Ex Parte Richelsoph

Patent Trial and Appeal Board

Jun 21, 2017

13083795 (P.T.A.B. Jun. 21, 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.
IIS/Active Bone DIV 2 8939
EXAMINER
YANG, ANDREW
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
13/083,795 04/11/2011
27316 7590 06/22/2017
MAYBACK & HOFFMAN, P.A.
5846 S. FLAMINGO ROAD #232
FORT LAUDERDALE, EL 33330
Marc E. Richelsoph
06/22/2017 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 MARC E. RICHELSOPH
Appeal 2014-009629
Application 13/083,795
Technology Center 3700
Before WILLIAM A. CAPP, JAMES J. MAYBERRY, and
SEAN P. O’HANLON, Administrative Patent Judges.
MAYBERRY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Marc E. Richelsoph (“Appellant”) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s rejections of claims 29-43. We have jurisdiction
under 35 U.S.C. § 6(b). We conducted an oral hearing for this appeal on
April 12, 2017. A transcript of that hearing (“Tr.”) has been placed into the
record.
We AFFIRM.
Appeal 2014-009629
Application 13/083,795
CLAIMED SUBJECT MATTER
The claims are directed to methods for using a bone screw. Spec. 11.
Claims 29, 30, 31, 32, 39, 41, and 42 are independent. Claim 29, reproduced
below, is illustrative of the claimed subject matter:
29. A method of inserting a bone screw into a bone by:
threading a screw assembly into a bone and forming a
complimentary threaded socket in the bone, the screw assembly
comprising a groove and a thread;
expanding a thread of the screw assembly into the
threaded socket as the threaded socket expands with wear over
time, the groove and the thread working in concert to act as a
single component screw; and
maintaining contact between the expanding thread and
the screw assembly during and after insertion of the screw
assembly into the threaded socket.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Unsworth ‘883 US 6,276,883 B1 Aug. 21,2001
Unsworth ‘925 US 7,165,925 B2 Jan. 23,2007
REJECTIONS
I. Claims 29—32 and 39-43 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Unsworth ‘925.
II. Claims 33—38 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Unsworth ‘925 and Unsworth ‘883.
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ANALYSIS
Rejection I
The Examiner rejects claims 29-32 and 39-43 as anticipated by
Unsworth ‘925. Final Act. 2. The Examiner finds that Unsworth ‘925’s
screw 4 is screwed into bone, forming a complimentary threaded socket in
the bone. Id. The Examiner further finds that screw 4’s thread 5a and thread
5b form a groove with coil 1 disposed in the groove. Id. The Examiner also
finds that Unsworth ‘925 discloses that, over time, the socket in the bone
wears and coil 1 expands into the created space. Id. The Examiner also
finds that coil 1 maintains contact with screw 4 during insertion and after the
screw is in the bone. Id. The Examiner further finds that Unsworth ‘925
discloses that the threaded socket in the bone may be formed by the screw or
pre-formed in the bone. Id. at 2—3. Finally, the Examiner finds that
Unsworth inherently discloses bone remodeling. Id. at 3.
“expanding a thread of the screw ”
Independent claim 29 recites, in relevant part, the step of “expanding
a thread of a screw.” Appeal Br. 40, Claims App. Independent claims 30
and 31 recite similar limitations. Id. at 40-41, Claims App. Appellant
contends that Unsworth ‘925 fails to teach or suggest screw threads that are
radially expandable. Appeal Br. 31. Appellant argues that, in Unsworth
‘925’s screw 4, coil 1 expands, not the threads of the screw. Id. Appellant
argues that coli 1 is “partially or fully separate from the screw threads” and
that threads 5a and 5b are the threads of screw 4, not coil 1. Id. at 31—32. In
describing embodiments of its invention, Appellant states that “[t]o make the
thread be part of the screw, at least a lead end of the thread (e.g., spring
member 24) ‘is securely affixed to and within the groove 20. The remainder
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of the spring member 24 is solely seated in the groove 20 . . . Id. at 29
(quoting Spec. 138)
At oral hearing, Appellant’s counsel characterized its argument as
turning on the construction of the claim term “thread.” See Tr. 8:9—11
(“JUDGE CAPP: All right. So if I understand your arguments really
turning on claim construction is what the meaning of thread is. MR.
