Ex Parte DraperDownload PDFPatent Trial and Appeal BoardDec 19, 201713467931 (P.T.A.B. Dec. 19, 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. 13/467,931 05/09/2012 Edward Draper P007 C2 1016 118733 7590 Moximed, Inc 26460 Corporate Ave Suite 100 Hayward, CA 94545 EXAMINER HAMMOND, ELLEN CHRISTINA ART UNIT PAPER NUMBER 3733 NOTIFICATION DATE DELIVERY MODE 12/21/2017 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): 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 EDWARD DRAPER Appeal 2017-001940 Application 13/467,9311 Technology Center 3700 Before JOHN G. NEW, RYAN H. FLAX, and DEVON ZASTROW NEWMAN, Administrative Patent Judges. FLAX, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) involving claims directed to an apparatus for controlling the load on a knee joint.2 Claims 1-33 are on appeal as rejected under 35 U.S.C. §§ 102 and 112. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellant identifies the Real Party in Interest as Moximed, Inc. Br. 3. 2 Appellant identifies related U.S. Patent Application Ser. No. 12/628,866, relating to Appeal 2016-008017. Br. 3. Appeal 2017-001940 Application 13/467,931 STATEMENT OF THE CASE The Specification states, “[t]he present invention relates to devices for restricting or controlling the movement or loading levels on joints in the human or animal body.” Spec. ^ 2. An embodiment is illustrated at Fig. 1, which is reproduced, as annotated, below: Fig. 1 shows a fixator 10 for attachment to the bones of and across a joint, having a first fixation assembly 11 and a second fixation assembly 12 connected via respective pivots 14, 15 to a link assembly 13. Spec. 42- 47. Figs. 3C and 3D illustrate two embodiments of link assemblies that can be used with such a fixator 10; they are reproduced below: 2 Appeal 2017-001940 Application 13/467,931 80 r \ 62A Fig. 3D (above right) shows a link assembly 60 including a compression spring 67, provided “to counteract the natural compressive forces experienced by the joint.” Id. 54. Claims 1,11, and 21 are independent claims; claim 1 is representative and is reproduced below:3 1. A device useful for controlling load on a knee joint, the device comprising: first and second fixation assemblies configured for rigid attachment to a side of a knee joint; a link assembly connectable to the first and second fixation assemblies, the link assembly including!)] first and second freely rotatable pivots configured to provide free rotational movement without translational movement between each of the first and second fixation 3 Appellant states, “[t]he claims stand or fall together for each of the four separate rejections.” Br. 8. 3 Appeal 2017-001940 Application 13/467,931 assemblies and the link assembly, wherein the link assembly is configured to provide a variable distance of separation between the first and second pivots, and a spring in the link assembly biasing the first and second pivots only away from one another; and wherein the first and second pivots are configured to allow rotational movement between each of the fixation assemblies, and the spring is limited to displacement along a single axis extending between the first and second pivots when the spring biases the first and second pivots apart. Br. 24 (Claims App’x). The following rejections are on appeal: Claims 1-33 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Action 2- 3. Claims 1-33 stand rejected under 35 U.S.C. § 112, second paragraph, as indefinite. Id. at 4. Claims 1-33 stand rejected under 35 U.S.C. § 102(b) as anticipated by Helland.4 Id. at 5. Claims 1-33 stand rejected under 35 U.S.C. § 102(b) as anticipated by Canadell.5 Id. at 6. DISCUSSION Unless otherwise indicated herein, we adopt the Examiner’s findings of fact, reasoning on scope and content of the claims and prior art, and conclusions set out in the Final Action and Examiner’s Answer. Only those 4 US 6,203,548 B1 (issued Mar. 20, 2001) (“Helland”). 5 US 5,207,676 (issued May 4, 1993) (“Canadell”) 4 Appeal 2017-001940 Application 13/467,931 arguments made by Appellant in the Appeal Brief and properly presented in the Reply Brief have been considered in this Decision. Arguments not so presented in the Briefs are waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015); see also Ex parte Borden, 2010 WL 191083 at *2 (BPAI 2010) (informative) (“Any bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived.”). Written Description A specification may satisfy the written description requirement when, at a minimum, ‘“the essence of the original disclosure’ conveys the necessary information — ‘regardless of how if conveys such information, and regardless of whether the disclosure’s ‘words [a]re open to different interpretation^].’” Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1354 (Fed. Cir. 2015) (quoting In re Wright, 866 F.2d 422, 424-25 (Fed.Cir.1989) (citation and internal quotation marks omitted)). Nevertheless, to satisfy the written description requirement, the specification must describe an invention understandable to the skilled artisan, and show that the inventor actually invented the claimed invention, and must clearly allow the skilled artisan to recognize such invention by the inventors. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.Cir. 2010) (en banc); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed.Cir. 1991). “[W]hile the description requirement does not demand any particular form of disclosure, or that the specification recite the claimed invention in haec verba, a description that merely renders the invention obvious does not satisfy the requirement.” Ariad, 598 F.3d at 1352 (citation omitted). “[A]n invention 5 Appeal 2017-001940 Application 13/467,931 may be enabled even though it has not been described.” University of Rochester v. G.D. Searle & Co., 358 F.3d 916, 921 (Fed. Cir. 2004). While “negative claim limitations” are governed by the same general law covering the written description requirement as positively recited claim elements, our reviewing court has also specifically addressed this category of claim limitations. In particular, the Federal Circuit has held that “[njegative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.” Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). However, “Santarus did not create a heightened written description standard for negative claim limitations and . . . properly described, alternative features are sufficient to satisfy the written description standard of § 112, paragraph 1 for negative claim limitations.” Inphi, 805 F.3d at 1357 (“distinction ‘reasonably conveys’ a reason to exclude”). The Examiner determined: Independent claims 1,11, and 21 all recite that the pivot means provide rotational movement without translational movement between each of the first and second fixation assemblies and the link. The Applicant has not pointed out where this is supported in the specification. In paragraph [0043], the specification states [0043] The first and second fixation assemblies 11, 12 are each coupled to the link assembly 13 by a pivot 14, 15 or other equivalent means facilitating angular displacement of the respective fixation assembly to the link assembly. Throughout the present specification, use of the word “pivot” is intended to encompass all such equivalent means for facilitating angular displacement. It will be understood that the first and second fixation assemblies 11, 12 are therefore not only angularly displaceable 6 Appeal 2017-001940 Application 13/467,931 relative to one another, but are also capable of some relative translational movement subject to the geometric limitations provided by the link assembly 13. (emphasis added) Thus, it appears that pivots allow some translational movement between each of the first and second fixation assemblies and the link is disclosed as being part of the invention, and pivots without translational movement are not disclosed as part of the originally filed invention. Final Action 3 (emphasis is Examiner’s). The claim language at issue with respect to this rejection is “first and second freely rotatable pivots configured to provide free rotational movement without translational movement between each of the first and second fixation assemblies and the link assembly.” See supra, claim 1 (emphasis added). Under this limitation, neither of the claimed fixation assemblies is permitted to move translationally (linearly, as contrasted with rotationally) via the freely rotatable pivots with respect to the link assembly, to which it is connected. Appellant argues that the language of the Specification cited by the Examiner (above) “attributes any translational movement between the fixation assemblies to the characteristics, e.g., ‘geometric limitations’ of the link assembly itself, not of the pivots.” thus, not describing that the pivots themselves provide translational movement. App. Br. 16. Appellant cites the Specification 43 45 and argues that it “is very clear that the pivots provide only rotational motion, or ‘angular displacement’,” and, so, “describes pivots which only provide free rotational movement without translational movement.” Id. at 17. These arguments are not persuasive. 