Ex Parte Beaurain et al

Patent Trial and Appeal BoardOct 14, 2015

10498234 (P.T.A.B. Oct. 14, 2015)

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. 10/498,234 12/07/2004 Jacques Beaurain 21249-003US1 LDR/09/US 4566 91689 7590 10/14/2015 Denko Coburn Lauff LLP 3811 Bee Cave Road, Suite 204 West Lake Hills, TX 78746 EXAMINER BOLES, SAMEH RAAFAT ART UNIT PAPER NUMBER 3775 MAIL DATE DELIVERY MODE 10/14/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JACQUES BEAURAIN, JOEL DELECRIN, and HERVE CHATAIGNER ____________ Appeal 2013-0103171 Application 10/498,2342 Technology Center 3700 ____________ Before PHILIP J. HOFFMANN, MATTHEW R. CLEMENTS, and AMEE A. SHAH, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 17–41. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Throughout this opinion, we refer to the Appeal Brief (“App. Br.,” filed Mar. 5, 2013), the Examiner’s Answer (“Ans.,” mailed June 24, 2013), the Reply Brief (“Reply Br.,” filed Aug. 26, 2013), the Office Action (“Office Act.,” mailed Apr. 5, 2012), and the Substitute Specification (“Spec.,” filed June 10, 2004). 2 According to Appellants, LDR Medical is the real party in interest. App. Br. 3. Appeal 2013-010317 Application 10/498,234 2 STATEMENT OF THE CASE Appellants’ invention is directed to an implant providing osseous anchorage, such as for anchoring an osteosynthesis device, and adapted to receive and clamp a bar. See App. Br. 4, and Spec. p. 1, ll. 1–4. Claim 17, which we reproduce below, is illustrative of the subject matter on appeal, with the key limitation emphasized: 17. An osseous anchorage implant adapted to receive and clamp a bar having a longitudinal axis, the implant comprising: an osseous anchor; and a fixation head, the fixation head comprising a channel comprising a longitudinal axis, openings at each end of the longitudinal axis of the channel, and an inside surface configured for a rotational clearance of the bar about at least two axes of the channel not parallel to the longitudinal axis of the channel and not parallel to the longitudinal axis of the bar, including a support wall adapted to support the bar in any orientation within the rotational clearance of the bar independently of the orientation of the osseous anchor, a clamp mount, a clamp having a support head adapted to hold the bar against the support wall, and a lateral opening along the longitudinal axis of the channel, the lateral opening flanking the clamp mount and adapted for lateral insertion of the bar at a point along the longitudinal axis of the bar. REJECTIONS Claims 17, 18, 23, 30, 32, 37, and 41 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Kaneda (US 5,603,714, iss. Feb. 18, 1997). Appeal 2013-010317 Application 10/498,234 3 Claims 17–24, 26–34, 37, and 41 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kaneda and Griss (US 5,536,268, iss. July 16, 1996). Claims 25, 35, and 36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kaneda, Griss, and Schlapfer (US 5,520,689, iss. May 28, 1996). Claims 38–40 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kaneda, Griss, and Crozet (US 6,554,834 B1, iss. Apr. 29, 2003). ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ contentions in the Appeal and Reply Briefs that the Examiner has erred. We agree with Appellants’ position for the below reasons. 35 U.S.C. §102(b) - Anticipation by Kaneda Appellants argue claims 17, 18, 23, 30, 32, 37, and 41 as a group. See App. Br. 7. We select claim 17 as representative of the group. 37 C.F.R. § 41.37(c)(1)(iv) (2014). Appellants contend the Examiner’s rejection of claim 17 is in error because Kaneda does not disclose the claim’s limitation regarding the inside surface configured for a rotational clearance of the bar and including a support wall adapted to support the bar in any orientation within the rotational clearance. App. Br. 7–13. Specifically, Appellants point to the Specification and the claim as a whole in arguing that, properly construed, the claim requires the “support wall to actually be able to support a bar in Appeal 2013-010317 Application 10/498,234 4 various orientations when the bar is blocked to the implant.” Id. at 9; see also Reply Br. 7, 8. Conversely, the Examiner finds that Kaneda discloses a channel with an “inside surface that can