Ex Parte Sakkers et al

Patent Trial and Appeal Board

Jan 23, 2019

12601899 (P.T.A.B. Jan. 23, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/601,899 11/25/2009
28289 7590 01/25/2019
THE WEBB LAW FIRM, P.C.
ONE GATEWAY CENTER
420 FT. DUQUESNE BL VD, SUITE 1200
PITTSBURGH, PA 15222
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Ralph Johan Bernhard Sakkers
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0702-092871 1948
EXAMINER
JOHANAS, JACQUELINE T
ART UNIT PAPER NUMBER
3773
NOTIFICATION DATE DELIVERY MODE
01/25/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents@webblaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RALPH JOHAN BERNHARD SAKKERS,
ALEIDA JOHANNA VAN DER WAL,
JORIS EMANUEL NICOLAAS JASPERS, and
PETER TIMO DIJKSTRA
Appeal2018-003259
Application 12/601,899
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ralph Johan Bernhard Sakkers et al. (Appellants) 1 appeal under
35 U.S.C. § 134 from the Examiner's decision rejecting claims 18-32, 34--
36, 38, and 39. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is UMC Utrecht Holding
B.V. Appeal Br. 3.
Appeal2018-003259
Application 12/601,899
THE CLAIMED SUBJECT MATTER
Claim 18, reproduced below, is illustrative of the claimed subject
matter.
18. A system for correcting bones, comprising:
at least a first pin which is configured to be connected to
the bone at a first location;
at least a second pin which is configured to be connected
to the bone at a second location at a distance from the first
location;
a fixation member which is coupled rigidly to the first and
second pins for the purpose of fixing the mutual distance between
the pins during a hardening phase, and which is coupled flexibly
to the first and the second pins during a correction phase;
at least a first annular fixation member which is connected
to the first pin and at least a second annular fixation member
which is connected to the second pin so that the mutual distance
and/ or orientation between the first and second annular fixation
members can be adjusted while the fixation member remains
coupled to the first pin and the second pin during the correction
phase,
wherein the fixation member is configured to remain
attached to the first pin and the second pin when the first annular
fixation member and the second annular fixation member are
removed during the hardening phase.
REJECTIONS
I. Claims 18-23, 30, 31, 35, and 38 stand rejected under
35 U.S.C. § 102(b) as anticipated by Tosic (US 5,928,230, iss.
July 27, 1999).
II. Claims 18 and 24--26 stand rejected under 35 U.S.C. § I02(e)
as anticipated by Stevens (US 2006/0184169 Al, pub. Aug. 17,
2006).
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Application 12/601,899
III. Claims 18, 27-31, and 36 stand rejected under 35 U.S.C.
§ I02(b) as anticipated by Taylor (US 5,702,389, iss. Dec. 30,
1997).
IV. Claims 32, 34, and 39 stand rejected under 35 U.S.C. § I03(a)
as unpatentable over Tosic and Kim (US 2004/0073212 Al,
pub. Apr. 15, 2004). 2
DISCUSSION
Rejection I
Independent claim 18 recites, in relevant part, that "the fixation
member is configured to remain attached to the first pin and the second pin
when the first annular fixation member and the second annular fixation
member are removed during the hardening phase." Appeal Br. 21 (Claims
App.) (emphasis added). Appellants argue that Tosic fails to disclose this
feature. See id. at 10-13; Reply Br. 2-5. In particular, Appellants assert
that, with respect to the present invention, "[i]n the hardening phase, the
fixation rings ( 5a, 5b) and tube system (3) are removed, and a fixation tube
( 6) is fixed in place. During the hardening phase, the pins ( 4a, 4b) remain
connected to the bone to hold the bone in the desired position during
calcification." Appeal Br. 12-13. According to Appellants, Tosic "does not
include pins and a fixation member configured to be positioned in this
manner." Id. at 13. For the reasons that follow, we agree with Appellants
that the Examiner's rejection is in error.