7 Appeal 2017-001940 Application 13/467,931 We are unpersuaded by Appellant’s argument regarding the meaning of the Examiner’s quoted Specification language. The Specification is ambiguous, at best, but it certainly does not explicitly or implicitly attribute “translational movement” to only the geometric limitation of the link assembly; it does not foreclose an association of such movement with the pivots. Furthermore, Appellant’s contention that the Specification very clearly indicates that the pivots only provide angular rotation and not translational movement is simply not supported by the Specification and, therefore, is not persuasive. We compare the evidence here to the facts of Santarus, where the sufficiency of a disclosure relating to a claim element requiring that a composition not include sucralfate was at issue. See Santarus 694 F.3d at 1350. In Santarus, the court identified that the Specification was not explicit that sucralfate should be omitted from the composition of the invention (and related methods of using the same), but held that, because the specification identified that sucralfate and its use presented disadvantages and that the claimed compound could serve as an advantageous alternative to sucralfate, there was sufficient written description of the claim element requiring sucralfate’s exclusion from the claimed compound. Id. at 1350-51. The fact pattern here demands a different outcome. Here, the Specification provides only one meaningful description of translational movement and indicates that it is a part of how the disclosed device functions; how the fixation assemblies move in relation to the intermediately-positioned link assembly. Spec. ^ 43. The Specification does not indicate that translational movement is disadvantageous or should 8 Appeal 2017-001940 Application 13/467,931 be excluded, or even controlled, in the disclosed device and it does not indicate that the pivots do not provide some translational movement. Thus, the facts here compel that the rejection for lack of written description be affirmed. Indefiniteness “A claim is indefinite when it contains words or phrases whose meaning is unclear,” i.e., “ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention.” In re Packard, 751 F.3d 1307, 1310-13 (Fed. Cir. 2014); see also MPEP § 2173.02(1) (Rev. 07.2015, Nov. 2015) (advising examiners that a rejection for indefmiteness is appropriate “after applying the broadest reasonable interpretation to the claim, if the metes and bounds of the claimed invention are not clear”). We ask whether one of ordinary skill in the art would understand what is claimed when the claim is read in light of the Specification. Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1350 (Fed. Cir. 2010). The Examiner determined “[t]he terms ‘freely rotatable’ or ‘freely rotational movement’ are not found in the original filed specification, and the scope of the term is not clear.” Final Action 4. Appellant argues “the phrases use ordinary English words, in their ordinary meanings, and therefore they are presumptively clear,” and provides dictionary definitions for the relevant terms. App. Br. 18. Appellant has the better position. We interpret “freely rotatable” consistent with the plain meaning of the words, that is, that the thing is rotatable 9 Appeal 2017-001940 Application 13/467,931 without hindrance. This is consistent with Appellant’s contentions and the dictionary definitions provided by Appellant. Id. Because the claim language at issue is not ambiguous, vague, incoherent, opaque, or otherwise unclear, we reverse this rejection. Anticipation A patent claim is invalid for anticipation under 35 U.S.C. § 102 when a prior art reference describes “each and every claim limitation and enable[s] one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1344 (Fed. Cir. 2012) (quoting Am. Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1341 (Fed. Cir. 2011)). 1. Hell and Consistent with the Examiner’s determinations regarding anticipation by Helland, we provide the following annotated version of Helland’s FIG. 2, illustrating where the claim elements can be found in the reference’s disclosure: 10 Appeal 2017-001940 Application 13/467,931 FIG. 2 shows two frame bodies 1, 2, which disclose the claimed fixation assemblies, and shows a spring mechanism 4, which discloses the claimed link assembly, which is connected to the two bodies 1, 2 via pin-like parts 13, 18 that interlock with recesses 14, 19, so as to disclose the claimed pivots (which are freely rotatable, i.e., “[t]he fixator is dynamic, thereby allowing movement of the wrist during the healing process of the fracture, which is positive