Ex Parte Schlienger et al

Patent Trial and Appeal Board

Jun 10, 2013

11625893 (P.T.A.B. Jun. 10, 2013)

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.
11/625,893 01/23/2007 Andre Schlienger 10139/09502 9258
76960 7590 06/10/2013
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
EXAMINER
SAETHER, FLEMMING
ART UNIT PAPER NUMBER
3677
MAIL DATE DELIVERY MODE
06/10/2013 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 ANDRE SCHLIENGER, PETER SENN, and
MARKUS BUETTLER
____________________

Appeal 2011-003438
Application 11/625,893
Technology Center 3600
____________________

Before GAY ANN SPAHN, JOHN W. MORRISON, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

MORRISON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-003438
Application 11/625,893

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-19. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

INVENTION
The claims relate to “a locking screw for an intramedullary nail with
transverse boreholes.” Spec. 1, para.[0002]. Claim 1, reproduced below,
with emphasis added, is illustrative of the claimed subject matter.
1. A screw, comprising:
a head end,
a tip, and
a screw core including at least one cavity
and a circumferential surface, the circumferential
surface carrying an external thread, the screw core
further including a central line which is formed by
a line connecting centers of gravity of axially
successive, orthogonal cross-sectional surfaces of
the screw core, the centers of gravity disregarding
the at least one cavity and the external thread,
wherein the central line is not rectilinear.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Morse
Gruich
Giannuzzi
US 3,391,720
US 4,321,001
US 4,828,445
Jul. 9, 1968
Mar. 23, 1982
May 9, 1989

Appeal 2011-003438
Application 11/625,893

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REJECTIONS
Claims 1-3, 5-7, and 9-19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Morse and Gruich.
Claims 4 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Morse, Gruich, and Giannuzzi.

ANALYSIS
Appellants argue claims 1-3, 5-7, and 9-19
1
as a group and we select
independent claim 1 as the representative claim. See App. Br. 3-5; see also
37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 2, 3, 5-7, and 9-19 stand or fall
with claim 1.
Addressing claim 1, the Examiner finds that Morse teaches
substantially all of the claim elements, but “does not disclose the core having
a cavity.” Ans. 4. The Examiner also finds that “Gruich disclose[s], in the
embodiment of Figs. 9 and 10, a screw having an axial cavity the length of
the screw.” Id. The Examiner then concludes:
it would have been obvious for one of ordinary
skill in the art to provide the screw of Morse with a
cavity as disclosed in Gruich so as to reduce the
weight and save the material of the screw and to
provide for an access through the screw as
discussed in Gruich.
Id. (citing Gruich, col. 3, ll. 28-37).

1
Appellants inadvertently list only claims 1-3, 5-7, and 9-18 as being
rejected under 35 U.S.C. § 103(a) as unpatentable over Morse and Gruich
under heading A; however, it is clear from heading I and the last sentence
under heading B that Appellants understood that claim 19 was also included
in this rejection.
Appeal 2011-003438
Application 11/625,893

4
First, Appellants argue that the center line (i.e., the claimed central
line) is selected “dependent on the characteristics of the hole (i.e., bore) into
which the screw is to be received.” App. Br. 4; Reply Br. 3. The Examiner
determines “it is irrelevant that the screw in Morse is shaped relative to a
hole because that does not preclude the screw itself from having the
structural features as claimed” Ans. 7. We agree with the Examiner. Claim
1 is directed to a screw per se, not a screw in a hole or bore. Although the
Examiner’s rejection does not point to any particular figure of Morse, the
Examiner may have appropriately relied on the screw 10 in Morse’s Figures
1A, 1B, and 2, which do not depict the screw 10 as being received in a hole
or bore and therefore, the shape of the screw and central line therethrough is
not dependent upon any hole in which the screw is seated in contrast to the
screw 10 as depicted in Morse’s Figures 3A, 3B, and 4. Thus, Appellants’
argument has not identified error in the Examiner’s findings.
Next, Appellants argue that the Morse reference:
includes no showing or suggestion that its central
line follows a path connecting centers of gravity
and further neither shows nor suggests that such
centers of gravity are determined disregarding the
thread and the cavity. There is no disclosure in
Morse regarding a central line nor a mentioning of
a central line. Accordingly, it is unclear how any
assumption may be made regarding the centers of
gravity being independent of the thread and the
cavity.
App. Br. 4. This argument is not persuasive. The term “central line” is
defined by Appellant in claim 1 as “a line connecting centers of gravity of
axially successive, orthogonal cross-sectional surfaces of the screw core, the
centers of gravity disregarding the at least one cavity and the external
Appeal 2011-003438
Application 11/625,893

