Ex Parte Fernandez Dell

Patent Trial and Appeal Board

Sep 17, 2012

11154653 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/154,653 06/17/2005 Alberto Angel Fernandez Dell'Oca 10139/04501 3466
76960 7590 09/17/2012
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
EXAMINER
CARTER, TARA ROSE E
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
09/17/2012 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 ALBERTO ANGEL FERNANDEZ DELL’OCA
__________

Appeal 2011-011348
Application 11/154,653
Technology Center 3700
__________

Before DEMETERA J. MILLS, ERIC GRIMES, and ULRIKE W.
JENKS, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to devices
for inserting intramedullary implants. The Examiner has rejected the claims
as anticipated or obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
STATEMENT OF THE CASE
The Specification discloses “a specially shaped hole in an aiming
device so that a cutting instrument can be inserted … in order to perform an
App
App

incis
are s
Figu
show
with
hole
in or
after
lock
fract
read
impl
comp
eal 2011-0
lication 11
ion” (Spec
hown belo
re 4A show
s the hole
a slot 54”
42 “allow
der to perf
which fix
ing nail 10
ure site (id
Claims 2
s as follow
29. A d
ant into a m
ound aim
11348
/154,653
. 4:3-4). F
w:
s a persp
of the dev
(id. at 9:2
s a cutting
orm an inc
ation screw
to preven
. at 9:4-8)
9-40 are o
s:
evice for a
edullary
ing openin

igures 4A
ective view
ice, which
6). The Sp
instrumen
ision I,” a
s can be i
t movemen
.
n appeal.
ssisting in
canal of a
g which, w
2
(left) and

of the aim
“compris
ecificatio
t C to be i
s shown in
nserted, v
t of the bo
Claim 29,
the inserti
long bone
hen the d
4B (right

ing devic
es a round
n disclose
nserted thr
Figure 4A
ia holes 42
ne portion
the only i
on of an in
, the devic
evice is co
) of the Sp
e and Fig
hole 52 c
s that the s
ough the h
(id. at 9
, into hole
s on eithe
ndependen
tramedull
e compris
upled to a
ecification

ure 4B
ombined
hape of
ole 42 …
:26-28),
s 11 in
r side of a
t claim,
ary
ing a
n implant

,
Appeal 2011-011348
Application 11/154,653

3
is aligned with a target feature of the implant to direct a tool inserted
therethrough to the target feature of the implant, the opening including a first
portion sized to receive therein a first tool for insertion through a bone to the
target feature, the aiming opening including second and third portions
immediately adjacent to and open to the first portion on opposite sides
thereof to permit the insertion therethrough of a second tool having a width
greater than a diameter of the first opening.

Issue
The Examiner has rejected claims 29, 30, and 40 under 35 U.S.C.
§ 102(e) as anticipated by Lutz.1 The Examiner has also rejected claims 31-
39 under 35 U.S.C. § 103(a) in view of Lutz and Castaneda.2 Since
Appellant has waived any argument based on Castaneda (see Appeal Br. 6,
Reply Br. 5), we will consider these rejections together.
The Examiner finds that “Lutz discloses a device comprising a
compound aiming opening (150),” and meeting all of the limitations of
claim 29 (Answer 3-4).
Appellant contends that Lutz does not disclose a device with a
compound aiming opening comprising “second and third portions
immediately adjacent to and open to the first portion” that permit the
insertion of a tool having a width greater than a diameter of the first portion,
as required by claim 29 (Appeal Br. 4-5). Appellant also contends that Lutz
does not disclose the device of claim 29 because Lutz’s device “is not useful
in conjunction with any procedure involving … the insertion of an intra-
medullary implant into the medullary canal of a long bone” (Appeal Br. 4).

1 Lutz et al., US 7,648,508 B2, Jan. 19, 2010
2 Castaneda, US 2005/0085824 A1, Apr. 21, 2005
App
App

Exam
inser
that
“sec
porti
than
Find

the f
Figu
fract
leg o
eal 2011-0
lication 11
The issu
iner’s con
tion of an
comprises
ond and th
on” that p
a diamete
ings of Fa
1. Lutz
ixation of
2. Figur
re 21 show
ured distal
f a patient
11348
/154,653
e presente
clusion th
intramedu
a compou
ird portion
ermit the i
r of the fir
ct
discloses “
fractures o
e 21 of Lu
s a side v
femur, an
through th

d is: Does
at Lutz di
llary impl
nd aiming
s immedia
nsertion of
st opening
a bone pla
f long bon
tz is show
iew of the
d a scalpe
e trial com
4
the eviden
scloses a d
ant into a m
opening c
tely adjac
a second
or portion
ting syste
es” (Lutz,
n below:
bone plati
l being use
ponent [1
ce of reco
evice “for
edullary
omprising
ent to and
tool havin
?
m and inst
col. 1, ll.
ng system
d to make
00]” (id. a
rd support
assisting
canal of a
a first por
open to th
g a width
rumentatio
6-8).

