DePuy Synthes Products, Inc.

Patent Trials and Appeals Board

Aug 19, 2021

2021001733 (P.T.A.B. Aug. 19, 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.
15/409,026 01/18/2017 Steffan DANIEL 10139/31602
(DSP5193USNP)
6098
76960 7590 08/19/2021
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
EXAMINER
WATKINS, MARCIA LYNN
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
08/19/2021 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, ANDRE FURRER, and
SIMON BOSSHARD
Appeal 2021-001733
Application 15/409,026
Technology Center 3700

Before MICHAEL C. ASTORINO, JAMES A. WORTH, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

WORTH, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1, 2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–5, 7, 9–15, 18–20, and 22–24. Claim 21 is
withdrawn from consideration. Final Act. 1. We have jurisdiction under
35 U.S.C. § 6(b).

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. by virtue of assignment, and states that Johnson &
Johnson, Inc. is the parent corporation thereof. See Appeal Br. 2.
2 Our Decision refers to Appellant’s Appeal Brief (“Appeal Br.,” filed
Oct. 22, 2020) and Reply Brief (“Reply Br.,” filed Jan. 5, 2021), as well as
the Examiner’s Final Office Action (“Final Act.,” mailed June 29, 2020),
and Answer (“Ans.,” mailed Nov. 27, 2020).
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We AFFIRM IN PART.
BACKGROUND
Appellant’s application “relates to the treatment of bone and, in
particular, relates to treatments using bone grafts.” Spec. ¶ 6.
CLAIMED SUBJECT MATTER
Claims 1 and 11 are the independent claims on appeal. Claim 1 is
illustrative of the subject matter:
1. A bone graft containment device, comprising:
a body extending longitudinally from a first end to a
second end, the body defined via a strut framework sized and
shaped to correspond to an outer surface of a target bone, the
strut framework defining an interior space configured to receive
a bone graft material; and
a first grasping structure and a second grasping structure
extending from an exterior of the body, the first and second
grasping structures configured to extend around a portion of an
exterior of a bone fixation plate and receive the bone fixation
plate therebetween, the exterior of the bone fixation plate being
a surface of the bone plate opposite an inner surface of the bone
plate which, in a desired configuration, faces the body.

Appeal Br. 8, Claims App.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Salemi US 8,197,520 B2 June 12, 2012
Kiritsis US 2012/0053587 A1 Mar. 1, 2012

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REJECTION
Claims 1–5, 7, 9–15, 18–20, and 22–24 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Salemi and Kiritsis.
OPINION
Independent claim 1 and dependent claims 2–4, 10, 22, and 24
The Examiner finds that Salemi discloses cage 40 (where the
Examiner relies on at least a portion of cage 40 for the recited body) and
plate 20 (the bone fixation plate). See Final Act. 2, 4. The Examiner finds
that Salemi’s plate 20 may be formed separable from Salemi’s cage 40. Id.
at 4 (citing Salemi, 4:10–19). However, the Examiner finds that Salemi is
silent regarding the first and second grasping structures, extending from the
body, configured to extend around an exterior of a bone fixation plate, as
recited in claim 1. See id. at 5. The Examiner finds that Kiritsis discloses
the first and second grasping structures 136 on body 102. See id. The
Examiner reasons that it would have been obvious to one of ordinary skill in
the art “to try using the slide mechanism of Kiritsis as the means for forming
the plate as a separate element to the cage as taught and/or suggested by
Salemi in order to provide a known means for enabling attach and
detachment of the plate from the cage with predictable results and a
reasonable expectation for success.” Id. (discussing Kiritsis, Figs. 3, 11).
In the Examiner’s proposed combination of Salemi and Kiritsis, first
and second grasping structures 136 from Kiritsis would be added to Salemi’s
cage 40 to hold Salemi’s plate 20. See id.; Ans. 5. We further find that in
the proposed combination, after sliding into first and second grasping
structures 136, plate 20 can be fixed to the two fractured bone ends
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(proximal and distal to the cage) via fasteners in fastener openings 28. See
Final Act 4; Salemi, 3:18–22, Fig. 1.3
Appellant argues that Salemi alone or in combination with Kiritsis
fails to disclose
a first grasping structure and a second grasping structure
extending from an exterior of the body, the first and second
grasping structures configured to extend around a portion of an
exterior of a bone fixation plate and receive the bone fixation
plate therebetween, the exterior of the bone fixation plate being
a surface of the bone plate opposite an inner surface of the bone
plate which, in a desired configuration, faces the body,
as recited in claim 1. In particular, Appellant argues that Salemi’s cage 40
does not show or suggest grasping structures that extend around the body of
an external plate, even in the version of Figure 4 annotated by the Examiner.
Appeal Br. 3–4. Although the Final Action includes an annotated Figure 4
of Salemi, in which the Examiner refers to first and second grasping
structures (Final Act. 4), we do not understand Examiner to rely on Salemi
for the first and second grasping structures claimed because of the
Examiner’s statement that Salemi is “silent” with respect thereto. Id. at 5.
Rather, we understand the Examiner to rely on Figures 3 and 11 of Kiritsis
for the first and second grasping structures. See id. Indeed, paragraph 32 of
Kiritsis discloses that body 102 may include slide mechanism 136 having L-
shaped cross sections 137 (Kiritsis ¶ 32), and the proposed combination adds

