Graham, Michael

Patent Trials and Appeals Board

May 28, 2020

15015746 - (D) (P.T.A.B. May. 28, 2020)

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.
15/015,746 02/04/2016 Michael Graham 209.042 6526
30236 7590 05/28/2020
Houtteman Law LLC
PO Box 370
Merrifield, VA 22116-0370
EXAMINER
PRONE, CHRISTOPHER D
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
05/28/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USPTO@dockettrak.com
ibgamboa@houtteman.com
wangxuzhuo@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MICHAEL GRAHAM
____________________

Appeal 2019-0053291
Application 15/015,746
Technology Center 3700
____________________

Before PHILLIP J. KAUFFMAN, TARA L. HUTCHINGS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

FINAMORE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–13. We have jurisdiction under
§ 6(b).
We AFFIRM.

1 The citations herein refer to the Specification filed February 4, 2016
(“Spec.”), Final Office Action mailed May 30, 2018 (“Final Act.”), Appeal
Brief filed January 30, 2019 (“Appeal Br.”), Examiner’s Answer mailed
May 17, 2019 (“Ans.”), and Reply Brief filed July 2, 2019 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the inventor, Michael Graham, as the real party in interest. Appeal
Br. 1.
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SUBJECT MATTER ON APPEAL
The invention relates to “a medical apparatus for enhancing and for
correcting skeletal mechanics,” and, more specifically, “the correction of
certain bone alignment deformities that impair optimal biped mechanics.”
Spec. ¶ 1. Claim 1, the sole independent claim, is illustrative of the subject
matter on appeal, and reproduced below with italics to emphasize the
limitation at issue.
1. A sinus tarsi implant for use in correcting
anatomical alignment of a patient’s ankle bone structure
comprising:

a cylindrical body portion consisting of a cylindrical side
surface, a circular medial end and a circular lateral end,
said medial and lateral ends being perpendicular to an
implant central axis, said cylindrical side surface
comprising a plurality of grooves each perpendicular to
the implant central axis, and

a conical foot portion comprising a generally conical side
surface, a circular top and circular base, said top being
integrally connected, along the implant central axis, with
the lateral end of the body portion, said conical side
surfaces flare out to form an angle, θ, wherein θ is in the
range 15° to 25°

wherein said implant is capable of insertion into a patient’s
ankle and corrects anatomical alignment of the patient’s
ankle bone structure.

Appeal Br., Claims App. (emphasis added).
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REJECTIONS
Claim(s)
Rejected 35 U.S.C. § References/Basis
1–3, 5, 9–13 103 Graham,3 Zang4
4 103 Graham, Zang, Rappaport5
6, 8 103 Graham, Zang, Zang ʼ1656
7 103 Graham, Zang, Zang ʼ165, Rappaport

ANALYSIS
Objections to the Drawings
In addition to the claim rejections, the Examiner objects to the
drawings. Final Act. 3–4. Specifically, the Examiner objects to the
drawings under 37 C.F.R. § 1.83 because they do not show the convex,
hemispherical, and concave conical side surfaces recited in claims 11–13.
Id. at 3. The Examiner further objects to Figure 6, which Appellant
submitted to illustrate the subject matter of claims 11–13, as containing new
matter. Id. at 3–4.
Appellant seeks appellate review of the drawing objections. Appeal
Br. 4–5; Reply Br. 2–4. According to Appellant, appellate review is
appropriate for two reasons: (1) in objecting to Figure 6 for containing new
matter, the Examiner is interpreting a patent statute, 35 U.S.C. § 132; and
(2) the Examiner is indirectly rejecting claims 11–13 by insisting that the
unillustrated features be omitted from the claims. Reply Br. 2–4.