“positione
an incisio
t col. 8, ll
the
in the
long bone
tion and
e first
greater
n used in
d over a
n in the
. 33-36).

”
App
App

Figu
corre
[110
resem
as w
radio
hole
bone
over
that
(id. a
eal 2011-0
lication 11
3. Figur
re 2 shows
4. Lutz
sponds to
] and a ste
bling a fe
5. Lutz
ell as mark
paque ma
markers 1
plate.” (I
6. Lutz
the fractu
bone plate
t col. 12,
7. Lutz
[w]ith th
select in
screws b
the stem
small in
11348
/154,653
e 2 of Lut
“a top vie
discloses t
the longit
m [120]. T
mur.” (Id
discloses t
ers 171-1
rkings on
71-174 ind
d. at col. 1
discloses t
red bone, a
and its scr
ll. 4-8).
discloses t
e trial 100
which h
y looking
120 of th
cision 97

z is shown
w of the t
hat the “tr
udinal shap
he trail co
. at col. 2,
hat the “tr
74 and 180
the surface
icate the l
1, l. 63 – c
hat “[i]n f
nd enable
ew holes a
hat
attached
oles 371-
at corres
e trial 100
0 in the
5
below:
rial compo
ial compon
e of the fr
mponent
ll. 45-48.)
ial stem 12
-186 [sic,
of the ste
ocation of
ol. 12, l. 1
luoroscopy
a surgeon
s juxtapo
to the han
374 of th
ponding h
, and with
tissue b
nent” (id.
ent has a
actured bo
may, for e

0 has mul
185].… [T
m 120 of t
screw hol
.)
, all the m
to … visu
sed over th
dle 700, th
e plate 30
ole marke
a scalpel
y cutting

at col. 7, l
shape that
ne, and h
xample, h
tiple slots
]he mark
he trial 10
es in a cor
arkings ar
alize the p
e fracture
e surgeon
0 … to p
rs 171-17
960, mak
through
. 48).
generally
as a head
ave a shap
150-152,
ers … are
0. Screw
respondin
e visible
osition of
d bone”
may
lace
4 on
ing a
the

e
g

Appeal 2011-011348
Application 11/154,653

6
appropriate slot 150, 151, or 152 in the plate in the area of the
desired hole marker.
(Id. at col. 21, ll. 39-45.)
8. The Specification discloses that “in the preferred embodiment,
aiming device transverse hole 42 comprises a round hole 52 combined with
a slot 54” (Spec. 9:25-26).
9. The Specification discloses “an alternate embodiment … in which
adjacent additional round holes 62, 64 … are located so closely to the central
round bore 52” that each of the bores is “open to the adjoining region” (id. at
9:30-33).
Principles of Law
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000).
“[W]hile it is true that claims are to be interpreted in light of the
specification …, it does not follow that limitations from the specification
may be read into the claims.” Sjolund v. Musland, 847 F.2d 1573, 1582
(Fed. Cir. 1988).
“Where … a patentee defines a structurally complete invention in the
claim body and uses the preamble only to state a purpose or intended use for
the invention, the preamble is not a claim limitation.” Rowe v. Dror, 112
F.3d 473, 478 (Fed. Cir. 1997).
If a prior art structure is capable of performing the intended use as
recited in the preamble, then it meets the claim. See, e.g., In re Schreiber,
128 F.3d 1473, 1477 (Fed. Cir. 1997).
App
App

Anal
intra
first
imm
there
diam
open
is ali
featu
scalp
The
Exam
Ann
Exam
in th
Thus
open
a dri
eal 2011-0
lication 11
ysis
Claim 29
medullary
portion siz
ediately ad
of to perm
eter of the
Lutz dis
ing) (FFs
gned with
re. That i
el to make
slot of Lut
iner’s ann
otated Figu
iner’s ann
e center, a
, the secon
to the firs
ll bit) for i
11348
/154,653
is directe
implant h
ed to rece
jacent to a
it the inse
first open
closes a de
3, 5) whic
a target fe
s, Lutz dis
incisions
z’s device
otated ve
re 1 show
otations i
nd second
d and thir
t portion.
nsertion th

d to a dev
aving a co
ive a first
nd open t
rtion of a
ing” (claim
vice comp
h, when th
ature of th
closes that
that align
comprises
rsion of Lu
s a top vie
ndicating t
and third p
d slot port
The first p
rough a bo
7
ice for ass
mpound ai
tool and “s
o the first
second too
29).
rising a sl
e device is
e implant
a slot in t
with the s
three por
tz’s Figur
w of the tr
hree porti
ortions on
ions are im
ortion is s
ne to the
isting in th
ming open
econd and
portion on
l having a
ot (i.e., co
coupled t
to direct a
he trial co
crew holes
tions, as in
e 1, shown
ial compo
ons of slot
either sid
mediately
ized to rec
target feat
e insertion
ing that in
third port
opposite s
width gre
mpound ai
o an impla
tool to the
mponent d
in the bo
dicated by
below:

nent, with
150: a fir
e of it (An
adjacent
eive a firs
ure, and th
of an
cludes a
ions
ides
ater than a
ming
nt (FF 2),
target
irects a
ne plate.
the
the
st portion
swer 8).
to and
t tool (e.g
e

