Ex Parte Nardini

Patent Trial and Appeal Board

Jun 13, 2017

12857034 (P.T.A.B. Jun. 13, 2017)

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.
12/857,034 08/16/2010 Reto NARDINI 10139/19302 (T01161US1) 3261
76960 7590
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
06/14/2017 EXAMINER
SIPP, AMY R.
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
06/14/2017 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 NARDINI1
Appeal 2016-002292
Application 12/857,034
Technology Center 3700
Before ERIC B. GRIMES, JOHN G. NEW, and JOHN E. SCHNEIDER,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
appellants state the real party-in-interest is DePuy Synthes Products, Inc.,
subsidiary of Johnson & Johnson, Inc. App. Br. 2.
Appeal 2016-002292
Application 12/857,034
SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1—5, 8, 9, and 11. Specifically, claims
1—5, 8, and 9 stand rejected as unpatentable under 35 U.S.C. § 102(b) as
being anticipated by Poupitch et al. (US 2,918,841, December 29, 1959)
(“Poupitch”)
Claim 11 stands rejected as unpatentable under 35 U.S.C. § 103(a) as
being obvious over the combination of Poupitch and Frei (US 6,387,041 Bl,
August 14, 2008) (“Frei”).
We have jurisdiction under 35 U.S.C. § 6(b)
We REVERSE.
NATURE OF THE CLAIMED INVENTION
Appellant’s invention is directed to a bone fixation device. Abstract.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A bone fixation device, comprising:
a threaded shaft extending along a longitudinal axis from
a proximal end to a distal end;
a head located at the proximal end of the shaft;
a connector threadably engaging the threaded shaft and
movable therealong; and
an extension member rotatably movable along an axis
parallel to the longitudinal axis of the threaded shaft, the
extension member including a portion rotatable about the
threaded shaft between an insertion configuration for insertion
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Application 12/857,034
through an opening in a cortex of a bone to a locked
configuration when pressed against an inner surface of the
cortex, a profile of the portion of the extension member in the
locked configuration in a plane perpendicular to the longitudinal
axis of the shaft being increased relative to a profile of the portion
of the extension member in the insertion configuration to
distribute forces transmitted between the bone fixation apparatus
and the bone over an increased area of the cortex, wherein a
radial extent of the portion of the extension member remains the
same in the insertion and locked configurations.
App. Br. 8.
A. Rejection of claims 1—5, 8, and 9 under 35 U.S.C. $ 102(b)
Issue
Appellant argues the Examiner erred in finding Poupitch discloses an
extension member including a portion rotatable about a threaded shaft with
“a radial extent of the portion of the extension member being the same in the
insertion and locked configurations” as recited in claim 1. App. Br. 3.
Analysis
The Examiner finds Poupitch discloses all of the limitations recited in
claim 1. Final Act. 3—5. With specific reference to the limitation disputed
by Appellant, the Examiner finds Poupitch discloses a radial extent of the
portion of the extension member, specifically, the proximal portion of
sleeve/collar 42 as depicted in Figures 3, 5, and 7 of Poupitch, remains the
same in the insertion and locked configurations. Id. at 4.
Appellant argues that Poupitch discloses a blind fastener 20
comprising a self-tapping screw that is inserted and rotated into the
cylindrical shank sleeve 42 of the anchor 30 causing the screw to thread into
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Application 12/857,034
the sleeve and pull a ribbed portion 46 of the sleeve 42 toward the wall in a
manner expressly disavowed by the claims. App. Br. 4. Appellant contends
that the Examiner apparently finds that because a portion of Poupitch’s
device does not radially expand, it therefore reads on the claim language. Id.
According to Appellant, Poupitch discloses that, as the sleeve 42 is
threaded, the ribs are twisted so that the diameter of the ribbed portion 46 of
the sleeve increases radially outward to form a “ball.” Id. Therefore,
Appellant asserts, the radial extend of the shank must increase between the
insertion and locked configurations. Id.
Appellant disputes the Examiner’s interpretation of Poupitch as
disclosing that the proximal portion of the sleeve 42 corresponds to the
portion of the extension member that has a constant radial extent, whereas
the distal portion of the sleeve 42 corresponds to the connector recited in the
claim. App. Br. 4. Appellant asserts that the language of claim 1 makes
clear that the portion of the claimed device that contacts the bone (i.e., that
anchors the device in place) has a constant radial extent. Id.
Appellant argues that the Examiner’s interpretation of the claims as
applied to Poupitch is incorrect because it interchangeably uses the sleeve 42
to meet multiple elements of the claim in a manner that is at odds with the
plain meaning of the claim terms when read in view of the Specification and
as understood in the art. App. Br. 4. Appellant contends the Examiner
argues that the portion of the extension member rotatable about the threaded
shaft includes the ribbed section of the shank and the proximal portion of the
sleeve 42. Id. at 4—5. However, argues Appellant, applying the Examiner’s
interpretation, if the portion of the extension member rotatable about the
threaded shaft includes the entire extension member, that is, the ribbed
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Application 12/857,034
portion 46 and the sleeve 42, the radial extent of the extension member
increases between the insertion and locked positions as the ribs are twisted
radially outward. Id. at 5.
Appellant further disputes the Examiner’s explanation that the
elements of a device can have multiple radial extents and each radial extent
of any device with multiple radial extents can selectively expand or not
expand depending on any number of anatomical or mechanical factors, as is
the case with arterial stents or joint distractors. App. Br. 5. Appellant points