be configured for a rotational clearance of a bar including a support wall that is capable of supporting a bar with a smaller diameter than the inside surface about at least two axes of the channel not parallel to the longitudinal axis of the channel and not parallel to the longitudinal axis of the bar.” Ans. 9. The Examiner also finds Kaneda teaches “a support wall (34) capable to support the bar in any orientation within the rotational clearance of the bar independently of the orientation of the osseous anchor by the support of a clamp mount (22), wherein a clamp (24) having a support head adapted to hold the bar against the support wall.” Id. citing Kaneda, Fig. 9. The Examiner further finds that the device of Kaneda is capable of supporting a bar in more than one orientation. Id. at 10, citing Kaneda, Figs. 8 and 9. Claim 17 recites, in part, an inside surface with a support wall adapted to support a bar in any orientation within the rotational clearance of the bar and a clamp adapted to hold the bar against the support wall. See App. Br. 26 (Claims Appendix). Thus, the claim, when taken as a whole, recites a support wall adapted to support a bar in any orientation within the rotational clearance of the bar when the bar is held against the support wall. The support wall of Kaneda can “support” a smaller diameter bar in any orientation (see Ans. 10) and support a bar held against the support wall of any size in a number of orientations (see Ans. 10 and Kaneda, Fig. 9), but the orientations about which the bar can be supported when held against the support wall are limited to those parallel to the longitudinal axis of the Appeal 2013-010317 Application 10/498,234 5 channel (see Kaneda, Figs. 8 and 9). Were the bar to be oriented at, for example, an angular position relative to the anchor, i.e., not parallel to the longitudinal axis of the channel (see App. Br. 9–11 and Spec. p. 8, ll. 19– 23), the bar would not be held against the support wall as the bar would be able to move, and thus not supported when held against the wall. Therefore, Kaneda does not teach the support wall supporting the bar in any orientation within the rotational clearance when held against the support wall, as required by claim 17. Thus, we do not sustain the Examiner’s rejection of claim 17 under 35 U.S.C. §102(b) as anticipated by Kaneda. We also do not sustain the Examiner’s rejections of claims 18, 23, 30, 32, 37, and 41 for the same reasons we do not sustain the rejection of claim 17. 35 U.S.C. § 103(a) - Unpatentability over Kaneda and Griss Appellants argue claims 17–41 as a group. See App. Br. 13. We select claim 17 as representative of the group. 37 C.F.R. § 41.37(c)(1)(iv) (2014). Appellants contend that the combination of Kaneda and Griss does not teach the claim limitation regarding the inside surface support wall adapted to support a bar in any orientation because Kaneda, upon which the Examiner appears to rely for the limitation, does not disclose the limitation for the reasons set forth with respect to the 35 U.S.C. §102 rejection of claim 17. See App. Br. 17. For the reasons discussed above with respect to the anticipation rejection of claim 17, we agree with Appellants that Kaneda does not teach Appeal 2013-010317 Application 10/498,234 6 the claimed support wall adapted to support a bar in any orientation within the rotational clearance when held against the support wall. The Examiner relies only upon Kaneda for the limitation of the support wall adapted to support a bar in any orientation. Thus, we do not sustain the Examiner’s rejection under 35 U.S.C. §103(a) of claim 17. We also do not sustain the Examiner’s rejections of claims 18–24, 26–34, 37, and 41 for the same reasons we do not sustain the rejection of claim 17. Appellants argue the rejections under 35 USC §103(a) of claims 25, 35, 36, and 38–40 are in error for the same reasons the 35 U.S.C. §103(a) rejection of claim 17 is in error. See App. Br. 13. Thus, because we do not sustain the rejection of claim 17, we also do not sustain the 35 U.S.C. §103(a) rejections of claims 25, 35, 36, and 38–40. DECISION The rejections of claims 17, 18, 23, 30, 32, 37, and 41 under 35 U.S.C. § 102(b) are reversed. The rejections of claims 17–41 under 35 U.S.C. § 103(a) are reversed. REVERSED tkl