Ex Parte Hulliger

Patent Trial and Appeal BoardJun 15, 2017

13426079 (P.T.A.B. Jun. 15, 2017)

United States Patent and Trademark Office 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. 10139/25502 6186 EXAMINER COLEY, ZADE JAMES ART UNIT PAPER NUMBER 3775 MAIL DATE DELIVERY MODE 13/426,079 03/21/2012 76960 7590 Fay Kaplun & Marcin, LLP 150 Broadway, suite 702 New York, NY 10038 06/15/2017 Urs Hulliger 06/15/2017 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 URS HULLIGER1 Appeal 2016-001775 Application 13/426,079 Technology Center 3700 Before JOHN G. NEW, RYAN H. FLAX, and DAVID COTTA, Administrative Patent Judges. FLAX, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) involving claims directed to a bone fixation device. Claims 1—7 are on appeal as rejected under 35 U.S.C. § 102(b).2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the Real Party in Interest as DePuy Synthes Products, Inc., a subsidiary of Johnson & Johnson, Inc. App. Br. 2. 2 Claims 8—17 are indicated as being withdrawn from consideration. App. Br. 9-12. Appeal 2016-001775 Application 13/426,079 STATEMENT OF THE CASE Claims 1 and 6 are the independent claims; claim 1 is representative and is reproduced below: 1. A bone fixation device, comprising a bone implant integrally formed with an aiming guide, the aiming guide being spaced apart from the bone implant by a first connecting bar extending therebetween. App. Br. 8 (Claims App’x). The following rejection is on appeal: Claims 1—7 stand rejected under 35 U.S.C. § 102(b) as anticipated by Leyden.3 Final Action 2. FINDINGS OF FACT FF1. Leyden discloses a bone fixation device with a bone plate/implant integrally formed with an aiming guide, which is spaced apart therefrom by a pair of connecting bars at, inter alia, Figures 8 and 16, which are reproduced below: 3 U.S. Pat. App. Pub. No. US 2009/0088805 A1 (Apr. 2, 2009) (“Leyden”). 2 Appeal 2016-001775 Application 13/426,079 Leyden’s Fig. 8 shows a cross-section view, and Fig. 16 shows a perspective view, of an assembly for implanting a bone plate (6) on a femur (F). Leyden H 22, 30, 57—65, Figs. 5, 8, 16; see also Final Action 2—5, and Ans. 2—\ (discussing Leyden). The bone plate (6) has openings (7) through which securing bone screws can be inserted via a drill assembly (70). Secured to the bone plate (6) via a plate holder (40) is a guide (60), with openings (62) corresponding to those of the bone plate so that the drill assembly (70) can be advanced through the guide’s openings to present a working end at the bone plate’s opening for insertion of the securing bone screws. Id. FF2. The Specification states, “[t]he exemplary aiming guide according to the invention is connected to the bone plate via one or more connecting bars, which may, for example, be integrally manufactured with the bone plate and aiming guide.” Spec. 1 6; see also Ans. 3 (discussing Spec’s, description of “integrally formed”). FF3. The Specification states “[t]he aiming guide 100 may, for example, be manufactured of the same material as the bone implant 200 as a single element, and may be separated from the bone implant 200 by a plurality of connecting bars 114.” Spec. 19; see also Ans. 3 (discussing Spec’s, description of “integrally formed”). FF4. The Specification states, “[t]he connecting bars 114 may also be formed of the same material as the bone implant 200 and aiming guide 100 or of any other biocompatible suitably rigid material as would be understood by those skilled in the art.” Spec. 110; see also Ans. 3 (discussing Spec’s, description of “integrally formed”). 3 Appeal 2016-001775 Application 13/426,079 FF5. The Specification states, “the aiming guide 100 and the bone implant 200 may be milled from a single piece of material and separated from one another after the aiming guide 100 has been used to insert bone fixation elements through the bone implant 200 into the bone 10.” Spec. 110; see also Ans. 3 (discussing Spec’s, description of “integrally formed”). FF6. The Specification states, “[i]n an exemplary manufacturing method, the aiming guide 100 and bone implant 200 are manufactured and subsequently packaged as a single piece.” Spec. 112; see also Ans. 3 (discussing Spec’s, description of “integrally formed”). DISCUSSION We adopt the Examiner’s findings of fact, reasoning on scope and content of the claims and prior art, and conclusions set out in the Final Action and Answer. Only those arguments made by Appellant in the Briefs have been considered in this Decision. Arguments not presented in the Briefs are waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). We find the Examiner has established that claim 1 is anticipated by Leyden. The Examiner provides a detailed and well-reasoned explanation as to how Leyden discloses the claimed subject matter. Final Action 2-4. Appellant has not produced evidence showing, or persuasively argued, that the Examiner’s determination is incorrect. We address Appellant’s arguments below. Appellant contends the claim language “integrally formed,” recited by claim 1, means “a single structure — a single piece ... a complete unit, a whole,” which Appellant argues would exclude an apparatus as disclosed by 4 Appeal 2016-001775 Application 13/426,079 Leyden because that apparatus includes separate pieces secured into a single unit. App. Br. 3—6; Reply Br. 2—6. Appellant’s argument is not persuasive. Even if we accept Appellant’s contentions as correct, Appellant’s proposed interpretation of “integrally formed” does not exclude the apparatus disclosed by Leyden.4 FF1. Leyden’s bone plate, aiming guide, and the intervening connector are secured together as a single structure, single piece, a complete unit, and a whole. Id. Moreover, Appellant has not specially defined the term “integrally formed” in the Specification or otherwise limited the claimed apparatus to require that it be single piece of material. See FF2—6; see also Reply Br. 4 (arguing such a special meaning). Because, as the Examiner found, Leyden discloses each element of claim 1, we affirm the rejection over Leyden. Because Appellant argues only with regard to claim 1, all claims fall with claim 1. SUMMARY The rejection of the claims as anticipated by Leyden is affirmed. 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 4 See Merriam-Webster Dictionary’s definition for “integral[ly]”: “formed as a unit with another part” and its definition of “form[ed]”: “to give a particular shape to.” Merriam-Webster, integral, available at https://www.merriam-webster.com/dictionary/integrally; and id., form, https://www.merriam-webster.com/dictionary/form (each visited June 12, 2017). These definitions, which we understand to represent the plain meaning of the terms, correspond, generally, to Appellant’s argued, and the Examiner’s broadest reasonable, interpretation. App. Br. 4; Ans. 2. 5