.,
Appeal 2011-011348
Application 11/154,653

8
combined first, second, and third portions permit the insertion of a second
tool (e.g., a scalpel) having a width greater than a diameter of the first
opening or portion. Thus, Lutz anticipates claim 1.
Appellant argues that Lutz’s slot is not a compound aiming opening
comprising first, second, and third portions (Appeal Br. 4-6, Reply Br. 2-4).
Appellant argues that “the slotted opening 150 is a simple slot with
substantially smooth sides and includes no second or third portions adjacent
and open thereto” (Appeal Br. 5). Appellant argues “a compound opening,
as would be understood by those of skill in the art, is an opening formed of a
combination of differently shaped and or sized openings open to one
another. For example, the present application describes the compound hole
as ‘a round hole combined with a slot’ or ‘a round hole with two additional
round holes one by each side.’” (Reply Br. 3.) Appellant argues that “Lutz
does not show or suggest a compound opening (i.e., an opening formed of
different parts) which includes a first portion having a diameter” (id.).
These arguments are not persuasive. During examination, claims are
given the broadest reasonable interpretation that is consistent with the
Specification. Here, the Specification does not define the term “compound
aiming opening,” nor does the Specification provide a structural definition of
a “portion” of a compound aiming opening. Although Appellant argues that
those skilled in the art would understand a compound opening to require
“differently shaped or sized openings open to each other” (Reply Br. 3), he
points to no evidence in the Specification or elsewhere to support that
definition. In any event, the Examiner’s annotated figure shows the central
Appeal 2011-011348
Application 11/154,653

9
first portion to be shorter, and therefore differently sized, than the second
and third portions.
The Specification provides exemplary embodiments of a round hole
combined with either a slot or two additional holes, but the claims are not
limited to those embodiments. However, limitations from the Specification
are not read into the claims. Sjolund v. Musland, 847 F.2d at 1582. When
the term “compound aimed opening” is given its the broadest reasonable
interpretation consistent with the Specification, we conclude that it
encompasses any slot that has a structure allowing the function recited in
claim 29, including the slot of Lutz. The fact that claim 29 implies that the
first opening (or portion) has a “diameter” does not dictate a different result
because the ordinary meaning of “diameter” is not restricted to a property of
a circle.3
Appellant also argues that Lutz does not disclose the device of claim
29 because Lutz’s device “is not useful in conjunction with any procedure
involving … the insertion of an intramedullary implant into the medullary
canal of a long bone” (Appeal Br. 4).
This argument is not persuasive because it is directed to the intended
use of the claimed device. Claim 1 is directed to a product, defined by its

3 For example, The Free Dictionary, defines diameter as follows:
“1. … a. A straight line segment passing through the center of a figure,
especially of a circle or sphere, and terminating at the periphery.
b. The length of such a segment.
2. Thickness or width.
3. A unit for measuring the magnifying power of a microscope lens or
telescope.…” See www.thefreedictionary.com/diameter, accessed August
30, 2012.
Appeal 2011-011348
Application 11/154,653

10
structure, and Lutz’s disclosure of a trial stem with slots 150-152 reasonably
appears to meet the structural requirement of claim 29. Further, both
intramedullary implants and Lutz’s device are used in “the fixation of
fractures of long bones” (FF 1). Lutz states that its trial component has a
shape that corresponds to that of the fractured bone (e.g., a femur) (FF 4);
Lutz’s device therefore reasonably appears useful for “assisting in the
insertion of an intramedullary implant” (claim 29, emphasis added), for
example in positioning a scalpel or in attaching a bone plate before the
intramedullary implant is inserted.
We affirm the rejection of independent claim 29 as anticipated by
Lutz. Claims 30 and 40 have not been argued separately and therefore fall
with claim 29. 37 C.F.R. § 41.37(c)(1)(vii). We also affirm the rejection of
claims 31-39 as obvious in view of Lutz and Castaneda, since Appellant has
waived any argument based on Castaneda (Appeal Br. 6, Reply Br. 5).
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that Lutz
discloses a device “for assisting in the insertion of an intramedullary implant
into a medullary canal of a long bone” that comprises a compound aiming
opening comprising a first portion and “second and third portions
immediately adjacent to and open to the first portion” that permit the
insertion of a tool having a width greater than a diameter of the first opening
or portion.
Appeal 2011-011348
Application 11/154,653

11
SUMMARY
We affirm the rejection of claims 29, 30 and 40 under 35 U.S.C.
§ 102(e). We also affirm the rejection of claims 31-39 under 35 U.S.C.
§ 103(a).
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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