Ex parte Spievack

Board of Patent Appeals and Interferences

Nov 17, 1999

08328443 (B.P.A.I. Nov. 17, 1999)

Application for patent filed October 25, 1994. 1
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ALAN R. SPIEVACK
____________
Appeal No. 1999-0098
Application No. 08/328,4431
____________
ON BRIEF
____________
Before CALVERT, CRAWFORD, and GONZALES, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 4
to 6, 11, 14 to 42, 44 and 45. The other claims in the
application, claims 2, 3, 7 to 10, 12, 13, 43 and 46 to 58,
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Application No. 08/328,443
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have been either allowed or have been indicated as allowable,
subject to being rewritten in independent form.
Appeal No. 1999-0098
Application No. 08/328,443
A copy of a translation of this reference, prepared for2
the PTO, is forwarded to appellant herewith. Any reference in
this decision to Tanguy by page and line is to the
translation.
In the Advisory Action of July 10, 1996 (Paper No. 11),3
the examiner indicated that the amendment filed on June 20,
1996, had overcome a further rejection of claims 4, 6, 9, 10,
17 to 21, 26 to 30, 34 and 46 under 35 U.S.C. § 112, second
paragraph.
3
The appealed claims are drawn to an intramedullary nail
(claim 1, 4 to 6, 11 and 14), a system for fastening an
intramedullary nail (claims 15 to 34), and a method of
fastening an intramedullary nail (claims 35 to 42, 44 and 45).
They are reproduced in the appendix of appellant’s brief.
The references applied in the final rejection are:
Kranz et al. (Kranz) 5,057,110 Oct. 15,
1991
Tanguy (European Application) 218,492 Apr. 15,
19872
The claims on appeal stand finally rejected on the
following grounds:3
(1)Claims 1, 5, 11, 15 to 31, 34 to 42, 44 and 45, anticipated
by Tanguy, under 35 U.S.C. § 102(b);
(2) Claims 4, 14, 32 and 33, unpatentable over Tanguy, under
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Application No. 08/328,443
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35 U.S.C. § 103;
(3) Claim 6, unpatentable over Tanguy in view of Kranz, under
35 U.S.C. § 103.
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Application No. 08/328,443
In re Kohno, 391 F.2d 959, 960 n.4, 157 USPQ 275, 2764
n.4 (CCPA 1968); In re Dike, 394 F.2d 584, 590 n.5, 157 USPQ
581, 585 n.5 (CCPA 1968).
5
We will first consider the rejection of independent
claims 1, 11 and 42, keeping in mind that in order for Tanguy
to anticipate these claims, it must disclose, expressly or
inherently, every limitation recited. In re Schreiber, 128
F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Claims 1 and 11 call for a guide member "integrally
attached" within the intramedullary nail, and claim 42 for an
intramedullary nail with an "integrally attached" guide
member. Tanguy discloses an intramedullary nail 1 in which
the guide member 15 is held in position for drilling the
"adjacent cortical" (page 13, line 19) by the engagement of a
spring biased ball detent 20 in positioning hole 21 in the
wall of the nail. After the cortical is drilled, the guide is
removed, as shown in Figs. 4C and 4D. Appellant argues that
the guide member 15 is not "integrally attached" to the pin 1,
while the examiner, citing two cases concerning the definition
of "integral," asserts that it is.4
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Words in a claim are generally given their ordinary and
accustomed meaning, unless it appears from the specification
that the inventor defined them differently. In re Paulsen, 30
F.3d
1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994). Since
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appellant here did not define the expression "integrally
attached" in the specification, it will be given its broadest
reasonable interpretation. In re Van Geuns, 988 F.2d 1181,
1184, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993).
Looking at the operation of the Tanguy apparatus, after
the pin 1 is in place, the guide member 15 is pushed into the
bore of the pin until the ball detent 20 snaps into the hole
21; then, after the cortical has been drilled, the guide
member is removed, presumably by pulling on handle 24 so that
ball 20 is disengaged from hole 21. It is clear that when the
ball detent 20 is engaged with hole 21, the guide member 15 is
attached to nail 1. However, in an apparatus of this type,
where two members are attached together by a detent for part
of the operation, but are disengaged during the remainder of
the operation, we do not consider it to be a reasonable
interpretation to say that the two members are "integrally"
attached. In this regard we note the case of In re Larson,
340 F.2d 965, 967-68, 144 USPQ 347, 349 (CCPA 1965), cited in
appellant’s reply brief, in which the Court, citing a
dictionary definition of "integral," agreed that
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the parts of the reference (Tuttle et al.) were "integral"
since
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See also Advanced Cardiovascular Systems v. Scimed Life5
Systems Inc., 887 F.2d 1070, 1074, 12 USPQ2d 1539, 1542 (Fed.
Cir. 1989).
9
