Ex Parte Powell

Patent Trial and Appeal Board

Oct 1, 2014

11410846 (P.T.A.B. Oct. 1, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/410,846 04/24/2006 Sean Powell 10139/08613 5075
76960 7590 10/01/2014
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
EXAMINER
BATES, DAVID W
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
10/01/2014 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 SEAN POWELL1
__________

Appeal 2012-005975
Application 11/410,846
Technology Center 3700
__________

Before DEMETRA J. MILLS, CHRISTOPHER G. PAULRAJ, and
ROBERT A. POLLOCK, Administrative Patent Judges.

POLLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 48-79. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
STATEMENT OF THE CASE
Appellant’s invention relates to a surgical device for attaching bone to
a plate or intramedullary nail.
Representative independent claim 48 (formatted), from which claims
49-63 directly or indirectly depend, reads as follows:

1 According to Appellant, the Real Party in Interest is Synthes USA, LLC.
(App. Br. 2).
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48. An orthopedic fixation system, comprising:
a drill sleeve having a first outer surface and a first inner
surface and having a first longitudinal bore extending
therethrough from a first end to a second end,
the drill sleeve having a protrusion on the first outer
surface; and
a protection sleeve having a second outer surface and a second
inner surface and having a second longitudinal bore extending
therethrough from a third end to a fourth end,
the protection sleeve being configured to extend over a
portion of the first outer surface, wherein the protection
sleeve comprises a recess on the second inner surface
defining an increased diameter portion of a channel
extending therethrough,
the protrusion and recess being configured to axially lock the
drill sleeve and protection sleeve together when the protrusion
is received within the protection sleeve,
the protrusion and drill sleeve being further configured to
permit separation of the drill sleeve from the protection
sleeve upon application of an axial separation force to the
protrusion and recess in combination with a radial
compression force applied to a portion of the drill sleeve,
wherein one of the first and second longitudinal bores is
configured to receive a drilling instrument therethrough.

Representative independent claim 64 (formatted), from which claims
65-79 directly or indirectly depend, recites:
64. An orthopedic system, comprising:
a protection sleeve having proximal and distal ends, a
longitudinal axis and first inner and outer surfaces,
the protection sleeve further having a protrusion
extending inward from the first inner surface into a first
longitudinal bore extending therethrough; and
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a drill sleeve having proximal and distal ends, a longitudinal
axis, second inner and outer surfaces and a second longitudinal
bore extending therethrough,
the second outer surface configured to be received within
at least a portion of the protection sleeve,
the drill sleeve having a recess extending into the second
outer surface,
the protrusion and recess cooperating to releasably axially
engage the protection sleeve with the drill sleeve,
the sleeves being disengageable from each other by applying an
axial separation force between the protection and drill sleeves
and a radial compression force to at least a portion of the drill
sleeve,
wherein the inner surface of at least one of the protection and
drill sleeves is configured to receive a drill bit for drilling a hole
in bone.

The following grounds of rejection are before us for review:
Claims 48-61, 63-77, and 79 are rejected under 35 U.S.C. § 102(b) as
anticipated by Hearn.2
Claims 62 and 78 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hearn in view of Zumeta.3

FINDINGS OF FACT
Specification
The Specification discloses that orthopedic fixation devices such as
plates are frequently coupled to bone with fasteners inserted through holes in
the device. (Spec. ¶ 3.) Fractures of long bones, such as the humerus or the

