 recites a kit for use in orthopaedic surgery. The kit includes 14
a first fastener, a second fastener and an intermedullary nail. The 15
intermedullary nail includes a body having an edge defining an aperture 16
therethrough. The edge includes first substantially parallel parts defining a 17
first portion of the aperture sized and shaped to cooperate with the first 18
fastener to provide dynamic fixation. A maximum outer diameter of the 19
shank of the first fastener is less than the distance between the first 20
substantially parallel parts of the edge defining the first portion of the 21
aperture. A maximum outer diameter of the shank of the second fastener is 22
greater than the distance between the first substantially parallel parts of the 23
edge defining the first portion of the aperture. 24
Claim 22 recites a kit for use in orthopaedic surgery. The kit includes 25
a first fastener, a second fastener and an intermedullary nail. The 26
intermedullary nail includes a body having an edge defining an aperture 27
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therethrough. The edge has a curved part and opposed straight parts. The 1
aperture defines an enlarged portion thereof along the curved edge. The 2
aperture has a constricted portion defined by the two opposing straight parts 3
of the edge. A maximum outer diameter of the shank of the first fastener is 4
less than a distance between the two opposing parts of the edge defining the 5
constricted portion of the aperture to allow for dynamic fixation when the 6
first fastener is used with the intermedullary nail. A maximum outer 7
diameter of the shank of the second fastener is great enough to allow for 8
static fixation when the second fastener is placed in the enlarged portion of 9
the aperture. 10
With respect to claim 11, the Examiner finds that Figure 2a of Ackeret 11
discloses a kit including a first fastener 11 and a second fastener 10. (Ans. 12
5). The Examiner does not explain how a maximum outer diameter of the 13
shank of the first fastener 11 is less than the distance between first 14
substantially parallel parts or opposed straight parts of an edge defining the 15
aperture or locking hole 1. That is, the Examiner does not explain how a 16
maximum outer diameter of the shank of the locking screw 11 is less than a 17
width of the slot 6. Instead, the relative dimensions of the parts shown in 18
Figure 2b of Ackeret indicate that the maximum outer diameter of the shank 19
of the locking screw 11 is not necessarily less than the width of the slot 6. 20
The Examiner’s finding that Figure 2a of Ackeret discloses a kit including a 21
first fastener 11 and a second fastener 10 does not provide a rational 22
underpinning for the conclusion that the subject matter of claim 11 (or of 23
claim 22) would have been obvious. 24
With respect to claim 22, the Examiner finds that Sohngen discloses 25
an intermedullary nail and a first fastener 32. The Examiner further finds 26
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that the maximum outer diameter of the shank of the first fastener 32 is less 1
than the distance between first substantially parallel parts of an edge 2
defining a first portion, namely, the parallel sides of the longitudinal slot 56 3
shown in Figure 8 of Sohngen. The Examiner reasons that it would have 4
been obvious to have utilized the “relative dimensions of the slot and 5
fastener as taught by Sohngen with the intramedullary nail of Ackeret et al., 6
in order to make the implant dynamic, which will work to decrease the load 7
carried by the fasteners and nail member and transfer the load to the fracture 8
as the fracture heals.” (Ans. 7). The Examiner further reasons that, “if one 9
did not modify the fastener in this manner as taught by Sohngen, then the 10
fastener could not slide the entire length of the slot and dynamization would 11
be hindered and healing at the fracture site would also be hindered.” (Ans. 12
11). 13
The Examiner provides insufficient evidence and technical reasoning 14
to show that providing a kit combining an intermedullary nail; a first 15
fastener with a shank having a maximum outer diameter less than a distance 16
between first substantially parallel parts of an edge defining a first portion of 17
an aperture or a distance between two opposing parts of an edge defining a 18
constricted portion of the aperture; a second fastener including a shank 19
having a maximum outer diameter greater than the distance between the first 20
substantially parallel parts of the edge defining the first portion of the 21
aperture or great enough to allow for static fixation when the second fastener 22
is placed in the enlarged portion of the aperture, was a known solution to any 23
technical problem at the time the subject matter of claim 11 or of claim 22 24
was made. 25
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The screws 32 shown in Figures 9 and 14 of Sohngen do not appear to 1
slide between the parallel sides of the longitudinal slots 56 in a manner 2
which might have suggested the Examiner’s proposed modification of 3
Ackeret’s nail to facilitate dynamic fixation. Instead, the screws 32 shown 4
in Figures 9 and 11-13 appear to be held within circular openings 54 through 5
an insert 50 secured within a chamber 34 in a proximal end 24 of the nail 18. 6
(See Sohngen 2, paras. 0039-42; id. 3, para. 0048). Sohngen teaches 7
providing dynamic fixation by forming the insert 50 from resorbable 8
material (see Sohngen 3, para. 0045), not by providing a screw with a 9
relatively small maximum diameter so as to fit into a constricted portion of 10
an aperture. 11
As the Appellant points out (see, e.g., Br. 9), both Ackeret and 12
Sohngen disclose elongated slots (e.g., elongated passage 4 in Figure 1 of 13
Ackeret and the upper opening 102 in Figure 15 of Sohngen) which one of 14
ordinary skill in the art might have used for dynamic fixation. The 15
Examiner has not provided any reasoning sufficient to show that one of 16
ordinary skill in the art familiar with the combined teachings of Ackeret and 17
Sohngen would have had reason to use a fastener sized to fit within a 18
constricted passage (such as the slot 6 in Figure 1 of Ackeret) to dynamically 19
affix an intermedullary nail. 20
We do not sustain the rejection of claim 11, the rejections of its 21
dependent claims 12-16, 18, 20, and 32, under § 103(a) as being 22
unpatentable over Ackeret and Sohngen. Neither do we sustain the rejection 23
of claim 22, or the rejections of its dependent claims 23-27, 29 and 31, under 24
§ 103(a) as being unpatentable over Ackeret and Sohngen. Furthermore, the 25
Examiner cites Emilio only for its disclosure of a body defining threads 26
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therein adjacent to first and second cylindrical ends for engagement and 1
guidance of screws. (Ans. 9, citing Emilio, col. 5, ll. 19-24 and fig. 12). 2
The Examiner does not cite Emilio for any teaching which might make up 3
for the deficiencies of the teachings of Ackeret and Sohngen for purposes of 4
the rejections of claims 17, 19, 28 and 30 under § 103(a). We do not sustain 5
the rejections of claims 17, 19, 28 and 30 under § 103(a) as being 6
unpatentable over Ackeret, Sohngen and Emilio. 7
8
DECISION 9
We DISMISS the appeal as to claims 1-5, 10 and 21. 10
We AFFIRM the Examiner’s decision rejecting claims 7-9. 11
We REVERSE the Examiner’s decision rejecting claims 11-20 and 12
22-32 13
No time period for taking any subsequent action in connection with 14
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 15
§ 1.136(a)(1)(iv) (2007). 16
17
AFFIRMED-IN-PART 18
19
Klh 20
21
22
PHILIP S. JOHNSON 23
JOHNSON & JOHNSON 24
ONE JOHNSON & JOHNSON PLAZA 25
NEW BRUNSWICK, NJ 08933-7003 26