Joshua Makower et al.

Patent Trials and Appeals Board

Oct 2, 2019

13403633 - (D) (P.T.A.B. Oct. 2, 2019)

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.
13/403,633 02/23/2012 Joshua Makower P003 C1 2268
118733 7590 10/02/2019
Moximed, Inc
46602 Landing Parkway
Fremont, CA 94539
EXAMINER
PRONE, CHRISTOPHER D
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
10/02/2019 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):
acermak@cnmiplaw.com
ip@cnmiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JOSHUA MAKOWER,
ANTON G. CLIFFORD, and RICHARD G. VECCHIOTTI
__________

Appeal 2018-0085291
Application 13/403,633
Technology Center 3700
__________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
LISA M. GUIJT, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

1 Appellant identifies the following U.S. Patent Applications as related to the
present appeal: (i) 11/743,097 (Appeal No. 2018-008882; decision rendered
Aug. 20, 2019); (ii) 11/743,605 (Appeal No. 2018-5378; awaiting decision);
(iii) 12/112,442 (Appeal No. 2017-007504; decision rendered Dec. 5, 2017);
(iv) 12/949,687 (Appeal No. 2017-011158; decision rendered Dec. 19,
2018); (v) 13/309,984 (Appeal No. 2018-008884; awaiting decision); (vi)
13/800,676 (Appeal No. 2018-004053; decision rendered Jan. 9, 2019); and
(vii) 14/075,090 (issued US Patent 10,010421). Appeal Br. 3. Notably, the
following appeals are also related to the instant application: (i) Appeal No.
Appeal No. 2012-009985 (decision rendered Nov. 24, 2014); Application
No. 12/690,687; (ii) 2013-005706 (decision rendered Apr. 30, 2015);
Application No. 12/985,878; (iii) Appeal No. 2016-008017 (decision
rendered Sept. 22, 2010); Application No. 12/628,866; (iv) Appeal No.
2017-001940 (decision rendered Dec. 21, 2017); Application No.
13/467,931; and (v) Appeal No. 2018-004053 (decision rendered Jan. 9,
2019); Application No. 12/800,676.
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Application 13/403,633

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DECISION ON APPEAL
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 45, 46, and 48–54. Final Act. 3. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

STATEMENT OF THE CASE
Claim 45, reproduced below as the sole independent claim on appeal,
is exemplary of the subject matter on appeal.3
45. A knee support apparatus, comprising:
a first attachment structure configured to attach to a femur;
a second attachment structure configured to attach to a
tibia; and
a spring assembly attached to the first attachment structure
and the second attachment structure and configured to extend on
a side of a knee joint, the spring assembly comprising:
a spring or elastomeric member coupled to one of
the first attachment structure and the second attachment
structure; and
a rod coupled to the other of the first attachment
structure and the second attachment structure,
wherein the rod is configured to compress the spring
or elastomeric member at least when the knee joint is in a
fully extended position such that the spring assembly

2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Moximed,
Inc. Appeal Br. 3.
3 Notably, in response to the Examiner’s Restriction Requirement dated
December 23, 2014, Appellant elected “the species illustrated in Fig. 68.”
See Response to Restriction Requirement, dated Feb. 20, 2015, page 1.
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Application 13/403,633

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axially transfers force between the first attachment
structure and the second attachment structure, and
wherein the rod is configured to substantially
unload the spring or elastomeric member when the knee
joint is in a fully flexed position such that the spring
assembly substantially avoids axially transferring force
between the first attachment structure and the second
attachment structure.

THE REJECTIONS4
I. Claims 45, 46, and 48–545 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite.
II. Claims 45, 46, and 48–546 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Orsak (US 6,162,223; issued Dec. 19, 2000).

ANALYSIS
Rejection I
Claim 45 and dependent claims 46, 50, 51, and 54
Regarding independent claim 45,7 the Examiner finds, with reference
to the elected species depicted in Figure 68 of the Specification, that “it is