2 Hearn, US 5,755,721, issued May 26, 1998.
3 Zumeta, US 4,936,170, issued June 26, 1990.
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femur, may be stabilized with an “intramedullary nail” inserted into the
intramedullary canal and fastened to the bone with screws. (Id.) Affixing an
intramedullary nail to bone may involve (1) making an incision in the skin
overlying the bone; (2) inserting a trocar into the incision to create a passage
through the soft tissue; (3) inserting a drill sleeve through the passage to
allow a hole to be drilled in the bone overlying the intramedullary nail; and
(4) inserting a screw insertion sleeve through the passage to facilitate
engagement of the screw through the bone and into the intramedullary nail.
(Id. ¶ 4.)
The trocar, drill sleeve, and screw insertion sleeve may be nested
within each other and inserted as a single unit. (Id.) “To further facilitate
use of these three-piece units, at least two of the pieces may be provided
with features aimed at preventing separation of the individual pieces while
they are being handled by the user.” (Id. ¶ 5.) Appellant’s invention relates
to this type of orthopedic fixation system. In particular, the Specification
states that “the invention is related to a snap lock design for provisionally
retaining a drill sleeve to a screw insertion sleeve. (Id. ¶ 2.) According to
the Abstract:
The device comprises a trocar, drill sleeve and protection sleeve
in a telescopically nested configuration. The drill sleeve and
protection sleeve may have an axial locking feature that allows
the two pieces to be handled together as a unit by preventing
inadvertent separation.
The Specification further states that one of the sleeve members may
comprise a protrusion and the other may comprise a
corresponding recess, the protrusion and recess being
cooperable to provisionally axially lock the first and second
sleeve members together when the second sleeve member is at
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least partly received within the bore of the first sleeve member.
The second sleeve may be dis-engageable from the first sleeve
through the application of an axial separation force between the
first and second sleeves and a radial compression force to at
least a portion of the second sleeve.
(Spec. ¶ 7).
Hearn
Hearn is directed to an orthopedic drill guide that permits a surgeon to
position hold a bone plate on the bone during drilling. (Hearn 1:53-64.) In
one embodiment, the device comprises a tube 30 slidably inserted into
sleeve 10. (Id. at 2:52-55; 4:34-35.) A cannula inserted though tube 30
enables the tube to operate as a drill guide. (Id. at 2:55-57.)
Hearn Figure 3 is reproduced below.

Figure 3 shows sleeve 10. Sleeve 10 includes region 13, an internally
recessed portion of increased diameter. (Id. at 3:12-15.). Figure 3 further
shows knurled flange 11. (Id. at 3:15-17.) A radially extending hole 12
through flange 11 permits a pin 46 (not pictured) to traverse sleeve 10 and
engage helical track 36 on tube 30. (Id. at 3:3-11.)
Hearn Figure 4 is reproduced below.
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Hearn Figure 4 shows tube 30. Tube 30 contains a cylindrical region
35 of increased wall thickness. (Id. at 3:34-37.) Helical track 36 is cut into
the outer surface of region 35. When tube 30 is nested within sleeve 10, pin
46 is inserted through hole 12 in the knurled flange 11 and engages helical
track 36. (Id. at 3:3-11; 4:34-38.) “As the pin travels in the helical portion
of the track, the sleeve 10 is caused to rotate about the tube 30 and move
toward the head 32 until the knurled flange 11 of the sleeve contacts the
collar 43 of the tube, preventing further movement.” (Id. at 4:38-42.) The
interaction of knurled flange 11 of sleeve 10 with collar 43 of tube 30 is
shown in Hearn Figure 6, reproduced below.

