REGENTS OF THE UNIVERSITY OF MINNESOTA

Patent Trials and Appeals Board

May 27, 2020

14282613 - (D) (P.T.A.B. May. 27, 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.
14/282,613 05/20/2014 Alan Wellington Johnson 1008.24US02 2109
135778 7590 05/27/2020
Patterson Thuente Pedersen, P.A.
4800 IDS CENTER
80 SOUTH 8TH STREET
MINNEAPOLIS, MN 55402-2100
EXAMINER
HANNA, SAMUEL SALEEB
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
05/27/2020 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):
efsuspto@ptslaw.com
rabe@ptslaw.com
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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALAN WELLINGTON JOHNSON,
LAURA-LEE FARRELL BROWN,
SAMUEL C. LEVINE, and
CHRISTOPHER ROLFES

Appeal 2019-001486
Application 14/282,613
Technology Center 3700
____________

Before MICHAEL L. HOELTER, JAMES P. CALVE, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–11, 21–28, 35, and 36, which
constitute all the claims pending in this application. Appellant’s counsel

1 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 “the
Regents of the University of Minnesota.” Appeal Br. 2.
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presented oral argument on May 14, 2020. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The disclosed subject matter “relates generally to maxillo-mandibular
fixation (MMF) and more particularly to devices, systems, kits and methods
for achieving MMF.” Spec. 1:13–14. Apparatus claims 1 and 36 are
independent. Claim 1 is illustrative of the claims on appeal and is
reproduced below.2
1. A unitary device for immobilizing an upper jaw or a
lower jaw, the device comprising:
a first end comprising an insertion portion;
a second end comprising a clasp; and
an elongate body coupled to the clasp and the insertion
portion, the elongate body having a circular cross-section and a
smooth and continuous outer surface extending from the clasp
to the insertion portion and configured to be received in and
locked by the clasp to form a loop configured to extend
between first and second interdental spaces, and have sufficient
force to achieve reinforced dental occlusion.
EVIDENCE
Name Reference Date
Li et al. (“Li”) US 5,258,015 Nov. 2, 1993
Koch et al. (“Koch”) US 2013/0261625 A1 Oct. 3, 2013

2 The Examiner notes, “[t]he set of claims submitted by the Appellant with
the appeal brief is not the proper set of claims under appeal.” Ans. 17.
Instead, “the proper set of claims under appeal is that [filed] on 11/06/2017
and rejected in the Non-final rejection [filed] on 01/18/2018.” Ans. 17. It is
these claims filed on November 6, 2017 (amendments removed) that is
replicated above.
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REJECTIONS3
Claim 36 is rejected under 35 U.S.C. § 112(b) as being indefinite.
Claim 1–11, 21–28, 35, and 36 are rejected under 35 U.S.C. § 103 as
unpatentable over Koch and Li.
ANALYSIS
The rejection of claim 36 as being indefinite
Appellant appears to be of the belief that “the rejections under 35
U.S.C. § 112 all have been withdrawn in the Examiner’s Answer.” Reply
Br. 2 (emphasis added). There is no indication that the Examiner’s rejection
of claim 36 as being indefinite (see above) has been withdrawn because the
only rejection indicated as being withdrawn pertains to the Examiner’s
written description rejection. See Ans. 10–11. Because Appellant fails to
present argument rebutting the Examiner’s indefiniteness rejection of claim
36 (see Non-Final Act. 5, Appeal Br. 28–30, Ans. 2) we summarily affirm
such rejection.
The rejection of claims 1–11, 21–28, 35, and 36
as unpatentable over Koch and Li
Appellant argues these claims as a group. See Appeal Br. 30–33. We
select claim 1 for review, with the remaining claims (i.e., claims 2–11, 21–

3 “The following grounds of rejection are not presented for review on appeal
because they have been withdrawn by the examiner.” Ans. 9. The indicated
“following” include such headings as “Double Patenting,” and the written
description rejection under “35 USC § 112.” Ans. 9–11 (emphasis
removed). There is no indication the Examiner also withdrew the
indefiniteness rejection of claim 36. See also Ans. 2 (where the
indefiniteness rejection of claim 36 is listed under the heading “Grounds of
Rejection to be Reviewed on Appeal” (emphasis removed)).
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28, 35, and 36) standing or falling with claim 1. See 37 C.F.R.
§ 1.37(c)(1)(iv).
Claim 1 is directed to a device having an insertion portion at a first
end and a clasp at a second end. Coupled to the clasp and the insertion
portion is an elongate body “having a circular cross-section and a smooth
and continuous outer surface extending from the clasp to the insertion
portion.” Claims Appendix. The Examiner relies on Koch for teaching the
recited ends and elongate body therebetween, but acknowledges, “Koch does
not explicitly disclose wherein the elongate body has a circular cross-
section.”4 Non-Final Act. 8. The Examiner relies on Li for this “having a
circular cross-section” teaching. See Non-Final Act. 8.
Appellant explains, and it is not disputed, that “Koch relates to ties
that are used to reconnect pieces of a broken or cut sternum.” Appeal Br.
30. However, Koch is not restricted to use with only the sternum bone
because Koch also teaches:
It should be appreciated, that while the bone fixation members
14 are illustrated as approximating a sternum, the bone fixation
members 14 can approximate any target bone as desired, such
as a long bone for example.
Koch ¶ 36; see also Koch ¶ 4 (“a bone fixation member can be configured to
secure first and second bone segments of a target bone together in a