4 The Examiner’s objection to the drawings is a petitionable, not appealable,
matter. See Final Act. 4–5; see also 37 C.F.R. § 1.181; Ex Parte Frye, 94
USPQ2d 1072, 1077–78 (BPAI 2010) (precedential).
5 The Examiner lists claims 44–54 in the summary of this rejection. Final
Act. 5. However, claims 44 and 47 have been canceled. See Appeal Br. 5,
n. 1.
6 The Examiner lists claims 45–54 in the header of this rejection. Final Act.
6. However, claim 47 has been canceled. See Appeal Br. 5, n. 2.
7 As claim 44 is canceled, we apply the Examiner’s analysis referencing
cancelled claim 44 to pending claim 45. See Final Act. 5.
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unclear how a second attachment structure can be attached to the second end
404” and also “how the spring assembly will still function when configured
at such a sharp angle.” Final Act. 5. The Examiner also finds that—again,
with reference to Figure 68, claim 45 is indefinite because “the spring is not
coupled to the first or second attachment structures,” as required by claim
45. Id.; see also Ans. (determining that it is unclear “what specific
attachment structures are compatible” and “how the attachment structures
would or if they would accept a fastener therethrough”).
Appellant argues that this rejection is based on “an incomplete reading
of the subject matter of the species illustrated in Fig. 68, and a
misapplication of the section 112, second paragraph.” Appeal Br. 17–18.
Appellant submits that the Examiner improperly concludes that claim 45 is
unclear because the Examiner cannot find a single drawing figure that
illustrates all of the features of claim 45. Id. at 19 (citing Spec. ¶ 249 (for
generally disclosing that “various manners of engaging energy absorbing
structure with attachment structure and attachment structures to body
anatomy can be utilized in each approach”)). Appellant further submits that
breadth is not indefiniteness. Reply Br. 5 (citing MPEP § 2173.04).
Appellant’s argument is persuasive.
A claim is properly rejected as being indefinite under 35 U.S.C. § 112,
second paragraph if, after applying the broadest reasonable interpretation in
light of the specification, the metes and bounds of a claim are not clear
because the claim “contains words or phrases whose meaning is unclear.” In
re Packard, 751 F.3d 1307, 1310 (Fed Cir. 2014). Here, the claimed
structures and required attachments of claimed structures are clearly defined,
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to the extent the entirety of the elected species of the knee support apparatus
is claimed.
Enablement is a legal determination of whether a patent enables one
skilled in the art to make and use the claimed invention. Hybritech Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986). Further,
the written description requirement is met when the disclosure “allow[s] one
skilled in the art to visualize or recognize the identity of the subject matter
purportedly described.” Enzo Biochem, Inc. v. Gen–Probe Inc., 323 F.3d
956, 968 (Fed. Cir. 2002). Here, the Examiner refers to a lack of guidance
from the Specification regarding how, for example, the claimed spring
assembly is attached to the first and second attachment structures, as
required by claim 45. The Examiner also refers to a lack of description in
the Specification, as to whether, for example, the spring is disclosed as
coupled to the first or second attachment structures, as required by claim 45.
However, rejections for failing to comply with the written description and
enablement requirements of 35 U.S.C. § 112, first paragraph, are not before
us on appeal.
Accordingly, we do not sustain the rejection of claim 45 under
35 U.S.C. § 112, second paragraph, as indefinite, and claims 46, 50, 51, and
54 depending therefrom.8
Dependent claims 48, 49, 52, and 53
The Examiner generally finds that “[i]n view of the indefinite
attachment structure recitations,” dependent claims 48, 49, 52, and 53 are

