Ex Parte Senn et al

Patent Trial and Appeal Board

Jan 4, 2013

11221648 (P.T.A.B. Jan. 4, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/221,648 09/07/2005 Peter Senn 10139/10702 6734
76960 7590 01/07/2013
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
EXAMINER
COTRONEO, STEVEN J
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
01/07/2013 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 PETER SENN, ANDRE SCHLIENGER,
and MARKUS BUETTLER
__________

Appeal 2012-001118
Application 11/221,648
Technology Center 3700
__________

Before JEFFREY N. FREDMAN, ERICA A. FRANKLIN, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a locking
screw for an intramedullary nail. The Examiner rejected the claims as
anticipated and as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

Appeal 2012-001118
Application 11/221,648

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Statement of the Case
Background
“The present invention relates to orthopaedic implants and, more
particularly, to a locking screw for use with an intramedullary nail, wherein
the screw includes a head portion with a passage for receiving a longitudinal
wedge element” (Spec. 1 ¶ 0002).
The Claims
Claims 1-5 and 8-25 are on appeal. Claim 1 is representative and
reads as follows:
1. A locking screw for an intramedullary nail having at
least one transverse borehole, the locking screw having a
central longitudinal axis and comprising:
a screw shaft, at least a portion of which includes an
external thread having an outer diameter;
a screw head having a diameter greater than the outer
diameter of the external thread; and
a passage formed through the screw head configured
and dimensioned to receive a longitudinal wedging element
to be passed therethrough into a clearance between an outer
surface of the external thread and an inner surface of the
transverse borehole, the passage extending in a first
direction generally parallel to the longitudinal axis of the
screw.

The issues
A. The Examiner rejected claims 1-3, 10-12, 18, 19, 23, and 24 under 35
U.S.C. § 102(e) as anticipated by Reed1 (Ans. 5-6).
B. The Examiner rejected claims 1-3, 11-15, 18, 19, 23, and 24 under 35
U.S.C. § 102(b) as anticipated by While2 (Ans. 6-7).

1 Reed, G., US 6,439,817 B1, issued Aug. 27, 2002.
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C. The Examiner rejected claims 4, 5, 8, 9, and 20 under 35 U.S.C. §
103(a) as obvious over Reed and Neuschotz3 (Ans. 8-10).
D. The Examiner rejected claims 16 and 17 under 35 U.S.C. § 103(a) as
obvious over Reed (Ans. 10).
E. The Examiner rejected claims 21 and 22 under 35 U.S.C. § 103(a) as
obvious over While and Mack4 (Ans. 10-11).
F. The Examiner rejected claim 25 under 35 U.S.C. § 103(a) as obvious
over Lawes5 and Reed (Ans. 11-12).
A. 35 U.S.C. § 102(e) over Reed
The Examiner finds that:
Reed discloses a locking screw (see fig 5 below)
comprising: a screw shaft (see fig 5 below), at least a portion
of which includes an external thread having an outer
diameter; a screw head (fig 5, 40) having a diameter greater
than the outer diameter of the external thread; and a passage
(fig 5, 43) formed through the screw head configured and
dimensioned to receive a longitudinal wedging element (fig
5, 47) to be passed therethrough into a clearance between an
outer surface of the external thread and an inner surface of
the transverse borehole, the passage extending in a first
direction generally parallel to the longitudinal axis of the
screw (see fig 5 below).

(Ans. 5).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Reed anticipates claim 1?

