Ex Parte SIXTO et al

Patent Trials and Appeals Board

Feb 6, 2019

14471565 - (D) (P.T.A.B. Feb. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/471,565 08/28/2014
104326 7590 02/08/2019
Schwegman Lundberg & Woessner/ Zimmer
P.O. Box 2938
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Robert SIXTO
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.
5394.161US1 9612
EXAMINER
KAMIKA WA, TRACY L
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
02/08/2019 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):
SLW@blackhillsip.com
USPTO@slwip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT SIXTO, JUERGEN KORTENBACH, and
JOSE LUIS FRANCESE 1
Appeal2018---001415
Application 14/471,565
Technology Center 3700
Before JAMES P. CALVE, MICHELLE R. OSINSKI, and JILL D. HILL,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert Sixto et al. ("Appellants") appeal under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 1, 4--8, 10, and 21-30,
which constitute all the claims pending in this application. Claims 2-3, 9,
and 11-20 have been cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 Appellants identify the real party in interest as the Applicant, Biomet C.V.
Appeal Br. 2.
Appeal2018---001415
Application 14/471,565
BACKGROUND
Independent claims 1, 21, and 2 8 are pending. Independent claim 1,
reproduced below, illustrates the claimed invention, with certain limitations
italicized.
1. A bone plate system internally fixating a fractured
bone of a patient, the system comprising:
a bone plate including a head portion and a shaft portion
having a longitudinal axis, the head portion being wider than
the shaft portion, the bone plate further including:
a plurality of threaded, locking bone fastener
apertures defined in the shaft portion and defining a
respective plurality of threaded aperture axes; and
a plurality of non-threaded, non-locking bone
fastener apertures defined in the shaft portion, aligned on
the longitudinal axis, and defining a respective plurality
of non-threaded aperture axes,
each non-threaded aperture axis being angled
between about ten degrees and about thirty degrees with
respect to each threaded aperture axis,
each of the plurality of non-threaded bone fastener
apertures being paired together with at least one of the
plurality of the threaded bone fastener apertures to form a
plurality of discrete aperture clusters,
a first aperture cluster of the plurality of discrete
aperture clusters being positioned about a proximal end
of the shaft portion,
a second aperture cluster of the plurality of discrete
aperture clusters being positioned about a distal end of
the shaft portion,
the first and second aperture clusters including
respective threaded, locking bone fastener apertures that
are positioned on laterally opposed sides of the
longitudinal axis; and
a plurality of bone fasteners,
each of the plurality of bone fasteners comprising a
shaft and a head,
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Appeal2018---001415
Application 14/471,565
each head being dimensioned and configured to
threadedly engage each of the plurality of threaded,
locking bone fastener apertures to provide a fixed angle
locking construct,
each head also being dimensioned and configured
to directly engage each of the plurality of non-threaded,
non-locking bone fastener apertures to provide a
polyaxial compressive construct.
Appeal Br. 18-19 (Claims App.)
Independent claims 21 and 28 recite a system having similar
limitations, with aperture axes "being angled between about ten degrees and
about thirty degrees" with respect to each other. Id. at 20-24.
REJECTION
I. Claims 1, 4--8, 10, and 21-30 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Weaver (US 6,623,486 Bl, iss. Sept. 23,
2003), Strnad (US 2007/0239163 Al, pub. Oct. 11, 2007), and Sixto (US
2009/0118768 Al, pub. May 7, 2009). Final Act. 6.
ANALYSIS
The Examiner finds, inter alia, that a combination of Weaver and
Strnad teach the claimed invention, except for each non-threaded aperture
axis being angled between about ten degrees and about thirty degrees with
respect to each threaded aperture axis. Final Act. 6-11, 12-16, and 17-21.
The Examiner finds, however, that Sixto discloses "a bone plate system
comprising a bone plate with a curvature about its longitudinal axis, ...
with aperture axes (127, 137) ... angled with respect to normally directed
apertures at an apparent angle between about ten and thirty degrees. Id. at
11-12, 17, and 22; Sixto ,r 114. The Examiner reasons that it would have
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Appeal2018---001415
Application 14/471,565
been obvious to modify Weaver and Strnad "to have an angle between each
non-threaded aperture axis with respect to each threaded aperture axis of
between about ten degrees and about thirty degrees," because Sixto "teaches
this range of angulation between apertures on the longitudinal axis and
apertures on laterally opposed sides of the axis," and teaches that this
