Ex Parte Frigg

Patent Trial and Appeal Board

May 10, 2016

12984302 (P.T.A.B. May. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/984,302 01/04/2011 Robert PRIGG
76960 7590 05/10/2016
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
10139/13802 2046
EXAMINER
RAMAN A, ANURADHA
ART UNIT PAPER NUMBER
3775
MAILDATE DELIVERY MODE
05/10/2016 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 ROBERT PRIGG
Appeal2014-004929
Application 12/984,302
Technology Center 3700
Before JAMES P. CAL VE, GEORGE R. HOSKINS, and
JAMES J. MAYBERRY, Administrative Patent Judges.
MAYBERRY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert Prigg (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner's rejections of claims 2, 5-8, and 17-19. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to an osteosynthetic implant with an
embedded gimbal-type swivel joint. Spec. i-f 2. Claims 2 and 17 are
independent. Claim 2, reproduced below, is illustrative of the claimed
subject matter:
Appeal2014-004929
Application 12/984,302
2. An implant, comprising:
a first bone fixation element having a first hole extending
therethrough from a top surface to a bottom surface;
a connecting member connected to and extending from
the first bone fixation element;
a first coupler received in the first hole and having two
first connecting elements for engaging the connecting member,
the first connecting elements being pivot-mounted to the first
bone fixation element and permitting the first bone fixation
element to rotate with respect to the connecting member;
a second bone fixation element having a second hole
extending therethrough from a top surface to a bottom surface;
and
a second coupler received in the second hole and having
two second connecting element[ s] for engaging the connecting
member, the second connecting elements being pivot-mounted
to the second bone fixation element and permitting the second
bone fixation element to rotate with respect to the connecting
member.
Appeal Br. 10, Claims App.
REJECTIONS
I. Claims 18 and 19 stand rejected under 35 U.S.C. § 112 second
paragraph as being indefinite.
II. Claims 2, 5-8, and 17-19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Shima (US 5,534,029, issued July 9,
1996) and Barnett (US 3,543,301, issued Nov. 24, 1970).
ANALYSIS
Rejection I
The Examiner determines that claims 18 and 19, both of which
depend from claim 17, are indefinite because it is unclear as to which
recitation of "a connecting member" in claim 17 serves as antecedent basis
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Application 12/984,302
for the recitation of "the connecting member" in claims 18 and 19. Final
Act. 4. Appellant submitted an after final amendment to address this
rejection, but the Examiner did not enter that amendment. See Appeal Br. 4.
Appellant appeals the Examiner's failure to enter the amendment, but
otherwise does not traverse the rejection. Id.
We do not have jurisdiction to enter the amendment, as this issue does
not relate to matters involving the rejection of claims on appeal. The
Examiner's refusal to enter the amendment is not an appealable matter, but
rather is a petitionable matter. See In re Hengehold, 440 F.2d 1395, 1403-
04 (CCP A 1971) ("[T]he kind of adverse decisions of examiners which are
reviewable by the board must be those which relate, at least indirectly, to
matters involving the rejection of claims."); see also In re Berger, 279 F.3d
975, 984 (Fed. Cir. 2002) ("The refusal of an examiner to enter an
amendment after final rejection of claims is a matter of discretion. If there is
an abuse of discretion, the matter may be remedied by a Rule 181 petition to
the Comm1ss10ner of Patents.") (citation omitted); 37 C.F.R. § l.18l(a)
("Petition may be taken to the Director: (1) From any action or requirement
of any examiner in the ex parte prosecution of an application ... which is
not subject to appeal to the Board ... or to the court"). Accordingly, we
sustain the Examiner's rejection of claims 18 and 19 under 35 U.S.C. § 112
second paragraph as being indefinite.
Rejection II
Independent claim 2 recites, in relevant part, "a connecting member
connected to and extending from the first bone fixation element." Appeal
Br. 10, Claims App. The Examiner finds that Shima discloses much of the
subject matter of claim 2, including the recited connecting member. Final
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Application 12/984,302
Act. 5. The Examiner further finds that Shima' s connecting member
(intermediate vertebral body 20) is connected to and extends from joint piece
5, which the Examiner finds corresponds to the recited first bone fixation
element. Id. Specifically, the Examiner finds that, when Shima' s vertebral