3 Graham, US 2005/0187636 A1, published Aug. 25, 2005.
4 Zang, US 5,522,843, issued June 4, 1996.
5 Rappaport, US 4,450,591, issued May 29, 1984.
6 Zang et al., US 2005/0177165 A1, published Aug. 11, 2005 (“Zang ’165”).
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The Board may review adverse decisions of Examiners which “relate,
at least indirectly, to matters involving the rejection of claims.” In re
Hengehold, 440 F.2d 1395, 1404 (CCPA 1971). The Examiner’s objections
to the drawings are premised on whether the drawings depict the subject
matter of claims 11–13 without introducing new matter. Final Act. 3–4. In
contrast, the claim rejections involve the obviousness of the claimed subject
matter under 35 U.S.C. § 103. Id. at 5–8. Notably, the Examiner confirms
there are no new matter issues for the claims. The Examiner finds that “the
claimed convex/hemispherical side surfaces (Claims 11-13) are supported
within the originally filed claims so they are not considered new matter”
(Final Act. 3), and that “[s]hould Figure 6 had been originally filed it likely
would have been sufficient to support the claims” (id. at 4). Although the
Examiner’s finding that Figure 6 supports the claims appears to abrogate the
objections to the drawings, the drawing objections, nonetheless, are
unrelated to the claim rejections. Thus, review of the Examiner’s objections
to the drawings is a petitionable matter, not an appealable one. See Ex parte
Frye, 2010 WL 889747 at *7–8 (BPAI 2010) (precedential) (holding the
review of the Examiner’s objection to the drawings under 37 C.F.R.
§ 1.83(a) and the Examiner’s refusal to enter Appellant’s proposed amended
drawings is a petitionable matter).

Obviousness Based on Graham and Zang
Appellant argues claims 1–3, 5, and 9–13 as a group. Appeal Br. 5–9;
Reply Br. 4–7. We select independent claim 1 as representative, and
claims 2, 3, 5, and 9–13 stand or fall with independent claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv).
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In rejecting independent claim 1, the Examiner finds Graham
discloses almost all of the claim limitations. Final Act. 5. In particular, the
Examiner finds Graham discloses a sinus tarsi implant having a cylindrical
side surface with grooves, i.e., channels 112. Id. Figure 4, reproduced
below, shows Graham’s sinus tarsi implant, including channels 112.

Figure 4 is a side view of sinus tarsi implant 100. Graham ¶¶ 31, 37. As
shown in Figure 4, implant 100 includes cone-shaped first member 106 and
second member 108 longitudinally attached to first member 106 at the
smaller end of the cone. Id. ¶ 39, Figs. 3, 4. Second member 108 has an
outer surface that is generally cylindrical in shape and includes a series of
one or more channels 112. Id. ¶ 41, Fig. 4.
The Examiner acknowledges Graham does not disclose grooves that
are perpendicular to the implant central axis, as independent claim 1
requires. Final Act. 5. The Examiner finds Zang teaches a bone anchor
having grooves that are perpendicular to the central axis. Id.; see also Ans. 7
(the Examiner’s annotated version of Zang’s Figure 4 identifying the
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perpendicularly extending grooves). Zang’s Figures 3, 4 and 6, reproduced
below, show the bone anchor.

