Ex Parte Yacoubian

Patent Trial and Appeal Board

Oct 26, 2015

11773029 (P.T.A.B. Oct. 26, 2015)

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.
11/773,029 07/03/2007 Stephen Yacoubian AOS.00005US 1598
44914 7590 10/27/2015
BURGESS LAW OFFICE, PLLC
P. O. BOX 214320
AUBURN HILLS, MI 48321-4320
EXAMINER
CUMBERLEDGE, JERRY
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
10/27/2015 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 STEPHEN YACOUBIAN 1
____________________

Appeal 2013-000053
Application 11/773,029
Technology Center 3700
____________________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JACQUELINE T. HARLOW, Administrative Patent Judges.

PER CURIAM

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
trochanteric nail for stabilizing bone fractures. The claims are rejected as
anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 According to Appellant, the Real Party in Interest is Advanced
Orthopaedic Solutions, Inc. (App. Br. 1).
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STATEMENT OF THE CASE
The Specification teaches “[a] trochanteric nail for insertion in an
intramedullary canal of a bone,” that includes “an elongate body having a
head portion at a proximal end and a stem portion toward a distal end”
(Spec. 2 “Summary of the Invention”). Claims 1–14 and 18–19 are on
appeal. Claim 1 is illustrative and reads as follows (emphasis added):
1. A method of treating a fracture in a bone includes the
steps of:
providing a nail having a proximal end and a distal end,
the nail including a head portion and a stem portion, wherein
at least one opening is formed in the head portion, and an
intermediate opening is formed in the stem portion;
inserting the nail into the bone;
inserting a first anchoring member into the at least one
opening in said head portion;
inserting a second anchoring member into the
intermediate opening in said stem portion; and
maintaining at least a lower third of the nail free from an
anchoring member.
The claims stand rejected as follows:
I. Claims 1–3 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Schlienger.2
II. Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) for
obviousness based on Schlienger and Marcus.3
III. Claims 10–11, 13–14, and 18–19 stand rejected under
35 U.S.C. § 102(b) as being anticipated by James.4

2 Schlienger et al., US 2007/0016203 A1, published Jan. 18, 2007.
3 Marcus, US 4,622,959, issued Nov. 18, 1986.
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IV. Claims 6–9 and 12 stand rejected under 35 U.S.C. § 103(a) for
obviousness based on Brosnahan.5
I.
The Examiner has rejected claims 1–3 under 35 U.S.C. § 102(e) as
being anticipated by Schlienger. We focus our discussion on independent
claim 1.
Findings of Fact
FF 1. The Specification discloses “[a] trochanteric nail for insertion in
an intramedullary canal of a bone,” that includes “an elongate body having a
head portion at a proximal end and a stem portion toward a distal end”
(Spec. “Summary of the Invention”).
FF 2. Schlienger depicts in Figure 1 a perspective view of an
intramedullary nail (Schlienger ¶ 14). Figure 1 is reproduced below.

