Ex Parte Deirmengian et alDownload PDFPatent Trial and Appeal BoardJun 13, 201713355970 (P.T.A.B. Jun. 13, 2017) Copy Citation 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. 13/355,970 01/23/2012 Carl Deirmengian 10139/26101 (T01635US1) 6420 76960 7590 06/13/2017 Fay Kaplun & Marcin, LLP 150 Broadway, suite 702 New York, NY 10038 EXAMINER CERIONI, DANIEL LEE ART UNIT PAPER NUMBER 3736 MAIL DATE DELIVERY MODE 06/13/2017 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 CARL DEIRMENGIAN, GEORGE MIKHAIL, and GLEN PIERSON ____________________ Appeal 2015-005804 Application 13/355,970 Technology Center 3700 ____________________ Before: STEFAN STAICOVICI, LEE L. STEPINA, and SEAN P. O’HANLON, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision to reject claims 1–7. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2015-005804 Application 13/355,970 2 CLAIMED SUBJECT MATTER The claims are directed to a device “for tracking the progress of bone healing.” Spec. ¶ 4. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A device for treating a bone, comprising: a bone plate including a first portion and a second portion joined to one another via a connecting portion, a rigidity of the connecting portion being less than rigidities of each of the first and second portions; a first sensor mounted on the first portion, the first sensor measuring strain on the first portion; and a second sensor mounted on the second portion, the second sensor measuring strain on the second portion. Appeal Br. 7 (Claims App.). REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Huebner Seide US 6,001,099 DE 102010022434 A1 Dec. 14, 1999 Dec. 8, 2011 REJECTIONS (I) Claims 1 and 3–7 are rejected under 35 U.S.C. § 102(a) as anticipated by Seide.1 (II) Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over Seide and Huebner. 1 We derive our understanding of this reference from the English language translation contained in the image file wrapper of this application. All references to the text of this document are to portions of the translation Appeal 2015-005804 Application 13/355,970 3 OPINION Rejection (I) The Examiner finds that Seide discloses all the elements required by claim 1, and in particular, that paragraphs 10, 17, and 28, along with the sole drawing in Seide, disclose a connecting portion of a bone plate with a rigidity less than rigidities of first and second portions of the bone plate. Final Act. 2–3; Adv. Act. 2. Specifically, the Examiner finds that item 3 in Seide meets the requirements of the connecting portion recited in claim 1, and items 4 and 5 meet the requirements of the first and second portions recited in claim 1. Final Act. 3. In this regard, the Examiner states, “the sole Fig. of Seide clearly shows that element 3 has a greater length between its anchoring points (i.e., 8, 9) than the length of either 4 or 5 between their anchoring points.” Id. at 6. Appellants argue that the drawing in Seide is not disclosed as being to scale and is not useful in determining the rigidity of any particular portion of the bone plate of Seide, and, furthermore, the written description in Seide is silent as to the length and rigidity of item 3. Appeal Br. 3–4. In response, the Examiner finds that item 3 of Seide must have a lower rigidity than items 4 and 5 in order to be able to function for its intended purpose, namely, allowing a comparison of a sensor reading corresponding to a position where the bone is intact with a sensor reading from a position where the bone is damaged. Ans. 8–9. In essence, the Examiner finds that the lower rigidity of item 3 relative to items 4 and 5 of Seide is inherent. Appeal 2015-005804 Application 13/355,970 4 Appellants assert, and we agree, that Seide does not require item 3 to be less rigid than items 4 and 5 in order to function because the sensors in Seide do not rely on a difference in rigidity of portions of the bone plate of Seide to provide a measurement. Reply Br. 3–4. Specifically, we agree with Appellants’ statement, “The measurements change because, as the strength of the underlying bone changes, the stresses and strain passed on to the plate and, consequently, the sensor will vary accordingly.” Id. at 4. The Examiner points to no evidence to the contrary. See Ans. 8–9. Moreover, merely because element 3 has a greater length between its anchoring points 8, 9 than the length of elements 4, 5 between their anchoring points does not necessarily mean that element 3 has a lower rigidity than elements 4, 5 because element 3 may have a greater width or thickness than that of elements 4, 5, which will affect its overall rigidity.2 As Seide presents only a single view in its Figure and does not provide a description of the dimensions of its bone plate, the Examiner’s finding that element 3 has a lower rigidity than elements 4, 5 is mere speculation and conjecture based on an unfounded assumption that the length of element 3 relative to elements 4, 5 would necessarily result in a lower rigidity of element 3 as compared to elements 4, 5. The Examiner also finds that the limitation in claim 1 regarding the relative rigidities of the connecting part and the first and second parts “is not a structural limitation on its face,” and the Examiner finds that this limitation must be interpreted based on Appellants’ Figure 1. Ans. 10. Based on the shape of the bone plate depicted in Appellants’ 2 We note that there is no indication that the Figure in Seide is drawn to scale. Appeal 2015-005804 Application 13/355,970 5 Figure 1, the Examiner finds that items 3, 4, and 5 of Seide meet the rigidity requirements of claim 1. Id. Appellants argue that the rigidity limitation recited in claim 1 is a structural limitation, point to connecting portion 520 (see Figure 6) as an example of one such structural feature, and reiterate that Seide provides no disclosure of this limitation. Reply Br. 5. We agree with Appellants on this issue. The Examiner’s reference to Appellants’ Figure 1 and finding that Seide discloses something similar is insufficient to support the rejection of claim 1. This is because the inquiry as to whether the rigidity requirements of the bone plate recited in claim 1 are satisfied is different from an inquiry as to whether Seide discloses something similar to an unclaimed embodiment disclosed by Appellants. In particular, Appellants’ Specification does not describe Figure 1 as depicting a bone plate with connecting portion with a lower rigidity than first and second portions. See Spec. ¶¶ 5–7. Rather, it is not until the discussion of Figure 6 that Appellants’ discussion of the drawings mentions this feature. See Spec. ¶¶ 13–15. Thus, the Examiner’s finding that Seide’s drawing is similar to what is depicted in Appellants’ Figure 1 is beside the point. The Examiner next finds that Seide satisfies the rigidity requirements of claim 1 because Seide discloses that item 3 of its bone plate has a smaller width than the width of items 4 and 5. Ans. 11–14. The Examiner bases the finding that item 3 has a smaller width than items 4 and 5 on the presence of holes 6 and 7 in Seide’s bone plate. Ans. 13–14. Appellants argue, and we agree, that the presence of holes 6 and 7 in the bone plate of Seide does not change its width, and, in any event, there are other factors that affect the rigidity of a component besides its width Appeal 2015-005804 Application 13/355,970 6 (such as the thickness of the different portions of the bone plate). Reply Br. 6–7. Thus, the Examiner’s finding regarding the rigidity of item 3 relative to the rigidity of items 4 and 5 is not supported by a preponderance of the evidence. Accordingly, we reverse the Examiner’s rejection of claims 1 and 3–7 as anticipated by Seide. Rejection (II) The Examiner’s use of Huebner does not remedy the deficiency in Rejection (I), and we therefore reverse the Examiner’s rejection of claim 2 as unpatentable over Seide and Heubner. DECISION The Examiner’s decision to reject claims 1–7 is reversed. REVERSED Copy with citationCopy as parenthetical citation