DePuy Synthes Products, Inc.

Patent Trials and Appeals Board

Apr 30, 2021

2020005600 (P.T.A.B. Apr. 30, 2021)

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.
15/801,528 11/02/2017 Steffan Daniel 10139/31402 2066
76960 7590 04/30/2021
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
EXAMINER
BLANCO, JAVIER G
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
04/30/2021 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 STEFFAN DANIEL and ANDRÉ FURRER
Appeal 2020-005600
Application 15/801,528
Technology Center 3700
Before DANIEL S. SONG, BENJAMIN D. M. WOOD, and
LEE L. STEPINA, Administrative Patent Judges.
WOOD, 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 1–6 and 23. See Final Act. 1. Claims
8–15 have been withdrawn from consideration. Id. Claims 7 and 16–22
have been canceled. Appeal Br. 11, 12 (Claims App.). We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party in interest as Johnson & Johnson, Inc., the
parent corporation of assignee DePuy Synthes Products, Inc. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to a fold-up containment device for bone
defects. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A bone graft system, comprising:
a two-dimensional mesh sheet sized and shaped to, when
folded along fold lines, form a three-dimensional graft
containment structure configured to be packed with a bone graft
material for placement within a target area of a bone, the fold
lines being formed to facilitate folding of the mesh sheet
therealong, the mesh sheet including a first end flap connected
to a remaining portion of the mesh sheet via a first fold line and
a second end flap connected to the remaining portion of the
mesh sheet via a second fold line, a third fold line extending
from the first fold line to the second fold line so that the
remaining portion is configured to be wrapped around folded
first and second flaps to form the graft containment structure,
the first and second end flaps substantially corresponding to a
profile of the target area of the bone.

REFERENCES
Name Reference Date
Morscher US 4,718,916 Jan. 12, 1988
Friedman US 5,503,164 Apr. 2, 1996
Zeiner US 2009/0275962 A1 Nov. 5, 2009
Vickers US 2017/0239050 A1 Aug. 24, 2017

