Ex Parte Frigg et al

Patent Trial and Appeal BoardFeb 25, 2016

12989571 (P.T.A.B. Feb. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/989,571 10/25/2010 Robert Prigg 76960 7590 02/25/2016 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. 10139/14303 9987 EXAMINER COLEY, ZADE JAMES ART UNIT PAPER NUMBER 3775 MAILDATE DELIVERY MODE 02/25/2016 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 and URS HULLIGER Appeal2014-000581 Application 12/989,571 Technology Center 3700 Before CHARLES N. GREENHUT, LISAM. GUIJT, and JASON W. MELVIN, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants appeal under 35 U.S.C. Â§ 134 from a rejection of claims 1, 3-8, and 12-15. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. The claims are directed to a variable angle fixation element system. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A device for stabilizing portions of bone, comprising: a plate configured to be coupled to a target portion of bone including a first hole extending therethrough from a proximal surface to a distal, bone-facing, surface thereof; Appeal2014-000581 Application 12/989,571 a first rigid member received within the first hole, the rigid member sized relative to the first hole to be rotatable therewithin about an axis substantially perpendicular to a proximal-distal axis of the first hole, the first rigid member including a first bore extending therethrough from a proximal opening to a distal opening, the first bore being sized and shaped to receive a first bone fixation element to be inserted through the plate into the target portion of bone; and a first deformable member coupling a distal end of the first rigid member to a distal end of the plate. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Duncan Prigg us 5,690,631 US 2004/0220570 Al REJECTIONS Nov. 25, 1997 Nov. 4, 2004 Claims 12 and 13 are rejected under 35 U.S.C. Â§ 112, 2nd paragraph. Final Act. 2. Claims 1, 6-8, 12, and 13 are rejected under 35 U.S.C Â§ 102(b) as being anticipated by Prigg. Final Act. 3. Claims 1, 3---6, and 12-15 are rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Duncan. Final Act. 5. Claims 14 and 15 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Prigg and Duncan. Final Act. 6. OPINION Regarding claims 12 and 13, the Examiner rejected the claims for insufficient antecedent basis and lack of clarity in claim language. Final 2 Appeal2014-000581 Application 12/989,571 Act. 2. Appellants have not argued the rejections. App. Br. 3. The rejections of claims 12 and 13 under 35 U.S.C. Â§ 112, 2nd paragraph are, therefore, summarily affirmed. See, e.g., In re Berger, 279 F.3d 975 (Fed. Cir. 2002) (in which the Board affirmed an uncontested rejection of claims under 35 U.S.C. Â§ 112, second paragraph, and on appeal the Federal Circuit affirmed the Board's decision and found that the appellant had waived his right to contest the indefiniteness rejection by not presenting arguments as to error in the rejection on appeal to the Board). See also Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) ("the applicant can waive appeal of a ground of rejection"). Regarding the rejection of claim 1 as anticipated by Prigg, the Examiner determined that Prigg teaches bone plate 100 having first rigid member 4. Final Act. 3. The Examiner further determined that Prigg teaches connecting legs 5 as deformable members. Ans. 3, citing Prigg, paras. 12, 29. Appellants argue connecting leg 5 is not a deformable member and must maintain a rigid structure to permit swivel element 4 to pivot about an axis created by the connecting legs. App. Br. 4. Prigg discloses connecting elements 5 are "dimensioned so that elastic deformation thereof permits an angularly fixed rotation of the swivel element." Prigg, para. 29. Deformation of the legs does not impede the function, as suggested by Appellants; rather, Prigg discloses it is the elastic deformation that permits the rotation of swivel element 4. The Examiner also determined connecting leg 5 couples a distal end of swivel element 4 to a distal end of plate 100. Final Act. 3--4. The Examiner reasoned that a line may be drawn horizontally through the middle of plate 3 in Figure IA to separate a "proximal end" extending from this line to top surface 13 and a "distal end" extending from this line to bottom 3 Appeal2014-000581 Application 12/989,571 surface 14. Ans. 3--4; Final Act. 4. Appellants argue the connecting legs are disposed in a substantially middle position between the proximal and distal surfaces of the bone plate. App. Br. 6. We agree that the Examiner's first interpretation of the term "distal end" is not unreasonably broad. 