MAYBACK: Yes.”).
We find Appellant’s argument unpersuasive of Examiner error. As
Unsworth ‘925 discloses, “[t]he outside of the coil also forms a thread which
can in turn be threaded into a thread tapped or cut into the interior walls of a
hole in the substrate into which the screw and coil system are driven.”
Unsworth ‘925, 2:47—50; see also id., Fig. 5 (depicting coil 1 seated within
groove formed by threads 5a, 5b). In describing Figure 5, Unsworth ‘925
provides that the figure depicts “a cross-sectional view of screw 4 and coil
1 ” and that the cross-sectional shape of the coil “is shaped approximately as
a rectangle with a beveled edge that when combined with the threads 5a and
5b form a single more robust thread" Id. at 8:22—27 (emphasis added); see
also Examiner’s Answer 2—3 (stating that Unsworth ‘925, 8:22—27 “clearly
anticipates the limitation of ‘expanding a thread of the screw’ and also ‘the
groove and the thread working in concert to act as a single component
screw.’”).
Also, Unsworth ‘925 discloses that coil 1, like Appellant’s spring
member 24, may be fixedly attached at the lead, or distal, end of the screw.
See Unsworth ‘925, 11:52—56 (describing that the coil and screw should be
detachable once placed inside the substrate “except for perhaps the distal end
of the screw and coil”). Indeed, we find that Unsworth ‘925’s coil 1 is
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Application 13/083,795
comparable to helical spring member 24 depicted in groove 20 of screw 10
in Appellant’s application, where the walls of groove 20 are similar to
threads 5a and 5b in Unsworth. See Spec., Fig. 3; see also id. 137
(describing how spring member 24 seats into groove 20). Similarly,
Unsworth ‘925 expressly discloses that although “helical threads 5a and 5b
are referred to as distinct threads, they could be manufactured as a single
thread and then have a groove of various shapes cut into it to form a similar
configuration.” Unsworth ‘925, 9:67—10:3. That is, the thread for Unsworth
‘925 would be essentially identical to that of Appellant’s screw 10, with
groove 20 in thread 16.
At oral argument, Appellant’s counsel argued that Unsworth ‘925 was
distinguishable from the claimed invention because coil 1 separated from
screw 4 once inside the body. See Tr. 7, 14—23. Appellant’s counsel,
however, concedes that when coil 1 is loaded into the groove created by
thread 5a and 5b, it acts like a thread of the screw, but once it expands, it is
no longer the thread. See id. Even assuming, arguendo, that this
characterization of Unsworth ‘925’s coil 1 is correct, we do not discern, nor
does Appellant identify, any temporal limitation in the “expanding” step
requiring the expanding element to act as a thread over all times.1
Accordingly we determine that the Examiner reasonably construed the
claim term “thread” to encompass Unsworth ‘925’s coil 1 seated within the
1 We do note that claim 29 requires the step of “maintaining contact between
the expanding thread and the screw assembly during and after insertion of
the screw assembly into the threaded socket,” with claims 30 and 31 reciting
similar limitations and that this “maintaining contact” includes a temporal
requirement. See Appeal Br. 40-41, Claims App. We address this
limitation below.
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groove formed by threads 5a and 5b. See In re Abbott Diabetes Care Inc.,
696 F.3d 1142, 1148 (Fed. Cir. 2012) (“[CJlaims under examination before
the PTO are given their broadest reasonable interpretation consistent with
the specification.”).
“the groove and the thread working in concert to act as a single component
screw ”
Independent claim 29 recites, in relevant part, the step of “the groove
and the thread working in concert to act as a single component screw.”
Appeal Br. 40, Claims App. Independent claims 30, 31, 32, 39, 41, and 42
recite similar limitations. Id. at 40-43, Claims App. Appellant contends
that Unsworth ‘925 fails to teach the subject matter of the “working in
concert” limitation. Appeal Br. 31, 34. Appellant argues that “Unsworth
‘925 teaches that its coil is ‘free to spring back and roll over the proximal
thread 5a.’” Id. at 34. Appellant further argues that “because Unsworth
‘925 teaches that its coil is fully or partially separated from its screw,
Unsworth ‘925 also fails to teach [ ] that its coil and screw work ‘in concert
to act as a single component screw.’” Id. at 31. Appellant also argues that
“at the point of expansion, the combination screw and coil do not act as a
single component screw as required by the present claims.” Id. at 33; see
also Reply Br. 5 (“The screw and coil of Unsworth ‘925 do[] not [act] as a
single component screw as recited by the present claims. Unsworth ‘925 . . .
teach[es] that ‘the coil radially expands, thereby pushing the screw further
into the substrate.’”) (quoting Unsworth ‘925, 14:37—38).
