11879560 (P.T.A.B. Feb. 16, 2017)

Ex Parte Strnad et al

Patent Trial and Appeal BoardFeb 16, 2017

11879560 (P.T.A.B. Feb. 16, 2017)

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. ORTHO-AL 4213 EXAMINER BECCIA, CHRISTOPHER J ART UNIT PAPER NUMBER 3775 MAIL DATE DELIVERY MODE 11/879,560 07/18/2007 8933 7590 02/16/2017 DUANE MORRIS LLP - Philadelphia IP DEPARTMENT 30 SOUTH 17TH STREET PHILADELPHIA, PA 19103-4196 Lee A. Strnad 02/16/2017 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 LEE A. STRNAD, AMANDA MARTIN, and DUSTIN DUCHARME Appeal 2015-003500 Application 11/879,560 Technology Center 3700 Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Lee A. Stmad et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision to reject claims 1—22. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The claims are directed to an orthopedic plate having threaded holes for locking screws or pegs and non-threaded holes for a variable axis locking Appeal 2015-003500 Application 11/879,560 mechanism. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A distal radius plate, comprising: a head portion and a proximal plate portion, the head portion having a palm shaped profile having a complex topography that is substantially free from any planar areas and which has at least one fixed peg hole that is threaded and which defines a fixed angle for a peg which is received in the fixed peg hole and which has at least one variable angle peg hole that has no internal threads and that has a variable angle locking mechanism that permits a variable angle peg to be received in the variable angle peg hole at a variable angle and subsequently to be locked into a desired position. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Brace US 6,575,975 B2 June 10,2003 Patterson US 2006/0004362 A1 Jan. 5, 2006 Carls US 2006/0235399 A1 Oct. 19, 2006 REJECTIONS (I) Claims 1—3, 10-12, 16—18, 21, and 22 are rejected under 35 U.S.C. § 103(a) as unpatentable over Patterson and Carls. (II) Claims 4—9, 13—15, 19, and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Patterson, Carls, and Brace. 2 Appeal 2015-003500 Application 11/879,560 OPINION Rejection (I) Claim 1 recites, in part, “a variable angle locking mechanism that permits a variable angle peg to be received in the variable angle peg hole at a variable angle and subsequently to be locked into a desired position.” Similarly, independent claims 10 and 16 recite, in part, “a locking insert which receives a variable axis fastener that causes the locking insert to expand to lock the variable axis fastener at a selected angle relative to the plate,” and independent claim 21 recites, in part, “a locking insert which locks the variable axis fastener at a selected angle relative to the plate.” The Examiner finds that Patterson discloses most of the limitations of claim 1 including a plate having a fixed peg hole 114 for a peg 10 and a variable angle peg hole 112 for a variable angle peg 20. Final Act. 4—5. The Examiner relies on Carls as teaching a plate with a variable angle locking mechanism that “comprises an insert (30) that mates with the at least one variable angle peg hole (14)... to selectively lock the insert.” Id. at 6—7 (citing Carls 2, 22, 23, and 27). The Examiner concludes that it would have been obvious “to modify the plating system of Patterson with the locking insert modification of Carls in . . . order to provide a retaining mechanism within a bore of a bone plate that preserves multi-axial capabilities of the fastener, prior to locking engagement of the fastener with the implant.” Id. at 7. Appellants argue that there is no reason to modify Patterson as proposed, because Patterson “discusses in detail the relative advantages of locking and non-locking screws” and that the invention of Patterson 3 Appeal 2015-003500 Application 11/879,560 “depends on the use [of] the combination of locking and non-locking screws to achieve specific medical results.” Appeal Br. 8 (emphasis added). The Examiner responds that the proposed modification of Patterson “allows for the flexibility of placing and locking a screw at a desired angle during implantation ... to provide a level of customization by the surgeon during implantation.” Ans. 4. The Examiner states that the locking “capabilities of Carls do not teach away from the combination, as the retaining mechanism allows for both multi-axial capabilities and locking after implantation of the screw.'’'’ Id. at 5 (emphasis added). Appellants reply that the point of Patterson is “to incorporate both non-locking screws in non-locking holes (which would permit variable angle) and threaded locking screws in fixed angle locking holes.” Reply Br. 1. Appellants assert that Patterson “clearly teaches using a non-locking screw in a non-locking screw hole and a locking screw in the locking screw hole and to suggest putting a locked screw in the non-locking hole is contrary to the teachings of Patterson.” Id. at 3. We find Appellants’ arguments to be persuasive. Patterson recognizes that locking screws and non-locking screws each have benefits and drawbacks. Patterson H 4, 5. Patterson uses locking screws and non locking screws, in combination, “to maximize the benefits] of combining non-locking bone screws with locking bone screws.” Id. ^fl[ 11, 45. One of the benefits of a non-locking screw sought by Patterson is effective compression of bone fragments. Id. 1 5; see also Reply Br. 2—3. We appreciate the Examiner’s point that Carls beneficially preserves the multi- axial capabilities of its screw. However, the Examiner has not established that the benefit provided by Patterson’s combination of locking and non- 4 Appeal 2015-003500 Application 11/879,560 locking screws would be retained after the proposed modification, even considering the multi-axial capabilities provided by Carls’ locking screw. Further, weighing the benefit provided by Carls’ locking screws and associated multi-axial capabilities against the benefit Patterson teaches results from a combination of locking and non-locking screws that would apparently be lost due to the Examiner’s proposed modification, we find the Examiner’s rationale to be insufficient. Accordingly, we do not sustain the rejection of claims 1—3, 10—12, 16—18, 21, and 22 as unpatentable over Patterson and Carls. Rejection (II) The Examiner does not rely on Brace in any manner that would remedy the deficiencies in the rejection based on Patterson and Carls discussed supra. Thus, for the same reasons, we do not sustain the rejection of claims 4—9, 13—15, 19, and 20 as unpatentable over Patterson, Carls, and Brace. DECISION The Examiner’s decision to reject claims 1—22 is reversed. REVERSED 5