Ex Parte Wagner et alDownload PDFPatent Trial and Appeal BoardDec 2, 201612740074 (P.T.A.B. Dec. 2, 2016) 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. 10139/00514 5436 EXAMINER RAMANA, ANURADHA ART UNIT PAPER NUMBER 3775 MAIL DATE DELIVERY MODE 12/740,074 04/27/2010 76960 7590 Fay Kaplun & Marcin, LLP 150 Broadway, suite 702 New York, NY 10038 12/02/2016 Michael Wagner 12/02/2016 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 MICHAEL WAGNER, JUERG LEEMANN, CHRISTOPH FUERST, CAROLE APPENZELLER FRIEDEN, and MARTIN ALTMANN Appeal 2015-0029341’2 Application 12/740,074 Technology Center 3700 Before ANTON W. FETTING, PHILIP J. HOFFMANN, and AMEE A. SHAH, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the rejection of claims 1, 2, 4—15, and 18—26. We have jurisdiction under 35 U.S.C. § 6(b). 1 Our decision references Appellants’ Specification (“Spec.,†filed Apr. 27, 2010), Appeal Brief (“Appeal Br.,†filed July 29, 2014), and Reply Brief (“Reply Brief,†filed Jan. 16, 2015), as well as the Final Office Action (“Final Action,†mailed Feb. 19, 2014) and the Examiner’s Answer (“Answer,†mailed Nov. 18,2014). 2 Under the heading Real Party in Interest, Appellants indicate “[tjhis application is assigned to DePuy Synthes Products, LLC. Johnson & Johnson, Inc. is the parent corporation of DePuy Synthes Products, LLC.†Appeal Br. 2. Appeal 2015-002934 Application 12/740,074 We REVERSE. According to Appellants, the invention “is directed to a device for treating fractures.†Spec. 13. Claims 1, 13, 25, and 26 are the only independent claims. See Appeal Br., Claims App. We reproduce claim 1, below, as representative of the appealed claims. 1. A device for treating fractures, comprising: a plate receiving structure including on a bone facing side thereof a recess sized and shaped to receive a fixation plate anchored in a desired position on a long bone; a mating structure sized and located to engage a corresponding structure of the fixation plate to prevent relative movement between the fixation plate and the plate receiving structure; and a first leg projecting laterally away from the recess, the first leg including a first fixation element receiving hole extending therethrough along a first hole axis, the first leg being positioned and oriented so that, when the device is received on a fixation plate anchored to the long bone in the desired position, the first hole axis is aligned to pass a fixation element inserted through the first hole through the long bone from a first side of a the [sic] long bone beyond a medullary canal of the long bone toward a second side of the long bone opposite the first side without passing through the medullary canal. Id. REJECTIONS AND PRIOR ART3 The Examiner rejects the claims as follows: 3 The Examiner withdraws an indefmiteness rejection. See Answer 2; see Final Action 2. 2 Appeal 2015-002934 Application 12/740,074 claims 1, 2, 4—15, 18—24, and 26 under 35 U.S.C. § 103(a) as unpatentable over Kummer (US 4,973,332, iss. Nov. 27, 1990), Tepic (US 5,151,103, iss. Sept. 29, 1992), and Ralph (US 2008/0103501 Al, pub. May 1,2008); claim 25 under 35 U.S.C. § 103(a) as unpatentable over Kummer, Tepic, Ralph, and Putnam (US 6,755,831 B2, iss. June 29, 2004); claims 1, 2, 4—14, 18—24, and 26 under 35 U.S.C. § 103(a) as unpatentable over Suh (US 2005/0049595 Al, Mar. 3, 2005), Tepic, and Ralph; and claim 25 under 35 U.S.C. § 103(a) as unpatentable over Suh, Tepic, Ralph, and Putnam. See Final Action 2—6; see also Answer 2. ANALYSIS Based on our review of the record, for the reasons discussed in detail below, we do not sustain the Examiner’s obviousness rejections of the claims. Obviousness rejection based on Kummer, Tepic, and Ralph of claims 1, 2, 4—15, 18—24, and 26 Independent claim 1 recites a first leg projecting laterally away from the recess [in the bone], the first leg including a first fixation element receiving hole extending therethrough along a first hole axis, the first leg being positioned and oriented so that, when the device is received on a fixation plate anchored to the long bone in the desired position, the first hole axis is aligned to pass a fixation element inserted through the first hole through the long bone from a first side of 3 Appeal 2015-002934 Application 12/740,074 . . . the long bone beyond a medullary canal of the long bone toward a second side of the long bone opposite the first side without passing through the medullary canal. Appeal Br., Claims App. (emphases added). The Examiner relies on Kummer to disclose the claimed first hole axis. See Final Action 3; see also Answer 3. More specifically, the Examiner finds that Kummer discloses flanges or legs 23, 24 to be curved and/or malleable to permit bending to conform to the curvature of the contour of the femur shaft (col. 5, lines 22[—]31). Thus, the holes in the flanges or legs can receive screws such that the screws can be inserted into the cortex from a first side of the femur toward a second side without passing through the medullary canal. Final Action 3. The Examiner’s findings appear to be based only on the Examiner’s supposition that Kummer’s device would be able to be bent such that the holes would not align with the medullary canal (see, e.g., Answer 3), and do not appear to be supported by substantial evidence, such as a citation to anything in Kummer (see Appeal Br. 6—7; see also Reply Br. 4—5). Instead, Kummer discusses only that the screw are “sufficiently short in length to avoid passing through the femur shaft†(Kummer col. 5, 11. 