We find Appellant’s arguments unpersuasive of Examiner error. As
we discussed above, Unsworth ‘925 expressly discloses that coil 1 and
threads 5a and 5b work in concert, providing that coil 1 is shaped in a way
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“that when combined with the threads 5a and 5b form a single more robust
thread.” Unsworth ‘925, 8:22—27. Further, as with the “expanding” step, we
discern no temporal requirement in the “working in concert” limitation that
would require the thread and groove to act in concert at all times. As
Appellant seems to recognize, when Unsworth ‘925’s screw 4 is inserted
into the medium, such as bone, coil 1 acts in concert with the groove formed
in the screw’s thread. See Tr. 7:14—23; cf. Advisory Act. 2 (mailed Nov. 21,
2013) (“When the screw of Unsworth [‘925] is inserted, the coil and thread
act together as a single screw.”).
“inducing bone remodeling by applying, using a threaded portion securely
affixed to a screw shank, a controlled force ”
Independent claim 39 recites, in relevant part, the step of “inducing
bone remodeling by applying, using a threaded portion securely affixed to a
screw shank, a controlled force” and “creating a stress condition favorable
for remodeling of the wall of the bone in the socket.” Appeal Br. 42-43,
Claims App. Independent claims 41 and 42 recite similar limitations. Id. at
43, Claims App. Appellant argues that the Examiner erred in concluding
that these claim limitations are inherently taught by Unsworth ‘925. Appeal
Br. 34—36.
Appellant’s Specification discloses the following with respect to
remodeling:
Another advantage to the present invention is via
application of Wolff s Law. The effort here is to place a
controlled force on the bone to create a stress condition for
favorable remodeling of the bone, to gain better pull out
strength and maintain it over time. Accordingly, the present
invention provides a novel method of remodeling bone by
providing an outwardly radial force from a screw shank 14
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while the screw shank 14 is inserted into the bone. Based on
this principle, the present invention actually results in an
effective reduced wear on the bone as the bone is remodeling in
response to the outward pressure placed by the threaded portion
16, during retention of the screw 10, in the bone. Unlike a
toggle bolt approach, which is incapable of remodeling or
moving with the bone, the present invention effectively creates
a bioactive mechanical screw that allows for excellent bone
purchase with minimum complexity.
Spec. 134.
The Examiner found that “Applicant has defined a condition for bone
remodeling using Wolff’s law.” Advisory Act. 2 (mailed Nov. 21, 2013).
The Examiner explains that “Wolff’s Law states that if loading on a
particular bone increases, the bone will remodel itself to be stronger.” Id.
The Examiner finds that Unsworth ‘925 “clearly contemplates [a] force
exerted against the bone.” Id. (citing Unsworth ‘925, 7:10—65).
We find Appellant’s argument unpersuasive of Examiner error. The
Examiner has the burden to provide a “reason to believe that. . . the claimed
subject matter may, in fact, be an inherent characteristic of the prior art.” In
re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Once the Examiner
satisfies this burden, it shifts to Appellant to provide evidence to the
contrary. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). The
Examiner has adequately come forward with factual findings and reasoning
as to why Unsworth ‘925 would inherently operate under Wolffs Law to
induce bone modeling. The Examiner finds that Unsworth ‘925 discloses
that, once inserted, coil 1 exerts pressure on the bone, promoting remodeling
under Wolff’s Law. Advisory Act. 2 (mailed Nov. 21, 2013); see, e.g.,
Unsworth ‘925 7:49—55 (“Similarly, the spring-back from the tilting or
torquing of the coil turns will provide an even and predictable thrusting
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force that keeps the screw pushing into the substrate lumen, due to the
superelastic loading and unloading torque-twist behavior of the coil turns in
a manner similar to the superelastic bending moment-curvature behavior
described above.”). Accordingly, the Examiner has appropriately shifted the
burden to Appellant.
