Ex Parte Orbay et al

Patent Trial and Appeal Board

Sep 26, 2016

12463037 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/463,037 05/08/2009
24131 7590 09/28/2016
LERNER GREENBERG STEMER LLP
PO BOX 2480
HOLLYWOOD, FL 33022-2480
FIRST NAMED INVENTOR
Jorge L. Orbay
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
F-9240 8736
EXAMINER
COLEY, ZADE JAMES
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
09/28/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
boxoa@patentusa.com
docket@patentusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JORGE L. ORBAY, THOMAS H. NORMAN, and
WILLIAM GARCIA DE QUEVEDO
Appeal2015-000002 1
Application 12/463,0372
Technology Center 3700
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
JAMES A. WORTH, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final rejection of claims 24--28, 32-35, 41, and 42. We have jurisdiction
under 35 U.S.C. §§ 134 and 6(b).
We REVERSE.
1 Our decision refers to the Appellants' Appeal Brief ("Appeal Br.," filed
June 16, 2014) and Reply Brief ("Reply Br.," filed Sept. 8, 2014), and the
Examiner's Final Office Action ("Final Act.," mailed Nov. 14, 2013) and
Answer ("Ans.," mailed July 7, 2014).
2 According to Appellants, the real party in interest is Skeletal Dynamics,
LLC (Appeal Br. 2).
Appeal2015-000002
Application 12/463,037
Introduction
Appellants' disclosure relates "to a formable bone plate, a clamping
apparatus, an osteotomy system[,] and a method for small bone
reconstruction" (Spec. i-f 3).
Claim 24, reproduced below, is the sole independent claim on appeal
and is illustrative of the subject matter on appeal:
24. An osteotomy system, comprising:
a formable bone plate including:
a plate body having a plurality of nodes and
intemodes between said nodes,
said nodes having holes formed therein for
receiving screws or wires to be screwed or placed
into a bone, and
at least two of said nodes having an
engagement section; and
means for bending said formable bone plate,
including:
a first means for engaging the engagement
section of a first of said at least two of said nodes
having an engagement section;
a second means for engagmg the
engagement section of a second node of said at
least two of said nodes having an engagement
section, said engagement section of said second
node configured to transmit at least a portion of a
force applied to said second means for engaging,
to said second node, when said second means for
engaging is engaged with said engagement section
of said second node; and
said formable bone plate configured such that at
least one intemode between said first node and said
second node bends in one or more of the X, Y and Z axes
when a force is applied by said second means for
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Appeal2015-000002
Application 12/463,037
engaging to said second node while said first means for
engaging is engaged with and holds said first node
immovable.
(Appeal Br., Claims App.)
Rejections on Appeal
The Examiner maintains, and the Appellants appeal, the following
rejections:
1. Claims 24, 26, and 32-35 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Suddaby (US
6,436,103 Bl, iss. Aug. 20, 2002) and Griggs (US
4,263,903, iss. Apr. 28, 1981); and
2. Claims 25, 27, 28, 41, and 42 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Suddaby.
ANALYSIS
Independent claim 24
Claim 24 recites two tools, i.e., a "first means for engaging" and a
"second means for engaging." The Examiner relies on the surgical tool of
Suddaby, and reasons that it would have been obvious to use two such tools,
as the result of mere duplication and because it would have been obvious to
have a back up tool, which could be used for any purpose (Final Act. 3--4;
Ans. 5).
We are, however, persuaded by Appellants' arguments that (a) "the
provision of two tools (means for engaging) would not be mere duplication"
of parts and (b) that the use of a back up tool "does not lead a skilled person
to provide two tools configured to be used simultaneously when bending the
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Appeal2015-000002
Application 12/463,037
plate" (Appeal Br. 16 (emphasis omitted)). We agree with Appellants that
the Examiner's rationale for using two "means for engaging" in this case at
the same time is insufficiently articulated. See KSR Int 'l v. Teleflex Co., 550
U.S. 398, 416 (2007). The Examiner has not provided adequate supporting
reasoning or evidence that duplication would be a matter of "routine skill"
(see Final Act. 4). Further, claim 24 recites that the two "means for
engaging" are included in a "means for bending." The Examiner has not
provided adequate evidence or reasoning that it would have been a matter of
"routine skill" to use a duplication of parts to perform a "bending" function,
as recited. Nor does Suddaby (col. 3, 11. 28-34), relied on by the Examiner
(Ans. 4) for a tool that grips or manipulates, provide support therefor. In
sum, the Examiner's reasoning is difficult to distinguish from an
impermissible hindsight analysis on the basis of the current record.
Accordingly, we do not sustain the Examiner's rejections under§ 103 of
claim 24 and its dependent claims.
DECISION
The Examiner's decision to reject claims 24--28, 32-35, 41, and 42 is
reversed.
REVERSED
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