Ex Parte Draper

Patent Trial and Appeal Board

Dec 19, 2017

13467931 (P.T.A.B. Dec. 19, 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.
13/467,931 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:
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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.
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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”)
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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
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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
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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.
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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
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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
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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:
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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.
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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:
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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
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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.
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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
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