4 James et al., US 5,569,249, issued Oct. 29, 1996.
5 Brosnahan et al., 5,620,445, issued Apr. 15, 1997.
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(Id. at Fig. 1.) Figure 1 shows “an intramedullary nail 1” having a “proximal
half [2], [and] a distal half 3 suitable to be inserted into the medullary canal”
(id. at ¶ 20; see also id. at Abstract).
FF 3. Schlienger further discloses that “[t]he distal half 3 [of the
intramedullary nail] is provided with three transverse bores 5, 6, 7, for the
reception of locking screws 10” (Id. at ¶ 20; see also id. at Abstract).
Analysis
We agree with Appellant that the Examiner erred in rejecting claim 1
as being anticipated by Schlienger.
Claim 1 recites “providing a nail having a proximal end and a distal
end, the nail including a head portion and a stem portion, wherein at least
one opening is formed in the head portion, and an intermediate opening is
formed in the stem portion.” Claim 1 further recites “maintaining at least a
lower third of the nail free from an anchoring member.” The Specification
likewise teaches that the “head portion” is positioned at the “proximal end”
of the intramedullary nail (FF 1).
Schlienger discloses an intramedullary nail having three transverse
bores in the distal half, but none in the proximal half (FF 2, 3). Despite
Schlienger’s teaching to the contrary, the Examiner identifies the distal
aspect of Schlienger as reading on the “head portion” and “stem portion”
recited in claim 1 (Ans. 5, 14). The Examiner concludes, without
elaboration, that reference 17, located at the distal end of Schlienger’s
intramedullary nail “may still reasonably be considered to be analogous to
the head portion of Applicant's invention as it is structurally similar to the
head portion disclosed by the Appellant when the broadest reasonable
interpretation is applied to the reference” (id. at 14). The Examiner further
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reasons that the term “portion” is sufficiently broad that the Examiner “can
reasonably identify portions of [Schlienger] that are analogous to Appellant's
disclosed and claimed device” (id. at 15).
We do not agree. The plain language of claim 1, as well as the
Specification, locates the “head portion” within the “proximal end” of the
nail (FF 1). In contrast, Schlienger teaches that the transverse bores are
located within the “distal half” of the nail (FF 3), which is suitable for
insertion into the medullary canal (FF 2).
The Examiner’s determination that the distal portion of Schlienger
reads on the “head portion” of claim 1 is thus inconsistent with the meaning
of the terms “head portion,” “proximal end,” and “distal end” as used in
claim 1, as well as usage of those terms in other patents from analogous art
(FF 2, 3; see also, Marcus 4:35–39 (describing a nail having “a head . . ., an
intermediate body portion . . ., and a distal tip portion”), and therefore
incorrect. See In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999) (“the
PTO's interpretation of claim terms should not be so broad that it conflicts
with the meaning given to identical terms in other patents from analogous
art.”); see also In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009) (“The
protocol of giving claims their broadest reasonable interpretation during
examination does not include giving claims a legally incorrect
interpretation.”).
Furthermore, Appellant’s use of the term “portion” in describing
structures such as the “head portion” of claim 1 does not afford the
Examiner license to arbitrarily identify any portion of the cited art as
corresponding to a particular portion of the claimed invention. Claim 1 does
not merely recite a “portion,” but rather, it claims a specific structure, the
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“head portion,” that is described in relation to other aspects of the claim and
in the Specification.
Accordingly, we reverse the rejection of claim 1. Because they
depend from claim 1, the rejection of claims 2 and 3 is also reversed.
II.
The Examiner has rejected claims 4 and 5 under 35 U.S.C. § 103(a)
for obviousness based on Schlienger and Marcus. Because the Examiner has
pointed to no clear or specific teaching in Marcus that addresses the
deficiencies discussed above of Schlienger with respect to claim 1, from
which claims 4 and 5 depend, we reverse this rejection as well.
III.
The Examiner has rejected claims 10–11, 13–14, and 18–19 under 35
U.S.C. § 102(b) as being anticipated by James. We focus our discussion on
representative, independent claims 10, 13, and 18.
Findings of Fact
FF 4. The Specification teaches that
[t]he body 22 may also include a transition portion 34 between
the head portion 30 and the stem portion 32. The transition
portion 34 may include a cross-sectional taper from a larger
diameter adjacent the head portion 30 to a smaller diameter
adjacent the stem portion 32. Accordingly, the head portion 30
may include a diameter that may be larger tha[n] the stem
portion 32.
(Spec. ¶ 31.)
FF 5. The Specification teaches that
[t]he nail 20 may be viewed as including three areas or regions,
a distal area 20a, a medial area 20b and a proximal area 20c.
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The distal area 20a is that area of the nail 20 located nearby or
adjacent to the distal end 28. The proximal area 20c is that area
of the nail 20 located nearby or adjacent to the proximal end 26.
The medial area 20b is that area of the nail 20 located between
the distal and proximal areas 20a, 20c.
(Id. at ¶ 32.)
FF 6. The Specification teaches that
The size or length of the respective areas in relation to one
another may vary depending upon the overall length of the
elongate body 22 of the nail 20. For example, as the overall
length of the elongate body 22 of the nail 20 increases, the
overall increase in length typically occurs in the medial area
20b, whereby the medial area 20b may occupy more than one-
half (1/2) of the overall length of the elongate body 22 of the
nail 20.
(Id. at ¶ 32.)
FF 7. James depicts in Figure 3 an exploded side view of an