3 Salemi also discloses that cage 40 may optionally be expandable along its
longitudinal axis 140 (id. at 4:15–16); that the cross-sectional shape of each
end 48, 48’ of the tubularly-shaped cage 40 is preferably a mirror image of
the cross-section of the respective ends of the bone it is supporting (id. at
4:4–7); and that cage 40 is placed in the gap in the bone so that the opposing
ends of the bone will be in contact and supported by opposing ends 48, 48’
(id. at 4:34–39).
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these slide mechanisms to Salemi’s cage 40 for the reasons discussed above.
See Final Act. 5.
Appellant argues that, notwithstanding Salemi’s statement that it is an
optional feature of Salemi for cage 40 to be detachable from plate 20, there
are many ways in which a plate may be detachable, e.g., using a screw or
sutures, and each of these may have pluses and minuses in a given surgical
procedure. Appeal Br. 4–5. However, Appellant does not identify any
particular pluses or minuses, and Appellant does not show error in the
Examiner’s finding that the use of Kiritsis’s slide mechanism to attach plate
20 and cage 40 of Salemi’s device would have been accomplished with
predictable results. Further, Appellant does not show error in the
Examiner’s reasoning for the use of Kiritsis’s slide mechanism in the device
of Salemi.
Appellant argues that the cited references do not disclose or suggest a
device for containing bone graft material, as recited in claim 1. Appeal
Br. 3. However, Salemi’s cage 40 is a bone containment cage for osteogenic
material. Salemi, 3:31–33; see Final Act. 3 (discussing graft containment
device). We observe that cage aperture 30 in plate 20 is optional, and that
plate 20 covers cage 40. See Salemi, 3:5–14, Fig. 1.
Appellant argues that Kiritsis is not suitable for use with a bone graft
containment device because no structure in Kiritsis contacts bone graft
material and the solid construction of the plates does not allow for any
ingrowth of tissue or supply of nutrients therethrough. Appeal Br. 5.
However, Salemi’s cage 40 has mesh structure 42 with openings 44. See,
e.g., Salemi, 3:61–65, Fig. 3; Final Act 3–4 (discussing strut framework).
We, therefore, agree with the Examiner that Appellant’s argument is
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unavailing because it is attempting to attack the references individually
where the rejection is based on a combination of references. See In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); Ans. 3.
To the extent that Appellant is arguing that Kiritsis is not analogous
art, we note that it is in the same field of orthopedic surgery and is directed
to the problem of filling a defect in bone. See, e.g., Kiritsis ¶¶ 2, 46. See In
re Bigio, 381 F.3d 1320, 1325–26 (Fed. Cir. 2004) (art is analogous when it
is (1) from the same field of endeavor as the claimed invention; or (2)
reasonably pertinent to the particular problem faced by the inventor).
We, therefore, sustain the Examiner’s rejection under § 103 of
independent claim 1 as obvious over Salemi and Kiritsis. Appellant does not
argue the patentability of claims 2–4, 10, 22, and 24 separately from
independent claim 1, from which they depend. We, therefore, sustain the
Examiner’s rejection of dependent claims 2–4, 10, 22, and 24, for the same
reasons for independent claim 1.
Independent claim 11 and dependent claims 12, 13, 15, 19, 20, and 23
Appellant states that “[c]laim 11 includes limitations substantially
similar to the limitations of claim 1 discussed above. Accordingly,
Appellant respectfully submits that claim 11 is not obvious over Salemi in
view of Kiritsis for at least the same reasons as mentioned above for claim
1.” Appeal Br. 5. We determine that independent claim 11 contains
substantially similar limitations to independent claim 1, and we sustain the
Examiner’s rejection under § 103 of independent claim 11 over Salemi and
Kiritsis, for similar reasons as independent claim 1.4