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thread.” See Claim App’x, claim 1. Claim 1’s definition is consistent with
the Specification which indicates that “[t]he concept of the central line is
defined by the line connecting the centers of gravity of the axially successive
orthogonal cross-sectional areas of the core of the screw without taking into
consideration any cavities and disregarding the external thread.” Spec. 2,
para. [0007]. In determining the scope of claim 1, we must apply the
broadest reasonable interpretation in light of the Specification as it would be
interpreted by one of ordinary skill in the art. See In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (The scope of claims in
patent applications is determined by giving claims “their broadest reasonable
interpretation consistent with the specification” and “in light of the
specification as it would be interpreted by one of ordinary skill in the art.”).
First, we do not need the disclosure of the specific term “central line”
because a “central line” is defined by Appellants in the Specification and in
claim 1. To determine if the resulting screw from the combination of
teachings of Morse and Gruich meets the claim language, we must apply the
properly construed claim language to the combination of the Morse and
Gruich references. See Key Pharmaceuticals v. Hercon Labs. Corp., 161
F.3d 709, 714 (Fed. Cir. 1998) (citations omitted) (A determination of
anticipation, as well as obviousness, involves two steps. First is construing
the claim, a question of law, followed by, in the case of anticipation or
obviousness, a comparison of the construed claim to the prior art.) In
addition, a reference need not teach a limitation in haec verba. In re Bode,
550 F.2d 656, 660 (CCPA 1977); In re Bond 910 F.2d 831, 832 (Fed. Cir.
1990).
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Second, as claimed by Appellants in claim 1, the “centers of gravity”
that define the “central line” must “disregard[] the at least one cavity and the
external thread.” Thus, the central line for any screw core must disregard,
or be independent of, the cavity and the external thread or it would not fall
within the definition of “central line” as claimed by Appellants in claim 1.
When we apply the definition to the Examiner’s combination, i.e., the
screw 10 of Morse as modified to have a cavity by the teachings of Gruich,
we must ignore the cavity and external threads thereof by definition. Thus,
the central line of the screw resulting from the combination of Morse and
Gruich will be the same as the central line of Morse, the Examiner correctly
found that “Morse by way of the spiral axis discloses the claimed non-
rectilinear central line.” Ans. 6; see also Morse, col. 1, l. 33 and figs. 1A,
1B, and 2. As such, Appellants have not apprised us of any error in the
Examiner’s finding that the combination of Morse and Gruich has a “central
line which is formed by a line connecting centers of gravity of axially
successive, orthogonal cross-sectional surfaces of the screw core,” wherein
the centers of gravity are independent of the cavity and external threads and
the central line is not rectilinear as required by claim 1.
Appellants also argue that “Gruich does not relate to a screw and does
not disclose or suggest a screw core, in particular a type which would
suggest the above recitation of claim 1.” App Br. 5. Appellants are
separately arguing the Gruich reference, but fail to address the Examiner’s
combination of the references. One cannot show nonobviousness by
attacking references individually where the rejections are based on a
combination of references. See In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986); In re Keller, 642 F.2d 413, 426 (CCPA 1981).
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Application 11/625,893

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Accordingly, for the above reasons, we sustain the Examiner’s
rejection of claim 1, and claims 2, 3, 5-7, and 9-19 which stand or fall
therewith, under 35 U.S.C. § 103(a) as unpatentable over Morse and Gruich.

Obviousness over Morse, Gruich, and Giannuzzi
Appellants only argue that Giannuzzi does not cure the deficiency of
Morse and Gruich with respect to the rejection of claim 1. App. Br. 6. As
there is no deficiency in the obviousness rejection of Morse and Gruich with
respect to claim 1 for the reasons discussed supra, we sustain the Examiner’s
rejection of claims 4 and 8 under 35 U.S.C. § 103(a) as unpatentable over
Morse, Gruich and Giannuzzi.

DECISION
For the above reasons, the Examiner’s rejection of claims 1-19 is
affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

ELD