Ex Parte Goble et al

Patent Trial and Appeal Board

May 6, 2013

11402206 (P.T.A.B. May. 6, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte E. MARLOWE GOBLE, DANIEL F. JUSTIN,
ALAN CHERVITZ, and T. WADE FALLIN
____________

Appeal 2011-004032
Application 11/402,206
Technology Center 3700
____________

Before GAY ANN SPAHN, MICHELLE R. OSINSKI, and
ADAM V. FLOYD, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
E. Marlowe Goble et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 1, 10, and 12-15. Appellants
cancelled claims 2-9 and 11. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

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Application 11/402,206

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The Claimed Subject Matter
The claimed subject matter relates to “medical devices . . . in general,
and more particularly to medical devices . . . for reconstructing a ligament.”
Spec. 1, ll. 10-12. Claims 1 and 13 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the appealed subject matter.
1. A crosspin for supporting a graft ligament in a first bone
tunnel formed in a bone, by positioning the crosspin in a second
bone tunnel extending transverse to, and intersecting, the first
bone tunnel, said crosspin comprising:
a shaft having a distal portion, an intermediate portion,
and a threadless proximal portion;
said distal portion comprising an opening formed therein
and configured to attach a flexible member to said shaft;
said intermediate portion comprising screw threads; and
said proximal portion including at least one feature
configured to mate with a driver adapted to turn said shaft;
wherein said crosspin is configured to support a graft
knee ligament in the first bone tunnel by being drawn through
the second transverse bone tunnel by a flexible member
attached to said distal portion, and said screw threads of said
crosspin being turned into the bone by a driver engaged to the
proximal portion.

Independent claim 13 is directed to a crosspin that calls for
approximately the same subject matter as claim 1, and additionally recites
that “said intermediate portion is removably coupled to the proximal head
portion and the distal portion.”

The Rejections
The following Examiner’s rejections, under 35 U.S.C. § 102(b), are
before us for review:
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I. claims 1 and 12 as anticipated by Ricci (US 5,759,035, issued
Jun. 2, 1998); and
II. claims 1, 10, and 12-15 as anticipated by Goble (US 4,870,957,
issued Oct. 3,1989).

OPINION
Rejection I – Anticipation based on Ricci
Appellants argue independent claim 1 and dependent claim 12 as a
group and we select independent claim 1 as the representative claim. See
App. Br. 4-6; see also 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claim 12 falls
with claim 1.
The Examiner finds that “Ricci discloses a pin implant in Figure 1
having a distal portion with opening 8 formed therein, an intermediate
portion having screw threads 6 and a proximal threadless portion 5 having
feature 4 configured to mate with a driver.” Ans. 3-4. The Examiner also
finds that “[t]he Ricci pin implant being of an elongated shape is capable of
supporting a graft knee ligament in a bone tunnel by being drawn through a
second transverse tunnel by a flexible member.” Ans. 4.
Appellants argue that “[t]he dental implant of Ricci is not capable of
performing the claimed functions of claim 1,” because “Ricci is directed to a
dental implant (1) for use in an upper or lower jaw,” and “a dental implant
like that of Ricci is not sized or configured to support a graft knee ligament
in a first bone tunnel by being drawn through a second transverse bone
tunnel by a flexible member attached to a distal portion of the dental
implant.” App. Br. 5-6. More particularly, Appellants argue that Ricci’s
dental implant “could not extend across a first bone tunnel while being
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disposed in a second bone tunnel, as required by claim 1,” because “[t]he
Ricci implant is too small.” App. Br. 6. Appellants also argue that “to the
extent tunnels could be made small enough to accommodate the small size
of the Ricci implant, those tunnels could not include a graft knee ligament
therein, which the Ricci implant necessarily must support in order to
anticipate the crosspin of claim 1,” because “a graft knee ligament [would]
be unable to fit in such small tunnels” as being “far too large to be supported
by the small structure of a dental implant like that of Ricci.” Id.
The Examiner responds that “[t]he size of the bone tunnels are not
specified in the claims, the particular bones in which the tunnels are to be
formed are not specified in the claims, the tunnels are not located in any
particular positions on the bone, nor is the size of the ‘graft knee ligament’
ever specified.” Ans. 5-6. The Examiner also responds that “[t]he broadly
claimed ‘graft knee ligament’ could reasonably be nothing more than a
single thread,” and “the claims don’t even specify a particular species in
which the implant is intended to be used – e.g.[,] ligament surgery is
commonly performed in veterinary settings on small animals including cats
and dogs.” Ans. 6. Thus, the Examiner’s position is that “the elongated
Ricci implant having a size for implantation in a jaw bone and sized for
supporting an artificial tooth would also be of a size that [i]s capable of
supporting a small graft ligament in a small bone tunnel by being drawn
through a second transverse bone tunnel.” Id. The Examiner notes that “[a]
prior art device simply does not become patentable merely because an
applicant envisions a new use for that prior art device.” Id. (citing In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)).
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Appellants reply by arguing that “the Ricci device is not capable of
performing the recited functions of claim 1,” and “[t]he Examiner has failed
to provide any support that the tiny dental implant of Ricci is capable of
being used to support a [g]raft knee ligament in a first bone tunnel by being
drawn through a second transverse bone tunnel.” Reply Br. 4. Appellants
attempt to distinguish Schreiber from the facts of the present case. Id. More
particularly, Appellants state that “[t]he court in In re Schreiber specifically
determined that the top for a popcorn container and the automotive oil
funnel were relatively the same size, and thus the oil funnel was capable of
performing the recited functions of the top for a popcorn container.” Id
(citing Schreiber, 128 F. 3d at 1476-77). Appellants thus argue that
Schreiber is not applicable here because “[i]n the present instance, . . . the
tiny dental implant is not capable of performing the recited function of the
crosspin because the dental implant is so small.” Id.
We are not persuaded by Appellants’ arguments. Appellants’ attempt
to distinguish Schreiber is unpersuasive at least because the court in
Schreiber did not determine that the top for a popcorn container and the
automotive oil funnel were relatively the same size, but rather that the
dispensing top of the prior art Harz reference was of a relative size which
would inherently permit popped popcorn kernels to jam up before the end of
the cone and permit the dispensing of only a few kernels at a shake of the
package. Thus, as Schreiber is applicable in the present case, it was
appropriate for the Examiner to rely on Schreiber for the proposition that
“the recitation of a new intended use for an old product does not make a
claim to that old product patentable.” Schreiber, 128 F.3d at 1477.
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In addition, we note that although “[a] patent applicant is free to recite
features of an apparatus either structurally or functionally … choosing to
define an element functionally, i.e., by what it does, carries with it a risk.”
Id. at 1478. As the court stated in In re Swinehart, 439 F.2d 210, 213
(CCPA 1971):
[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
Where, however, the functional limitation in a claim expressly or impliedly
requires a particular structure different from that in the prior art, the claimed
subject matter is distinguishable from the prior art. Cf. In re Casey, 370
F.2d 576, 579-581(CCPA 1967) (holding that a claim to “[a] taping machine
comprising … a brush … being formed with projecting bristles which
terminate in free ends to collectively define a surface to which adhesive tape
will detachably adhere” is obvious over a prior art reference which taught a
machine for perforating sheets, because “the references in [the claim] to
adhesive tape handling do not expressly or impliedly require any particular
structure in addition to that of [the prior art].”)
Here, the Examiner had a reasonable belief Ricci is capable of
performing the functional limitation or intended use that the crosspin “is
configured to support a graft knee ligament in the first bone tunnel by being
drawn through the second transverse bone tunnel by a flexible member
attached to said distal portion, and said screw threads of said crosspin being
turned into the bone by a driver engaged to the proximal portion.” Thus, the
Examiner was justified in requiring Appellants to produce evidence that the
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Application 11/402,206

