Ex Parte RichelsophDownload PDFPatent Trial and Appeal BoardJun 21, 201713083795 (P.T.A.B. Jun. 21, 2017) Copy Citation 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. 2 Appeal 2014-009629 Application 13/083,795 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 3 Appeal 2014-009629 Application 13/083,795 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 4 Appeal 2014-009629 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. 5 Appeal 2014-009629 Application 13/083,795 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 6 Appeal 2014-009629 Application 13/083,795 “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 7 Appeal 2014-009629 Application 13/083,795 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 8 Appeal 2014-009629 Application 13/083,795 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 9 Appeal 2014-009629 Application 13/083,795 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 10 Appeal 2014-009629 Application 13/083,795 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 11 Copy with citationCopy as parenthetical citation