2 While et al., US 4,645,394, issued Feb. 24, 1987.
3 Neuschotz, R., US 3,650,309, issued Mar. 21, 1972.
4 Mack, M., US 969,382, issued Sep. 6, 1910.
5 Lawes, P., US 5,454,813, issued Oct. 3, 1995.
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Application 11/221,648

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Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
1. Reed teaches “a thread repair sleeve having a substantially
cylindrical shape and interior and exterior threads used to replace damaged
threads” (Reed, col. 1, ll. 7-9).
2. Reed teaches that after “the insert has been placed within the
material to be repaired, a hole may be drilled extending the cylindrical bore
into the juncture of the exterior threads of the insert and the threads of the
bore in the material” (Reed, col. 2, ll. 54-58).
3. Reed teaches that:
a cylindrical pin is driven into the cylindrical bore through
the shoulder and into the drilled area of the exterior threads
of the insert and the threads of the bore of the material so
that the insert will no longer readily move with respect to the
material because the flight of the threads of the insert on an
exterior surface thereof will be opposed by the placement of
the cylindrical pin and its retention by the threads of the bore
of the material. Where the insert already includes a vertical
channel defining a thread gap aligned with the cylindrical
bore of the insert’s shoulder, the drilling step is not
mandatory. In this case, driving the cylindrical pin will
actually improve insert retention because the threads in the
bore contacted by the pin distort and therefore enhance
retention of the insert in the bore.

(Reed, col. 2, l. 58 to col. 3, l. 5).

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4. Figure 5 of Reed is reproduced below:

“FIG. 5 depicts one operative characteristic of the present invention” (Reed,
col. 4, ll. 23-24).
5. Reed teaches that “the clearance 49 can be regarded as an
interruption of the thread in an area vertically aligned with hole 43. . .
Driving the pin into bore 43 will then deform the thread of the material M
around the clearance 49 providing even more interference, sealing and
resistance from removal” (Reed, col. 8, l. 65 to col. 9, l. 5).
Principles of Law
“A single prior art reference that discloses, either expressly or
inherently, each limitation of a claim invalidates that claim by anticipation.”
Perricone v. Medicis Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir.
2005).
Analysis
Reed teaches a screw which has a central longitudinal axis which
comprises a screw shaft with an external thread (FF 4). Figure 5 of Reed
teaches a screw head which has a diameter greater than the outer diameter of
the external thread (FF 4). Reed teaches a bore (i.e., passage) 43 formed
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through the screw head where “[d]riving the pin into bore 43 will then
deform the thread of the material M around the clearance 49 providing even
more interference, sealing and resistance from removal” (Reed, col. 8, l. 65
to col. 9, l. 5; FF 5). Figure 5 shows that the bore 43 is parallel to the
longitudinal axis of the screw (FF 4). Reed teaches that “driving the
cylindrical pin will actually improve insert retention because the threads in
the bore contacted by the pin distort and therefore enhance retention of the
insert in the bore” (Reed, col. 3, ll. 2-5; FF 3).
Appellants contend that the “cylindrical hole 43 in no way shows a
clearance between an outer surface of an external thread and an inner
surface of a borehole” (App. Br. 6). Appellants also contend that “no
clearance exists between the threads of insert 10 and the borehole of material
M, as evidenced by the absence of such a clearance in Figs. 1,4 and 8A –
12” (App. Br. 8).
We are not persuaded. As the Examiner correctly points out, “[c]laim
1 does not say that the outer surface of the threads is defined by the greatest
radial dimension of the thread. The claim just states there is a clearance
between an outer surface of the threads and the inner surface of the bore”
(Ans. 12, emphasis added). Figure 5 of Reed shows that both the upper and
lower flanks of the external screw thread have a clearance with the inner
surface of the borehole, as required by claim 1. See In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset
because . . . they are not based on limitations appearing in the claims.”).
Appellants contend that
the cylindrical hole 43 of the Reed reference passes through
the threads of the insert 10 and the receiving material M and
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deforms the material M in the process. Thus, this hole 43
and the pin 47 inserted thereinto, does not reside in any
clearance between the insert 10 and the material M and the
cited art neither shows nor suggests “a clearance between an
outer surface of the external thread and an inner surface of
the transverse borehole” - nor could any pin in such a hole
perform any wedging function.