body spacer is inserted between vertebras, the compression forces cause
convex portion 25 to connect with concave sliding contact surface 10 in a
ball-and-socket joint configuration, as the two pieces are forced into contact
with one another. See Answer 2-3.
Still further, the Examiner's proposed rejection substitutes Barnett's
gimbaljoint for Shima's ball-and-socket joints. Final Act. 7. The Examiner
finds that this substitution would result in a connecting member connected to
and extending from the first bone fixation element as claimed. Id.; Ans. 3.
The Examiner finds that, in accordance with this substitution, intermediate
vertebral body 20 (the connecting member) would be connected to ring 306
of rotor assembly 300 with ring 302 corresponding to the first bone fixation
element. See Ans. 4. This connection allows the first bone fixation element
to rotate with respect to the connecting member as required by claim 2. Id.
The Examiner reasons that substituting Barnett's gimbal joint for Shima' s
ball and socket joints is merely the substitution of one known swivel-type
joint for another known swivel-type joint and that the substitution would
have predictable success, given that both types of joints allow for similar
ranges of pivoting. Final Act. 7.
Appellant argues that the Examiner's construction of the term
"connected to" to encompass two separate pieces brought together through
compression is unreasonably broad. Appeal Br. 5-7. Appellant contends
that the term "connected to" requires structures that are connected without
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Application 12/984,302
an external force forcing the pieces together, that is, that the pieces are
fastened together. See id. at 6; Reply Br. 3--4.
In response, the Examiner reiterates that the term "connect" means to
join or fasten together and that the components of a ball-and-socket joint are
joined. Answer 3. Also, the Examiner states that the proposed rejection
replaces Shima's ball-and-socket joint with Barnett's gimbal joint, and that
this substitution would result in a connection between the first bone fixation
element and the connecting element as required by claim 2. Id. at 3--4. In
reply, Appellant argues that the Examiner's substitution does not cure the
deficiency, as Barnett's gyroscope is not connected to any external elements.
Reply Br. 5.
Appellant's arguments do not inform us of Examiner error. The
Examiner finds that, in accordance with the proposed rejection, each of
Shima's ball-and-socket joints is replaced with Barnett's rotor assembly 300.
Final Act. 7. As the Examiner explains, the connecting member would be
connected to ring 306 of rotor assembly 300, and ring 302 would correspond
with a portion of the first bone fixation element Uoint piece 5}-that is, ring
304 would be connected to the bone fixation element in the same manner as
ring 304 is connected to ring 302. Answer 4. As such, the Examiner finds
that the combination teaches the claimed subject matter even under
Appellant's narrower construction. Id.
Further, contrary to Appellant's assertion that Barnett's structure 300
is free standing and, as such, does not teach connecting to an external
structure, ring 306 is termed a "mounting portion" with a central aperture.
See Barnett, 3: 66-73. This terminology at least suggests that an external
structure is mounted (that is, connected or fastened) to ring 306. See also id.
at 2:66-3:2 (disclosing that, for a different embodiment, a central aperture
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Application 12/984,302
receives a driving shaft). Accordingly, we agree with the Examiner's
finding that the proposed substitution would result in a connecting member
connected to and extending from the first bone fixation element, with the
connecting member connected to ring 306.
Appellant states that independent claim 17 is "substantially similar to
claim 2" and is allowable for the same reasons are provided with respect to
claim 2. Appeal Br. 8-9. Appellant does not provide any arguments for the
separate patentability of any dependent claim. See id. at 8, 9.
For the reasons above, we sustain the Examiner's rejection of
independent claims 2 and 17 under 35 U.S.C. § 103(a) as being unpatentable
over Shima and Barnett. We also sustain the rejections of claims 5-8, which
depend, directly or indirectly, from claim 2, and claims 18 and 19, which
directly depend from claim 17.
DECISION
We affirm the Examiner's rejection of claims 18 and 19 under 35
U.S.C. § 112 second paragraph as being indefinite.
We affirm the Examiner's rejection of claims 2, 5-8, and 17-19 under
35 U.S.C. § 103(a) as being unpatentable over Shima and Barnett.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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