for the desired healing,” (4:33-35) — their rotation/pivoting is unhindered; they are not disclosed as providing translational movement to any component). FIG. 2 also shows that inside the link assembly is an extension spring 11, which exerts the claimed biasing away of the fixation assemblies, respective of one another, that bias being along a single axis as shown by the arrows. While the claim recites that the device is “useful for controlling a load on a knee joint,” this is not a limitation. And while the claim recites the fixation assemblies are “configured for rigid attachment to a side of a knee joint,” we conclude that this function would be inherent to the device disclosed by Helland, even if a knee joint is not explicitly mentioned in the reference. Although the primary purpose of the Helland device is to repair a wrist injury, the device is disclosed as being fixedly attached to a humerus bone of the arm. We discern no difference between affixing such a device to a humerus bone versus a femur or tibia bone adjacent the knee and conclude the Helland device is necessarily configured to be affixed to any of the above. Accordingly, we find the Examiner has established a prima facie case that the claims are anticipated by Helland. 11 Appeal 2017-001940 Application 13/467,931 Appellant argues that Helland does not anticipate because its disclosed spring is set at an angle with respect to the also disclosed frame bodies. App. Br. 13. This relates to the claim element, “the spring is limited to displacement along a single axis extending between the first and second pivots when the spring biases the first and second pivots apart.” This argument is not persuasive. As shown in the annotated image above (Helland FIG. 2), the spring disclosed by Helland biases the pivots on either end of the spring mechanism apart and is, thus, also is limited to displacement along the axis of the mechanism, also shown annotated above. Appellant does not persuade us of any meaningful difference between Helland and its claimed structure. We affirm this rejection. 2. Canadell Consistent with the Examiner’s determinations regarding anticipation by Canadell, we provide the following annotated version of CanadelTs FIGs. 1 and 2, illustrating where the claim elements can be found in the reference’s disclosure: 12 Appeal 2017-001940 Application 13/467,931 FIG. 1 shows clamps 21,31 having pins 25, 35 for affixation to bone, which discloses the claimed fixation assemblies. FIG. 1 also shows an external fixation bar 1, connected to the clamps 21,31 via pivotable deflection members 22, 32, which discloses the claimed freely rotatable pivots (they are not disclosed as providing translational movement). FIG. 1 also shows that the clamps 21,31 are biased away from one another (see reference E and the associated double-ended arrow). FIG. 2 discloses how this biasing is 13 Appeal 2017-001940 Application 13/467,931 accomplished via a coil spring 96, which discloses the claimed spring. See, e.g., Canadell 4:4-6. As shown in the annotation above, the spring is displaceable only along the single axis length of the fixation bar that holds the spring. This device is disclosed as being used to adjust the elongation or compression of bone. Id., inter alia, 8:17-21. We find the Examiner has established a prima facie case that the claims are anticipated by Canadell. Appellant argues Canadell does not anticipate because “the deflection members 22, 32 of Canadell’s device are fixed in position, and are not free to rotate.” App. Br. 14. This argument is not persuasive. The claim recites that the pivots are freely rotatable, and the pivots of Canadell are freely rotatable prior to permanently (or semi-permanently) affixing the device to a bone so that it can be adjusted to the individual; the pivots are also freely rotatable at the discretion of a surgeon able to adjust the device. Id., inter alia, 3:48-60, 7:62-8:21. The claims do not limit when or where the claimed pivots are freely rotatable, thus, Canadell satisfies this claim element. We affirm this rejection. SUMMARY The rejection of the claims under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement is affirmed. The rejection of the claims under 35 U.S.C. § 112, second paragraph, as indefinite is reversed. The rejection of the claims under 35 U.S.C. § 102(b) as anticipated by Helland is affirmed. 14 Appeal 2017-001940 Application 13/467,931 The rejection of the claims under 35 U.S.C. § 102(b) as anticipated by Canadell is affirmed. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 15 Copy with citationCopy as parenthetical citation