Ex Parte Schaller et al

Patent Trial and Appeal Board

Feb 22, 2016

12856983 (P.T.A.B. Feb. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/856,983 08/16/2010 Konrad SCHALLER
76960 7590 02/22/2016
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
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.
10139/19502 (T01157US1) 3165
EXAMINER
RAMAN A, ANURADHA
ART UNIT PAPER NUMBER
3775
MAILDATE DELIVERY MODE
02/22/2016 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 KONRAD SCHALLER, ALFRED NIEDERBERGER, and
JOHANN FIERLBECK
Appeal2013-008910
Application 12/856,983 1
Technology Center 3700
Before MICHAEL C. ASTORINO, KENNETH G. SCHOPPER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1, 2, and 5-13. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
BACKGROUND
According to Appellants, "[t]he present invention relates to the
treatment of a bone and, in particular, to a system and method for treating an
1 According to Appellants, the real party in interest is Synthes USA, LLC,
"which is a wholly owned subsidiary of Synthes, Inc. [and] Johnson &
Johnson, Inc. is the parent corporation of Synthes, Inc." App. Br. 2.
Appeal2013-008910
Application 12/856,983
osteoporotic bone using pre-shaped wires that penetrate the bone when a
force is exerted on proximal ends of the wires." Spec. i-f 2.
CLAIMS
Claim 1 is the only independent claim on appeal and recites:
1. A device for treating a bone, comprising:
an elongated body configured to be coupled to a bone
stabilization implant positioned over an outer surface of a bone
so that, when the bone stabilization implant is mounted to a target
bone in a desired position, the elongated body extends away from
the bone stabilization implant at an angle selected so that the
elongated body passes into a target portion of bone along a
desired path, the elongated body defining a lumen therein
extending to an opening in a distal end of the elongated body;
a deploying member housed within the lumen of the
elongated body for movement between a first position and a
second position; and
a plurality of wires coupled to the deploying member so
that movement of the deploying member through the lumen
moves the wires between an insertion position in which distal
ends of the wires are housed within the lumen and a deployed
position in which the distal ends of the wires extend distally out
of the opening in the distal end of the elongated body to penetrate
a portion ofbone adjacent to the distal end of the elongated body,
the wires being biased to assume an anchoring shape when
extended out of the elongated body.
App. Br., Claims App.
REJECTIONS
1. The Examiner rejects claim 7 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description
requirement.
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Application 12/856,983
2. The Examiner rejects claims 1, 2, 5, 8, 9, and 11-13 under
35 U.S.C. § 102(b) as anticipated by Bartsch. 2
3. The Examiner rejects claims 6, 7, and 10 under 35 U.S.C. § 103(a)
as unpatentable over Bartsch in view of Nelson. 3
DISCUSSION
1. Written Description
The Examiner rejects claim 7 as failing to comply with the written
description requirement. Final Action 3. Specifically, the Examiner finds
that there is no support in the Specification for an angle of curvature of
between 90 and 180 degrees as claimed, and that the Specification only
provides for a range of curvature between "approximately 90° and 180° ."
Ans. 3 (citing Spec. i-f 9). The Examiner explains that one of ordinary skill
in the art would not know whether the described range of "between
approximately 90° and 180°" supports the claimed range of between 90° and
1 Q{\O
lOV •
We agree with Appellants that the disclosure of an angle of curvature
"between approximately 90° and 180°" in the Specification is sufficient
written support for the claimed range of "between 90° and 180°." See App.
Br. 3--4. We find that the disclosure of a range between "approximately 90°
and 180°" reasonably conveys that Appellants were in possession of the
invention claimed when the Specification was filed. See Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541F.3d1115, 1122 (Fed. Cir. 2008)
2 Bartsch et al., US 6,558,388 Bl, issued. May 6, 2003.
3 Nelson et al., US 2007/0233105 Al, pub. Oct. 4, 2007.
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Appeal2013-008910
Application 12/856,983
(quoting Vas-Cath Inc. v. Ji;fahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir.
1991)).
Accordingly, we do not sustain the rejection of claim 7 ..
2. Anticipation
With respect to claim 1, the Examiner finds that Bartsch discloses a
device for treating a bone including an elongated body as claimed, a
deploying member as claimed, and a plurality of wires as claimed. Final
Action 4--5 (citing Bartsch Figs. 1, 3; col. 4, 11. 5-10).
Appellants argue that Bartsch's device does not include "an elongated
body" as claimed, because it is not configured to be coupled to a bone
stabilization implant positioned over an outer surface of a bone. App. Br. 4.
With respect to this claim limitation, Appellants assert:
the Examiner agrees that the [claim] imparts specific limitations
as to the size and structure of the elongated body, such that the
elongated body must be constructed so that (a) it may be coupled
to a bone implant positioned on an outer surface of a bone and
(b) when coupled to the bone implant, the elongated body
extends into the bone away from the bone implant.
App. Br. 5 (citing Advisory Act. 2, mailed Jan. 8, 2013). Appellants argue
that Bartsch's device is not configured as claimed because Bartsch only
discloses a device intended to be used as an intramedullary nail and does not
teach or suggest using the device with a bone plate or other bone
stabilization implant. App. Br. 5---6. Appellants also assert that one of
ordinary skill in the art would understand that an intramedullary nail cannot
be used in combination with a bone plate in the claimed manner. Id.
As an initial matter, we note that during examination of a patent
application, pending claims are given their broadest reasonable construction
consistent with the Specification. In re Am. Acad. of Sci. Tech Ctr., 367
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Appeal2013-008910
Application 12/856,983
F.3d 1359, 1364 (Fed. Cir. 2004); In re Prater, 415 F.2d 1393, 1404-05
(CCPA 1969). We determine that Appellants' proposed interpretation of the
claim, quoted above, comports with the broadest reasonable interpretation of
the claim language at issue here. However, we do not agree with Appellants
that Bartsch fails to disclose a device with an elongated body under this
interpretation of the claim. Appellants essentially argue that Bartsch's
device cannot meet the claim language because it is not intended to be used
with a bone stabilization implant. However, the recitation of a new use for
old product does not make a claim to the old product patentable. In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted). We are
not persuaded that this claim limitation, under the interpretation quoted
above, imparts any structure on the claimed device that is not disclosed by
Bartsch. Thus, we agree with the Examiner that Bartsch discloses a device
as claimed.
Accordingly, we sustain the rejection of claim 1 and dependent claims
2, 5, 8, 9, and 11-13.
3. Obviousness
With respect to this rejection, Appellants argue only that "Nelson fails
to cure" the deficiencies in the rejection of claim 1 over Bartsch. App.
Br. 7-8. We are not persuaded by Appellants' arguments regarding Bartsch,
as discussed above, and thus, we sustain the rejection of claims 6, 7, and 10.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claim 7
under 35 U.S.C. § 112; we affirm the rejection of claims 1, 2, 5, 8, 9, and
11-13 under 35 U.S.C. § 102(b ); and we affirm the rejection of claims 6, 7,
and 10 under 35 U.S.C. § 103(a).
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Application 12/856,983
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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