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REJECTIONS
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1–4, 6 102(a)(1) Morscher
1–3, 6 102(a)(2) Vickers
5 103 Morscher, Friedman
4, 5 103 Vickers, Friedman
23 103 Morscher, Vickers, Zeiner
OPINION
Claims 1–4, and 6: Rejected as Anticipated by Morscher
Appellant argues the claims subject to this rejection as a group.
Appeal Br. 3–6. We select claim 1 as representative of the group, and
decide the appeal of this rejection on the basis of claim 1 alone. 37 C.F.R.
§ 41.37(c)(1)(iv).
The Examiner finds that Morscher discloses the two-dimensional
mesh sheet recited in claim 1, including the claimed first and second end
flaps connected to a remaining portion by, respectively, first and second fold
lines, and a third fold line extending from the first fold line to the second
fold line so that the remaining portion is configured to be wrapped around
folded first and second end flaps to form the graft containment structure, the
first and second end flaps substantially corresponding to a profile of the
target area of the bone. Final Act. 3 (citing Morscher, 3:40–54, Figs. 1–3, 8,
9). The Examiner further determines that the term “configured to be packed
with a bone graft material for placement within a target area of a bone” is a
functional limitation that “do[es] not impose any structural limitations on the
claims distinguishable over the device of Morscher ’916, which is capable
of being used as claimed if one so desires to do so.” Id. at 4 (citing In re
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Casey, 152 USPQ 235 (CCPA 1967); In re Otto, 136 USPQ 458, 459
(CCPA 1963)).
Appellant argues that the claims “expressly recite a device
‘configured’ to contain graft material,” and “the Examiner’s reliance on art
directed to a purpose entirely different from that to which the claimed
embodiments are directed . . . is not legally sufficient to support [the]
rejection.” Appeal Br. 4. Appellant submits that Federal-Circuit precedent
requires that claims using the “configured to” language “should be
interpreted to require in support of a rejection, art describing a device
designed or constructed to be used as recited in the claim not one which is
merely asserted by the Examiner to be ‘capable of’ the recited use.” Id.
(citing In re Gianelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014)). According to
Appellant, “claim 1 recites a graft containment structure ‘configured to be
packed with a bone graft material,’ which imposes significant structural
restrictions on the device and nothing in Morscher indicates that the sheet
metal jacket for its prosthetic is in any way configured to operate with or
interact in any way with bone graft material.” Id. at 5.
In response, the Examiner submits that “[t]he ‘a bone graft material’ is
not positively claimed,” and “the three dimensional containment structure of
Morscher . . . is capable of being packed with a bone graft material.” Ans.
12 (citing Morscher, 3:50–54, 4:5–9, Figs. 2, 8). In this regard, the
Examiner finds that Morscher “discloses the three-dimensional containment
structure as ‘promot[ing] the accretion and growing in of bone tissue.’” Id.
(citing Morscher, 3:50–54, 4:5–9).
In the Reply Brief, Appellant submits that “[t]he Examiner fails to
address the possibility . . . that a structure configured to promote bone
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ingrowth may not be suited for the packing of bone graft material” because
“[n]othing in any of the cited art suggests that this is true or that there are
characteristics of devices configured to promote bone ingrowth that would
make them suitable for holding bone graft.” Reply Br. 3.
We are not persuaded of reversible Examiner error. As an initial
matter, Appellant’s analysis seems to be premised on claim 1 specifically
claiming a 3D graft-containment structure. See Appeal Br. 5 (“claim 1
recites a graft containment structure ‘configured to be packed with a bone
graft material’”). This is not correct. Claim 1 is directed to “a two-
dimensional mesh sheet,” which is itself “sized and shaped to, when folded
along fold lines, form” a three-dimensional graft containment structure. Id.
at 10 (Claims App.). The three-dimensional graft containment structure is
not expressly claimed.
More importantly, we are not persuaded that the application of
Gianelli mandates a determination of Examiner error. In Gianelli, the claim
at issue was drawn to a “row exercise machine” comprising “a first handle
portion adapted to be moved from a first position to a second position by a
pulling force exerted by a user.” Gianelli, 739 F.3d at 1376. The court
determined that the specification of the application at issue identified
specific structure that renders handles “adapted” to be moved by the user’s
pulling force; specifically, “the position of the handles relative to the
primary and secondary lever arms and the resistance mechanism.” Id.; see
id. at 1380 (“The location of those handles relative to the other components
is one of their structural attributes that enables performance of the rowing
motion against the selected resistance.”). The court further found that there
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was no question that the chest press of the prior art did not have handles so
adapted to be pulled in a rowing motion. Id. at 1380.
Here, although Appellant contends that the term “configured to be
packed with a bone graft material . . . imposes significant structural
restrictions on the device,” Appellant does not identify any specific
structural restrictions so imposed, and therefore has not identified what
structure the Morscher device is lacking.
Appellant also argues that Morscher’s sheet metal jacket “fails to
disclose fold lines ‘formed to facilitate folding of the mesh sheet therealong,’
as recited in claim 1.” Appeal Br. 5. Appellant contends that “[t]he
Examiner interprets the portions of the sheet that are ultimately folded as
‘fold lines,’ however, these portions are, prior to folding, merely typical
portions of a uniform sheet.” Id. According to Appellant, “[t]hese portions
are not differentiated in any way from the remainder of the sheet or