angulation may vary depending on the radial size of the bone, such that
even if Sixt[ o] does not explicitly disclose a range between about
ten and thirty degrees between non-threaded and threaded
aperture axes, this range would be discoverable by a person of
ordinary skill depending on the size of the bone, since 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.
Id. at 4; see Ans. 6.
Appellants argue that the Examiner erred in finding that Sixto
discloses the claimed range of angulation of between about ten degrees and
about thirty degrees between apertures on the longitudinal axis and apertures
on laterally opposed sides of the axis. Appeal Br. 15. According to
Appellants, Sixto' s aperture axes are angled outside of the claimed angular
range, extending at an angle of "76°±6° relative to each other in the medial-
lateral direction." Id. (quoting Sixto i-fl 14).
Regarding this discrepancy in ranges, the Examiner responds that the
combination of Weaver, Strnad, and Sixto would "result in non[-]threaded
aperture axes angled about 35Q relative to the threaded aperture axes"2 and,
2 The Examiner reasons that "the citation of axes 12 7, 13 7 extending
transverse to each other ... means that each axis actually extends by half
that amount relative to a normally-directed aperture axis[,] and [a]s applied
to Weaver/Strnad, the non-threaded apertures ... extend normally into the
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Appeal2018---001415
Application 14/471,565
"[u]nder broadest reasonable interpretation, between about ten degrees and
about thirty degrees may be interpreted as ±20% at either end of the range,
which would include about 35Q." Final Act. 4; see Ans. 5---6.
Appellants refute the Examiner's reasoning, arguing that "the angular
range recited in the independent claims could be reworded as 20° ± about
10°," whereas "the angular range of S ixto ... would be between 3 8 ° ± 3 °
(e.g., half of 76 °± 6°)," and one skilled in the art "would not interpret an
angular range of 38° ± 3°, which is explicitly stated in the Sixto reference, to
include the range of 20° ± about 10°." Appeal Br. 15. We agree with
Appellants that Sixto' s disclosed angular range fails to disclose the claimed
angular range. In short, the Examiner has not adequately explained how an
angle of 35° falls within, or is rendered obvious by, the claimed range of
"between about ten degrees and about thirty degrees." In addition, it is
unclear where the Examiner finds support for the contention that "about ten
degrees and about thirty degrees may be interpreted as ±20% at either end of
the range" (Final Act. 4). The Examiner's determination that Sixto teaches a
skilled artisan that the axes of corresponding bone fastener apertures on a
bone plate can be angled between about ten degrees and about thirty degrees,
thus, appears to speculative. For this reason, we do not sustain the pending
rejection.
We next consider whether the claimed range would be discoverable
by a person of ordinary skill, depending on the size of the bone, as an
optimal or workable range involving only routine skill in the art. Sixto
relevantly discloses that
center of the bone, and the threaded apertures ... extend transverse relative
to the normally-directed non-threaded apertures." Final Act. 4.
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Appeal2018---001415
Application 14/471,565
When the plate is designed for use on larger radius bones, the
central axis 190 along which the holes axes 127, 137, 147 criss-
cross will be further from the plate, and when the plate is
design[ ed] for use on smaller radius bones, the central axis 190
along which the hole axes 127, 137, 147 criss-cross will be
closer to the plate.
Sixto ,r 101. This disclosure addresses a change in location of aperture axis
intersection resulting from plate design for larger and smaller bones, not the
degree of angulation between the axes. Even if Sixto contemplates varying
the disclosed angular range of 38° ± 3° to accommodate varying bone sizes,
the Examiner provides no explanation or evidence regarding the degree of
angular range change that typically accommodates varied bone size. The
Examiner, therefore, has not established that one skilled in the art, reading
Sixto, would understand that Sixto's angular range could be modified to the
degree needed to meet the claim, leaving it uncertain whether the disclosed
range of 3 5Q to 41 Q would ever be "optimized" down to between about ten
degrees and about thirty degrees. In sum, the Examiner has not explained
adequately how the disclosed axis intersection location change supports a
contention that discovering optimal/workable ranges for bone size would
cause a skilled artisan, considering Sixto's disclosure of 38° ± 3° (i.e., 35Q to
41 Q), to arrive within the claimed range of "about ten degrees and about
thirty degrees."
DECISION
We REVERSE the rejection of claims 1, 4--8, 10, and 21-30 under
35 U.S.C. § 103 as unpatentable over Weaver, Strnad, and Sixto.
REVERSED
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