Hearn Figure 6 illustrates sleeve 10 extending over tube 30 such that
region 36 of the tube is nested within region 13 of the sleeve.
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Zumeta
Zumeta teaches a color coding system to differentiate tools or other
hand-manipulated devices. (Zumeta Abstract.)
ANALYSIS
The Examiner relies on Hearn in rejecting all claims on appeal under
35 U.S.C. § 102(b). Appellant provides separate arguments in the Brief for
claims 48, 62 and 64. (Br. 5, 8 and 10.) Claims dependent upon claims 48,
62 and 64 which are not argued separately, stand or fall with claims 48, 62
and 64. (37 C.F.R. § 41.37(c)(iv).)
Axial Lock
Claim 48
Claim 48 recites a “drill sleeve having a protrusion on the . . . outer
surface” and a “protection sleeve . . . compris[ing] a recess on the . . . inner
surface,” “the protrusion and recess being configured to axially lock the drill
sleeve and protection sleeve together when the protrusion is received within
the protection sleeve.” The Examiner interprets the protrusion and recess,
respectively, as (1) region 35 of tube 30 and region 13 of sleeve 10 (Ans. 5-
6); or (2) collar 43 of tube 30 and knurled flange 11 sleeve 10. (Id. at 6-7.)
The issue is: Does Hearn support the Examiner’s conclusion that the
claimed “the protrusion and recess being configured to axially lock the drill
sleeve and protection sleeve together when the protrusion is received within
the protection sleeve” is anticipated?
With respect to (1) the Examiner finds that Hearn teaches:
the recess at 13 within 10 (as seen at fig. 3) and the protrusion
35 (area of increased wall thickness as seen at fig. 4) interact to
lock the sleeve and tube axially (in at least one direction, as
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seen at fig. 6). The drill sleeve 30 would not be capable of
moving axially beyond the configuration of fig. 6 due to the
expanded portion 35 interacting with portion 13 of the
protection sleeve 10, and is thus locked to protection sleeve 10
due to the interaction of the abutting regions.
(Id. at 6.) With respect to (2), the Examiner finds that Hearn teaches
another protrusion from drill sleeve 30 at collar 43 which
serves as a stop surface for protection sleeve 10 to “prevent
further movement” in the proximal direction (downwardly,
as configured in fig. 6; see col. 4, lines 38-43).[4] When the
surfaces have abutted as seen in fig. 6, the tube and sleeve
have clearly achieved an axially locked position due to a
protrusion 43 and/or 35 found on the drill sleeve 30 and a
recess 13 found on the protection sleeve 10.
(Id. at 7.)
Interpreting “to lock” as “to make fast or immovable, as by engaging
parts” (id.), the Examiner thus finds that abutment of (1) region 35 of tube
30 against region 13 of sleeve 10—(2) or collar 43 of tube 30 against
knurled flange 11 of sleeve 10—evinces a “protrusion and recess being
configured to axially lock the drill sleeve and protection sleeve together
when the protrusion is received within the protection sleeve,” as required by
claim 48.

