Ex Parte Nardini

Patent Trial and Appeal Board

Nov 30, 2017

13647834 (P.T.A.B. Nov. 30, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10139/27702 8670
EXAMINER
HAMMOND, ELLEN CHRISTINA
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
13/647,834 10/09/2012
76960 7590
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
Reto NARDINI
11/30/2017 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 NARDINI
Appeal 2017-001001
Application 13/647,8341
Technology Center 3700
Before FRANCISCO C. PRATS, ELIZABETH A. LaVIER, and
KRISTI L. R. SAWERT, Administrative Patent Judges.
LaVIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant seeks review of the
Examiner’s rejections of claims 1—10, 13—15, 17—23, 26—30, and 47. We
have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we
AFFIRM.
BACKGROUND
The Specification generally relates to intramedullary nails, which can
be used to fix fractures in long bones. See Spec. ]Hf 2—3. Claim 1 is
illustrative:
1 Appellant states the real party in interest is DePuy Synthes Products, Inc.
Appeal Br. 2.
Appeal 2017-001001
Application 13/647,834
1. An intramedullary bone fixation device, comprising:
a body sized and shaped for insertion into a medullary canal of
a bone and extending along a longitudinal axis from a proximal
end to a distal end; and
a locking hole extending through the body along a central axis,
the locking hole defined by a first opening extending through a
first portion of a wall of the device and a second opening
extending through a second portion of the wall substantially
opposing the first portion, the first opening being elongated in a
lateral direction relative to the longitudinal axis of the device,
transverse to the central axis of the locking hole, and the second
opening including a coupling element configured to lock a
portion of a bone fixation element therein.
Appeal Br. 8 (Claims Appendix) (emphasis added).
APPEALED REJECTIONS
1. Claims 1—10, 13—15, 17—23, 26, 28, 30, and 47 stand rejected
under pre-AIA 35 U.S.C. § 102(b) as anticipated by Kilpela.2,3 Ans.
2.
2. Claims 27 and 29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kilpela, as evidenced by Roth2 3 4 and Choi.5 Ans. 6.
2 Kilpela et al., US 6,123,708, issued Sept. 26, 2000.
3 The Examiner includes claim 16 in this rejection (see Ans. 2), but claim 16
is cancelled (see Appeal Br. 11 (Claims Appendix)).
4 Roth et al., US 7,175,633 B2, issued Feb. 13, 2007.
5 Choi, US 6,869,434 B2, issued Mar. 22, 2005.
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Appeal 2017-001001
Application 13/647,834
DISCUSSION
A. Rejection 1
The Examiner finds that Kilpela teaches each of the limitations of
claim 1. See Final Action 3. Appellant argues that Kilpela fails to teach or
suggest the claimed “second opening including a coupling element
configured to lock a portion of a bone fixation element therein,” because
“the bone screws of Kilpela are secured in place by a set screw which is
completely separate from the opening.” Appeal Br. 4. The Examiner
explains that in Kilpela, “[t]he first wall sections (46) define transverse
ridges, i.e. the coupling element, which may engage the threads of screw
44.” Advisory Action6 2; see also Ans. 8 (citing Kilpela 5:4—25). The cited
passage of Kilpela provides that the transverse ridges may, or may not,
engage the threads of the screw: “First wall sections 46 define transverse
ridges which may engage threads of screw 44, or, as shown, there may be no
threaded engagement, but screw 44 may merely be clamped with set screw
42 for retention.” Kilpela 5:10—13.
Appellant maintains that “even if the transverse ridge [in Kilpela] may
engage the screw thread, the claim requires the coupling element to lock a
portion of the bone fixation element therein, which Kilpela never discloses.”
Appeal Br. 5; see also Reply Br. 4—5. Rather, Appellant argues that “Kilpela
teaches that screws are ‘actually removable from holes 30’ and rotatable
‘about a plane which is essentially perpendicular to the longitudinal axis 47
of nail 10.’ See Kilpela, col. 5,11. 12—25. That is, the transverse ridges
provide no locking action whatsoever.” Appeal Br. 5; see also Reply Br. 5.
6 Advisory Action, Mar. 31, 2016.
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Appeal 2017-001001
Application 13/647,834
We are not persuaded by Appellant’s arguments, as they seemingly
pertain to the embodiment in Kilpela on which the Examiner does not rely,
i.e., when there is “no threaded engagement” between the transverse ridges
and the screw. As quoted above, Kilpela also teaches an embodiment in
which the transverse ridges engage the threads of the screw. We agree with
the Examiner’s finding that “[w]hen engaged to the transverse ridges, []
Kilpela’s bone fixation element 44 will not be able to rotate horizontally {i.e.
about a plane which is perpendicular to axis 47, see col. 5,11. 13—24).” Ans.
9.7 In other words, like the Examiner, we find that “the transverse ridges of
Kilpela can be considered to lock[8] a portion of a bone fixation element 44
therein when the threads of the bone fixation element 44 are engaged to the
transverse ridges.” Id. In further support, the Specification takes a similar
approach, as noted by the Examiner: “the coupling element of the invention
is formed by ridges (see columns 120 and thread engaging protrusions 124;
see para. [0009]). The coupling element maintains, or locks, the bone
fixation element 116 at a certain angle relative the rest of the device.” Id. at
8.
7 Notably, the Examiner’s position finds further support in the context of the
passage quoted above from Kilpela, which states that in the absence of
threaded engagement, “screw 44 may merely be clamped with set screw 42
for retention.” Kilpela 5:12—13. This suggests that when threaded
engagement (of the transverse ridges and the screw) is present, it also provides
retention, i.e., locking.
8 Appellant and the Examiner offer definitions of “lock.” See Reply Br. 4
(“make fast, motionless, or inflexible . . .”); Ans. 9 (“firmly fix”). These
definitions are mutually consistent, and our analysis is the same under either.
Cf. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
1999) (“[OJnly those terms need be construed that are in controversy, and only
to the extent necessary to resolve the controversy.”).
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Appeal 2017-001001
Application 13/647,834
Having considered all of Appellant’s arguments, we are unpersuaded
the Examiner erred in rejecting claim 1. Appellant argues claims 2—10, IS­
IS, 17—23, 26, 28, 30, and 47 only via their dependency from claim 1 or
similarity to claim 1 (see Appeal Br. 5—6). As we affirm the rejection of
claim 1, these claims fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
B. Rejection 2
Appellant argues Rejection 2 solely by referring back to arguments
made with respect to Rejection 1. See Appeal Br. 6. For similar reasons, we
are unpersuaded of any error by the Examiner in rejecting claims 27 and 29.
CONCEUSION
We affirm the rejections of claims 1—10, 13—15, 17—23, 26—30, and
47.
AFFIRMED
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