Ex Parte Stevens et al

Board of Patent Appeals and Interferences

Jun 18, 2010

10310720 (B.P.A.I. Jun. 18, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PETER M. STEVENS and DANIEL F. JUSTIN
____________________

Appeal 2009-011259
Application 10/310,720
Technology Center 3700
____________________

Decided: June 18, 2010
____________________

Before: WILLIAM F. PATE III, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-011259
Application 10/310,720
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
17, 18, 23, 24, 26, 30-33, 35, 37-41, 43-46, and 48-53. App. Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to a bone alignment implant. Claim 17,
reproduced below, is illustrative of the claimed subject matter:
17. A bone alignment implant system comprising:
an elongated link having a top surface and an opposing
bottom surface that each extend between a first side edge and
an opposing second side edge and which extend between a first
end and an opposing second end of the link, the link having a
first opening extending completely therethrough between the
top surface and the bottom surface at the first end, a second
opening extending completely therethrough between the top
surface and the bottom surface at the second end and a guide
opening extending completely therethrough between the top
surface and the bottom surface at a central location between the
first opening and the second opening, the first opening, the
second opening, and the guide opening being completely
encircled by the link, the guide opening being smaller than the
first opening and the second opening, the link having a central
linear longitudinal axis extending between the first end and the
opposing second end that intersects with the first opening, the
second opening, and the guide opening, the first opening also
having a central linear axis extending therethrough that extends
normal to the bottom surface of the link, a first recess being
centrally formed on the first side edge and a second recess
being centrally formed on the second side edge such that a
linear line extending orthogonal to the central linear
longitudinal axis can extend between the first recess and the
second recess and intersect with the guide opening, the first
recess and the second recess each extending from the top
surface to the bottom surface of the link;
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a first bone fastener comprising a first head at one end
and a first engager projecting from an opposing end, the first
engager being passable though the first opening, and the first
head being precluded from passing through the first opening;
and
a second bone fastener comprising a second engager and
a second head, the second engager being passable through the
second opening, and the second head being precluded from
passing through the second opening, wherein neither the first
engager nor the second engager can pass though the guide
opening, wherein the first opening, the second opening, and the
guide opening are the only openings formed on the link that
extend completely through the link and are completely
encircled by the link.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hausman
Karpman
US 5,676,667
US 6,214,012 B1
Oct. 14, 1997
Apr. 10, 2001

REJECTIONS
Claims 17, 18, 23, 24, 26, 30-33, 35, 37-41, 43-45, 48-50, 52 and 53
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Hausman. Ans. 3.
Claims 46 and 51 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hausman and Karpman. Ans. 6.

OPINION
Independent claims 17, 18 and 52 require three openings extending
through the link, no more and no less. App. Br. 12-13. Hausman discloses a
fixation plate 10 having an array of screw apertures 12 and an array of tack
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apertures 22. Col. 3, ll. 34-46; col. 4, ll. 11-29. While the Examiner and
Appellants agree that Hausman discloses that the number of apertures may
vary, Appellants contend that there is no rational basis for the Examiner’s
proposed modification of Hausman to include only two screw apertures and
one central tack aperture. App. Br. 13-24. We agree.
Hausman’s tack apertures 22 are always described as an “array” or
“plurality,” preferably of three or more. See e.g., col. 4, ll. 21-25; col. 5, ll.
15-19; claims 1, 7, 13, 21 and 23. A single central tack aperture, as proposed
by the Examiner, would not be sufficient to perform the function disclosed
in Hausman of temporarily fastening the plate since the plate would still be
free to rotate about the tack. See col. 4, ll. 21-27; col. 5, ll. 2-5. Furthermore,
providing only a single tack aperture would hinder or prevent Hausman’s
device from being able to achieve the stated objective of repositioning the
fixation plate by refastening it to the bone in a previously untapped area. See
col. 5, ll. 12-19; App. Br 13-20. Additionally, screw apertures 12 of
Hausman receive screws on each side of a fracture in order to secure the
bone segments. Col. 3, ll. 18-47; col. 5, ll. 20-28. Placing a single tack
aperture centrally of the screw apertures would require placement of the tack
into, or in the proximity of, the fracture. Placing the tack into, or in the
vicinity of, the fracture would not further the tack’s purpose of securing the
plate because damaged bone would be less capable of securing the tack.
Placing the tack in this fashion may also cause further damage to the bone or
discourage healing of the fracture. App. Br. 20-24. Thus, the Examiner has
failed to articulate a reason with a rational underpinning to support the
conclusion that it would have been obvious to modify Hausman to include
only two screw apertures and only one central tack aperture. In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l Co. v.
Appeal 2009-011259
Application 10/310,720
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Teleflex, Inc., 550 U.S. 398, 418 (2007) (“[t]here must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.”).
Hausman’s suggestion to modify the size of the plate or the number of
apertures would not have suggested modifying Hausman to include less than
the plurality of apertures necessary for Hausman’s device to function as
intended. Contra Ans. 6-8. A fracture must be bounded by the two bone
segments to be joined. In order to function properly, Hausman’s plate must
therefore span the fracture with a fastening device in each of the bone
segments regardless of the type or orientation of the fracture. Reply Br. 3.
The Examiner’s contention that a portion of Hausman could be considered
the claimed link is unreasonable. Ans. 8. The claim requires a link having
only three openings extending therethrough, not a portion of a link having
only three openings extending therethrough. Read in light of the
Specification, one of ordinary skill in the art would not regard an arbitrary
portion of Hausman, defined only by the Examiner, as the claimed “link.”
Karpman, as applied by the Examiner fails to cure the deficiencies of
Hausman. We are constrained to reverse the Examiner’s rejections of claims
17, 18, 23, 24, 26, 30-33, 35, 37-41, 43-46, and 48-53.

DECISION
For the above reasons, the Examiner’s rejections of claims 17, 18, 23,
24, 26, 30-33, 35, 37-41, 43-46, and 48-53 are reversed.

REVERSED

Appeal 2009-011259
Application 10/310,720
6

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