Ex Parte Jacene et al

Patent Trial and Appeal BoardMar 18, 2015

11371741 (P.T.A.B. Mar. 18, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MICHAEL JACENE, MICHAEL GORHAN, and BACEM GEORGES 1 ____________ Appeal 2012-007163 Application 11/371,741 Technology Center 3700 ____________ Before DONALD E. ADAMS, DEMETRA J. MILLS, and ULRIKE W. JENKS, Administrative Patent Judges. JENKS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims directed to an implantable bone plate. The Examiner rejects the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellants state that the Real Party in Interest is DePuy Spine, Inc., a Johnson & Johnson Company. (App. Br. 3.) Appeal 2012-007163 Application 11/371,741 2 STATEMENT OF THE CASE The Specification describes that the unique geometry of the bone plate “provides for enhanced visibility of the interface between the disc or implant and vertebral bodies and can also provide enhanced visibility of the vertebral bodies.” (Spec. 2 ¶ 6.) Claims 1, 2, and 4–19 are on appeal, and can be found in the Claims Appendix of the Appeal Brief (App. Br. 18–20). The Examiner rejects the claims as follows: I. Claims 1, 2, 4–7, and 9–19 under 35 U.S.C. § 103(a) as unpatentable over Mosca 2 in view of Vaughn 3 as evidence by either Leibel 4 or Forst. 5 (Ans. 5–10.) II. Claim 86 under 35 U.S.C. § 103(a) as unpatentable over Mosca in view of Vaughen and further in view of Michelson. 7 (Ans. 10–11; see also App. Br. 15–16.) The Issue: Obviousness over Mosca and Vaughen The Examiner finds that Mosca teaches all aspects of the invention, but concedes that the reference fails to disclose the “plus-shaped” window 2 Lawrence Mosca et al., US 2005/0192577 A1 published Sep. 1, 2005. 3 Douglas Vaughen, et al., US 2005/0149032 A1, published July 7, 2005. 4 David A. Leibel et al., US 2006/0025772 A1, published Feb. 2, 2006. 5 Peter Forst et al., US 6,071,291, issued June 6, 2000. 6 With respect to claim 8, Appellants recognized a typographical error in the Final Action and additionally provided a response to the combination of Mosca, Vaughen, and Michelson, as well as to the combination set out in the Final Action. (App. Br. 16.) In the Answer, the Examiner acknowledged the typographical error in the Final Action. (Ans. 10, see footnote 1). 7 Gary K. Michelson, US 6,139,550, issued Oct. 31, 2000. Appeal 2012-007163 Application 11/371,741 3 configuration claimed. (see Ans. 7, see also FF 3 below.) The Examiner looks to the teachings of Vaughen to remedy this deficiency. (Ans. 7.) Appellants contend that not only Mosca but “Vaughen likewise fails to teach a window having both superior and inferior portions defined by opposed parallel longitudinally-extending sidewalls, and thus does not remedy the deficiencies of Mosca.” (App. Br. 9; see also Reply Br. 2 (“Vaughen . . . also lacks such parallel sidewalls.”).) Specifically, Appellants contend Paragraph [0052] of Vaughen explains that the illustrated openings (28) are defined by a plurality of links (24) and portions of a plurality of fastening plates (22). See also Vaughen at FIG. 2. Vaughen then states that “[t] he fastening plates 22 are preferably generally circular or round in shape . . .” and that the “[l]inks 24 are preferably smoothly curved and arcuately shaped . . .” Vaughen at [0052] and [0055]. If both the plates (22) and the links (24) which define the Vaughen openings (28) are curved or rounded, it is impossible for any portions of said openings (28) to be parallel to one another. (Reply Br. 3) Does the preponderance of the evidence of record support the Examiner’s conclusion that the combination of Mosca and Vaughen teach a window with parallel extending side walls? Appeal 2012-007163 Application 11/371,741 4 Findings of Fact 1. Mosca disclosed “[b]one plate systems and anchor retainers are provided for use in surgical implants and bone repair.” (Mosca Abstract.) FIG. 2 [, reproduced above,] is a perspective view of the bone plate. (Mosca 1: ¶ 9.) 2. Mosca disclosed: The windows 200 are preferably square or diamond shaped and oriented so that corners 202 are aligned with the longitudinal and lateral directions of the bone plate 20. In this manner, the windows 200 may extend to a height and a width such that the extent of the permitted view therethrough includes a portion directly between the various bores 24. Alternatively, the window 200 may be an oval so that portions of the window 200 can provide a view located between the bores 24, or any other shape. More specifically, the windows 200 extend so that ends 13 of the vertebrae 12 can be seen such that a surgeon can directly examine fusion sites at the ends 13. . . . The size of the window 200 is predetermined and is based on the structural necessities of the plate 20, such as the size, strength and fatigue life of the plate. . . . [Window] has an irregular shape including arcuate portions and straight portions such that the window 200a is configured such as to not impede the structural integrity of the plate 700 while further attempting to maximize the view available therethrough Appeal 2012-007163 Application 11/371,741 5 to a surgeon. (Mosca 10: ¶¶ 159–160.) 