Ex Parte Graham

Patent Trial and Appeal BoardFeb 28, 2019

14321626 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/321,626 07/01/2014 Michael Graham 30236 7590 03/04/2019 Houtteman Law LLC PO Box 370 Merrifield, VA 22116-0370 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. 209.032DIV SH 3559 EXAMINER BLANCO, JAVIER G ART UNIT PAPER NUMBER 3774 NOTIFICATION DATE DELIVERY MODE 03/04/2019 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): wangxuzhuo@yahoo.com ibgamboa@houtteman.com USPTO@dockettrak.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL GRAHAM 1 Appeal2018-002792 Application 14/321,626 Technology Center 3700 Before DANIELS. SONG, NATHAN A. ENGELS, and ALYSSA A. FINAMORE, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's Final Office Action ("Final Act.") rejecting claims 18-23 in the present application. App. Br. 2. We have jurisdiction under 35 U.S.C. Â§Â§ 6(b) and 134(a). We REVERSE. 1 "Appellant" herein, the named inventor being the real party in interest. Supplemental Appeal Brief ("App. Br.") 2. Appeal2018-002792 Application 14/321,626 The claimed invention is directed to a method for correcting malformed joints. Abstract. Independent claim 21 is illustrative of the claimed invention and reads as follows: 21. A method of correcting improper bone alignment fusing the misaligned bones with an implant, said implant comprising a first component and a second component, said first component comprises a first base plate and a first endosseous stem mounted upon said first base plate said second component comprises a second base plate and a second endosseous stem mounted upon said second base plate said first and second components also comprise complementary locking structures configured such that when these complementary locking structures are engaged they securely lock said first base plate directly abutting said second base plate so that a preferred angle is maintained between the longitudinal axis of the first stem and the longitudinal axis of the second stem, said method comprising the steps: making an incision in an area of a joint between a first bone and a second bone; separating the bones flanking the joint; removing the articular cartilage of the bones flanking the joint and exposing ends of the first and seconds bones; drilling a centrally located hole into the end of the first bone; drilling a centrally located hole into the end of the second bone; inserting the first endosseous stem into the first bone, inserting the second endosseous stem into the second bone; after inserting both first and second endosseous stems into their respective bones, engaging the complementary locking 2 Appeal2018-002792 Application 14/321,626 structures to securely lock said first base plate directly to said second base plate, and closing said incision, wherein the preferred angle maintained between the first stem and the second stem causes a preferred angle to be maintained between the first bone and the second bone thus fusing the bones and correcting the improper bone alignment. App. Br. 18-19 (Claims App.). Independent claim 18 is similar to claim 21, but recites 'joining said first and second base plates together with an attachment so that the base plates directly abut thus preventing movement between the base plates in all directions and fixing at a preferred angle." App. Br. 16-17 (Claims App.). REJECTION The Examiner rejects claims 18-23 under 35 U.S.C. Â§ I02(e) as anticipated by, or in the alternative, under 35 U.S.C. Â§ I03(a) as obvious over, Weiner et al. (US 2011/0004255 Al, pub. Jan. 6, 2011 ("Weiner")). Final Act. 3. ANALYSIS The Examiner rejects claims 18-23, finding that Weiner discloses the limitations of these claims, including joining said first and second base plates together with an attachment ( 40) so that the base plates directly abut (Figures 8, 9, 10, and 17; [0020]; [0021]; [0022]) thus preventing movement between the base plates in all directions and fixing at a preferred angle (notice ... Figures 12 and 18 clearly show "crimping pins 33" used to fix or lock said "a preferred angle") said proximal 3 Appeal2018-002792 Application 14/321,626 phalanx stem and said middle phalanx stem (Abstract; [0009]; [0058]-[0062]; [0067]; [0073]; [0074]; [0076]; [0084]; [0088]). Final Act. 5. The Examiner also finds that the recited "complementary locking structures" are satisfied by "connector 40 and bore 29 (having inner apertures 25a-e )" or "c-ring 80 and complementary aperture 72 (Figure 22)." Final Act. 8. The Examiner further states that the "use of 'base plates' having stems is already well known in the art," noting four additional references, and the Examiner concludes that "[i]t would have been an obvious matter of design choice to one skilled in the art" to construct Weiner to have base plates with stems because it is "one of numerous shapes or configurations a person of ordinary skill in the art would find obvious for the purpose of securely attaching together first and second joint components." Final Act. 6. Preliminary Issue The Appellant argues that "it appears that the Examiner is rejecting the claims as obviousness in view of Weiner and the four (4) additional references," but the actual rejection entered was based on only Weiner. App. Br. 8. Accordingly, the Appellant argues that the rejection lacks clarity and requests a remand. App. Br. 