Ex Parte Ralph et al

Board of Patent Appeals and Interferences

Sep 6, 2011

11107610 (B.P.A.I. Sep. 6, 2011)

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.
11/107,610 04/15/2005 James D. Ralph 104084-005 7229
23526 7590 09/06/2011
NORRIS MCLAUGHLIN & MARCUS, P.A.
721 ROUTE 202-206, SUITE 200
P.O.BOX 5933
BRIDGEWATER, NJ 08807-5933
EXAMINER
CARTER, TARA ROSE E
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
09/06/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES D. RALPH, STEPHEN L. TATAR, and
THOMAS N. TROXELL
____________

Appeal 2009-014291
Application 11/107,610
Technology Center 3700
____________

Before LINDA E. HORNER, PHILLIP J. KAUFFMAN, and JAMES P.
CALVE, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014291
Application 11/107,610

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STATEMENT OF THE CASE
James D. Ralph, Stephen L. Tatar, and Thomas N. Troxell
(Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision
rejecting claims 1-28. We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.
THE INVENTION
The claimed invention relates to a biocompatible sleeve of a surgical
fastener. Claim 1, which is set forth below, is representative of the claimed
invention:
1. A biocompatible sleeve component of a surgical
fastener having a proximal end and a distal end and an
outer surface disposed between the proximal end and the
distal end, the proximal end having a flange thereon,
the flange being adapted to rest on the cortical surface
of a bone or to hold down on the cortical surface of a
bone a plate, cartilage, a tendon or other implant,
a bore adapted to receive a screw or a pin and
extending through the flange toward the distal end and
terminating at or before the distal end,
at least two longitudinal slits extending from the bore
through the outer surface, said slits defining, in the
sleeve, blade sections extending from one slit to another,
the outer surface having threads disposed thereon or
one or more wings longitudinally disposed thereon,
wherein the blade sections are caused to move
laterally in a direction away from the bore when a screw
or a pin is inserted into the bore.
THE REJECTIONS
The Examiner relies on the following as evidence of unpatentability:
Chan US 5,935,169 Aug. 10, 1999
Overaker US 6,241,732 B1 June 5, 2001
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The following grounds of rejection are before us for review:
1. The Examiner rejected claims 1-28 under 35 U.S.C. § 102(b) as
being anticipated by Chan.1 Ans. 3, 7.
2. The Examiner rejected claims 1, 3-11, 13-25, 27, and 28 under
§ 102(b) as being anticipated by Overaker. Ans. 5.
ISSUES
The issues presented by this appeal are:
Does Chan disclose a sleeve with an outer surface having threads
disposed thereon or one or more wings longitudinally disposed thereon, as
recited in independent claims 1, 13, 15, and 26?
Does Overaker disclose a sleeve with an outer surface having threads
disposed thereon or one or more wings longitudinally disposed thereon, as
recited in independent claims 1, 13, and 15?
ANALYSIS
Rejection of claims 1-28 based on Chan
Independent claims 1, 13, 15, and 26 recite a biocompatible sleeve or
a surgical fastener comprising such a sleeve, wherein the sleeve comprises a
flange adapted to rest on the cortical surface of a bone or hold down on the
cortical surface of a bone, a plate, cartilage, a tendon or other implant. The
outer surface of the sleeve also has threads disposed thereon, or one or more
wings longitudinally disposed thereon.
The Examiner found Chan discloses all the limitations of claims 1-28.
Ans. 3-5, 7-8. The Examiner interpreted “wings longitudinally disposed” to