intramedullary nail (James 4:66–67). Figure 3 is reproduced below.
(Id. at Fig. 3.) Figure 3 shows a modular intramedullary nail, which
“includes three sections that are connectable end-to-end. The three sections
include proximal nail section 11, central nail section 12, and distal nail
section [13]” (id.at 5:67–6:3). James further discloses that two “[l]ateral
openings . . . extend transversely through distal nail section 13” (id. at 7:15–
18).
FF 8. James depicts in Figure 5 a longitudinal sectional view of the
proximal nail section 11 of the nail shown in Figure 3 (id at 5:8–11, 6:1–3).
Figure 5 of James is reproduced below.
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(Id. at Figure 5.) In Figure 5, the proximal nail section 11 includes a “[pair]
of diagonal openings 24” and “a conical section 27 for forming a taper lock
connection with central nail section 12” (not pictured) (see id. 6:10–26).
Analysis
Claim 10
We agree with Appellant that the Examiner erred in rejecting claim 10
as being anticipated by James.
Claim 10 recites “an elongate body . . . includ[ing] a head portion, a
transition portion and a stem portion, said head portion closer to the
proximal end and said stem portion closer to the distal end with said
transition portion located between and separating said head portion and said
stem portion.” The Specification teaches that
[t]he body 22 may also include a transition portion 34 between
the head portion 30 and the stem portion 32. The transition
portion 34 may include a cross-sectional taper from a larger
diameter adjacent the head portion 30 to a smaller diameter
adjacent the stem portion 32. Accordingly, the head portion 30
may include a diameter that may be larger tha[n] the stem
portion 32.
(FF 4.)
James describes an intramedullary nail having a “[p]roximal nail
section 11” (FF 7). James discloses that proximal nail section 11 includes
two “diagonal openings 24” (FF 8). James further discloses that “[d]istal
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end portion 26 of proximal nail section 11 includes a conical section 27 for
forming a taper lock connection with central nail section 12” (FF 8).
The Examiner concludes, without elaboration, that the space between
diagonal openings 24 of proximal nail section 11 as taught by James
discloses the “transition portion,” as well as the proximal end of the “stem
portion” recited in claim 10 (Ans. 7). The Examiner acknowledges the
disparity between “the naming scheme applied by [James],” and the
Examiner’s interpretation of that reference (id. at 16). Nevertheless, the
Examiner states that “the structures identified by the examiner are
structurally analogous to Appellant’s disclosed and claimed apparatus” and
reiterates the view that the term “portion” is sufficiently broad that the
Examiner “can reasonably identify portions of [James] that are analogous to
Appellant’s disclosed and claimed device” (Ans. 16).
We agree with Appellant that the Examiner erred in arbitrarily
identifying the space between diagonal openings 24 in the proximal nail
section 11 of James as comprising the “transition portion” and proximal end
of the “stem portion” of claim 10. The Examiner’s conclusory statement
that “the structures identified by the examiner are structurally analogous to
Appellant’s disclosed and claimed apparatus” (id.) is inconsistent with the
teachings of the Specification and James, as well as insufficient to sustain
the rejection. Moreover, as explained in Part I, above, the use of the term
“portion” in identifying the “transition portion” and “stem portion”
structures of claim 10 does not permit the Examiner to arbitrarily point to
any aspect of James as reading on those structures without providing
evidence or reasoning to support such a determination.
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Claims 13-14 and 18-19
We have considered, but do not find persuasive Appellant’s
arguments that the Examiner erred in finding that James anticipates claims
13 and 18.
Claim 13 reads:
13. A nail for treating a fracture in a bone comprising:
an elongate body having a longitudinal axis and
extending between a proximal end and a distal end, wherein
said body includes a distal area, a medial area and a proximal
area;
a head portion having a head diameter located in the
proximal area and a stem portion having a stem diameter
located in the distal area and medial area, wherein the head
diameter is greater than the stem diameter;
said stem portion having an opening in the medial area;
and
said stem portion having at least one opening in the distal
area of said nail.
Claim 18 likewise recites “a stem portion located in the distal area and
medial area” and having “a first opening in the distal area of said nail and a
second opening in the medial area of said nail.”
The Specification describes the “medial area” as being “located
between the distal and proximal areas” (FF 5), and states that the size of the
medial area in relation to the proximal and distal areas may vary (FF 6).
Appellant contends that although James “discloses a nail having
apertures in the proximal nail section 11 and distal nail section 13 it does not
disclose an aperture in the central nail section 12 or medial area” (App.
Br. 14).
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We are not persuaded. The broadest reasonable interpretation of the
term “medial area” as used in claims 13 and 18 requires only that the medial
area be situated between the proximal and distal areas. Neither the plain
language of claims 13 and 18 nor the Specification further limits the size or
position of the “medial area.” Accordingly, we find that James teaches the
intramedullary nail of claims 13 and 18. In particular, we find that the
oblong-shaped, distal most opening of element 13 in Figure 3 of James
satisfies the requirement for an opening in stem portion located in the distal
area of the nail, and the second opening in element 13, medial to the oblong
opening, teaches the second opening in the stem portion, located in the
medial area of the nail (FF 7).
We therefore affirm the rejection of claims 13 and 18 as anticipated