2 Although the Examiner omits claim 39 from the statement of the rejection
(see Final Act. 10), the Examiner addresses this claim in the detailed
explanation of the rejection (see id. at 12). See also Ans. 10 (including
claim 39 in the statement of the rejection in the Answer).
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Application 12/601,899
The Examiner finds that Tosic discloses, in relevant part,
a fixation member (28) which is coupled rigidly to the first and
second pins [(24)] for the purpose of fixing the mutual distance
between the pins during a hardening phase, and ... at least a first
annular fixation member ( 14) which is connected to the first pin
and at least a second annular fixation member ( 14) which is
connected to the second pin[,] ... wherein the fixation member
is configured to remain attached to the first pin and the second
pin when the first annular fixation member and the second
annular fixation member are removed during the hardening
phase.
Final Act. 2-3 (citing Tosic, col. 8, 11. 36-59). The Examiner takes the
position that "one could remove the entire system of rings, pins and fixation
members from the bone, while each of the systems components remains
attached to one another." Id. at 3 (emphasis added); see also id. (including
annotated reproduction of Figure 31 of Tosic). However, the Examiner does
not explain, nor is it apparent, how Tosic's system could be removed from a
patient's bone while the fixation member, annular fixation members, and
pins remain attached to one another.
In Appellants' disclosed system, the structure that allows the fixation
member ( fixation tube 6) to remain attached to the pins ( 4a, 4 b) when the
annular fixation members (fixation rings 5a, 5b) are removed is an
attachment between fixation member 6 and pins 4a and 4b that is
independent of the annular fixation members. See Spec. 10, 11. 29-34; Figs.
1, 5. In other words, given the disclosure of the Specification, the claimed
fixation member being "configured to remain attached to" the pins when the
annular fixation members are removed requires an attachment between the
fixation member and the pins that does not rely on the annular fixation
members.
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In Tosic's system, in the Figure 31 embodiment comprising first and
second annular fixation members, the fixation member (LCD bar 28)
attaches to annular fixation members (ring members 14), which attach to
pins (screws or pins 24, or wires 26). See Tosic, Fig. 31; col. 10, 11. 24--29.
In other words, Tosic's LCD bar 28 and pins are attached together only via
ring members 14, and there is no independent attachment between LCD bar
28 and the pins. 3 Given that the connection between LCD bar 28 and the
pins appears to rely on ring members 14, we fail to see how Tosic's LCD bar
28 could remain attached to the pins when ring members 14 are removed.
The Examiner does not adequately explain how the entire system could be
removed without detaching these elements from each other. See Final Act.
3; Ans. 16. Thus, the Examiner's finding that Tosic discloses a fixation
member "configured to remain attached to" the pins when the annular
fixation members are removed (see Final Act. 2-3) lacks adequate
evidentiary support.
For at least the above reasons, the Examiner fails to establish by a
preponderance of the evidence that Tosic anticipates the subject matter of
claim 18. Accordingly, we do not sustain the rejection of claim 18, or its
dependent claims 19-23, 30, 31, 35, and 38, under 35 U.S.C. § 102(b) as
anticipated by Tosic.
3 The Examiner alludes to Tosic's Figure 1 embodiment, in which a fixation
member (LCD bar 28) is attached at its lower end to screw or pin 24,
independently of the annular fixation member (ring member 14), via
extension finger 18. Ans. 21. However, this embodiment includes only one
annular fixation member (ring member 14), not first and second annular
fixation members, as required in independent claim 18.
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Rejection II
In this rejection of claim 18, the Examiner finds that Stevens
discloses, in relevant part,
a fixation member (20') which is coupled rigidly to the first and
second pins [(12)] for the purpose of fixing the mutual distance
between the pins during a hardening phase (see fig. 7a), and
which is coupled flexibly to the first and the second pins during
a correction phase (see fig. 7a); at least a first annular fixation
member ( 16) which is connected to the first pin and at least a
second annular fixation member (16) which is (indirectly)
connected to the second pin ... , wherein the fixation member is
configured to remain attached to the first pin and the second pin
when the first annular fixation member and the second annular
fixation member are removed during the hardening phase.