Figure 3 is a side elevational view of the bone anchor, and Figure 4 is a
cross-section view of the bone anchor taken along line IV-IV of Figure 3.
Zang 3:27–31. Figure 6 is an end view of the bone anchor. Id. at 3:35–36.
As shown in Figures 3 and 4, shaft portion 44 includes a plurality of
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frustoconical tines 46A–46F forming grooves that are perpendicular to the
central axis of the bone anchor. Id. at 4:63–67. As shown in Figures 3
and 6, tines 46A–46F are divided into tine sections 74A–74C by vertical
grooves 72A–72C running parallel to the central axis of the bone anchor. Id.
at 5:18–21. According to the Examiner, it would have been obvious to
replace Graham’s channels with the perpendicular grooves and protrusions
of Zang to provide an anchor that resists twisting and backing out. Final
Act. 5.
Appellant argues a person of ordinary skill in the art would have
looked to Zang’s grooves 72A–72C, not tines 46A–46F, for teaching the
grooves recited in independent claim 1. Appeal Br. 6; Reply Br. 5–6.
Appellant further contends grooves 72A–72C do not teach the recited
grooves because grooves 72A–72C are oriented lengthwise, not
perpendicular to the central axis as independent claim 1 requires. Appeal
Br. 6; Reply Br. 5–6. Although we agree with Appellant that Zang expressly
teaches grooves 72A–72C, the Examiner nonetheless relies on
tines 46A–46F for teaching the recited grooves. Final Act. 5; see also In re
Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (explaining there is no ipsissimis
verbis test for determining whether a reference discloses a claim element,
i.e., identity of terminology is not required). Accordingly, whether
grooves 72A–72C teach the recited grooves is inconsequential.
Appellant additionally argues Zang’s frustoconical tines 46A–46F are
not grooves. Appeal Br. 5–6; Reply Br. 4–6. According to Appellant,
Zang’s tines do not extend lengthwise to form grooves because they are
interrupted by vertical grooves 72A–72C. Reply Br. 5; see also id. (“[T]he
‘grooves’ do not extend!”). Even with this interruption, however, each of
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tine sections 74A–74C includes grooves that extend between two of vertical
grooves 72A–72C. Zang, Figs. 3, 4, 6. More to the point, independent
claim 1 does not preclude such an interruption. The claim recites “a
plurality of grooves each perpendicular to the implant central axis.” Appeal
Br., Claims App. As shown in Figures 3 and 4, tines 46A–46F form grooves
extending perpendicularly to the central axis. Zang, Figs. 3, 4; see also
Ans. 7 (the Examiner’s annotated version of Zang’s Figure 4).
Appellant also argues a sinus tarsi implant is not a bone anchor.
Appeal Br. 6–7; Reply Br. 6–7. According to Appellant, a sinus tarsi
implant allows for normal articulation between the ankle and heel bones,
whereas Zang’s bone anchor prohibits movement between the bones being
anchored. Appeal Br. 6–7; Reply Br. 6–7. Appellant further argues “it is
only through hindsight reasoning . . . that the Examiner finds motivation to
combine [Zang] with the prior art Graham device.” Appeal Br. 7.
Appellant argues as if the rejection proposes to use a bone anchor as a
sinus tarsi implant. Such is not the case. Rather, as explained above,
Graham discloses a sinus tarsi implant, and the Examiner proposes to
modify Graham to have tine segments as taught by Zang.
Moreover, although a sinus tarsi implant differs in some respects from
a bone anchor, a sinus tarsi implant and a bone anchor need to be properly
positioned and secured within a patient’s body. Both Graham’s sinus tarsi
implant and Zang’s bone anchor have grooves for positioning and
securement. In particular, Graham discloses: “The second member provides
the important function of anchoring the implant 100 in place and preventing
collapse of the canalis tarsi canal. The channeling or threading serves to
operably engage the surrounding soft tissue and ligaments and thus firmly
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and permanently anchors the implant in place.” Graham ¶ 42. Similarly,
Zang teaches “[t]o the extent anchor 40 frictionally engages the bone during
insertion, the outward flaring of respective tine segments 46A–46F (and
particularly in the region of respective arcuate junctions 50) with respect to
the bone proximate thereto will inhibit outward axial migration of
anchor 40.” Zang 7:22–27. As set forth above, the Examiner proposes to
replace Graham’s channels with the perpendicular grooves and protrusions
of Zang to prevent twisting and backing out. Final Act. 5. Indeed, Zang’s
tines 46A–46F inhibit backing out, and the Examiner is essentially
substituting Graham’s securement means for that of Zang. Zang 7:22–27;
see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“[W]hen a
patent claims a structure already known in the prior art that is altered by the
mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result.” (citation
omitted)). Appellant, therefore, does not apprise us of error in the