(App. Br. 7).
We are not persuaded. Reed specifically teaches that the pin performs
a wedging function since Reed teaches that “the clearance 49 can be
regarded as an interruption of the thread in an area vertically aligned with
hole 43. . . Driving the pin into bore 43 will then deform the thread of the
material M around the clearance 49 providing even more interference,
sealing and resistance from removal” (Reed, col. 8, l. 65 to col. 9, l. 5; FF 5).
The ordinary meaning of wedging is reasonably interpreted as positioning a
material so as to prevent an object from readily moving with respect to the
material, which is something that the pin 43 performs in the screw of Reed
(FF 3, 5). The deformation of the pin to provide interference and resistance
from removal by unscrewing the external thread is reasonably interpreted as
a “wedging” function as required by claim 1. See In re Zletz, 893 F.2d 319,
322 (Fed. Cir. 1989) (“[D]uring patent prosecution when claims can be
amended, ambiguities should be recognized, scope and breadth of language
explored, and clarification imposed.”)
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that Reed
anticipates claim 1.

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B. 35 U.S.C. § 102(b) over While
The Examiner finds that:
While et al. discloses a locking screw (see fig 6 below)
comprising: a screw shaft (see fig 6 below), at least a portion
of which includes an external thread having an outer
diameter; a screw head (fig 6, 10C) having a diameter
greater than the outer diameter of the external thread; and a
passage (see fig 6 below) formed through the screw head
configured and dimensioned to receive a longitudinal
wedging element (fig 6, 35) to be passed therethrough into a
clearance between an outer surface of the external thread
and an inner surface of the transverse borehole, the passage
extending in a first direction generally parallel to the
longitudinal axis of the screw (see fig 6 below).

(Ans. 6-7).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that While anticipates claim 1?
Findings of Fact
6. While teaches a “fastening apparatus is adapted to be inserted
and removed from one side of a work piece having an opposite side which is
substantially inaccessible to a worker. A first, externally threaded member is
threadingly engaged with a receiving structure, and a second member is
inserted within corresponding seats or grooves for interlocking the two
members” (While, abstract).

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7. Figure 6 of While is reproduced below:

“FIG. 6 is a sectional view of a third embodiment of the fastener” (While,
col. 2, ll. 35-36).
8. While teaches that “the fastener is installed in a receiving
structure 20C comprising panels 22C, 23C, in which an internally threaded
bore 21 is formed for receiving the first member 10C” (While, col. 5, ll. 51-
54).
9. While teaches that “[i]ndentations 45C, 46C are preferably cut
into the second panel member 23C for receiving the distal end portions 40,
41 of the second member 35, for locking the fastener first member 10C
relative to the receiving structure 20C” (While, col. 5, ll. 55-59).
Analysis
While teaches a fastening apparatus which comprises a “second
member 35, for locking the fastener first member 10C relative to the
receiving structure 20C” (While, col. 5, ll. 55-59; FF 9).
We agree with Appellants that “the path traversed by the second
member 35 of While is neither analogous to nor equivalent to the passage
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Application 11/221,648