Final Act. 5-6 ( citing Stevens ,r 50 and an annotated reproduction of Figure
7a of Stevens appearing on page 6 of the Final Action).
Appellants argue that,
at best, Stevens discloses that the first and second pins (12) are
connected to the respective fixing blocks (20, 20'). While fixing
blocks (20, 20') may be connected to one another and to the
alleged annular fixation member (frame (16)), Stevens fails to
disclose that the pins (12) are connected to the frame (16) as
specified by the present claims.
Appeal Br. 14 ( emphasis added). This argument is not persuasive.
To the extent that Appellants appear to argue that Stevens must
disclose a direct connection between pins 12 and frame 16, such an
argument is unpersuasive because it is not commensurate with the scope of
claim 18, which does not require a direct connection between the pins and
the annular fixation members. See In re Self, 671 F.2d 1344, 1348 (CCPA
1982) (noting that it is well established that limitations not appearing in the
claims cannot be relied upon for patentability). Instead, claim 18 only
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recites, in relevant part, "at least a first annular fixation member which is
connected to the first pin and at least a second annular fixation member
which is connected to the second pin." Appeal Br. 21 (Claims App.). As
discussed above, the Examiner finds that Stevens discloses an indirect
connection between frame 16 and pins 12. See Final Act. 5; see also Ans.
18 ( explaining that Appellants' "bone correction system also relies on an
indirect connection between the pins and fixation rings"). Appellants do not
specifically address the Examiner's position that Stevens's indirect
connection meets the disputed limitation or explain why it is deficient.
Appellants argue that the connection between Stevens's pins 12 and
fixation member (blocks 20, 20') does not allow the fixation member to
remain attached to the pins when the annular fixation members ( frame 16)
are removed. Appeal Br. 14; see also id. at 13 (asserting that "Stevens
suffers from the same deficiencies as Tosic"). In particular, Appellants
assert that, "once the 'entire system (rings, pins and fixation member)' is
removed, the bone would no longer be in a hardening phase." Id. at 14
( quoting Final Act. 7). We are not persuaded by this argument.
Although the Examiner takes the position that the entire system of
Stevens could be removed from the bone while the fixation member remains
attached to the pins (see Final Act. 7), claim 18 only requires that the
fixation member is configured to remain attached to the pins when the
annular fixation members are removed (see Appeal Br. 21 (Claims App.)).
As discussed above in connection with Rejection I of claim 18 based on
Tosic, the claimed fixation member being "configured to remain attached to"
the pins when the annular fixation members are removed requires an
attachment between the fixation member and the pins that is independent of
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the annular fixation members. Here, in contrast to Tosic, Stevens discloses
such an attachment.
In particular, Stevens discloses, with reference to Figure 7 a, that "any
combination of fixing blocks 20 and/or fixing blocks 20', 20", 20"' can be
vertically mounted or stacked together on frame 16." Stevens ,r 48 (boldface
omitted). Stevens also discloses that "the fixing block[ s] can be stacked so
that two or more bone pins 12 can be mounted to the stacked fixing blocks
so as to optimize bone pin placement and orientation." Id. (boldface
omitted). In other words, Stevens discloses that a stack of blocks 20
( fixation member) can be attached to pins 12 independently of frame 16
( annular fixation member), such that frame 16 can be removed without
having to detach blocks 20 from pins 12. Thus, a preponderance of the
evidence supports the Examiner's finding that Stevens discloses a fixation
member that is "configured to remain attached to" the pins when the annular
fixation members are removed. See Final Act. 6.