10-11. The Examiner responds that the four additional references were not used as part of a new obviousness rejection, but instead, "[t]he extrinsic evidence was only added to show/support inherency (e.g., point out variations of 'base plates')." Ans. 10. The Examiner further explains that the rejection is applicable "even without including said extrinsic evidence." Id. From the record, it appears that the Examiner is seeking to establish that the term "base plate" encompasses different mating structures shown in 4 Appeal2018-002792 Application 14/321,626 these four additional references. This issue pertaining to the four references is not dispositive because for the reason discussed infra, we agree with the Appellant that Weiner does not disclose a "base plate." We further find these additional references also do not disclose a "base plate" and, thus, fail to establish that the claimed base plates were known in the art. Claim 21 As to claim 21, the Appellant argues that "Weiner teaches an artificial joint, not a method of bone fusion" (App. Br. 11 ), because, according to Appellant, the hinge of Weiner prevents the two implant components from being locked to maintain a preferred angle and instead allows the artificial joint to "pivot freely through a wide range of angles" (App. Br. 12). The Appellant also argues that there is no corresponding locking structure in Weiner. App. Br. 13. These arguments are unpersuasive. As the Examiner finds (Ans. 10- 11 ), Weiner discloses that its device is "particularly useful for joining or fusing cut surfaces of bones, in particular the cut ends of long bones, especially fingers or toes" (Weiner ,r 50) and that "[i]f fusion is desired, the fusion can be made at the desired angle of flexion" (Weiner ,r 72). Although Weiner discloses pivoting the implant components during implantation for proper positioning, the components can be locked together to a desired angle and position. Weiner ,r,r 58-59, 72, 116, Figs. 1, 2. The Appellant also argues that the claim requires the abutting base plates to prevent movement, whereas that the curved mating surfaces of Weiner "allow the two components to slide back and forth" and fail to prevent movement. Reply Br. 4. However, claim 21 recites "when the[] 5 Appeal2018-002792 Application 14/321,626 complementary locking structures are engaged they securely lock said first base plate directly abutting said second base plate so that a preferred angle is maintained." App. Br. 18 ( Claims App.). Thus, the Appellant's argument is unpersuasive because it is not commensurate with the language of the claim, 2 and because it is the complementary locking structures of the first and second component that prevent movement of the base plates. Nevertheless, we are persuaded by the Appellant's argument that the female component 20 and male component 30 of Weiner lack the recited "base plate." App. Br. 11-12; see also App. Br. 13 ("Weiner does not teach or suggest a 'base plate."'). In rejecting the claims, the Examiner finds that first top 22 and second top 32 of Weiner correspond to the recited "base plates." Ans. 12. According to the Examiner, The term "plate" is defined as "a shallow, usually circular dish"; "A flat, relatively thin, rigid body"; "any flat plate-like body structure or part"; "a metal sheathing of uniform thickness". The term "plate" may also refer to several things in the biology and anatomy ( e.g., biomechanical) arts. For example, a denture (i.e., dental plate) and vertebra are both known and considered as "plates", having respective thicknesses, topographies, and curvatures. "Base plates" 22 and 32 of Weiner[] fall within said definitions." Ans. 12. However, it is evident from the Examiner's own proffered definitions that the plain and ordinary meaning of "plate" requires a flat, thin structure. Indeed, a person of ordinary skill in the art reviewing the Appellant's Specification would understand the recited "base plate" to require a flat, 2 To the extent that the Appellant's argument is directed to claim 18, we observe that it is the recited "attachment" that prevents movement between the base plates. App. Br. 16-17 (Claims App.). 6 Appeal2018-002792 Application 14/321,626 thin, flange-like structure that extends beyond the periphery of the disclosed stem portion. Spec., Figs. 2-11 and related discussion. Such structure is missing in Weiner, first top 22 and second top 32 thereof having concave and convex shapes, respectively, and lacking a flat, thin, flange-like structure that extends beyond the periphery of the threaded portion. Although the Examiner asserts that dentures and vertebra establish a broader meaning of the term "plate," the Examiner fails to provide any objective evidence in support thereof, and fails to establish that use of the term "plate" relative to dentures and vertebra has relevance to interphalangeal joint implants. Accordingly, we decline to sustain the Examiner's rejection of claim 21, and claims 22 and 23 that depend from claim 21. Claim 18 The Appellant relies on arguments submitted relative to claim 21. App. Br. 13-14. For substantially the same reasons discussed relative to claim 21, we reverse the Examiner's rejection with respect to independent claim 18, and claims 19 and 20 that depend from claim 18. CONCLUSION The Examiner's rejection of claims 18-23 is REVERSED. REVERSED 7