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recited in claim 1 as the second member 35 is not located in any clearance
between an outer surface of the external thread and an inner surface of the
transverse borehole” (App. Br. 11). Consequently, we also agree with
Appellants that “[a]ccordingly, the While reference fails to teach or suggest,
‘a passage formed through the screw head configured and dimensioned to
receive a longitudinal wedging element to be passed therethrough into a
clearance between an outer surface of the external thread and an inner
surface of the transverse borehole ...’” (App. Br. 11).
The Examiner also argues here that the “outer surface need not be
limited to greatest radial dimension but can include the surface that is
created when the thread is penetrated to allow the wedge to pass into place”
(Ans. 13). However, figure 6 of While upon which the Examiner relies does
not clearly show that the element 35 interacts with the thread at any surface,
much less the greatest radial dimension. Further claim 6 does not
demonstrate that there any necessary “clearance” as required by claim 1.
Also, it is unclear that While discloses a screw head with a diameter greater
than the outer diameter of the external thread.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that While anticipates claim 1.
C. 35 U.S.C. § 103(a) over Reed and Neuschotz
The Examiner finds it obvious to “substitute the one groove of Reed
with the two grooves in view of Neuschotz because one groove and the two
grooves are mere functional equivalents, and because such a substitution of
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one for the other would have achieved the same predicable result of allowing
for a wedge to be moved from an unlocked to a locked position” (Ans. 9).
The Examiner provides sound fact-based reasoning for combining
Neuschotz and Reed. We adopt the fact finding and analysis of the Examiner
as our own. Appellants’ arguments are directed at elements taught by Reed
as discussed in the primary rejection, but not at the combination of
Neuschotz and Reed. Therefore, consistent with the rejection which we
affirmed above, we affirm this rejection for the reasons stated by the
Examiner.
D. 35 U.S.C. § 103(a) over Reed
The Examiner finds it obvious to “have the passage having a diameter
between .8 and 1.2mm, since it has been held that where the general
conditions of a claim are disclosed in the prior art, discovering the optimum
or workable ranges involves only routine skill in the art” (Ans. 10).
The Examiner provides sound fact-based reasoning for modifying
Reed. We adopt the fact finding and analysis of the Examiner as our own.
Appellants’ arguments are directed at elements taught by Reed as discussed
in the primary rejection. Therefore, consistent with the rejection which we
affirmed above, we affirm this rejection for the reasons stated by the
Examiner.
E. 35 U.S.C. § 103(a) over While and Mack
This rejection relies upon the underlying anticipation rejection over
claim 1 with While. Having reversed the rejection of claim 1 over While, we
necessarily reverse this obviousness rejection further including Mack, since
Mack does not cure the deficiencies of While.
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F. 35 U.S.C. § 103(a) over Lawes and Reed
The Examiner finds “Lawes discloses inserting an intramedullary nail
having one transverse bore hole into the medullary canal of a bone (fig 6)
and inserting a locking screw into the transverse borehole (fig 1)” (Ans. 11).
The Examiner finds it obvious to “substitute the wedge on the external
surface of Lawes with the wedge that is passed through a passage in view of
Reed because a wedge on the surface and the wedge that passes through a
passage are mere functional equivalents, and because such a substitution of
one for the other would have achieved the same predicable result of
preventing unwanted movement of the screw” (Ans. 11-12).
The Examiner provides sound fact-based reasoning for combining
Lawes and Reed. We adopt the fact finding and analysis of the Examiner as
our own. Appellants’ arguments are directed at elements taught by Reed as
discussed in the primary rejection, but not at the combination of Lawes and
Reed. Therefore, consistent with the rejection which we affirmed above, we
affirm this rejection for the reasons stated by the Examiner.
SUMMARY6
In summary, we affirm the rejection of claim 1 under 35 U.S.C. §
102(e) as anticipated by Reed. Pursuant to 37 C.F.R. § 41.37(c)(1), we also
affirm the rejection of claims 2, 3, 10-12, 18, 19, 23, and 24, as these claims
were not argued separately.
We reverse the rejection of claims 1-3, 11-15, 18, 19, 23, and 24
under 35 U.S.C. § 102(b) as anticipated by While.

6 We note that there are no affirmed rejections for claims 13-15.
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We affirm the rejection of claims 4, 5, 8, 9, and 20 under 35 U.S.C. §
103(a) as obvious over Reed and Neuschotz.
We affirm the rejection of claims 16 and 17 under 35 U.S.C. § 103(a)
as obvious over Reed.
We reverse the rejection of claims 21 and 22 under 35 U.S.C. § 103(a)
as obvious over While and Mack.
We affirm the rejection of claim 25 under 35 U.S.C. § 103(a) as
obvious over Lawes and Reed.

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

AFFIRMED-IN-PART
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