1 A distal end is broader than a distal surface and may include the portion of a component located in the direction of the distal surface, as suggested by the Examiner. The portions of connecting leg 5, swivel 4, and bone plate 3 located below the Examiner's proposed line are located toward the distal surface and thus are the distal ends of the respective components. Appellants argue the distal end is a terminal point on the distal surface. App. Br. 6. Appellants appear to be arguing the face of the distal surface must perform the coupling; however, the term "distal end" is not so narrow as to limit the claim in this manner. If Appellants wished to limit the claim in this way, Appellants could have referred to the surface as done in other portions of the claim. Absent evidence or claim language indicating the contrary, we presume different terms, "surface" and "end," do not carry identical meanings. The rejection of claim 1 over Prigg is therefore affirmed. The rejection of claims 6-8, 12, and 13 over Prigg has only been argued based on their dependence from claim 1. App. Br. 8. We therefore affirm the rejections of claims 6-8, 12, and 13 as well. 1 The Examiner's second, alternative interpretation, is unreasonably broad because, even in light of the fact that this limitation relates to an intended use, there is no indication as to why the distal surface in the second of the Examiner's annotated figures would reasonably be regarded as "bone- facing." We need not, and do not, rely on this alternate claim construction in affirming the Examiner's anticipation rejection based on Prigg. 4 Appeal2014-000581 Application 12/989,571 Regarding the rejection of claim 1 as anticipated by Duncan, the Examiner determined that Duncan teaches bone plate 40 having a first hole, void 78 (see Ans. 8, annotating Duncan Figure 5)2, a first rigid member (straight plate 66), and a first deformable member (linking member 44). Final Act. 5. Appellants argue void 78 is merely an empty space between the straight plates and not a hole extending from a proximal surface to a distal surface of the plate. App. Br. 9. Void 78 is depicted as being a hollow area within plate 40 which occupies a space from the top surface to the bottom surface. Duncan, Fig. 5. Appellants do not direct our attention to any claim language or definition of the claim term "hole" requiring, expressly or implicitly, anything more than the structure of the void as depicted in Duncan. We therefore agree that the Examiner reasonably construed the claim term "hole" to include Duncan's void. Appellants argue straight plate 66 is not received within the void 78 and is not sized relative to the first hole to rotate therein. App. Br. 10-11. Straight plate 66 is located within the outer walls of void 78 and is thus received in void 78. Regarding rotation, the Examiner provides an example of twisting the straight plate, indicating that there will be some flexion due to the linking portions having less material and also due to the flexible and malleable material from which it is constructed. Final Act. 9, citing Duncan, Fig. 5 and col. 4, 11. 39--47. We agree with the Examiner's analysis of 2 The Examiner regards the square region as the hole or void, citing reference numeral 78. It is not clear if Duncan uses reference numeral 78 to refer to the square or triangular regions. If the latter, the void identified by the Examiner essentially consists of two of these triangular regions and the space occupied by internal angled straight plate 66. In either case, we maintain herein the Examiner's convention, referring to void 78 in the singular. We further note that, in the Examiner's annotation, plate 66 is not shown within the annotated void, presumably for clarity. 5 Appeal2014-000581 Application 12/989,571 Duncan. Duncan teaches the plate may be shaped to conform to the curvature of the skull. Duncan, col. 4, 11. 45--4 7. Rotation of plate 66 about the claimed axis is evidenced by the capability of the entire plate 40 to be curved to conform to the skull. Further, we are not apprised by Appellants as to anything relating to the size of the plate with respect to the void that prevents this. Accordingly, we agree with the Examiner that plate 66 is reasonably regarded as "sized relative to the first hole to be rotatable therewithin," as recited in claim 1. Appellants argue linking member 44 provides a decoupling or cutting feature, not a coupling feature. App. Br. 11-12. However, the ability to cut linking members 44 does not preclude them from performing a coupling function. Duncan depicts linking members 44 as connecting straight plate 66 to periphery plates 56 and 58. Duncan, Fig. 5. Appellants additionally argue that the Examiner improperly relies on the Figures, which are not to scale and have no particular spatial orientation, for inferring coupling of the distal ends. App. Br. 12. The Examiner notes that Figure 6 depicts the bottom surfaces are flush from the hole to the linking member. Ans. 7. Duncan supports this interpretation of Figure 6, indicating that the plate 40 has a uniform thickness 54. Duncan, col. 4, 11. 61---62. Thus, the bottom surface depicted in Figure 6 will be the bottom surface for the straight plate 66 and linking member 44 and as a result, the coupling between the components is performed along this surface. For the reasons above, the rejection of claim 1 over Duncan is affirmed. All remaining arguments are premised on dependency. 6 Appeal2014-000581 Application 12/989,571 DECISION The Examiner's rejections of claims 1, 3-8, and 12-15 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 7