For the above reasons, Appellants fail to apprise us of error in the
Examiner's finding that Stevens anticipates the subject matter of claim 18.
Accordingly, we sustain the rejection of claim 18, and its dependent claims
24--26, for which Appellants rely on the same arguments (see Appeal Br.
14), under 35 U.S.C. § 102(e) as anticipated by Stevens.
Re} ection III
In this rejection of claim 18, the Examiner finds that Taylor discloses,
in relevant part, "a fixation member (53) ... configured to remain attached
to the first pin [(73)] and the second pin [(73)] when the first annular
fixation member and the second annular fixation member are removed
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during the hardening phase." Final Act. 8 ( citing Taylor, Fig. 1 ). Appellants
argue that this rejection is in error because "Taylor suffers from the same
deficiencies as Tosic discussed [in connection with Rejection I]." Appeal
Br. 15. We agree with Appellants.
Taylor discloses that adjustable strut 53 (fixation member) attaches to
rings 71 ( annular fixation members), which are fixed to pins 73 using clamps
77. See Taylor, Fig. 1; col. 10, 11. 11-12, 42--46. In other words, the
connection between strut 53 and pins 73 relies on rings 71, and there is no
connection between strut 53 and pins 73 that is independent of rings 71. As
is the case with Tosic, discussed above, removing Taylor's annular fixation
members ( rings 71) would detach the fixation member ( strut 5 3) from the
pins (73). Consequently, the Examiner's finding that Taylor discloses a
fixation member that is "configured to remain attached to" the pins when the
annular fixation members are removed (see Final Act. 8) lacks adequate
evidentiary support.
For at least the above reasons, the Examiner fails to establish by a
preponderance of the evidence that Taylor anticipates the subject matter of
claim 18. Accordingly, we do not sustain the rejection of claim 18, or its
dependent claims 27-31 and 36, under 35 U.S.C. § 102(b) as anticipated by
Taylor.
Rejection IV
The Examiner's rejection of independent claim 3 2 suffers from the
same deficiency discussed above in connection with Rejection I. Namely,
the rejection is predicated on an unsupported finding that Tosic's annular
fixation members (ring members 14) could be removed while the fixation
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member (LCD bar 28) remains coupled to the pins. See Final Act. 11; Ans.
21. The Examiner's position that a "user [could] remove the rings [of Tosic]
from the fixation member 28 by loosening coupling assemblies 20 while
leaving pins 24 attached to the bone and fixation member 28 via extension
fingers 18" (Ans. 21) is not supported by any evidence of record, and,
instead, appears to be based upon a speculative assumption that simply
loosening the coupling assemblies would allow the entire fixator system to
be removed from a patient without detaching any of the components. Such
speculation is insufficient to support an obviousness conclusion. See In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (Rejections based on
obviousness must rest on a factual basis; in making such a rejection, the
Examiner has the initial burden of supplying the requisite factual basis and
may not, because of doubts that the invention is patentable, resort to
speculation, unfounded assumptions, or hindsight reconstruction to supply
deficiencies in the factual basis.).
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a proper case that independent claim 32 is
unpatentable based on the cited references. On this basis, we do not sustain
the rejection of claim 32, or its dependent claims 34 and 39, under 35 U.S.C.
§ 103(a) as unpatentable over Tosic and Kim.
DECISION
The Examiner's decision rejecting claims 18-23, 30, 31, 35, and 38
under 35 U.S.C. § 102(b) as anticipated by Tosic is REVERSED.
The Examiner's decision rejecting claims 18 and 24--26 under
35 U.S.C. § 102(e) as anticipated by Stevens is AFFIRMED.
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The Examiner's decision rejecting claims 18, 27-31, and 36 under
35 U.S.C. § 102(b) as anticipated by Taylor is REVERSED.
The Examiner's decision rejecting claims 32, 34, and 39 under
35 U.S.C. § 103(a) as unpatentable over Tosic and Kim is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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