4 Hearn column 4, lines 38-42 recite: “As the pin travels in the helical
portion of the track, the sleeve 10 is caused to rotate about the tube 30 and
move toward the head 32 until the knurled flange 11 of the sleeve contacts
the collar 43 of the tube, preventing further movement.” As Appellant
correctly points out, if pin 46 and track 36 are analogized to the protrusion
and recess, respectively, they would be on opposite sleeve members with
respect to claim 48. (See Reply Br. 4.) We therefore interpret the
Examiner’s reference to Hearn column 4, lines 38-42 as directed to the claim
limitation, “the sleeves being disengageable.”
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Appellant contends that the Examiner errs because “merely preventing
a component from being further moved in a direction is not equivalent to a
locking.” Reply Br. 4-5. We agree.
“Only when a claim is properly understood can a determination be
made . . . whether the prior art anticipates and/or renders obvious the
claimed invention.” Amazon.com, Inc. v. Barnesandnoble.com, Inc.,
239 F.3d 1343, 1351 (Fed. Cir. 2001). During examination, “claims . . . are
to be given their broadest reasonable interpretation consistent with the
specification, and . . . claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art.”
In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990) (citing In re Sneed, 710 F.2d
1544, 1548 (Fed.Cir.1983)).
Here, the Specification bears the title “SNAP-LOCK FOR DRILL
SLEEVE,” and states, for example, that the invention relates to “a snap lock
design for provisionally retaining a drill sleeve to a screw insertion sleeve.
(Spec. ¶ 2.) The Specification further indicates that “[t]he drill sleeve 20
may further incorporate a locking feature to provisionally retain the drill
sleeve during handling and installation,” and that “[t]his locking feature may
be easily overcome by the application of finger pressure between the drill
and protection sleeve flanges” (id., ¶57). Thus, while we acknowledge the
Examiner’s cited definition of “lock” is “to make fast or immovable, as by
engaging parts,” it is nonetheless clear that the claim term “axially lock”
requires something more than the mere abutment of two surfaces. (See Ans.
at 6-7.) The Examiner notes that the configuration taught by Hearn
“prevent[s] further movement” in the proximal direction (id., citing Fig. 6,
col. 4 ll. 38-43). However, there is nothing in the identified protrusion and
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recess regions that would restrain or otherwise prevent movement of the drill
sleeve in the opposite direction. Because the Examiner has not shown that
any interaction between a protrusion on tube 30 and a recess on sleeve 10
provides an axially locking function, we do not sustain the rejection of claim
48, which is reversed. Claims 49-63 stand with claim 48.
Claim 64
Independent claim 64, from which claims 65-79 directly or indirectly
depend, recites that “the protrusion and recess cooperating to releasably
axially engage the protection sleeve with the drill sleeve,” and does not
contain the “axially lock” limitation of claim 48. (Reply Br. 8 (italics in
original).)
The issue is: Does Hearn support the Examiner’s conclusion that the
claimed “the protrusion and recess cooperating to releasably axially engage
the protection sleeve with the drill sleeve,” is anticipated?
Despite the emphasis on the alternative claim language in claim 64 as
compared to claim 48, Appellant relies on the same arguments set forth with
respect to “axial lock” in claim 64. (Reply Br. 6.) See In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset
because . . . they are not based on limitations appearing in the claims.”).
Applying the broadest reasonable interpretation standard, we interpret
the term “engage” recited in claim 64 to be broader than the term “lock”
discussed above, and find that the abutment of two surfaces as taught by
Hearn would satisfy that requirement. We therefore find no error in the
Examiner’s rejection of claim 64 on this basis.
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Disengageable Sleeves
Appellant contends that Hearn does not disclose “the protrusion and
drill sleeve being further configured to permit separation of the drill sleeve
from the protection sleeve upon application of an axial separation force to
the protrusion and recess in combination with a radial compression force
applied to a portion of the drill sleeve,” as set forth in claim 48, because
Hearn “only discloses the assembly of the tube 30 and sleeve 10” (Reply Br.
6) and is “silent with regard to an axial or compression force and also silent
with regard to a disassembly of the device” (id. at 7). Appellant provides no
separate arguments for the corresponding language of claim 64, “the sleeves
being disengageable from each other by applying an axial separation force
between the protection and drill sleeves and a radial compression force to at
least a portion of the drill sleeve.” (See id. at 7-8.)
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631.
We find no error in the Examiner’s undisputed finding that “Hearn is fully
capable of permitting separation of the components during application of the
claimed forces.” (Ans. 8.) We accord little weight to Appellant’s somewhat
different argument that “one skilled in the art would [] reasonably conclude
that even if an axial and/or compression force is applied to the combined
device of Hearn, such an application would provide no separating feature.”
(App. Br. 7.) Appellant’s contention is unsupported by expert declaration or
other evidence of record. Mere lawyer’s arguments and conclusory
statements, unsupported by factual evidence, are entitled to little probative
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value. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). The
rejection of claim 64 is affirmed. Claims 65-79 fall with claim 64.
Zumeta
The Examiner rejects claims 62 and 78 under 35 U.S.C. § 103(a) as
unpatentable over Hearn in view of Zumeta. (Ans. 6.) Noting “that Zumeta
is cited only to reference a color coding system,” Appellant makes no
separate arguments with respect to this reference, relying on the previous
arguments with respect to claims 48 and 64. (Br. 10-11; Reply Br. 8-9). In
accord with the discussions above, we therefore reverse the obviousness
rejection with respect to claim 62 (depending from claim 48) and affirm with
respect to claim 78 (depending from claim 64). See Hyatt v. Dudas, 551
F.3d 1307, 1314 (Fed. Cir. 2008) (“When the appellant fails to contest a
ground of rejection to the Board, . . . the Board may treat any argument with
respect to that ground of rejection as waived. In the event of such a waiver,
the PTO may affirm the rejection of the group of claims that the examiner
rejected on that ground without considering the merits of those rejections.”)
SUMMARY
We reverse the rejection of claims 48-61 and 63 under
35 U.S.C. § 102(b) as anticipated by Hearn.
We affirm the rejection of claims 64-77 and 79 under
35 U.S.C. § 102(b) as anticipated by Hearn.
We reverse the rejection of claim 62 under 35 U.S.C. § 103(a) over
Hearn in view of Zumeta.
We affirm the rejection of claim 78 under 35 U.S.C. § 103(a) over
Hearn in view of Zumeta.
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TIME PERIOD FOR RESPONSE
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

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