Ex Parte Orsak

Patent Trial and Appeal Board

Feb 27, 2017

12946269 (P.T.A.B. Feb. 27, 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.
E3383-00145 9573
EXAMINER
SEVILLA, CHRISTIAN ANTHONY
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
12/946,269 11/15/2010
8933 7590 02/28/2017
DUANE MORRIS LLP - Philadelphia
IP DEPARTMENT
30 SOUTH 17TH STREET
PHILADELPHIA, PA 19103-4196
James Edward Orsak
02/28/2017 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 JAMES EDWARD ORSAK
Appeal 2015-002966
Application 12/946,2691
Technology Center 3700
Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1,11, and 13. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The Appellant identifies Wright Medical Technology, Inc. as the real party
in interest. Appeal Br. 3.
Appeal 2015-002966
Application 12/946,269
ILLUSTRATIVE CLAIM
1. An orthopedic fixation device, comprising:
an elongate body extending from a distal end to a
proximal end, the distal end defining a blind hole having a
diameter and extending to a depth between one and two inches
from a distal tip, the diameter of the blind hole sufficient to
receive a k-wire therein,
wherein the elongate body includes a fluted shank
extending from the distal end to a first location along a length
of the elongate body, the elongate body includes a cutting guide
disposed at a second location along the length of the elongate
body between adjacent smooth portions of the elongate body,
the cutting guide positioned such that the cutting guide
identifies an end of the blind hole, wherein the second location
is disposed between the proximal end of the elongate body and
the first location along the length of the elongate body.
REJECTIONS
I. Claim 13 is rejected under 35 U.S.C. § 102(b) as anticipated by
Vlassis (US 5,366,374, iss. Nov. 22, 1994).
II. Claims 1 and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Vlassis and Kwan (US 2006/0078847 Al, pub. Apr. 13,
2006).
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Rejection Under 35 U.S.C. § 102(b)
The Appellant presents several arguments for error in the rejection of
claim 13 as anticipated by Vlassis. As explained below, each of these
2
Appeal 2015-002966
Application 12/946,269
arguments is unpersuasive, such that we sustain the rejection of claim 13
under 35 U.S.C. § 102(b).
1. “at least one thread disposed at a second
location . . . spaced apart from the first
location by a distance ”
The Appellant contends that Vlassis lacks the following features of
claim 13:
at least one thread disposed at a second location along the
length of the elongate body, the second location being spaced
apart from the first location by a distance.
Appeal Br. 7—9.
According to the Examiner, Vlassis’ spiral rib (Vlassis, Fig. 6
(element 29)) constitutes the claimed “at least one thread.” See Final Action
2—3; see also Answer 5.
The Appellant argues that Vlassis’ spiral rib is not “spaced apart from
the first location” (the terminus of the “fluted shank”), as recited in claim 13.
Appeal Br. 8. Rather, the Appellant regards Vlassis’ spiral rib as a
continuous element that is directly adjacent to Vlassis’ osteogrooves — i.e.,
the portion identified by the Examiner as corresponding to the claimed
“fluted shank.” Appeal Br. 8.
In response, the Answer states that Vlassis’ spiral rib amounts to at
least two “threads” because it extends twice around the exterior of the
disclosed implant, such that one such portion of the spiral rib (i.e., one
“thread”) is “spaced apart from ... the first location,” as claimed. See
Answer 5.
The Appellant’s argument is not persuasive of error. Claim 13
requires “at least one thread disposed at a second location” that is “spaced
3
Appeal 2015-002966
Application 12/946,269
apart from the first location by a distance,” but the claim sets forth no
requirement as to what structure(s) may (or may not) exist between the “first
location” and the “second location.” Thus, another “thread” may exist in
that interval, per the rejection.
2. “a cutting guide . . . disposed at a third location . . . that
identifies a location at which the blind hole ends, the third
location being positioned by the first location and the
second location ”
The Appellant contends that Vlassis lacks the following features of
claim 13:
a cutting guide including a line that at least partially
encircles the elongate body, the cutting guide disposed at a third
location along a length of the elongate body that identifies a
location at which the blind hole ends, the third location being
positioned by the first location and the second location.
Appeal Br. 9.
The rejection identifies a portion Vlassis’ spiral rib — specifically, a
portion thereof that is between the rib portion constituting a “thread” and the
distal hollow portion (see Vlassis, Fig. 6 (element 12)), which the Examiner
equates to the claimed “fluted shank” — as corresponding to the “cutting
guide” of claim 13. See Final Action 2—3.
The Appellant argues that the rejection is erroneous because Vlassis’
rib “is located proximally of’ the internal chamber within the hollow distal
portion of Vlassis’ Figure 6 embodiment. Appeal Br. 9.
The Appellant’s argument is not persuasive. The Specification
explains that a “cutting guide” may take the form of a projection, such as “a
bump.” Spec. 1 31 (“One skilled in the art will understand that cutting guide
132 may take a variety of other forms including, but not limited to, a crimp,
4
Appeal 2015-002966
Application 12/946,269
a bump, texturing, coloring, or the like.”). Therefore, a projecting element,
such as Vlassis’ rib, may serve as the claimed “cutting guide,” as the
Examiner finds. Answer 5. Although the Appellant contends that Vlassis’
rib “is located proximally of’ the portion of Vlassis’ device that corresponds
to the claimed “blind hole” (see Appeal Br. 9), the claim merely requires the
“cutting guide” to “identif[y] a location at which the blind hole ends.”
Therefore, it is proper for the “cutting guide” to be proximate or nearby the
