Ex Parte Staehler et alDownload PDFPatent Trial and Appeal BoardSep 17, 201512284679 (P.T.A.B. Sep. 17, 2015) Copy Citation 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. 12/284,679 09/24/2008 Hienz Staehler T0217.25U 2425 29633 7590 09/17/2015 ROGERS TOWERS, P.A. 1301 RIVERPLACE BOULEVARD, SUITE 1500 JACKSONVILLE, FL 32207 EXAMINER COLEY, ZADE JAMES ART UNIT PAPER NUMBER 3775 MAIL DATE DELIVERY MODE 09/17/2015 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 HEINZ STAEHLER and THOMAS JOHNSTON ____________________ Appeal 2013-002245 Application 12/284,679 Technology Center 3700 ____________________ Before STEFAN STAICOVICI, JILL D. HILL, and LISA M. GUIJT, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Heinz Staehler and Thomas Johnston (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1–17. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2013-002245 Application 12/284,679 2 CLAIMED SUBJECT MATTER Independent claim 1 represents the subject matter on appeal, and is reproduced below. 1. A bone distraction device comprising a pair of bone plate members; a threaded rod retained within a rod housing, said threaded rod interacting with said bone plate members whereby rotation of said threaded rod within said rod housing in a distraction direction results in relative separation or contraction of said bone plate members depending upon the direction of rotation; a drive head connected to said threaded rod, whereby rotation of said drive head rotates said threaded rod, said drive head having teeth and notches disposed annularly thereon; a pawl housing positioned on said rod housing, said pawl housing retaining a pawl biased outwardly into one of said notches on said drive head to define an engaged position, said pawl and said notches configured such that said drive head is rotatable only in said distraction direction when said pawl is in said engaged position; a slot disposed in said pawl housing and a post member connected to said pawl and extending through said slot, whereby said pawl is retracted away from said drive head notches teeth by moving said post member longitudinally within said slot to define a disengaged position, such that rotation of said drive head is allowable in either direction when said pawl is in said disengaged position. App. Br. 17, Claims App. REJECTION Claims 1–17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Schumacher (US 6,752,808 B2, iss. June 22, 2004), Losken (US 6,033,412, iss. Mar. 7, 2000), Klein (US 5,928, 231, iss. July 27, 1999), and Henning (US 1,981,698, iss. Nov. 20, 1934). Final Act. 2. Appeal 2013-002245 Application 12/284,679 3 OPINION Appellant argues claims 1–17 as a group. Appeal Br. 11–15. We select independent claim 1 as representative. Claims 2–17 stand or fall with claim 1. Appellants argue that Klein and Henning are non-analogous art, and therefore do not provide a proper basis for the obviousness rejection. App. Br. 11. Appellants contend that one skilled “in the mandibular and maxillary craniofacial repair and reconstruction art, seeking to solve the problem of separating and distracting the bone portions on opposing sides of an osteotomy gap, would not logically look to the teachings of the clamping art of Klein or the prosthetic hand art of Henning,” and that “[t]he Examiner’s conclusory statements are improper and cannot establish a prima facie case that an ordinary practitioner in Applicants’ bone distracting field of endeavor would look to the clamping art when addressing problems inherent in a distractor.” Id. at 13. The Examiner responds that analogous art includes both prior art in the field of Appellants’ endeavor, and prior art that is reasonably pertinent to the particular problem with which Appellants were concerned. Ans. 2. The Examiner finds that Klein and Henning are analogous prior art because they are reasonably pertinent to the particular problem with which Appellants were concerned. Id. The Examiner finds that one particular problem facing Appellants “was how to construct an incremental indexing means to allow the drive head to move in a single direction via a ratchet and pawl assembly,” and that Klein “is reasonably pertinent to this problem because Klein utilizes a ratchet and pawl assembly (Fig. 3) to allow for incremental movement in a single direction . . . .” Id. (citing Spec., p. 7, ll. 7–9). The Appeal 2013-002245 Application 12/284,679 4 Examiner finds that a second particular problem facing Appellants “was how to construct a disengagement means for releasing the ratchet and pawl mechanism such that the drive head can be freely rotated in either direction,” and that “Henning is reasonably pertinent to this particular problem because Henning teaches an L-shaped slot that helps hold the pawl away from the ratchet so that the device may move freely in either