3. The Examiner finds: Mosca discloses the claimed invention except for explicitly disclosing the claimed “plus-shaped” configuration of the window (i.e. the window having a superior portion with opposed parallel longitudinally extending sidewalls and a superior sidewall, inferior portion with opposed parallel longitudinally extending sidewalls and an inferior sidewall, and a transversely extending mid-portion). (Ans. 7.) 4. Vaughen disclosed a “contourable surgical fixation device that is made from a resorbable material and useful in bone reconstruction.” (Vaughen Abstract.) Appeal 2012-007163 Application 11/371,741 6 “FIG. 2 [, reproduced above,] is a top plan view of . . . a contourable mesh . . . having a substantially square shape.” (Vaughen 4: ¶ 29.) Fig. 2 shows a “plurality of spaced-apart fastening plates 22, curved links 24 interconnecting the fastening plates 22, and openings 28 defined between the fastening plates by the links and at least a portion of the fastening plates. The fastening plates 22 are preferably generally circular or round in shape.” (Vaughen 5: ¶ 52.) “FIG. 3 [, reproduced above,] is an enlarged view of a detail taken from FIG. 2 showing a typical repeating base mesh unit.” (Vaughen 4: ¶ 30.) 5. Vaughen disclosed “[l]inks 24 are preferably smoothly curved and arcuately shaped to provide flexibility to mesh 20 without introducing any sharp bends which could create soft tissue irritation problems when contoured in three dimensions to approximate the anatomical shape of the bone.” (Vaughen 6: ¶ 55.) 6. Vaughen disclosed: Openings 28, defined between fastening plates 22 by the arrangement of links 24 and fastening plates 22, may be varied in size and shape. It will be appreciated that the shape and placement of links 24 affects the shape of openings 28. Preferably, openings 28 are elongate in shape, such as that shown in FIG. 2 [, reproduced above,] for example. As best seen in FIG. 3, in one embodiment, openings 28 have a narrow middle portion 33 with a wider portion 34 on either side. (Vaughen 6: ¶ 57.) Appeal 2012-007163 Application 11/371,741 7 Principle of Law “[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Analysis Mosca disclosed a bone plate anchoring system with windows (FF 1 and 2). The windows in Mosca are square or diamond shaped and thereby, as recognized by the Examiner, do not have parallel extending sidewalls (FF 1–3). Vaughen similarly disclosed a bone anchoring device with openings (FF 4 and 5). Vaughen describes that the contour of the opening is “defined between the fastening plates by the links and at least a portion of the fastening plate” (FF 4). Based on the evidence in this record (FF 1–6), we find that Appellants have the better position. In the response, the Examiner is relying on the annotated Fig. 3 of Vaughen as evidence that Vaughen’s openings 28 in the bone plate have sidewalls that are parallel. Annotated Fig. 3 of Vaughen, is reproduced above, the Examiner indicated the areas believed to be parallel. (Ans. 12.) Appeal 2012-007163 Application 11/371,741 8 We are not persuaded by the Examiner’s reliance on Vaughen’s Fig. 3 as showing that the openings disclosed in the reference have parallel sidewalls. “[I]t is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.” Hockerson-Halbertstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000) (holding that the drawings could not be relied upon to construe whether the term “central longitudinal groove” required that the width of the groove be less than the combined width of the fins). Vaughen’s disclosure, however, is not silent with respect to the structures of the elements making up the bone plate. As pointed out by Appellants, Vaughen explains that the bone plates are made up of a “plurality of spaced-apart fastening plates 22, [that has] curved links 24 interconnecting the fastening plates 22, and openings 28 [are] defined between the fastening plates by the links and at least a portion of the fastening plates.” (FF 4; see also App. Br. 7, Reply Br. 3.) Vaughen describes that the “[l]inks 24 are preferably smoothly curved and arcuately shaped” (FF 5), while “[t]he fastening plates 22 are preferably generally circular or round in shape” (FF 4). We agree with Appellants that “[i]f both the plates (22) and the links (24) which define the Vaughen openings (28) are curved or rounded, it is impossible for any portions of said openings (28) to be parallel to one another.” (Reply. Br. 3; see also FF 4.) Accordingly, we find that Vaughen does not teach openings with parallel sidewalls. Because the Examiner has not provided a sufficient evidentiary bases for showing that the disputed limitation of openings with “opposed parallel longitudinally-extending sidewalls” is disclosed by Vaughen, and has not Appeal 2012-007163 Application 11/371,741 9 provided any other sound rationale for concluding that it would nonetheless have been obvious based on the combination of Mosca and Vaughen, we reverse the rejection of claims 1, 2, 4–7, and 9–19 as obvious. “[O]bviousness requires a suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)). For the same reason discussed above, we reverse the rejection of claim 8 based Mosca, Vaughen, and Michelson. SUMMARY We reverse all the rejections on appeal. REVERSED kmm