Ex Parte Schreiber et al

Patent Trial and Appeal Board

Dec 5, 2016

12601406 (P.T.A.B. Dec. 5, 2016)

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.
12/601,406 03/03/2010 Ulrich Schreiber 6117-P37648 7319
13897 7590
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
12/07/2016 EXAMINER
MAHMUD, ATIYA S
ART UNIT PAPER NUMBER
3733
NOTIFICATION DATE DELIVERY MODE
12/07/2016 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):
mail @ Abel-IP.com
hmuensterer @ abel-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ULRICH SCHREIBER and STEFAN EICHHORN
Appeal 2014-009805
Application 12/601,4061
Technology Center 3700
Before MICHAEL L. HOELTER, JEREMY M. PLENZLER, and
LISA M. GUIJT, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
Final Decision rejecting claims 40 and 43^46 under 35 U.S.C. § 103(a) as
being unpatentable over Durham (US 6,106,528, iss. Aug. 22, 2000) and
Metzinger (US 2007/0233104 Al, pub. Oct. 4, 2007). We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION in
accordance with 37 C.F.R. § 41.50(b).
1 Appellants do not identify a real party-in-interest. Based on the statement
under 37 C.F.R. § 3.73(c) filed November 12, 2015, OT Medizintechnik
GMBH appears to be the real party-in-interest.
Appeal 2014-009805
Application 12/601,406
CLAIMED SUBJECT MATTER
Claim 40, reproduced below, is the sole independent claim. Claims
43^46 depend from claim 40.
40. A locking intramedullary nail for insertion into a
medullary cavity of a hollow bone and for supporting bone
fractures and reinforcing or stiffening joints, respectively,
wherein the nail comprises an elongated shaft having at least one
through hole for receiving one or more locking screws, wherein
in an area of at least one through hole a sleeve which is pivotable
at least perpendicularly to a longitudinal axis of the
intramedullary nail is supported in the shaft and comprises a bore
for receiving a locking screw and is lockable in a positionally
stable manner after insertion of the locking screw into the shaft,
wherein at least two successive sleeves at least one of compress,
block, and arrest each other by a force of a clamping screw, and
wherein at least one supporting element is arranged between the
at least two successive sleeves, the at least one supporting
element abutting against the sleeves.
OPINION
New Ground of Rejection — Indefiniteness
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
40 and 43^46 under 35 U.S.C. § 112,12 as being indefinite.
Claim 40 recites “a sleeve which is pivotable” and that “at least two
successive sleeves at least one of compress, block, and arrest each other by a
force of a clamping screw.” The claim is amenable to at least two plausible
constructions. The claim could be read as requiring three sleeves, with the
“two successive sleeves” being different than the “sleeve which is
pivotable.” Under such an interpretation, neither of the “two successive
sleeves” are required to be “pivotable.” Alternatively, the claim could be
read as requiring only two “sleeves,” with the “sleeve which is pivotable”
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Application 12/601,406
being one of the “two successive sleeves.” Neither interpretation is so broad
as to encompass the other. Claims 43 46 do not further clarify those
limitations.
Accordingly, we enter a new ground of rejection under 35 U.S.C
§ 112,12 because those claims are indefinite. See Ex parte Miyazaki, 89
USPQ2d 1207, 1211 (BPAI 2008) (precedential) (“if a claim is amenable to
two or more plausible claim constructions, the USPTO is justified in
requiring the applicant to more precisely define the metes and bounds of the
claimed invention by holding the claim . . . indefinite”).
Examiner’s Rejection
Although we determine that the claims are indefinite, we are still able
to determine that the Examiner’s rejection of those claims cannot be
sustained. The Examiner finds that Durham teaches the majority of the
limitations recited in claim 40, but not the “sleeves.” Final Act. 2—3. The
Examiner cites Metzinger as teaching “sleeves” and determines, in view of
that teaching, “[i]t would have been obvious ... to provide each of the
locking screws of Durham with a sleevef].” Id. at 3^4. The Examiner
explains that “the combination is such that the supporting element is
arranged between the at least two successive sleeves and that since the
support element of Durham is intended to abut the locking screw (S), the
