Ex Parte SCHALLER et alDownload PDFPatent Trial and Appeal BoardFeb 22, 201612856983 (P.T.A.B. Feb. 22, 2016) Copy Citation 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. 2 Appeal2013-008910 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. 3 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 4 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). 5 Appeal2013-008910 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 6 Copy with citationCopy as parenthetical citation