1 Claims 1-28 are rejected as anticipated by Chan. Office Action dated
December 13, 2007, at 2; App. Br. 13; Ans. 7. The first listing of claims
subject to this rejection in the Answer is in error. Ans. 3
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mean a wing element disposed along a longitudinal axis of the sleeve, rather
than a wing oriented in a vertical or longitudinal direction along the sleeve.
Ans. 8. The Examiner found Chan discloses a wing (element 170C) that is
disposed along a longitudinal axis of the sleeve. Ans. 3, 8. Even though
Chan’s wing 170C is oriented horizontally, transverse to the longitudinal
axis of the sleeve, the Examiner found that it met the limitation of a wing
longitudinally disposed. Ans. 8.
Appellants argue that Chan does not disclose a sleeve with an outer
surface having threads disposed thereon or one or more wings longitudinally
disposed thereon. App. Br. 15. Appellants also argue that the annular flange
of Chan is not longitudinally disposed. Instead, it is oriented in a direction
that is perpendicular to the longitudinal direction of the sleeve. App. Br. 16.
During examination, claim terms are given their broadest reasonable
meaning in their ordinary usage as they would be understood by persons
skilled in the art, taking into account whatever enlightenment by way of
definitions or otherwise may be afforded by the written description in the
specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
The Examiner’s finding that Chan’s flanges are “wings longitudinally
disposed” on a sleeve is unreasonable. The ordinary and customary meaning
of “longitudinal” includes “placed or running lengthwise.” See MERRIAM
WEBSTER’S COLLEGIATE® DICTIONARY 734 (11th ed. 2005). This meaning is
consistent with the Specification, which discloses wings extending along the
length of the sleeve, i.e., parallel to the longitudinal axis. Spec. [0064, 0066,
0067 0069]; figs. VI-A (element 56), VII-A (element 66), VIII-A (element
76), IX-A (element 86). The Specification also discloses “longitudinal slits”
extending along a longitudinal “y-y axis” of the sleeve – the same direction
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the wings extend. Spec. [0066-0068]; figs. VII-A (element 63), VIII-A
(element 73), IX-A (element 83). The Examiner’s interpretation of “wings
longitudinally disposed” to encompass horizontally-oriented wings that are
disposed transverse to a longitudinal axis of the sleeve is unreasonable
because it is not consistent with the ordinary meaning of the term
“longitudinal” or the Specification.
Based on the foregoing, there is insufficient evidence to support the
Examiner’s findings that Chan discloses a sleeve with wings longitudinally
disposed thereon, as recited in independent claims 1, 13, 15, and 26. It is
well settled that “[a] claim is anticipated only if each and every element as
set forth in the claim is found, either expressly or inherently, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631
(Fed. Cir. 1987). Every element and limitation of the claimed invention
must be found in a single prior art reference, arranged as in the claim.
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001). Dependent claims 2-12, 14, 16-25, 27, and 28 depend from claims 1,
13, 15, and 26 and include this limitation. Therefore, there is insufficient
evidence to support a finding that they are anticipated by Chan. Hartness
Int’l, Inc. v. Simplimatic Eng’g Co., 819 F.2d 1100, 1108 (Fed. Cir. 1987).
Thus, we reverse the rejection of claims 1-28 based on Chan.
Rejection of claims 1, 3-11, 13-25, 27, and 28 based on Overaker
The Examiner found Overaker discloses all the limitations of claims
1, 3-11, 13-25, 27, and 28. Ans. 5-6. It is not clear whether the Examiner
found that Overaker discloses a sleeve with threads or one or more wings
longitudinally disposed thereon, or both. The Grounds of Rejection state
that Overaker discloses a sleeve with an outer surface having threads or
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longitudinally-disposed wings thereon. Ans. 5. The Response to Argument
states Overaker clearly discloses longitudinally disposed wings. Ans. 14.
Given this ambiguity and Appellants’ arguments that Overaker does not
disclose a sleeve with threads or with one or more wings longitudinally
disposed thereon (App. Br. 25, 27), we address both of these alternative
limitations of independent claims 1, 13, and 15. Appellants also argue that
Overaker does not disclose threads or longitudinally disposed wings because
the annular ribs or protrusions of Overaker are structurally and functionally
distinct from the claimed threads and longitudinal wings. App. Br. 27.
The ordinary and customary meaning of “thread” includes “a
projecting helical rib (as in a fitting or on a pipe) by which parts can be
screwed together.” See MERRIAM WEBSTER’S COLLEGIATE® DICTIONARY
1302 (11th ed. 2005). This meaning is consistent with the Specification,
which discloses sleeves with threads that comprise helical projecting ribs.
Spec. [0054, 0061, 0063, 0072]; figs. I-A (element 6), IV-A (element 36), V-
A (element 46), XI-A (element 116). The Examiner’s interpretation of
Overaker’s annular ribs or protrusions 44 as threads is unreasonable because
the horizontal, annular ribs 44 of Overaker are not continuous helical ribs
that allow the rivet of Overaker to be screwed into a bone. Instead, the rivet
is inserted in a hole and a pin is driven into the rivet to expand the legs of the
rivet and the ribs 44 into the bone. Overaker, col. 5, ll. 20-24 and 38-45.
Overaker’s horizontal ribs are not longitudinally-disposed wings
either, because they are oriented transverse to the longitudinal axis of the
rivet, as shown in figure 4 of Overaker. The Examiner’s interpretation of the
term “longitudinally disposed” to encompass horizontally-oriented wings
that are disposed transverse to a longitudinal axis of the sleeve (see Ans. 14)
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is unreasonable because it is not consistent with the ordinary meaning of the
term “longitudinal” or the Specification.
Based on the foregoing, there is insufficient evidence to support the
Examiner’s findings that Overaker discloses a sleeve with threads or wings
longitudinally disposed thereon, as recited in independent claims 1, 13, and
15. Claims 2-12, 14, 16-25, 27, and 28 depend from these independent
claims and include this limitation. Therefore, there is insufficient evidence
to support a finding that they are anticipated by Overaker. Hartness, 819
F.2d at 1108. Accordingly, we reverse the Examiner’s rejection of claims 1,
3-11, 13-25, 27, and 28 based on Overaker.
CONCLUSION
The Examiner’s findings that Chan discloses a sleeve with one or
more wings longitudinally disposed thereon is not supported by sufficient
evidence.
The Examiner’s findings that Overaker discloses a sleeve with an
outer surface having threads disposed thereon or one or more wings
longitudinally disposed thereon are not supported by sufficient evidence.
DECISION
The Examiner’s decision to reject claims 1-28 under § 102(b) as being
anticipated by Chan is REVERSED.
The Examiner’s decision to reject claims 1, 3-11, 13-25, 27, and 28
under § 102(b) as being anticipated by Overaker is REVERSED.
REVERSED

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