Ex Parte Clifford et al

Patent Trial and Appeal BoardJan 7, 2019

13800676 (P.T.A.B. Jan. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/800,676 03/13/2013 118733 7590 01/09/2019 Moximed, Inc 46602 Landing Parkway Fremont, CA 94539 FIRST NAMED INVENTOR Anton G. Clifford 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 ATTORNEY DOCKET NO. CONFIRMATION NO. P044.C2 2740 EXAMINER PRONE, CHRISTOPHER D ART UNIT PAPER NUMBER 3774 NOTIFICATION DATE DELIVERY MODE 01/09/2019 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): ip@cnmiplaw.com acermak@cnmiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANTON G. CLIFFORD, JOSHUA MAKOWER, MICHAELE. LANDRY, and CLINTON N. SLONE Appeal 2018-004053 1,2 Application 13/800,676 Technology Center 3700 Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL Appellants3 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's rejection4 of claims 24--29. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 1 Appellants identify Application No. 12/112,442 (Appeal No. 2017- 007504; Decision rendered Dec. 5, 2017) as a related application to the present Appeal. 2 We note that the instant application is a continuation of Application No. 12/112,415 (see Application Data Sheet dated Mar. 13, 2013), which was the subject of Appeal No. 2014-007140; Decision rendered Nov. 23, 2016. 3 Appellants identify the real party in interest as Moximed, Inc. Br. 3. 4 Appeal is taken from the Non-Final Office Action dated Oct. 27, 2016. Appeal2018-004053 Application 13/800,676 STATEMENT OF THE CASE Claim 24 is the sole independent claim on appeal. Claim 24, reproduced below, is exemplary of the subject matter on appeal, with disputed limitations italicized for emphasis. 24. An implantable mechanical extra-articular apparatus compnsmg: a pair of bases, at least one of said bases having an inner surface which follows the contours of a lateral side of a first bone of a knee joint in an inferior/superior direction and an anterior/ posterior direction; the at least one base having a fixation portion with at least two fixation holes and a curved arm portion with a thickness sufficient to be elevated compared to the fixation portion to create a space adjacent the lateral side of the first bone of the knee joint; and an extra-articular implantable mechanical energy absorbing system attached to an end of the curved arm portion opposite the fixation portion. THE REJECTIONS I. Claims 24--26 and 29 stand rejected under 35 U.S.C. Â§ 103 as unpatentable over Hauser (US 2,632,440; issued Mar. 24, 1953) and Weaver (US 6,623,486 Bl; issued Sept. 23, 2003). II. Claims 27 and 28 stand rejected under 35 U.S.C. Â§ 103 as unpatentable over Hauser, Weaver, and Andersen (US 4,863,475; issued Sept. 5, 1989). ANALYSIS Rejection I Regarding independent claim 24, the Examiner finds, inter alia, that Hauser discloses "upper and lower plates inter-connected by an extra- 2 Appeal2018-004053 Application 13/800,676 articular energy absorber system," but fails to disclose that Hauser's extra- articular energy absorber system is implantable, as claimed. Non-Final Act. 3 (citing Hauser, Figs. 52-54). The Examiner determines that [i]t is old and known in the art of knee braces and implants that the bones of the knee can be supported by internal and external bracing. A person of ordinary skill in the art would recognize that taking an external brace and implanting it such that bracing is directly attached to bone will provide permanent direct support to the bones. Additionally, implanting the bracing allows it to be better secured to the solid bone which will eliminate the rubbing and damage to the surrounding skin and soft tissue. Id. at 4. In support, the Examiner determines that "a person of ordinary skill in the art of knee prosthetics including doctors and engineers are well aware of the interchangeability of structures of internal and external bracing," and [ t ]he Examiner relies on Manspeizer5 as evidence that "these types of implants and connections are interchangeable as internal or external bracing knee prosthesis." Ans. 5 (citing Manspeizer Abstract). Appellants argue that the Examiner "identified no evidence in the record that supports the assertions," reiterated supra. Br. 18. Appellants submit that the Examiner's determination that a person of ordinary skill in the art "would recognize that taking an external brace and implanting it such that the bracing is directly attached to bone [to] provide permanent direct support to the bones" is based on "speculation." Id. Appellants' argument is persuasive. It is undisputed that Hauser discloses a brace that is externally applied to the leg of patient, and not an implantable brace, as required by claim 24. See, e.g., Hauser 1 :32-34 ( disclosing "a leg brace which may be ... easily applied and removed by the 5 US 6,540,708 Bl; issued Apr. 1, 2003. 3 Appeal2018-004053 Application 13/800,676 patient"). Manspeizer discloses "an internal or external knee brace having a polycentric joint that enables control of a predetermined helicoidal motion and which permits compression and distraction of the knee joint." Manspeizer, Abstract; see also id. 7 :7-9 ( disclosing a "polycentric joint" that "can be used in any knee brace, including an internal knee brace, an external knee brace or an external fixator"). Manspeizer does not disclose that an external knee brace comprising Manspeizer's polycentric joint may be used as an internal (i.e., implantable) knee brace comprising Manspeizer's polycentric joint. Thus, the Examiner's determination lacks support and is speculative. Accordingly, we do not sustain the Examiner's rejection of independent claim 24, and claims 25, 26, and 29 depending therefrom. Re} ection II The Examiner's reliance on Andersen for disclosing a bone promoting treatment does not cure the deficiencies in the Examiner's reasoning with respect to independent claim 24, as discussed supra. See Non-Final Act. 5. Therefore, for the same reasons stated supra, we also do not sustain the Examiner's rejection of claims 27 and 28, which depend from claim 24. DECISION The Examiner's decision rejecting claims 24--29 is REVERSED. REVERSED 4