Ex Parte Aeschlimann et al

Patent Trial and Appeal Board

Jan 17, 2017

12442328 (P.T.A.B. Jan. 17, 2017)

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.
12/442,328 09/21/2009 Marcel Aeschlimann FRG-18874 9378
40854 7590 01/19/2017
RANKIN, HILL & CLARK LLP
38210 GLENN AVENUE
WILLOUGHBY, OH 44094-7808
EXAMINER
CHANG, OLIVIA C
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
01/19/2017 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):
40854@rankinhill.com
spaw @ rankinhill. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCEL AESCHLIMANN, LAURENT TORRIANI,
ANDREA MULLER, THOMAS KNECHT, PHILIPP SEILER,
URS WEBER, CHRISTOPHER RAST, JORG MAYER,
STEPHANIE MEHL, and MILICA BERRA
Appeal 2015-002594
Application 12/442,328
Technology Center 3700
Before JENNIFER D. BAHR, WILLIAM A. CAPP, and
BRANDON J. WARNER, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 20, 27, and 28 under 35 U.S.C. § 102(b) as anticipated by
Aeschlimann (US 2004/0030341 Al, pub. Feb. 12, 2004).1 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 A rejection of claims 20, 27, and 28 under 35 U.S.C. § 112, second
paragraph, as indefinite, appears to have been withdrawn in view of an After
Final Amendment that was filed May 12, 2014, and subsequently entered by
the Examiner. See Advisory Action, May 23, 2014.
Appeal 2015-002594
Application 12/442,328
THE INVENTION
Appellants’ invention relates to medical implants. Spec. 1. Claim 20,
reproduced below, is illustrative of the subject matter on appeal.
20. A method for implanting and assembling a device in a
patient, the method, comprising the steps of:
providing at least one base part of the device, the base part
comprising a liquefiable material, and a based part of the
device, wherein the based part comprises a based part joining
location, the based part joining location having an associated
structure that is suitable to form a positive fit connection with
the liquefiable material,
positioning the based part relative to bone tissue, with the
based part joining location and associated structure being
spaced from, but facing toward, the bone tissue;
inserting the base part into a space between the based part
joining location and the bone tissue by pushing the base part
between the bone tissue and the based part joining location and
associated structure;
coupling vibration into the base part through a proximal
face thereof for a time sufficient for liquefying at least part of
the liquefiable material to yield liquefied material;
pressing a first portion of the liquefied material into the
bone tissue while a second portion of the liquefied material
flows into and is received by the associated structure of the
based part joining location, and
letting the liquefied material re-solidify to yield the positive
fit connection between the based part and the bone tissue via
the base part.
OPINION
Claim 20
The Examiner finds that Aeschlimann discloses all of the steps of
claim 1, including positioning the based part as recited. Final Action 3^4.
In particular, the Examiner finds that the based part joining location
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Application 12/442,328
(hereinafter the “joining location”) of Aeschlimann (the conical portion of
element 24) is spaced apart from the bone tissue by virtue of the cylindrical
portion of element 24. Id. at 3. The Examiner also finds that the joining
location faces toward the bone tissue. Id. (citing Figs. 2-4).
Appellants argue that Aeschlimann fails to disclose the positioning
step as claimed. Appeal Br. 11. Among other things, Appellants argue that
Aeschlimann’s alleged joining location faces away from, rather than toward,
the bone tissue. Id. at 12. Appellants direct our attention to Figure 21 of
their disclosure for an example of what it means to “face toward the bone
tissue.” Id. at 13.
In response, the Examiner reiterates that the conical portion of
Aeschlimann’s element 24 is spaced from the bone by virtue of the
cylindrical portion of element 24. Ans. 3^4. The Examiner further reiterates
that, because the conical portion of element 24 is “tapered” in the direction
of the bone it is, therefore, “facing” toward the bone. Id. at 4. The
Examiner supports this position with the following definition of “facing”
from Dictionary.com: “to turn or be turned toward.” Id.
In reply, Appellants argue that there is a distinction between “facing
toward” and “tapering toward.” Reply Br. 7. Appellants argue that the
Examiner’s position does not comport with the plain and ordinary meaning
of “facing.” Id.
Determining whether claims are anticipated involves a two-step
analysis. In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012). The
first step involves construction of the claims of the patent at issue. Id.
“During examination, ‘claims ... are to be given their broadest reasonable
interpretation consistent with the specification, and . . . claim language
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Application 12/442,328
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art.”’ Id. (quoting In re Am. Acad, of Sci. Tech Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004)). The second step of an anticipation
analysis involves comparing the claims to prior art. Id. A prior art reference
anticipates a patent claim under 35 U.S.C. § 102(b) if it discloses every
claim limitation. Id.
We disagree with the Examiner’s construction and application of the
term “facing.” The Examiner’s reliance on an arbitrarily chosen dictionary
definition is inappropriate in the context of the instant case. See Phillips v.
AWHCorp., 415 F.3d 1303, 1322 (Fed. Cir. 2005) (indiscriminate reliance
on definitions found in dictionaries can often produce absurd results). In
view of Appellants’ disclosure, including Figure 21, a more appropriate
construction is: “positioned with the front toward a certain direction.”2
Using a broad, but reasonable, construction of “facing,” we agree with
Appellants that the conical portion of Aeschlimann’s element 24 faces away
from and not toward the bone tissue. Thus, the Examiner’s finding that
Aeschlimann discloses a joining location that faces toward the bone tissue is
not supported by a preponderance of the evidence.
Accordingly, we do not sustain the Examiner’s anticipation rejection
of claim 20.
Claims 27 and 28
Claims 27 and 28 depend from claim 20. Claims App. The
Examiner’s anticipation rejection of claims 27 and 28 suffers from the same
2 https://en.oxforddictionaries.com/defmition/us/facing (last accessed
January 17, 2017).
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Application 12/442,328
infirmity that we have identified with respect to the rejection of claim 20.
Accordingly, we do not sustain the rejection of claims 27 and 28.
DECISION
The decision of the Examiner to reject claims 20, 27, and 28 is
reversed.
REVERSED
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