otherwise ‘formed’ to facilitate folding,” and thus “are not ‘fold lines’ as
recited in claim 1.” The Examiner responds that “the mesh sheet of
Morscher . . . is specifically manufactured to have a final three-dimensional
shape . . . that could only be obtained from the fold lines of the two-
dimensional mesh sheet shown in Figure 9.” Ans. 13.
We are not persuaded of Examiner error. First, as the Examiner notes,
Figure 9 of Morscher depicts lines between hook ends 27—which the
Examiner finds correspond to the first and second end flaps—and the
remainder of wire mesh jacket 26. Morscher, Figure 9. Second, Morscher
teaches that hook ends 27 are folded along these lines such that the hook
ends “embrace the plastic insert 22.” Id., 3:48–50, Figs. 8, 9. These
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teachings adequately support the Examiner’s finding that the lines separating
hook ends 27 from jacket 26 are “fold lines,” as claimed.
Because we are not persuaded that the Examiner erred rejecting claim
1 as anticipated by Morscher, we sustain the Examiner’s rejection of claim
1, as well as claims 2–4 and 6, which fall therewith.
Claims 1–3, and 6: Rejected as Anticipated by Vickers
Appellant argues the claims subject to this rejection as a group.
Appeal Br. 6–7. We select claim 1 as representative of the group, and
decide the appeal of this rejection on the basis of claim 1 alone. 37 C.F.R.
§ 41.37(c)(1)(iv).
The Examiner finds that Vickers discloses the bone graft system
recited in claim 1. Final Act. 6–7 (citing Vickers ¶¶ 3, 12, 13, 33, 26, 30, 45,
49, 50, 55, 59, 60, 66, 72, 73, claim 22, Figs. 1–5).
In response, Appellant contends that “[n]othing in Vickers shows or
suggests any fold line present in an unfolded two-dimensional sheet as
claimed.” Appeal Br. 6. Appellant points to Figure 1 of Vickers, which,
according to Appellant, “shows an unfolded sheet with no delineation of any
fold line.” Id. (citing Vickers, Fig. 1). Appellant notes that “Figures 2–5 of
Vickers are simply views of the sheet of Fig. 1 in different states (e.g., after
having been folded) and that Fig. 1 is the only view of a sheet before
folding.” Id. at 7 (citing Vickers ¶¶ 6–10). Appellant further submits that
“because the system disclosed in Vickers is manipulated around the spine,
its configuration is selected intraoperatively.” Id. (citing Vickers ¶ 27, Figs.
1–5). Thus, according to Appellant, “any fold lines or delineations would be
senseless because the user must manipulate the device while in the process
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of positioning and choosing the orientation and manipulation during the
process of implantation.” Id.
The Examiner responds, inter alia, that Vickers’ mesh sheet “is
specifically manufactured to have a final three-dimensional shape (Figures 4
and 5) that could only be obtained from the fold lines of the two-dimensional
mesh sheet shown in Figure 1.” Ans. 16. The Examiner further relies on
“fold lines 32” depicted in Figure 2, and the “folding sequence from Figure
2 to Figure 4.” Id. Finally, the Examiner finds that claim 22 of Vickers
“clearly disclose[s] the fold lines as “formed to facilitate folding of the mesh
sheet therealong.” Ans. 16–17 (citing Vickers, claim 22).
We are not persuaded of Examiner error. Although, as Appellant
notes, the two-dimensional mesh sheet depicted in Figure 1 of Vickers is not
shown with fold lines, claim 22 of Vickers supports the Examiner’s finding
that Vickers teaches a two-dimensional sheet with fold lines. Ans. 16–17;
see also Vickers ¶ 66 (“Panels 30 are connected by delineations, such as, for
example, fold lines 32.”). Claim 22 of Vickers depends from claim 1 via
claim 5, and recites “[a] spinal implant” comprising “a foldable covering . . .
compris[ing] a plurality of panels, the panels disposed adjacent to each other
on a horizontal plane in a flat configuration” (claim 1), “the plurality of
panels are connected by fold lines” (claim 5), “the fold lines comprise a first
fold line and a second fold line opposite the first fold line, . . . and a third
fold line and a fourth fold line opposite the third fold line, the third and
fourth fold lines extending across the covering transverse to the first and
second fold lines.” Vickers, claims 1, 5, 22. Appellant does not address this
disclosure in the Reply Brief. To the extent that Appellant argues that
Vickers does not disclose fold lines “formed to facilitate folding of the mesh
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sheet therealong,” Appellant does not provide a definition of “fold line” or
identify what sort of structural attributes a fold line must have to “facilitate
folding” so as to distinguish what is disclosed in claim 22 of Vickers.
Finally, Appellant’s argument that it would be detrimental to Vickers’
system for the two-dimensional mesh sheet to have fold lines is unsupported
attorney argument, to which we accord little weight. See In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997) (holding that attorney arguments and
conclusory statements that are unsupported by factual evidence are entitled
to little probative value).
In sum, because we do not agree that Vickers fails to disclose the
claimed fold lines, we sustain the Examiner’s rejection of claim 1, as well as
of claims 2, 3, and 6, as anticipated by Vickers.
The Remaining Rejections
Appellant relies on the arguments made above regarding claim 1 in
support of the patentability of claims 4, 5, and 23, which ultimately depend
from claim 1. Appeal Br. 8. Because, as discussed above, we found
Appellant’s arguments in support of the patentability of claim 1
unpersuasive, we affirm the Examiner’s rejection of claim 5 as unpatentable
over Morscher and Friedman, of claims 4 and 5 as unpatentable over Vickers
and Friedman, and of claim 23 as unpatentable over Morscher, Vickers, and
Zeiner.
CONCLUSION
The Examiner’s rejections are affirmed.
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6 102(a)(1) Morscher 1–4, 6
1–3, 6 102(a)(2) Vickers 1–3, 6
5 103 Morscher,
Friedman
5
4, 5 103 Vickers, Friedman 4, 5
23 103 Morscher, Vickers,
Zeiner
23
Overall
Outcome
1–6, 23

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