“end” of the “blind hole,” as the Examiner finds. See Answer 5—6. Indeed,
as shown in Figure 2 of the Specification, the “cutting guide” may not
exactly coincide with the “location at which the blind hole ends” and claim
13 does not demand otherwise.
3. Potential Coincidence of a “thread”
and the “cutting guide ”
The Appellant also argues that the rejection is erroneous because the
rejection “split[sj” a single element — Vlassis’ osteoreservoir, which forms
the spiral rib and spiral groove — into both the claimed “at least one thread”
and the claimed “cutting guide.” Appeal Br. 9—10 (citing Vlassis, col. 3,11.
59-62).
This argument is not persuasive because claim 13 does not preclude
different portions of a single continuous structure — such as Vlassis’ rib —
from meeting the limitations of the “at least one thread” and the “cutting
guide.” See Answer 5—6.
4. Unclaimed Features in the Specification
Are Not Claim Limitations
The Appellant argues that Vlassis does not describe the claimed
“cutting guide” because paragraph 42 of the Specification says that the
“cutting guide” identifies a location where the elongate shaft of the disclosed
5
Appeal 2015-002966
Application 12/946,269
fixation device may be cut, so as to remove the blind hole and to leave a
solid portion of the fixation device in a bone, whereas the portion of Vlassis’
rib (corresponding to the claimed “cutting guide”) — as well as the portions
proximal and distal thereof— are designed to remain in the bone. Appeal
Br. 10-11.
Yet, the features of the Specification that the Appellant relies upon,
here (removing the blind hole and leaving a solid shaft within a bone), are
not recited in the claim language and, therefore, do not delimit the scope of
claim 13. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(“[L]imitations are not to be read into the claims from the specification.”)
(Citation omitted). Therefore, the Appellant’s argument on this point is
unpersuasive of error in the rejection.
Rejection Under 35 U.S.C. § 103(a)
The Appellant argues (Appeal Br. 13) that claim 1 was rejected
erroneously, because the cited disclosure of Vlassis does not show the
claimed “cutting guide disposed at a second location along the length of the
elongate body between adjacent smooth portions of the elongate body.”
According to the Examiner, part of Vlassis’ rib (equated to the
“cutting guide”) is “between adjacent smooth portions” (per claim 1),
because Vlassis’ rib and osteoreservoir define a continuous spiral groove
with a V-shaped cross-sectional profile, which has surfaces that the
Examiner finds to be “smooth.” See Final Action 3-A\ see also Answer 6.
The Appellant contends that, in view of Figure 2 of the Specification,
the claimed “smooth portions” of the elongate body cannot have any features
thereon, whereas the portion of Vlassis that the Examiner identifies as
6
Appeal 2015-002966
Application 12/946,269
corresponding to the claimed “smooth portions” forms a continuous spiral
groove. Appeal Br. 13 (citing Vlassis, col. 3,11. 57—61).
Whether the surfaces formed by Vlassis’ rib and spiral groove
constitute “smooth portions” depends upon the construction of the claim
term “smooth.”
The Appellant contends that certain portions of the elongate body
shown in Figure 2 of the Specification are “smooth” because they “do not
have any features thereon.” Appeal Br. 13. As described in the
Specification, the various surface features, which might appear on the
disclosed elongate body, include: “threads”; a “fluted shank”; “helical
grooves”; a “line etched into an outer surface”; a “crimp”; a “bump”; and
“texturing.” Spec. 29-31. However, the Specification does not state
whether any of these features may constitute or define “smooth” surfaces.
Indeed, the Specification does not use the word “smooth.”
Yet, in addition to the Specification, prior art references considered by
the Examiner also constitute intrinsic evidence that is available for the
construction of claim terms. See V-Formation, Inc. v. Benetton Group SpA,
401 F.3d 1307, 1311—12 (Fed. Cir. 2005) (construing claim language, in
view of a prior art reference, employing the term at issue, that was of record
in the prosecution of the patent-in-suit). Vlassis does not use the word
“smooth,” but Kwan does. Kwan, like the Specification, relates to devices
that are inserted into bone, during surgery — the Specification involving an
orthopedic fixation device (Spec. 2—3) and Kwan involving a dental
implant (Kwan, Abstract). Kwan indicates that surfaces characterized as
“smooth” differ from, for example, “threaded” or “grooved” surfaces:
7
Appeal 2015-002966
Application 12/946,269
Referring to FIG. 3, a substantially cylindrical, hollow core 34
extends through and along the axial length, or portions thereof,
of the head 12 of the device 10. The surface of the internal
walls 36 of the head 12 surrounding the core 34 may be
threaded and slightly tapered. Alternative core 34 and
surrounding wall/wall-surface designs and configurations
including smooth, dimpled, grooved, hexagonal, polygonal,
tapered, stepped, arcuate and other configurations and
combinations thereof, may also be used and are also included
within the scope of the claimed invention.
Kwan 1104 (emphasis added). Elsewhere, Kwan distinguishes “smooth”
from “ribbed” surface configurations. Kwan 1131. Accordingly, it would
be proper to regard a grooved portion of Vlassis’ embodiment as not
“smooth,” such that Vlassis’ rib, which is adjacent a spiral groove, is not
“between adjacent smooth portions” of the elongate body, as claimed.
Therefore, the rejection of claim 1 (as well as claim 11, which
depends therefrom) under 35 U.S.C. § 103(a) is not sustained.
DECISION
We AFFIRM the Examiner’s decision rejecting claim 13 under
35 U.S.C. § 102(b).
We REVERSE the Examiner’s decision rejecting claims 1 and 11
under 35 U.S.C. § 103(a).
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-IN-PART
8