direction.” Id. at 2–3 (citing Spec., p. 8, ll. 3–4; Henning, p. 2, ll. 139–145, and Figs. 7, 44). Appellants reply that, in defining the problem face by Appellants, “the Examiner focuses not on the purpose Appellant[s’] invention as a whole, but on the purpose of limited features of Appellant[s’] invention.” Reply Br. 5– 6 (citing In re Oetiker, 977 F.2d 1443, 1446 (Fed. Cir. 1992); In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)). Appellants argue that, “[a]ccording to Federal Circuit precedent, a determination of analogous art must be made by considering the applicant’s invention as a whole, rather than by dissecting the invention into discreet problems to be independently considered.” Id. at 6. We discern no holding in Clay or Oetiker that the pertinent problem must encompass the purpose of an applicant’s invention as a whole. While in Oetiker, the Federal Circuit disagreed with the Office that “all hooking problems are analogous” (Oetiker, 977 F.2d at 1446), the Examiner here is not alleging that all pawl problems are analogous or that all pawl release problems are analogous. Further, we decline to define the pertinent problem in such a way that the problem itself requires that the art be in the same field of endeavor, as Appellants appear to argue is appropriate by stating: “When considered as a whole, Appellant’s claimed invention is a bone distraction device, intended to separate bone segments on opposite sides of an Appeal 2013-002245 Application 12/284,679 5 osteotomy gap, especially in the field of mandibular and maxillary craniofacial repair, reconstruction, and treatment.” Reply Br. 6. Appellants’ own Specification acknowledges that incrementally and uni-directionally separating bone segments on opposite sides of an osteotomy gap for mandibular and maxillary craniofacial repair, reconstruction, and treatment, was a known practice. Spec., pp. 1–3. Appellants’s Specification identifies the need to quickly release the threaded drive rod to allow free rotation of the threaded drive for contraction as one problem addressed by the invention. Spec. p. 3, ll. 16–17, p. 4, ll. 17–21. We further note that Appellants appreciated that it is desirable “that the distraction be performed in a controlled or incremental manner, whereby the advancement distance can be accurately accounted for, and it is further desirable that the apparatus allow for rotation in only one direction to insure that the bone plates are separated rather than contracted.” Spec., p. 3, ll. 4– 7. Appellants appreciated that this objective was achievable with known ratchet mechanisms “having mating teeth, such that rotation of the drive head joined to the threaded rod and relative movement of the bone plates can only occur in the distraction direction.” Spec., p. 3, ll. 8–9.1 Based on Appellants’ own disclosure, and considering the teachings of both Oetiker and Klein, we discern no error in the Examiner’s definition of the particular problems with which Appellants were concerned as “how to construct an incremental indexing means to allow the drive head to move in a single direction via a ratchet and pawl assembly,” and “how to construct a 1 To the extent that incremental unidirectional movement was not a problem with which inventors were concerned, it is because they stated that the prior art already taught a solution to this problem in ratchets similar to that taught by Klein. See Spec. p. 3, ll. 9–12. Appeal 2013-002245 Application 12/284,679 6 disengagement means for releasing the ratchet and pawl mechanism such that the drive head can be freely rotated in either direction.” Ans. 2. Klein includes a ratchet system intended for uni-directional contraction or distraction (see Klein, col. 7, ll. 26–64), and which by definition allows incremental indexed movement in a single direction. Henning also includes a ratchet, but additionally teaches a post attached to a pawl, the post 42 being movable within an L-shaped slot 43 to move the pawl 41 away from the ratchet teeth 40, thereby providing disengagement means for releasing the ratchet and pawl mechanism such that a drive head can be freely rotated in either direction. Given the teachings of Klein and Henning, and the Examiner’s appropriate identification of the particular problems with which Appellants were concerned, we agree with the Examiner that Klein and Henning are analogous art because they are each pertinent to a particular problem with which Appellants were concerned. We are not persuaded by Appellants’ argument. We therefore sustain the rejection of claim 1. Claims 2–17 fall with claim 1. DECISION We AFFIRM the rejection of 1–17 under 35 U.S.C. § 103(a) as unpatentable over Schumacher, Losken, Klein, and Henning. 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)(1)(iv). AFFIRMED rvb Copy with citationCopy as parenthetical citation