supporting element would abut the locking sleeves which receive the locking
screws.” Id. The Examiner’s position is made clear by the annotated
version of Durham’s Figure 57 from the Answer (hereinafter “the annotated
figure”), reproduced below. See Ans. 9.
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Appeal 2014-009805
Application 12/601,406
FIS, 57
portion supporting
sxtsndmg b&iw&m first and second
s&rsswt5 sad abiitirig tht $m mmw
Ma® of supporting sl&m&of
sfeattmg secmd mmw
The figure reproduced above is a version of Durham’s Figure 57 as
annotated by the Examiner, showing a section view of Durham’s
intramedullary nail and intramedullary nail insert.
Claim 40 requires that a “supporting element is arranged between the .
. . two successive sleeves” and “abut[s] against the sleeves.” The Examiner
considers intramedullary nail insert 61 to be a “supporting element.” Final
Act. 3. The Examiner notes that “supporting element (61) comprises two
apertures (73, 75) for receiving two screws (S)” and that “[t]he supporting
element extends above the first screw between both screws and below the
second screw.” Ans. 8.
Appellants contend the claim requires that the thing located between
the sleeves (i.e., the “supporting element”) must abut both sleeves. App. Br.
10. Appellants contend that the Examiner’s reading of the claim as only
requiring a portion of the “supporting element” to be located between
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Appeal 2014-009805
Application 12/601,406
successive sleeves without requiring that portion to abut both sleeves is
unreasonably broad. See id. at 14—15. We agree with Appellants.
Initially, we note that the Examiner does not respond to Appellants’
claim construction contentions in any meaningful way. See Ans. 10
(dismissing Appellants’ contentions by simply noting that “limitations from
the specification are not read into the claims”). Moreover, the Examiner
does not provide any explicit construction for this disputed claim language.
As noted above, the claim clearly defines the position of the “supporting
element” as “located between successive sleeves” and requires the
“supporting element” to abut both sleeves. Under the construction implicit
in the Examiner’s rejection, only some portion of a “supporting element”
would need to be located between successive sleeves, and the portion of the
supporting element abutting the sleeves could be wholly outside of the
region between the sleeves (i.e., neither the portion that abuts the first sleeve
nor the portion that abuts the second sleeve would need to be located
between those sleeves). This is not a reasonable construction, as it is not
only inconsistent with the plain language of the claim, but is also
inconsistent with the Specification. See, e.g., Spec. 154 (“Between the two
sleeves 6 a block shaped separating element 13 is provided which abuts
against both sleeves 6.”).
Whether the “supporting element” defines a discrete structure, or is
part of some larger thing, that “supporting element,” itself, must be the
structure that is located between and abuts the two successive sleeves.
Appellants contend that this feature is not present in the combination
of teachings from Durham and Metzinger proposed by the Examiner. See,
e.g., App. Br. 10. We agree. Indeed, the rejection does not assert a teaching
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Application 12/601,406
or combination of teachings that meets this construction, as evidenced by the
annotated figure from the Answer reproduced above. For example,
supporting element 61 in the Examiner’s modified version of Durham would
abut a sleeve surrounding the portion labeled “first screw” in that figure at a
location that is not between the successive sleeves. Accordingly, the
Examiner has failed to establish that claims 40 and 43 46 are unpatentable
under 35 U.S.C. § 103.
DECISION
We REVERSE the Examiner’s decision to reject claims 40 and 43—
46; and
We also enter a NEW GROUND OF REJECTION of claims 40 and
43 46 on the basis that these claims are indefinite under 35 U.S.C. § 112,
12.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner . . .
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Application 12/601,406
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record . . .
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure §1214.01.
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).
REVERSED; 37 C.F.R, § 41.50(b)
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