We find that Appellant has failed to provide persuasive evidence that
Unsworth ‘925 would not inherently promote bone remodeling as prescribed
by Wolffs Law. Appellant argues that Unsworth ‘925 does not disclose
“that the force exerted outward against a bone can be controlled within a
given force range by material size and properties that are favorable to bone
growth.” Appeal Br. 35. We do not agree. We find that Unsworth‘925
expressly discloses controlling the force on the bone. See Unsworth ‘925
7:49-55; see also id. at 7:58—63 (“Where the screw system is used to hold
two bones together, the strength of the tilting and the amount of expansion
of the coil can be set for the optimum pressure required to hold the two
bones together to promote bone growth and mending. This feature also
applies to all other uses.”). Further, we note that the claims do not recite any
“given force range by material size and properties that are favorable to bone
growth,” nor does the Specification disclose any force ranges. See Appeal
Br. 35; see also Spec. 134 (stating that “the present invention provides a
novel method of remodeling bone by providing an outwardly radial force
from a screw shank 14 while the screw shank 14 is inserted into the bone,”
but failing to provide any specifics with respect to forces, material size, and
material properties).
Appellant further argues that Unsworth ‘925 teaches away from
promoting bone remodeling. Appeal Br. 37. Since teaching away is
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irrelevant to anticipation, this argument is not addressed further with respect
to the rejection of claims 29—32 and 39-43 as being anticipated by Unsworth
‘925. See Seachange Intern., Inc. v. C-COR, Inc., 413 F.3d 1361, 1380
(Fed. Cir. 2005).
“maintaining contact between the expanding thread and the screw assembly
during and after insertion of the screw assembly into the threaded socket ”
Independent claim 29 recites, in relevant part, the step of “maintaining
contact between the expanding thread and the screw assembly during and
after insertion of the screw assembly into the threaded socket.” Appeal Br.
40, Claims App. Independent claims 30 and 31 recite similar limitations.
Id. at 40-41, Claims App. Further, independent claim 32 recites “the
radially expandable threaded portion being securely affixed to the screw
shank portion.” Id. at 41, Claims App.
Appellant argues that Unsworth ‘925 fails to satisfy the “maintaining
contact” claim limitation or that the expanding thread is securely affixed to
the screw shank. See Appeal Br. 36—37; Reply Br. 2. We do not agree.
As we discussed above, Unsworth ‘925 expressly discloses that its
coil 1 may be securely affixed to screw 4. See Unsworth ‘925, 11:52—56
(describing that the coil and screw should be detachable once placed inside
the substrate “except for perhaps the distal end of the screw and coir)
(emphasis added). As such, coil 1 would maintain contact with screw 4, at
least at the distal end, during and after insertion of the screw. Appellant
focuses on Unsworth ‘925’s preferred embodiment, arguing that in the
preferred embodiment, coil 1 detaches from screw 1 once it is inserted. See
Reply Br. 4—5. We do not find this argument persuasive of Examiner error,
as it ignores Unsworth ‘925’s express disclosure of an alternative
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embodiment with coil 1 securely affixed to screw 4. See In re Heck, 699
F.2d 1331, 1332—33 (Fed. Cir. 1983) (“The use of patents as references is
not limited to what the patentees describe as their own inventions or to the
problems with which they are concerned. They are part of the literature of
the art, relevant for all they contain.”) (quoting In re Lemelson, 397 F.2d
1006, 1009 (CCPA 1968)).
For the reasons discussed above, we sustain the Examiner’s rejection
of claims 29-32 and 39-43 under 35 U.S.C. § 102(b) as being anticipated by
Unsworth ‘925.
Rejection II
The Examiner rejects dependent claims 33—38, which depend directly
or indirectly from independent claim 32, under 35 U.S.C. § 103(a) as being
unpatentable over Unsworth ‘925 and Unsworth ‘883. Appellant relies on
arguments made in support of the patentability of claim 32 to traverse this
rejection. See Appeal Br. 37—38. Accordingly, for the reasons discussed
above in connection with our analysis of Rejection I, we sustain the
Examiner’s rejection of claims 33—38 as unpatentable over Unsworth ‘925
and Unsworth ‘883.
DECISION
We affirm the Examiner’s rejection of claims 29-43.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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