4 We note that regarding the limitation, “smooth and continuous outer
surface extending from the clasp to the insertion portion,” the Examiner
relies on “surface 67, Fig. 3B” of Koch. Non-Final Act. 6. The Examiner is
correct on this point because surface 67 is depicted as being uninterrupted
along its extension between Koch’s corresponding clasp (26) and insertion
portion (34). See Koch Fig. 3B; Non-Final Act. 6.
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compressed approximated position”). Thus, Koch is not limited solely for
use with a sternum bone as Appellant’s argument would seem to imply.
Appellant also states, “Koch uses long, strong, flat straps (22) that
make good contact with large, flat bone surfaces at contacting areas (66).”
Appeal Br. 30. Appellant contends that because Koch uses “flat straps,” the
ability to achieve Koch’s desired “good contact” with the bone “is outside
the scope of the claims reciting an elongate body have a circular cross-
section.” Appeal Br. 30. In other words, because of Koch’s desire for bone
contact, (see, e.g., Koch ¶ 41), Appellant asserts that a skilled person would
not combine Li’s teaching of a circular cross-section with Koch because a
circular shape would diminish, not enhance, bone contact. See also Appeal
Br. 31 (“it would not have been obvious to use ‘straps’ with circular cross-
sections as claimed”); 32 (modifying Koch to employ circular straps “would
minimize, rather than maximize, the surface area of contact between those
straps and the bone, which goes against the express teachings of Koch”). In
short, Appellant argues that using “straps with circular cross-sections . . .
would be wholly inappropriate in that context,” and as such “[t]here is
simply no motivation to modify Koch to have a rounded cross-section.”
Appeal Br. 32.
We understand that, according to Appellant, modifying Koch as the
Examiner suggests (i.e., having a circular cross-section) “would frustrate the
entire purpose of Koch, which is to increase the bone contacting surface
against a broken bone that is substantially flat.” Appeal Br. 32. While we
agree with Appellant’s assessment that Koch desires to increase bone
contacting surface, we are not in agreement that the only bones Koch is
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concerned with are those that are “substantially flat.”5 See above. The
Examiner addresses this point stating:
[P]roviding a strap having a circular cross-section may
maximize the surface area contact between the strap and the
bone when being used with a bone having a rounded cavity or
opening.
Ans. 14 (emphasis added).
Koch seems to support the Examiner’s statement by first recognizing
that the strap “can approximate any target bone as desired” (Koch ¶ 36) and
thereafter stating “the strap 22 can have any cross-sectional area as desired,
so long as the strap 22 is flexible enough to be placed about the target bone
18 without breaking” (Koch ¶ 41). See also Ans. 14. There is no indication
that a strap having a circular cross-section is more prone to breaking than a
strap having another cross-sectional shape (presuming equality of cross-
sectional area). In fact, Koch even addresses the past practice of using
“stainless steel wires” (Koch ¶ 3; see also Koch ¶ 41), which are presumed
to have a circular cross-section, but discounts their usage (see Koch ¶ 3) in
favor of the disclosed straps “made from a first flexible biocompatible
material such as PEEK or PEKK” (Koch ¶ 38).
Accordingly, it is not readily apparent that the Examiner’s reasoning
expressed above is faulty, or would otherwise fail to provide motivation to
employ an elongated body “having a circular cross-section” as recited. See
Reply Br. 3 (asserting that “an Examiner must articulate a reason or rationale
to support an obviousness rejection” (citation omitted)), 4 (“To date, no