8 The Examiner did not set forth a basis for the indefiniteness of claims 46,
50, 51, and 54 apart from the basis set forth supra for claim 45.
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also rendered indefinite. Final Act. 6. Additionally, the Examiner finds that
(i) claim 48, which requires, in relevant part, “wherein the spring assembly
is pivotally attached to the first attachment structure and the second
attachment structure” (Appeal Br. 22 (Claims App.)) is indefinite because
“the spring assembly is not pivotally attached to both the first and second
attachment structures”; (ii) claim 49, which recites, in relevant part, “a first
joint positioned between the spring assembly and the first attachment
structure and a second joint positioned between the spring assembly and the
second attachment structure” (Appeal Br. 22 (Claims App.)) is indefinite
because “there doesn’t appear to be a second joint on either end of rod 404”;
(iii) claim 52, which recites, in relevant part, “wherein the first attachment
structure and the second attachment structure are configured to position the
spring assembly such that the spring assembly does not contact the femur or
the tibia” (Appeal Br. 22 (Claims App.)) is indefinite because “it is unclear
how the spring is positioned, let alone if it engages the femur or tibia”; and
(iii) claim 53, which recites, in relevant part, “further comprising a first
fastener configured to extend through the first attachment structure and at
least partially though the femur, and a second fastener configured to extend
through the second attachment structure and at least partially through the
tibia” (Appeal Br. 22 (Claims App.)) is indefinite because “it is unclear what
structure comprises the second attachment structure and how a fastener
would extend through it.” Final Act. 6.
Again, the Examiner’s findings relate to 35 U.S.C. § 112, first
paragraph, rather than clarity of the claim language.
Accordingly, we do not sustain the rejection of claims 48, 49, 52, and
53 under 35 U.S.C. § 112, second paragraph, as indefinite.
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Rejection II
Regarding independent claim 45, the Examiner finds that Orsak
discloses the claimed knee support apparatus, including, inter alia, a spring
assembly attached to first and second attachment structures configured for
attachment to a femur and tibia, respectively, and that the spring assembly
comprises a spring (i.e., central or coil spring section 22) and a rod (i.e.,
proximal rod section 15). Final Act. 6 (citing Figs. 5, 11–14). The
Examiner also finds that
Figure 6 [of Orsak] shows the configuration of the spring and
[rod section 15] in a fully extended state. In this state, the spring
is compressed and [rod sections 15, 16] are engaged end to end.
Figure 7 then shows the spring in the fully flexed configuration
wherein the compression has been unloaded by flexing. As seen
at the top of Figure 7, the spring is no longer fully compressed.
Ans. 4.
The Examiner further finds, with respect to the rods being configured
to compress or unload the spring, that Orsak’s rod sections 15, 16 “rotate
and push apart from each other,” and that “[w]ithout the direct end to end
contact, they are no longer transferring an axial force.” Id. at 5. The
Examiner further concludes that when bent, “[t]he attachment members are
not aligned axially so there can be no axial forces transferred between
them,” only “bending moments and torsional forces [are] transferred.” Id. at
5.
Appellant argues, inter alia, that “[w]hen Orsak’s device’s rods are
not in contact, its spring is free to act as a spring and be compressed;
however, the claims require . . . the opposite – the rod unloads the spring . . .
, such that the spring assembly substantially avoids axially transferring force
between the first attachment structure and the second attachment structure.”
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Appeal Br. 14. Appellant concludes that “in Orsak’s device, the spring is
[always] loaded.” Id. In support, Appellant submits that
Orsak’s device[] is always in compression, regardless of the
orientation of the patient’s joint across which it is mounted. This
causes the spring to push outwardly, as Orsak’s [device] [is]
require[d] to always distract the patient’s joint,[9] and therefore,
at no angular position do Orsak’s spring and rods cooperate to
“unload the spring when the knee joint is in a fully flexed
position such that the spring assembly substantially avoids
axially transferring force between the first attachment structure
and the second attachment structure”. That is, when Orsak’s
device is mounted as illustrated in Fig. 12, it does not unload the
spring when the knee joint is in a fully flexed position, and
Orsak’s spring assembly does not avoid axially transferring force
between the first attachment structure and the second attachment
structure.
Appeal Br. 12–13. Appellant submits that “Orsak never says that its spring,
which has been fully compressed as illustrated in Fig. 6, when bent
somehow includes a portion which is unloaded,” and that the Examiner errs
by concluding that less compression means that the spring has been
substantially unloaded. Reply Br. 2.
Claim 45 requires, depending on the extension or flexure of the knee
joint (i.e., the movement and re-positioning of the first and second
attachment structures), (i) the rod to be configured to compress the spring,
such that the spring assembly axially transfers force between the first and
second attachment structures; and also (ii) the rod to be configured to
substantially unload the spring, such that the spring assembly substantially
avoids axially transferring force between the first and second attachment

9 The Specification refers to “the physician separating (i.e., distracting) the
natural joint.” Spec. ¶ 36.
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structures. To demonstrate anticipation, the Examiner must demonstrate that
a prior art reference shows every element of the claimed invention
identically, in the same relationship as in the claim. In re Bond, 910 F.2d
831, 832 (Fed. Cir. 1990).
Orsak discloses that “[t]he hemispherical rod ends 26, 27 make
contact at 25 to prevent loss of distraction of the wrist joint so that the length
of the radius[10] is maintained.” Orsak 5:38–42. Orsak also discloses that
“rod ends 26, 27 typically maintain contact when the connector 19 is flexed
and with respect to the knee joint fixator” (id. at 5:42–45, Figs. 6, 7),
however, “end portions 26, 27 move apart at larger flexion angles with a gap
72 therebetween (id. at 6:7–9, Fig. 14). However, a preponderance of the
evidence fails to support the Examiner’s finding that Orsak discloses that the
rods are configured to compress or substantially unload central spring
section 22, as required by claim 45. Rather, Orsak discloses that the
function of the rods is to maintain a minimum distance between cylindrical
proximal and distal ends 20, 21 of the central spring section 22. The loading
and unloading of Orsak’s spring results from each of the ends of the spring
module being connected by attachment structures to separate bones, such
that the spring’s loading is dictated by the relative position of each of the
attachment structures to the other when the bones move.
We also construe claim 45 to require the spring to be substantially
unloaded, which includes the substantial avoidance of axial force transfer by
the spring assembly (i.e., rod and spring) between the first and second

10 Orsak defines a “radius” as “a patient’s bone tissue such as radius 11.”
Orsak 6:19.
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attachment structures, as well as all other force transfers by the spring (i.e.,
the spring must be substantially unloaded of all force transfers, axial and
otherwise). We agree with Appellant that Orsak fails to disclose that central
spring section 22 is substantially unloaded (notwithstanding the Examiner’s
finding that Orsak’s spring module does not transfer axial force between the
connection structures when bent), and that the Examiner’s finding in this
respect is speculative. In other words, we agree with Appellant, and a
preponderance of the evidence from Orsak supports that Orsak’s spring is
always loaded—at least to some extent that is not substantially unloaded, as
required by claim 45.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 45, and claims 46, and 48–54 depending therefrom.

DECISION
The Examiner’s decision rejecting claims 45, 46, and 48–54 is
REVERSED.

REVERSED