Ex Parte Deirmengian et al

Patent Trial and Appeal Board

Jun 13, 2017

13355970 (P.T.A.B. Jun. 13, 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.
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
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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
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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.
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Application 13/355,970
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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
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(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