57—60), without indicating that the screws or screw holes are not aligned with the medullary shaft. Further, we note that the Examiner fails to establish that any reference used in the obviousness rejections discloses that the holes of a fixation plate are not aligned with the medullary canal when the fixation plate is anchored to the long bone. For example, although the Examiner’s combination relies on Tepic, Tepic uses “short screws†to prevent the screws from extending through the medullary canal, indicating that the screw holes are, in fact, aligned with the medullary canal. See Tepic col. 3,11. 17-30; see also Appeal Br. 9. 4 Appeal 2015-002934 Application 12/740,074 Thus, based on the foregoing, we do not sustain the obviousness rejection of claim 1. Inasmuch as each of independent claims 13 and 26 recites a similar limitation, and is rejected for similar reasons, as claim 1, we also do not sustain the obviousness rejection of these claims. See Appeal Br., Claims App.; see Final Action 2-4. Further, because we do not sustain the rejection of the independent claims, we do not sustain the obviousness rejection of claims 2, 4—12, 14, 15, and 18—24 that depend from the independent claims. Obviousness rejection based on Kummer, Tepic, Ralph, and Putman of claim 25 Independent claim 25 recites a limitation similar to that, and is rejected for reasons similar to those, discussed above for claim 1. See Appeal Br., Claims App.; see Final Action 4. Thus, we do not sustain the rejection of claim 25 for reasons similar to the reasons we do not sustain the rejection of claim 1. Obviousness rejection based on Suh, Tepic, and Ralph of claims 1, 2, 4—14, 18—24, and 26 In the rejection of independent claim 1, the Examiner relies on Suh to disclose a first leg positioned and oriented so that a first hole axis of the first leg is aligned to pass a fixation element inserted through the first hole through a long bone, beyond a medullary canal of the long bone, without passing through the medullary canal. See Final Action 4—5; see Answer 5. More specifically, the Examiner finds that “Suh . . . disclose holes 340a, 340b and 340c in curved legs. Thus, each hole has several axes, one of which would not pass through the medullary canal when the plate is placed on the surface of a long bone because of the curvature of the leg.†5 Appeal 2015-002934 Application 12/740,074 Answer 5. But, the Examiner’s findings appear to be based only on the Examiner’s supposition that Suh’s device (which is, in fact, used in a spinal fusion procedure (see Suh, Abstract)) would be able to be mounted such that the holes would not align with the medullary canal of a long bone, and do not appear to be supported by substantial evidence, such as a citation to anything in Suh (see Appeal Br. 12; see also Reply Br. 9-10). Further, we note that the Examiner does not establish that any reference used in the obviousness rejections discloses that holes of a fixation plate are not aligned with the medullary canal when the fixation plate is anchored to the long bone. For example, as we discuss above, although the Examiner’s combination relies on Tepic, Tepic uses “short screws†to prevent the screws from extending through the medullary canal, indicating that the screw holes are, indeed, aligned with the medullary canal. See Tepic col. 3,11. 17—30; see also Appeal Br. 12—13. Thus, based on the foregoing, we do not sustain the obviousness rejection of claim 1. Inasmuch as each of independent claims 13 and 26 recites a similar limitation, and is rejected for similar reasons, as claim 1, we also do not sustain the obviousness rejection of these claims. See Appeal Br., Claims App.; see Final Action 4—6. Further, because we do not sustain the rejection of the independent claims, we do not sustain the obviousness rejection of claims 2, 4—12, 14, and 18—24 that depend from the independent claims. Obviousness rejection based on Suh, Tepic, Ralph, and Putman of claim 25 Independent claim 25 recites a limitation similar to that, and is rejected for reasons similar to those, discussed above for claim 1. See 6 Appeal 2015-002934 Application 12/740,074 Appeal Br., Claims App.; see Final Action 6. Thus, we do not sustain the rejection of claim 25 for reasons similar to the reasons we do not sustain the rejection of claim 1. DECISION We REVERSE the Examiner’s obviousness rejections of claims 1, 2, 4—15, and 18—26. REVERSED 7 Copy with citationCopy as parenthetical citation