Ex Parte SIXTO et alDownload PDFPatent Trials and Appeals BoardFeb 6, 201914471565 - (D) (P.T.A.B. Feb. 6, 2019) Copy Citation 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, 2 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 3 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 4 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. 5 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 6 Copy with citationCopy as parenthetical citation