Examiner’s reason for the combining the teachings of Graham and Zang.
Appellant further contends the claimed invention provides unexpected
results, as evidenced by the Knight Report included as Appendix 1 with the
Appeal Brief. Appeal Br. 7–9; Reply Br. 7. Per Appellant, the standard
axial pullout test for metallic medical bone screws, namely ASTM F543-13,
demonstrates the claimed invention is superior to the closest prior art.
Appeal Br. 7. Specifically, Appellant alleges:
The average pullout force of the claimed device was 683.7 N.
This is significantly greater than the pull out force of the prior art
device, 544.7 N. (See results, p. 4). Moreover, while the prior
art implant was pulled out of the block, the claimed implant, in
every case, could not be pulled out of the foam block until the
foam block fractured! See photographs on page 7).
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Id. (citing Knight Report 4, 7).
“Mere improvement in properties does not always suffice to show
unexpected results.” In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995). The
claimed invention must “exhibit[] some superior property or advantage that
a person of ordinary skill in the relevant art would have found surprising or
unexpected.” Id. at 750; see also In re Merck & Co., 800 F.2d 1091,
1098–99 (Fed. Cir. 1986) (analyzing whether the improvement was expected
or unexpected). “[W]hen an applicant demonstrates substantially improved
results, . . . and states that the results were unexpected, this should suffice to
establish unexpected results in the absence of evidence to the contrary.” In
re Soni, 54 F.3d at 751; see also In re Geisler, 116 F.3d 1465, 1471 (Fed.
Cir. 1997) (applying this rule). Furthermore, “[i]t is well settled that
unexpected results must be established by factual evidence. Mere argument
or conclusory statements in the specification does not suffice.” In re Soni,
54 F.3d at 750 (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984); see also In re Geisler, 116 F.3d at 1471 (holding that naked
attorney argument is insufficient to establish unexpected results).
As shown on page 4 of the Knight Report, the HYP II-07 Specimen,
which Appellant asserts is the claimed invention, has an axial pullout force
of 683.7 N, and the HYP-05 Specimen, which Appellant considers the
closest prior art device, has an axial pullout force of 544.7 N. Thus, the
Knight Report demonstrates that the HYP II-07 Specimen provides a 25.5%
improvement in axial pullout force. This evidence alone, however, does not
constitute proof of “substantially improved results.” See In re Geisler, 116
F.3d at 1471 (explaining a 26% improvement, without more, is not proof of
“substantially improved results”). Appellant asserts the pullout force for the
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HYP II-07 Specimen is “significantly greater” than the pullout force for the
HYP-05 Specimen. Appeal Br. 7. This assertion, however, is attorney
argument, not the requisite factual evidence.
Turning to whether “the results were unexpected,” Appellant
characterizes the pullout force associated with the HYP II-07 Specimen as
“unexpectedly strong resistance to ‘pull out.’” Appeal Br. 7, 9. Such a
characterization is simply attorney argument. Furthermore, unlike the
HYP-05 Specimen, which includes a continuous thread for securing the
implant, the HYP II-07 Specimen includes a plurality of grooves extending
perpendicularly to the implant’s central axis for securing the implant. As set
forth above, Zang teaches tines 46A–46F creating grooves perpendicular to
the central axis, and Zang explicitly explains that the tines “inhibit outward
axial migration.” Zang 7:22–27, Figs. 3, 4. Consequently, in view of the
prior art, the improved axial pullout force appears to be an expected result.
For these reasons, Appellant has not demonstrated that the claimed
invention provides “substantially improved results” or that “the results were
unexpected.” Appellant’s evidence of unexpected results is weak.
Weighing the Examiner’s evidence of obviousness against
Appellant’s evidence of nonobviousness, Appellant does not apprise us of
error in the Examiner’s determination that the subject matter of independent
claim 1 would have been obvious over the combined teachings of Graham
and Zang. We, therefore, sustain the rejection of independent claim 1, with
claims 2, 3, 5, and 9–13 falling therewith.

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Obviousness Based on Graham, Zang, and Rappaport and/or Zang ’165
Appellant does not present separate arguments for claims 4 and 6–8
apart from its arguments for independent claim 1. Appeal Br. 5–9; Reply
Br. 4–7. For the same reasons as independent claim 1, we sustain the
rejections of claims 4 and 6–8.

CONCLUSION
We sustain the rejections of claims 1–13.

DECISION SUMMARY
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 9–13 103 Graham, Zang 1–3, 9–13
4 103 Graham, Zang, Rappaport 4
6, 8 103 Graham, Zang, Zang ʼ165 6, 8
7 103 Graham, Zang, Zang ʼ165, Rappaport 7
Overall
Outcome 1–13

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED