Urs Hulliger

Patent Trials and Appeals Board

May 28, 2020

2018008441 (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.
13/426,079 03/21/2012 Urs Hulliger 10139/25502 6186
76960 7590 05/28/2020
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
EXAMINER
COLEY, ZADE JAMES
ART UNIT PAPER NUMBER
3775
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):
bnasunova@fkmiplaw.com
okaplun@fkmiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte URS HULLIGER

Appeal 2018-008441
Application 13/426,079
Technology Center 3700
____________

Before ANTON W. FETTING, BIBHU R. MOHANTY, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–7. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

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 DePuy
Synthes Products, Inc., and Appellant also states that “Johnson & Johnson,
Inc. is the parent corporation of DePuy Synthes Products, Inc.” Appeal Br. 2.
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BACKGROUND
The Specification states that “[t]he present invention is related to the
field of bone fixation and, more specifically, to a system and method for the
alignment of a bone fixation device (e.g., a bone plate) over a fractured or
otherwise damaged bone.” Spec. ¶ 2.
CLAIMS
Claims 1 and 6 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. A bone fixation device, comprising a bone implant
integrally formed with an aiming guide, the aiming guide being
spaced apart from the bone implant by a first connecting bar
extending therebetween and integrally formed with the bone
implant and the aiming guide, the bone implant, the aiming guide
and the first connecting bar being formed from a single piece of
material.
REJECTIONS
1. The Examiner rejects claims 1 and 3–6 under 35 U.S.C. § 102(b) as
anticipated by Sharaf.2
2. The Examiner rejects claims 1–7 under 35 U.S.C. § 102(b) as anticipated
by Egeraat.3
3. The Examiner rejects claims 1–7 under 35 U.S.C. § 103(a) as
unpatentable over Castaneda.4

2 Sharaf, US 3,737,958, iss. June 12, 1973.
3 van Egeraat, US 6,837,500 B2, iss. Jan. 4, 2005.
4 Castaneda, US 2005/0085824 A1, pub. Apr. 21, 2005.
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DISCUSSION
Anticipation
The Examiner determines that both Sharaf and Egeraat disclose
devices and systems that anticipate independent claims 1 and 6. Each of
independent claims 1 and 6 recites “a bone implant.” We agree with
Appellant that the Examiner has not established that either Sharaf or Egeraat
disclose a bone implant as required by the claim.
With respect to claim 1, for example, the Examiner finds that the
recitation of a bone implant is only a recitation of the intended use of the
device that does not result in a structural difference between that which is
claimed and the structures disclosed and relied upon in Sharaf or Egeraat.
See Final Act. 10. The Examiner further finds that the structure of the
devices of Sharaf and Egeraat are each capable of performing the intended
use. Id. at 10–11. The Examiner further clarifies that the “broadest
reasonable interpretation [requires] that the device just needs to be capable
of being attached to a bone, so any old flat plate like structure with a couple
holes in it can be attached to a bone.” Id. at 11.
Appellant argues that the meaning of the term implant requires that
the device is “compatible for implantation within living tissue or coupling to
bone within a living body” and “[t]he requirements for being compatible
with this include restrictions on size, composition, strength and shape, etc. of
the device.” Reply Br. 3. We agree. We determine the scope of the claims
in patent applications by giving claims “their broadest reasonable
interpretation consistent with the specification” and “in light of the
specification as it would be interpreted by one of ordinary skill in the art.”
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
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We agree with Appellant that the use of the phrase “bone implant” would
only reasonably be interpreted to require a device that is compatible for
implant in the human body and not merely capable of being implanted. This
interpretation is consistent with the plain meaning of the phrase, as discussed
by Appellant. See Reply Br. at 3. This is also consistent with the written
description portion of the Specification, which describes the invention being
“employed in a variety of . . . bone fixation procedures as would be
understood by those skilled in the art.” Spec. ¶ 3. One of ordinary skill in
the art would understand that, in order to use the device in a bone fixation
procedure, the bone implant must be compatible with implantation into the
human body. Thus, the broadest reasonable interpretation of the claim
requires that the claimed “bone implant” is sized, shaped, and includes
material properties that make it compatible with implantation into the body.
Under this broadest reasonable interpretation of the claimed “bone
implant,” we agree with Appellant that neither Sharaf nor Egeraat disclose a
bone fixation device as claimed. Sharaf discloses quick release lock
mechanism for a car seat and Egeraat discloses a roller skate frame
assembly. The Examiner does not point to any disclosure in either reference
that indicates these devices would be compatible for implantation into the
body. Accordingly, we do not sustain the anticipation rejections of the
claims.
Obviousness
With respect to the obviousness rejection, Appellant relies on the
same argues with respect to all claims. See Appeal Br. 10–12. We discuss
claim 1 as representative of the claims, and claims 2–7 stand or fall with
claim 1. See 37 C.F.R. 41.37(c)(1)(iv).
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With respect to claim 1, the Examiner finds that Castaneda discloses a
device with the structure claimed and acknowledges that Castaneda does not
disclose that the device is formed from a single piece of material. Final Act.
7–8. However, the Examiner determines that it would have been obvious to
form Castaneda’s parts from a single piece of material because “it would be
very obvious to cut these materials out of the same large piece of material
since all the parts should be formed of a strong biocompatible material.” Id.
at 8. The Examiner alternatively determines that it would have been obvious
to make Castaneda’s device as a monolithic unit because “it has been held
that constructing a structure made in various parts as an integral structure
involves only routine skill in the art.” Id. at 9.
Appellant asserts that Castaneda does not disclose a device that is
“integrally formed” as claimed, and Appellant argues that the Examiner’s
contention that it would have been obvious to make Castaneda’s device from
a single piece of material is based on hindsight and is not suggested in the
art. Appeal Br. 11. Appellant further asserts that “the Examiner's argument
is tantamount to a statement that it would have been obvious to have formed
any two components as a whole.” Id. And Appellant contends that “there
are many reasons why one would not wish the two components to be formed
as a whole.” Id.
We are not persuaded by Appellant’s arguments. First, we note that
the Board previously issued a decision with respect to this application in
which rejections of the claims were affirmed. Decision, mailed June 15,
2017. In the Decision, the Board relied on Appellant’s proposed
interpretation of the phrase “integrally formed” in determining that another
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reference’s5 separate pieces were “integrally formed” because they “are
secured together as a single structure, single piece, a complete unit, and a
whole.” Decision at 4–5. Here, Appellant does not address the previous
Decision and raises a similar argument regarding whether Castaneda
provides a device that is integrally formed. See Appeal Br. 10–11. Yet,
Appellant does not provide any reasoning why our analysis regarding the
term “integrally form” should be any different than the Board’s previous
analysis.
Second, since the Decision, Appellant has amended claim 1 to add the
language requiring that the connecting bar is “integrally formed with the
bone implant and the aiming guide, the bone implant, the aiming guide and
the first connecting bar being formed from a single piece of material.”
Appeal Br. 13; see also Decision 2 (quoting claim 1 as previously
presented). Appellant does not persuade us that this added language would
lead to a different result than in the prior decision. The claim now requires
that the parts of the device are integrally and formed from a single piece of
material. However, the broadest reasonable interpretation of this language
does not require that the device is formed as a single monolithic structure.
Rather, as noted by the Examiner, the plain language of the claim requires
only that the device is formed as separate parts from the same piece of
material, after which it may be “integrally formed” by securing the parts
together, as previously determined by the Board. This is consistent with the
Specification, which distinguishes manufacturing the device from a single
piece of material and manufacturing the device as a single piece from a

5 Leyden, US 2009/0088805 A1 (Apr. 2, 2009).
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single block of material. See Spec. ¶ 12. We also agree with the Examiner,
that using the same material for each of the parts would have been obvious
in order to provide a device with appropriate biocompatibility.
Based on the foregoing, we are not persuaded of any error in the
rejection of claim 1 as obvious. Thus, we sustain the rejection of claim 1 as
obvious. We also sustain the rejection of claims 2–7, which fall with claim
1, as discussed above.

CONCLUSION
We REVERSE the anticipation rejections of claims 1–7. We
AFFIRM the obviousness rejection of claims 1–7.

In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 3–6 102(b) Sharaf 1, 3–6
1–7 102(b) Egeraat 1–7
1–7 103(a) Castaneda 1–7
Overall
Outcome
1–7

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)(l)(iv).

AFFIRMED