4 Appellant elsewhere refers to claim 11 in a section arguing for the
patentability of claim 5, i.e., “[i]t is submitted that claims 5 and 11 which
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Appellant does not argue the patentability of claims 12, 13, 15, 19, 20,
and 23, separately from independent claim 11, from which they depend.
We, therefore, sustain the Examiner’s rejection of dependent claims 12, 13,
15, 19, 20, and 23, for the same reasons for independent claim 11.
Dependent claims 5, 7, and 14
Appellant argues that the prior art relied on by the Examiner fails to
disclose “wherein the body includes a solid portion extending along a length
thereof, the solid portion including a split extending therealong, edges of the
split being movable toward and away from one another to close and open the
body, respectively,” as recited in claim 5. Appeal Br. 7. Appellant argues
that neither reference discloses both a solid portion as claimed and one that
is configured to grasp a separate bone fixation plate. Id. We are persuaded
by Appellant.
The proposed combination has added Kiritsis’s first and second
gripping structures 136 to Salemi’s cage 40. Final Act. 5. The Examiner
identifies item 138 of Kiritsis as the solid portion of the body, and finds that
“Salemi in view of Kiritsis teaches or suggests the body includes a solid
portion (i.e., bottom surface forming groove 138 in Kiritsis)” “because of the
formation of the inclusion of the solid forming groove 138 in figure 3 of
Kiritsis.” See id. at 6. However, we find that groove 138, which Kiritsis

includes substantially similar limitations are also allowable for this
additional reason.” Id. at 6. On review of the claim language, we determine
that Appellant’s reference to claim 11 there was an inadvertent
typographical error and was intended to refer to dependent claim 14, which
contains a similar further limitation as that of dependent claim 5. This
language is not present in independent claim 11, which contains similar
language to independent claim 1.
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refers to as longitudinal channels 138 is a negative space that sits between
slide mechanism 136 and surface 120. See Kiritsis ¶ 33, Fig. 3. In other
words, groove 138 is not a structure per se and is not part of the L-shaped
profile 137 of Kiritsis’s slide mechanism because it is negative space; rather
the L-shaped profile 137 is part of slide mechanism 136, which the
Examiner identifies as the grasping structures. Therefore, we do not agree
with the Examiner that Kiritsis’s groove 138 is part of the recited “solid
portion” or part of the “body.” Accordingly, we do not sustain the
Examiner’s rejection of claim 5, nor that of claim 7, which depends
therefrom.
Claim 14 contains a similar limitation as claim 5, and we do not
sustain the Examiner’s rejection of claim 14, for similar reasons as claim 5.5
Dependent claims 9 and 18
Appellant argues that Salemi fails to disclose any grasping structures
as claimed, much less any grasping structure that comprises “a longitudinal
strut and a plurality of curved struts connecting the longitudinal strut to the
body,” as recited in claim 9. Appeal Br. 6. Appellant argues that even the
Examiner’s annotated version of Figure 3 on page 7 of the Final Office
Action fails to show any portion that could reasonably be interpreted as a
longitudinal strut that is part of a grasping structure. Id. at 7. We agree with
Appellant that the Examiner’s determination is not supported by adequate
evidence and reasoning.
The Examiner determines that in the proposed combination the
grasping structures would include a plurality of curved struts, i.e., would

5 See note 4, supra.
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include a portion of cage 40, in addition to a longitudinal strut of Kiritsis
which contributes to the grasping structures. See Final Act. 7; Ans. 6–7
(with annotated figures). The Examiner reasons that there is no limitation
that delineates where the “grasping structure” begins and the claimed “body”
ends. Ans. 6.
Independent claim 1, from which claim 9 depends, recites a distinct
body and grasping structures, i.e., where the grasping structures “extend[]”
from an exterior of the body. Claim 1 further recites that the “body” is
“defined” via a strut framework and “defining” an interior space configured
to receive a bone graft material. In Salemi, cage 40 is placed in a gap in the
bone and is configured to contain osteogenic material. See Salemi, 3:31–33,
4:25–27, 4:35–39. Therefore, cage 40 of Salemi would be part of the recited
“body” of claim 1 rather than the gripping structures. See Final Act. 5.
Thus, we do not agree with the Examiner that the gripping structures in the
proposed combination contain curved struts. Accordingly, we do not sustain
the Examiner’s rejection under § 103 of claim 9 over Salemi and Kiritsis.
Although not argued by Appellant, claim 18 contains similar language
as claim 9, and we do not sustain the Examiner’s rejection under § 103 of
claim 18 over Salemi and Kiritsis, for similar reasons as claim 9.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 7,
9–15,
18–20,
22–24
103 Salemi, Kiritsis 1–4, 10–13,
15, 19, 20,
22–24
5, 7, 9, 14,
18
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 IN PART