by James. Claims 14 and 19 fall with claims 13 and 18, respectively.
IV.
The Examiner has rejected claims 6–9 and 12 under 35 U.S.C.
§ 103(a) for obviousness based on Brosnahan. We focus our discussion on
independent claims 6 and 12.
Findings of Fact
FF 9. Brosnahan discloses a “modular intramedullary nail system”
(Brosnahan 5:39). Brosnahan teaches that “[t]he modularity of this product
is advantageous since it permits a surgeon to select the appropriate
components for a particular patient from a variety of sizes, shapes and styles,
and assemble those components in order to provide a nail having the proper
characteristics for the specific indications” (id. at 5:60–65).
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FF 10. Brosnahan depicts an intramedullary nail in Figure 1.
Figure 1 is reproduced below.
(Id. at Fig. 1.) Figure 1 shows intramedullary nail 10, which “is formed of
two or more, and preferably three discreet sections, a central section 12, a
proximal section 14 to form a proximal end P and a distal section 16 to form
a distal end D” (id. at 5:43–46).
FF 11. Brosnahan depicts the proximal end of intramedullary nail 10
in Figure 7. Figure 7 is reproduced below.
(Id. at Fig. 7.) Figure 7 shows that “the proximal end is provided with a pair
of openings 34 in order to accommodate screws for holding the nail 10
relative to the bone in which it is implanted” (id. at 7:6–9).
FF 12. Brosnahan depicts the distal end of intramedullary nail 10 in
Figure 11. Figure 11 is reproduced below.
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(Id. at Fig. 11.) Figure 11 shows “[a] pair of openings 48, 50 [that] are
provided to accommodate anchoring screws” in distal end 16 (id. at 7:19–
20).
Analysis
We agree with Appellant that the Examiner erred in rejecting claims 6
and 12 as being obvious over Brosnahan.
Claims 6 and 12 each require a “plurality of nails with each nail
having a different overall length,” each nail including “head portion” located
in the proximal area, and a “stem portion” located in the medial and distal
area. Claim 6 recites the “head portion having an opening and the stem
portion having an opening, each nail having a uniform distance from the
proximal end to the opening in the stem portion.” Claim 12 similarly
requires an “intermediate opening” in the “stem portion,” “wherein a
distance from the proximal end to the intermediate opening is the same for
each nail of the plurality of nails irrespective of the longitudinal length of
each nail.”
Brosnahan discloses a “modular intramedullary nail system” designed
to permit “a surgeon to select the appropriate components for a particular
patient from a variety of sizes, shapes, and styles, and assemble those
components in order to provide a nail having the proper characteristics for
the specific indications” (FF 9). Brosnahan teaches that the disclosed
intramedullary nails are “formed of two or more, and preferably three
discreet sections, a central section 12, a proximal section 14 to form a
proximal end P and a distal section 16 to form a distal end D” (FF 10).
Brosnahan further teaches that “the proximal end is provided with a pair of
openings 34 in order to accommodate screws for holding the nail 10 relative
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to the bone in which it is implanted” (FF 11). Similarly, Brosnahan
discloses that “[a] pair of openings 48, 50 are provided to accommodate
anchoring screws” in the distal end 16 (FF 12).
The Examiner concludes that because “Brosnahan discloses that
different modular components of various lengths may be combined to fit
various indications” and that “the modularity of the device is advantageous
in that [it] permits a surgeon to select appropriate components to suit a
particular patient,” it would have been obvious to modify Brosnahan’s nails
“while still retaining bores that are equidistant from the proximal end,
namely the bores found in ref. 14” (Ans. 13–14).
We do not agree. For the same reasons discussed above with regard
to claim 10, we find that neither of the proximal end openings 34 of
Brosnahan constitutes the “opening in the stem portion” required by claim 6,
or the “intermediate opening” of the “stem portion” required by claim 12.
Like claim 10, claims 6 and 12 require that the “stem portion” (and the
openings therein) be located in the medial and distal areas of the
intramedullary nail. Similar to the James reference discussed with regard to
claim 10, neither of the proximal end openings 34 of Brosnahan can
reasonably be understood to correspond to an opening in the stem, which is
recited as occupying the medial and distal area of the nail (FF 10, 11).
Furthermore, there is no teaching or suggestion that would lead one of
ordinary skill in the art to modify Brosnahan to include a plurality of nails
each having a different overall length, with “each nail having a uniform
distance from the proximal end to the opening in the stem portion” or having
“a distance from the proximal end to the intermediate opening [that] is the
same for each nail of the plurality of nails irrespective of the longitudinal
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length of each nail,” as required by claims 6 and 12, respectively. Rather, a
skilled artisan would expect that changing components 14, 12, or 16 of
Brosnahan’s nail would change the distance between the proximal end of the
nail and any opening in the stem portion.
SUMMARY
We reverse the rejection claims 1–3 under 35 U.S.C. § 102(e) as being
anticipated by Schlienger.
We reverse the rejection claims 4 and 5 under 35 U.S.C. § 103(a) for
obviousness based on Schlienger and Marcus.
We reverse the rejection claims 10 and 11 under 35 U.S.C. § 102(b) as
being anticipated by James.
We affirm the rejection claims 13 and 18 under 35 U.S.C. § 102(b) as
being anticipated by James. Claim 14 falls with claim 13 and claim 19 falls
with claim 18.
We reverse the rejection of claims 6–9 and 12 under 35 U.S.C.
§ 103(a) for obviousness based on Brosnahan.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(viii).

AFFIRMED-IN-PART

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