5 The Examiner states, “Appellant did not provide support from Koch’s
disclosure indicating that the strap of Koch is limited to a shape having flat
surfaces.” Ans. 14.
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satisfactory explanation of why these references would have been obvious to
combine has been presented.”).
Appellant also contends “the Examiner has not presented any prima
facie case of obviousness” and as such, “[i]t is not Appellant’s responsibility
to prove what the cited art does not teach.” Reply Br. 3. This argument
misperceives the nature of the Examiner’s findings regarding Koch. The
Examiner finds that Koch expressly teaches an elongate body that can have
any cross-sectional area required for a particular application. Ans. 13–14
(citing Koch ¶ 41). The Examiner reasons that it would have been obvious
to provide Koch’s elongate member with a circular cross section as
suggested by Koch and as taught by Li to “maximize the surface area contact
between the strap and the bone when being used with a bone having a
rounded cavity or opening for receiving such strap [to] minimize the surface
area contact between the strap and the bone when being used with a bone
having a flat cavity or opening for receiving such strap.” Ans. 14–15. In
view of Koch’s express teachings that the cross-sectional area of the
elongate body can be any area required for a particular application (see Koch
¶ 41), the Examiner was not persuaded by Appellant’s unsupported attorney
argument that Koch discloses a strap with only flat surfaces. See Ans. 14.
Nor are we in view of Koch’s teachings to make the elongate member of a
desired cross-sectional area for a particular application and Koch’s teaching
that its straps can be used to approximate the shape of any target bone as
discussed above.
Appellant also addresses Li’s manner of fastening or securement
stating, “Li teaches fixation to an anchor in tissue, rather than bone.”
Appeal Br. 33. However, this is not a correct reading of Li which states in
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multiple locations that the device is used to attach “tissue member to a
bone.” Li 1:6–10; see also id. at 2:18–19, 3:20, 4:24–25, Ans. 15–16. Thus,
Li is not limited solely to providing securement between tissue alone.
Appellant also addresses the intended use of the claimed device
stating “[n]either of these references, either alone or in combination, teach or
suggest a device for immobilizing an upper jaw or a lower jaw as claimed.”6
Appeal Br. 33; see also Claim 1 Preamble. Such a reference to the intended
use of the claimed product is not persuasive because we have been instructed
that a recitation of the intended use of the claimed invention must result in a
structural difference between the claimed invention and the prior art in order
to patentably distinguish the claimed invention from the prior art. In other
words, if the prior art structure is capable of performing the intended use,
then it meets the claim. See Ans. 12–13. Thus, claims directed to an
apparatus, as here, must be distinguished from the prior art in terms of
structure rather than function. See In re Schreiber, 128 F.3d 1473, 1477–78,
(Fed. Cir. 1997); see also Hewlett-Packard Co. v. Bausch & Lomb Inc., 909
F.2d 1464, 1468, (Fed. Cir. 1990) (“apparatus claims cover what a device is,
not what a device does”); see also Ans. 16.
As stated above, the preamble to claim 1 recites the device being “for
immobilizing an upper jaw or a lower jaw.” Claims Appendix. On this
point, our reviewing court has “long ruled that a preamble is not limiting
where a patentee defines a structurally complete invention in the claim body
and uses the preamble only to state a purpose or intended use for the
invention.” Arctic Cat Inc. v. GEP Power Prods., Inc., 919 F.3d 1320, 1328

6 Appellant also states that the claims “do not merely rely on statements of
intended use.” Reply Br. 2.
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(Fed. Cir. 2019) (quotation marks omitted); see Georgetown Rail Equip. Co.
v. Holland L.P., 867 F.3d 1229, 1236–37 (Fed. Cir. 2017); Rowe v. Dror,
112 F.3d 473, 478 (Fed. Cir. 1997). There is no indication that the body of
claim 1 fails to define a structurally complete invention such that the
preamble becomes limiting.7
Moreover, the Examiner finds that Koch and Li render obvious the
claimed elongate body and clasp configured to apply sufficient force to
achieve reinforced dental occlusion and immobilize an upper jaw or a lower
jaw. See Non-Final Act. 15. This is because Koch’s band is used to align
and securely compress bone segments 16a, 16b of target bone 18 together at
a fracture location as illustrated in Figure 5A of Koch. See also Koch ¶ 52.
Further, Li teaches a band having a circular cross-section that is configured
to attach tissue to a bone. See, e.g., Li 1:6–7, Figures; see also. Ans. 15–16.
Furthermore, Appellant’s Specification describes “dental occlusion” as a
similar fastening process in which the cusps and facets of the teeth are fixed
in alignment to achieve maxillo-mandibular fixation. See Spec. 2:1–5, 3:1–
5. Thus, because Koch’s modified device has the claimed structure, the
Examiner had a sound basis to find it is capable of extending between first
and second interdental spaces and applying a sufficient force to achieve
reinforced dental occlusion as claimed, thereby shifting the burden to
Appellant to show the prior art structure does not inherently possess the
functionally defined limitation. Schreiber, 128 F.3d at 1478. Appellant has
not done so.

7 Appellant seems to agree that a structurally complete invention has been
recited stating, “[i]t is not proper to reject a structurally defined claim simply
because Appellant’s arguments address uses of that structure.” Reply Br. 2.
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Accordingly, for the reasons expressed above and based on the record
presented, we sustain the Examiner’s rejection of claims 1–11, 21–28, 35,
and 36 as unpatentable over Koch and Li.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
36 112(b) Indefiniteness 36
1–11,
21–28,
35, 36
103 Koch, Li 1–11, 21–
28, 35, 36

Overall
Outcome
1–11, 21–
28, 35, 36

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)(iv).

AFFIRMED