Ex Parte OeschDownload PDFPatent Trial and Appeal BoardJan 18, 201811578496 (P.T.A.B. Jan. 18, 2018) Copy Citation 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. 11/578,496 08/30/2007 Marc Oesch 10139/03202 2705 76960 7590 01/18/2018 Fay Kaplun & Marcin, LLP 150 Broadway, suite 702 New York, NY 10038 EXAMINER COTRONEO, STEVEN J ART UNIT PAPER NUMBER 3733 MAIL DATE DELIVERY MODE 01/18/2018 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 MARC OESCH __________ Appeal 2017-001560 Application 11/578,496 Technology Center 3700 __________ Before JEFFREY N. FREDMAN, JOHN G. NEW, and ELIZABETH A. LAVIER, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1 under 35 U.S.C. § 134 involving claims to a medical device. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Statement of the Case Background Some “devices in medical technology, such as an external fixator . . . must be brought one or more times into the beam path of a source of x-rays for the purpose of checking a position” (Spec. 1). “Since such devices generally consist of metallic materials, which cast a shadow in an x-ray 1 Appellant identifies the Real Party in Interest as DePuy Synthes Products, Inc., a subsidiary of Johnson & Johnson, Inc. (see App. Br. 2). Appeal 2017-001560 Application 11/578,496 2 image, structures lying behind are hidden” (id.). “It is an object of the invention to provide an elastic element, which is made from a radiolucent plastic and is in a position to fulfill all the mechanical functions of a metallic element, however, without casting a shadow on the x-ray image” (id.). The Claims Claims 23–41 are on appeal. Independent claim 23 is representative and reads as follows: 23. A medical device comprising: a first clamp including a pair of first jaws, one of the first jaws being immovably fixed to a shaft, and a first nut that is rotatable about a longitudinal axis thereof such that an exterior surface of the nut abutting against an exterior surface of the pair of first jaws presses the pair of first jaws together, the first clamp comprised of a reinforced radiolucent material; and a first elastic element comprised of a non-reinforced radiolucent material and disposed in the first clamp between the exterior surface of the pair of first jaws and the exterior surface of the first nut along the longitudinal axis, a first end of the first elastic element contacting the exterior surface of the pair of first jaws, a second end of the first elastic element contacting the exterior surface of the first nut; wherein the first clamp is configured to releasably engage a longitudinal component. The Issues A. The Examiner rejected claims 23–25, 27, 28, and 41 under 35 U.S.C. § 103(a) as obvious over Newson2 and Ferrante3 (Final Act. 2–4). 2 Newson, US 5,810,814, issued Sept. 22, 1998. 3 Ferrante et al., US 7,048,735 B2, issued May 23, 2006. Appeal 2017-001560 Application 11/578,496 3 B. The Examiner rejected claims 29–33, 35, and 38–40 under 35 U.S.C. § 103(a) as obvious over Newson, Ferrante, and Mata4 (Final Act. 4–6). C. The Examiner rejected claims 26, 34, 36, and 37 under 35 U.S.C. § 103(a) as obvious over Newson, Ferrante, Mata, and Gaile5 (Final Act. 6). A. 35 U.S.C. § 103(a) over Newson and Ferrante The Examiner finds “Newson discloses the claimed invention except for specifically stating the material is radiolucent. Ferrante et al. discloses an external fixation clamp system being made out of plastic . . . to be a suitable material for clamp systems” (Final Act. 4). The Examiner finds it obvious “to modify the device of Newson to make the material radiolucent (plastic) in view of Ferrante et al. in order to be a suitable material for clamp systems” because “it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use” (id.). Appellant contends “neither of the elements the Examiner equates to the pair of first jaws (the plain washer and the clamping collar) is immovably fixed to the shaft” (App. Br. 4). Appellant contends: Specifically, Newson shows a shank portion 104 or a bolt 100 on which is mounted a nut 106, a splined washer 108, a spring member 110 and a clamping collar 112 which abuts against one side of the screw pin. See Newson, col. 5, ll. 30–41. A removably mounted plain washer 114 abuts the other side of the screw pin 18 to clamp the screw pin in place. See Id. Contrary 4 Mata et al., US 6,080,153, issued June 27, 2000. 