out, however, that claim 1 expressly recites that the radial extent of the
portion of the extension member must be the same in the insertion and
locked configurations, and that “extent” clearly refers to the portion of the
extension member that contacts the bone. Id. Nevertheless, Appellant
argues, the Examiner finds that the radial extent of the portion of the
extension member remains the same because the radial extent of the sleeve
42 does not change. Id. In other words, asserts Appellant, the Examiner is
arbitrarily interpreting components of the device of Poupitch to fit the
elements of the present claim. Id. Appellant contends that the extension
member and the connector are two separate components that are not both
satisfied by the single component pointed to by the Examiner. Id.
In response, the Examiner points to Figure 5 of Poupitch, which is
reproduced, as annotated by the Examiner, below:
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Application 12/857,034
Figure 5 of Poupitch, as annotated by the Examiner, depicts a side
view showing the disclosed fastener after installation and subsequent
loosening
The Examiner finds that Figure 5 comprises a proximal portion which
has a radial extent that is the same in the insertion and locked configurations.
Ans. 3. The Examiner finds the proximal portion of sleeve/collar 42 does
not change its radial extent or radial length dimension. Id. at 5.
The Examiner finds that, as depicted in Figure 5, the “expanded
profile portion” of the portion of the extension member increases between
the insertion and locked positions, and that this increase results in an
increased profile in a direction perpendicular to the longitudinal axis of the
threaded shaft, as required by claim 1. App. Br. 6. The Examiner finds that
this is not contrary to the claimed invention, which also requires a “radial
extent” that stays constant. Id. With respect to this latter limitation, the
Examiner points to the proximal portion of the sleeve/collar 42, which the
Examiner finds reads on the claimed limitation of a constant radial extent.
Id. The Examiner states that the claim does not expressly require that either
a single point, or an entirety of a portion, simultaneously exhibits both a
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Application 12/857,034
constant radial extent and a perpendicular profile that increases width/height.
Id.
We are persuaded by Appellant’s argument. Claim 1 recites, in
relevant part, “the extension member including a portion rotatable about the
threaded shaft between an insertion configuration for insertion through an
opening in a cortex of a bone” of which “<2 profile of the portion of the
extension member in the locked configuration in a plane perpendicular to the
longitudinal axis of the shaft being increased relative to a profile of the
portion of the extension member” and “wherein a radial extent of the
portion of the extension member remains the same in the insertion and
locked configurations” (emphases added). The use of the definite article
“the” in the claim language directly indicates that the portion of the
extension member that increases its profile in a plane perpendicular to the
longitudinal axis of the shaft, and the portion of the extension member that
maintains a constant radial extent, i.e., radial length, in both insertion and
locked configurations, are the same portions of the extension member, and
that both correspond to the portion of the extension member that is rotatable
about the threaded shaft. Consequently, the rotatable portion of the
extension member must meet the requirements of both limitations.
The Examiner attempts to draw a distinction between the portion of
the anchor of Poupitch that serves as the “sleeve/collar 42” portion, which
does not change its radial extend between insertion and locked
configurations, and the “extension member” portion, which does change its
radial extent between configurations but which also meets the other required
limitation, i.e., changes its profile in the plane perpendicular to the
longitudinal axis when moving from insertion to locked configuration. See
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Application 12/857,034
Ans. 5—6. We find the Examiner’s distinction between the alleged
“portions” to be arbitrary and unjustified, not least because Poupitch’s
Figure 5 expressly depicts that both the “sleeve/collar 42” portion and the
“expanded profile” portion are together rotatable around the longitudinal
shaft. See Fig. 5. Consequently, both portions together constitute the
“portion rotatable about the threaded shaft” recited in claim 1 and must meet
both requirements of the claim: (1) increased profile in a plane perpendicular
to the longitudinal shaft when in the locked configuration, and (2) no change
in radial extent in either configuration. Appellant’s claimed invention
satisfies those limitations. See Spec., Figs. 1, 2, 5, 6, and accompanying
text, 4—8. We find the invention disclosed by Poupitch does not teach these
corequisite limitations. We therefore reverse the Examiner’s rejection of
claims 1—5, 8, and 9.
B. Rejection of claim 11 under 35 U.S.C. $ 102(b)
Claim 11 depends ultimately from claim 1 and recites: “The device of
claim 2, wherein the first wing includes one of magnesium, polylactide and
polycaprolactone.” App. Br. 10.
The Examiner finds Frei teaches that expandable orthopedic fasteners
and general use fasteners are equivalent structures known in the art that can
be used to be secured in many media. Final Act. 6. Appellant relies on the
same arguments presented with respect to the rejection of claims 1—5, 8, and
9 supra that Poupitch fails to teach or suggest the limitations of claim 1. See
App. Br. 6; Ans. 8. As we have explained, we agree with Appellant’s
arguments with respect to the teachings of Poupitch. We consequently
reverse the Examiner’s rejection of claim 11.
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DECISION
The Examiner’s rejection of claims 1—5, 8 and 9 as unpatentable under
35 U.S.C. § 102(b) is reversed.
The Examiner’s rejection of claim 11 as unpatentable under 35 U.S.C.
§ 103(a) is reversed.
REVERSED
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