they were "rigidly secured together as a single unit" and "so
combined as to constitute a unitary whole" (340 F.2d at 967,
144 USPQ at 349). In the present case, Tanguy’s guide 15 and
nail 1 do not meet this definition.
The fact that the term "integral" "is not necessarily
restricted to a one-piece article," and "may be construed as
relatively broad," as stated in In re Kohno and In re Dike,
supra , does not mean that all parts which are attached5
together may be said to be "integrally" attached. Contrary to
the well settled principle that specific limitations in a
claim cannot be ignored, In re Boe, 505 F.2d 1297, 1299, 184
USPQ 38, 40 (CCPA 1974), here the examiner’s interpretation in
effect gives no weight to the limitation "integrally," for if
the guide member and pin of Tanguy can be construed as being
integrally attached together by ball detent 20, it is
difficult to imagine how any two parts could be non-integrally
attached together.
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On page 7 of the supplemental answer, the examiner argues
that
The structural difference between the
applicant’s disclosed device and the reference
is a fuzzy, fuzzy line (particularly when all of
the applicant’s embodiments are considered).
"Integral" does not to [sic] clear this line.
The artisan would be unable to ascertain the
scope of the rejected claims if they are found
to be allowable over Tanguy.
These arguments are not considered relevant to the question of
anticipation under § 102(b), since the issue is whether the
claims are readable on the reference, rather than how
appellant’s disclosure differs from the reference. Whether
the artisan could determine the scope of the claims concerns
the question of compliance with the second paragraph of § 112,
under which the claims have not been rejected.
Accordingly, we will not sustain the rejection of claims
1, 11 and 42, nor their dependent claims 5, 44 and 45, under §
102(b). The rejection of dependent claims 4, 6 and 14 under §
103 also will not be sustained, since, even considering Kranz,
we find no evidence that it would have been obvious to
integrally attach the guide member 15 of Tanguy to nail 1.
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We now turn to independent claims 15, 23, 35 and 40.
System claims 15 and 23 each contain limitations exemplified
by the following from claim 15:
an elongate member extendable from within
the intramedullary nail, through a selected
securing hole and through the skin of the
patient to the outside of the patient’s body;
and
a fastener registered to the extending
elongate member, the fastener constructed
to be guided by the elongate member from
the outside of the patient’s body to the
selected securing hole through the cortex
of the bone.
Similarly, the following is typical of limitations included in
method claims 35 and 40 (claim 35, lines 6 to 10):
extending the elongated member through the
skin of a patient from within the intramedullary
nail;
registering a fastener to the extending
elongate member; and
guiding the fastener along the elongate
member from outside of the patient’s body to the
selected securing hole through the cortex of the
bone.
Although Tanguy does not explicitly disclose extending
elongate member (drill shaft 8) through the patient’s skin,
the examiner seems to take the position that such a step would
be inherent in use of the Tanguy apparatus (answer, page 7,
second paragraph). While we are doubtful that this is
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correct, it is evident to us (and not addressed by the
examiner) that Tanguy does not disclose guiding the fastener
(screw 4) by means of the
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Application No. 08/328,443
Claim 40 adds the word "extending" before "elongate" in6
the quoted phrase.
13
elongated member 8. Instead, Tanguy discloses at pages 13 to
14 that after the cortical is drilled by means of flexible
shaft 8 carrying drill bit 12, a drill guide is put in place
on the outer side of the skin (the flexible shaft and guide
member having removed from the bore of the nail 1, as shown in
Fig. 4D), the cortical is drilled from the outside (Fig. 4F),
and a fastener (screw 4) is placed as shown in Figs. 5 and 6.
Accordingly, since Tanguy does not disclose a fastener
"constructed to be guided by the elongated member from the
outside of the patient’s body" as recited in claims 15 and 23,
or the step of "guiding the fastener along the elongate member
from outside of the patient’s body" as recited in claims 35
and 40 , the rejection under § 102(b) of claims 15, 23, 35 and6
40, and of dependent claims 16 to 22, 24 to 31, 34, 36 to 39
and 41, will not be sustained. The rejection of dependent
claims 32 and 33 under § 103 also will not be sustained, there
being no evidence that the above-noted difference between the
system recited in parent claim 23 and Tanguy would have been
obvious to one of ordinary skill in the art.
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Conclusion
The examiner’s decision to reject claims 1,4 to 6, 11, 14
to 42, 44 and 45 is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
SLD
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