5 Gaile, US 7,520,494 B2, issued Apr. 21, 2009. Appeal 2017-001560 Application 11/578,496 4 to the Examiner’s contention, every one of these items is movable on the shank portion 104. (Id.). The issue with respect to this rejection is: Does the evidence of record support the Examiner’s conclusion that Newson and Ferrante suggest a clamp “including a pair of first jaws, one of the first jaws being immovably fixed to a shaft” as required by claim 23? Findings of Fact 1. The Specification teaches in “a special embodiment, an axially inner clamp jaw is connected permanently with the shaft” (Spec. 3). 2. The Specification teaches the inner jaw 11 of the clamp 10 disposed at the top is connected permanently with the shaft 15 passing through the borehole 14. The jaws 11 of the clamp 10 disposed at the top, which can be moved rotationally and axially, enable the clamp 10, which is disposed at the top, to be moved rotationally relative to the clamp 10 disposed at the bottom. (Spec. 5). 3. The Specification teaches: Rotation of the two jaws 11 of each clamp 10 about the axis of rotation 13 relative to one another is prevented by a device 42. In the case of the clamp 10, which is disposed at the top, the device 42 is realized by a pin 43, which is disposed between the clamp jaws 11. (Spec. 6). 4. Newson teaches a bone fixing apparatus used “in joining a broken bone, which bone fixing apparatus comprises at least two screw pins for being screwed to the bone, a connecting member for connecting the two Appeal 2017-001560 Application 11/578,496 5 screw pins together, and at least two screw threaded locking devices for locking the connecting member to the screw pins” (Newson 1:39–45). 5. Figure 7 of Newson is reproduced below: The locking device 20 as shown in FIG[]. 7[] is constructed to resist against loosening during use of the bone fixing apparatus 16. The locking device 20 comprises a bolt 100 having a head portion 102 and a shank portion 104. The shank portion 104 is threaded and splined as shown. The shank portion 104 mounts a nut 106, a splined washer 108, a spring member 110 and a clamping collar 112. As shown, the clamping collar 112 abuts against one side of a screw pin 18. A plain washer 114 abuts against the other side of the screw pin 18. The shank portion 104 has an enlarged diameter part 116 which has a pein 118 for use in retaining the washer 114. (Newson 5:30–42). Appeal 2017-001560 Application 11/578,496 6 6. Newson teaches: “Each locking device 20 is for locking the head portion 28 of its screw pin 18 to a connecting member 40” (Newson 3:49–50). 7. Newson teaches the “bone fixing apparatus 16 is easy to use and it provides a rigid construction when tightened” (Newson 4:64–65). Principles of Law “[D]uring patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Analysis We begin with claim interpretation because before a claim is properly interpreted, its scope cannot be compared to the prior art. In this case, the dispute centers over the phrase “immovably fixed to a shaft” in claim 23 because the Examiner contends a “reasonable interpretation of the claims as they stand allows for an interpretation that if the jaw is rigidly fixed in a tightened or fixed state it meets the claim limitation” (Ans. 7–8). Appellant responds “the term rigid does not equate to ‘immovable.’ Rather, as one skilled in the art would understand, rigidity relates to the flexibility of an element or a device” (Reply Br. 5). Appellant contends “even when abutted by two rigid structures, the washer may still rotate about the shank 114 without compromising the rigidity of the structure and that rotation is movement inconsistent with the definition of ‘immovably fixed’” (id.). Appeal 2017-001560 Application 11/578,496 7 We first look to the Specification to interpret “immovably fixed to a shaft.” The Specification never uses the word “immovably,”6 but does teach that “inner clamp jaw is connected permanently with the shaft” (FF 1). The Specification explains that even with this permanent connection, the jaws “can be moved rotationally and axially” (FF 2). Finally, the Specification teaches that rotation may be prevented by insertion of a pin into the clamp jaw structure (FF 3). Therefore, the Specification supports an interpretation of “immovably fixed” as encompassing devices that prevent one range of motion out of those motions possible by insertion of pins (see FF 2–3). Moreover, there is nothing in the Specification that excludes the phrase “immovably fixed” from encompassing prevention of movement by tightening a device to a degree the prevents movement of the component elements. While the Specification discusses a permanent connection (FF 1), we do not interpret the phrase “immovably fixed” as requiring monolithic formation of the jaw and shaft because dependent claim 41 specifically recites “one of the first jaws is integrally formed with the shaft.” Under the doctrine of claim differentiation, “the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in 6 We note that the Examiner did not reject these claims as containing new matter and failing to comply with the written description requirement, despite the fact Appellant did not identify descriptive support for the “immovably fixed” limitation in the “Summary of Claimed Subject Matter” or in the Specification at the time the claim amendment was entered (see App. Br. 2–3; Amendment filed Sept. 8, 2015). Appeal 2017-001560 Application 11/578,496 8 question is not present in the independent claim.” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc). We therefore interpret the phrase “immovably fixed to a shaft” as broadly encompassing not only permanent attachment but also encompassing any relationship that prevents a type of motion by the first jaw that is “immovably fixed” to the shaft. Newson teaches a bone fixing apparatus with a locking device (FF 4) that comprised two “jaw” components, collar 112 and washer 114 (FF 5), that function “for locking the head portion 28 of its screw pin 18” (FF 6). Newson teaches that shaft portion 104 comprises a “diameter part 116 which has a pein 118 for use in retaining the washer 114” (FF 5). Newson also teaches the apparatus “provides a rigid construction when tightened” (FF 7). Newson teaches the locking device “is constructed to resist against loosening during use” (FF 5). Based on these disclosures of Newson and the reasonable interpretation of the phrase “immovably fixed to a shaft” in light of the Specification and dependent claims, we agree with the Examiner that the evidence reasonably supports a finding that washer 114 is “immovably fixed” to shaft 104. Pin 118 interacts with the washer 114 to retain the washer, thereby preventing movement along one axis (FF 5). More significantly, the device is named a “locking device” (FF 4) that is rigid when tightened (FF 7) and resists loosening (FF 5), reasonably supporting the Examiner’s position that when the locking device is in use, the washer 114 is “immovably fixed” in the tightened state. Appeal 2017-001560 Application 11/578,496 9 We are not persuaded by Appellant’s contention that “[t]hose skilled in the art would understand that a plain washer would at least be able to freely rotate about the shank 114” (App. Br. 5) because Appellant provides no evidence supporting the position that a tightened locking device, forming a rigid connection that is resistant to loosening and contains a pin holding the washer 114 in place would permit free rotation of the washer. “[A]ttorney argument [is] not the kind of factual evidence that is required to rebut a prima facie case of obviousness.” In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). We also are not persuaded by Appellant’s argument that “the Examiner has simply provided a conclusory statement without showing any support from within the Newson reference itself” (App. Br. 5). The Examiner points to pin 118 as fixing washer 114 (see Ans. 2) as well as Newson’s disclosure of a rigid construction when tightened (see Ans. 7). As already discussed, we find that Newson provides evidentiary support for the Examiner’s position, and Appellant has provided no rebuttal evidence. Conclusion of Law The evidence of record supports the Examiner’s conclusion that Newson and Ferrante suggest a clamp “including a pair of first jaws, one of the first jaws being immovably fixed to a shaft” as required by claim 23. B.–C. 35 U.S.C. § 103(a) rejections Appellant does not separately argue these obviousness rejections, instead relying upon their arguments to overcome the combination of Newson and Ferrante. The Examiner provides sound fact-based reasoning Appeal 2017-001560 Application 11/578,496 10 for combining Mata and Gaile with Newson and Ferrante (see Final Act. 4– 6). Having affirmed the obviousness rejection of claim 23 over Newson and Ferrante for the reasons given above, we also find that the further combinations with Mata and Gaile renders the rejected claims obvious for the reasons given by the Examiner. SUMMARY In summary, we affirm the rejection of claim 23 under 35 U.S.C. § 103(a) as obvious over Newson and Ferrante. Claims 24, 25, 27, 28, and 41 fall with claim 23. See 37 C.F.R. § 41.37(c)(1)(iv) (“[T]he failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately.”) We affirm the rejection of claims 29–33, 35, and 38–40 under 35 U.S.C. § 103(a) as obvious over Newson, Ferrante, and Mata. We affirm the rejection of claims 26, 34, 36, and 37 under 35 U.S.C. § 103(a) as obvious over Newson, Ferrante, Mata, and Gaile. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED Copy with citationCopy as parenthetical citation