7
subject matter shown to be in the prior art is not capable of performing the
recited intended use. As Appellants have only provided attorney argument
(see In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (Appellants’
attorney’s arguments in a brief do not take the place of evidence in the
record)), but have not produced evidence to show that Ricci’s crosspin
(dental implant 1) lacks the capability of supporting a graft knee ligament,
we sustain the Examiner’s rejection of independent claim 1, and claim 12
which falls therewith, under 35 U.S.C. § 102(b) as anticipated by Ricci.
Rejection II – Anticipation based on Goble
Independent claim 1 and dependent claim 12
The Examiner finds that “Goble . . . disclose[s] a pin implant having
distal portion 18 (Figures 1-3) with an opening for receiving a flexible
member, an intermediate threaded portion 11 and a threadless proximal
portion 40 having feature 31 configured to mate with a driver.” Ans. 4. The
Examiner relies upon the following annotated copy of Goble’s Figure 6 to
aid in explaining how the Goble reference is being interpreted with respect
to what structure corresponds to claim 1’s recitations of “[a] distal portion
with opening,” “[an] intermediate threaded portion,” “[a] threadless
proximal portion,” and “[a] feature configured to mate with driver.” Ans. 5.

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Appeal 2011-004032
Application 11/402,206

9
driver 40 in Goble’s Figure 6 to be a threadless proximal portion of a shaft
of the crosspin as the Examiner suggests.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 1, and claim 12 dependent thereon, under 35 U.S.C.
§ 102(b) as anticipated by Goble.
Dependent claim 10
Claim 10 depends from claim 1. For claim 10, Appellants essentially
reiterate the same arguments made for claim 1. App. Br. 10. Thus, for the
same reasons as discussed supra with respect to claim 1, we also do not
sustain the rejection of claim 10 under 35 U.S.C. § 102(b) as anticipated by
Goble.
Independent claim 13 and dependent claims 14 and 15
In addition to those findings set forth for independent claim 1 and
discussed supra, the Examiner also finds that “[t]he distal portion 18 is
releasably connected to the intermediate portion with a member 10 mounted
to screw 11 (i.e. a ‘screw mount’ – See Figures 2 and 3)(claims 10 and 13)
and proximal portion 40 is releasably coupled with the intermediate portion
11 (note Figure 7)(claim 13).” Ans. 4.
Appellants essentially present the same arguments for independent
claim 13 as those discussed supra for claim 1. App. Br. 12-13.
For the same reasons as discussed above with respect to claim 1, we
also do not sustain the rejection of independent claim 13, and claims 14 and
15 dependent thereon, under 35 U.S.C. § 102(b) as anticipated by Goble.

Appeal 2011-004032
Application 11/402,206

10
DECISION
We affirm the Examiner’s rejection of claims 1 and 12 under 35
U.S.C. § 102(b) as anticipated by Ricci.
We reverse the Examiner’s rejection of claims 1, 10, and 12-15 under
35 U.S.C. § 102(b) as anticipated by Goble.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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