Ex Parte Jackson

Patent Trial and Appeal BoardSep 18, 2012

10142614 (P.T.A.B. Sep. 18, 2012)

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. 10/142,614 05/09/2002 Roger P. Jackson 10,162 2111 7590 09/19/2012 John C. McMahon PO Box 30069 Kansas City, MO 64112 EXAMINER WOO, JULIAN W ART UNIT PAPER NUMBER 3773 MAIL DATE DELIVERY MODE 09/19/2012 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 ROGER P. JACKSON ____________ Appeal 2010-006842 Application 10/142,614 Technology Center 3700 ____________ Before STEFAN STAICOVICI, JAMES P. CALVE, and SCOTT A. DANIELS, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the rejection of claims 1-15, 17, 18, and 21. Notice of Appeal. Claims 16, 19, and 20 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2010-006842 Application 10/142,614 2 CLAIMED SUBJECT MATTER Claim 1 is representative of the claimed subject matter on appeal: Claim 1 A closure plug in combination with an open-headed medical implant having a pair of spaced arms with a discontinuous, helically wound interior guide and advancement structure thereon; said plug comprising: a) a body sized and shaped to be received between the arms of the implant head; said body having a radially outward surface that has a mating guide and advancement structure thereon that is sized and shaped to rotatably mate with the interior guide and advancement structure of the arms of the implant; b) said body having a top surface and a bottom surface; said top surface of said body having at least one removal aperture therein sized and shaped to receive a removal tool; said aperture extending axially from the bottom surface to the top surface of said body and opening onto the top surface thereof; c) said aperture being spaced from and positioned between both a central axis of said body and a periphery of said body; and d) a break-off head breakably and axially joined to said body and adapted to receive an installation tool for operably rotating said body; said head being joined to said body by a torque limiting region that causes said head to break from the body, when a preselected torque is applied to said head; said break-off head being free of pass through openings that axially align with said apertures so as to operably block axial access to said aperture from above said break-off head by the removal tool until said break-off head breaks from said body. REJECTIONS Claims 1-7, 10-15, and 21 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Sherman (US 5,797,911; iss. Aug. 25, 1998), Dent Appeal 2010-006842 Application 10/142,614 3 (GB 2,140,523 A; pub. Nov. 28, 1984) and Johnson (US 1,300,275; iss. Apr. 15, 1919). Claims 8, 9, 17, and 18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Sherman, Dent, Johnson, and Wagner (US 5,334,203; iss. Aug. 2, 1994). ANALYSIS Claims 1-7, 10-15, and 21 as unpatentable over Sherman, Dent, and Johnson The Examiner found that Sherman discloses a closure plug as claimed but lacks a removal aperture in the top surface of the plug body that is sized and shaped to receive a removal tool. Ans. 3-4. The Examiner found that Dent discloses a similar device with a closure plug having a pair of apertures 20 positioned between a central axis of the body and a periphery of the body. Ans. 4 (citing figs. 14-16). The Examiner concluded that it would have been obvious to modify the plug body of Sherman to include at least one removal aperture in the top surface of the body to “allow convenient removal of the plug or closure from a patient’s body should a surgeon decide that the implant needs to be removed or repositioned.” Ans. 4-5. The Examiner also found that the modified Sherman device does not disclose an aperture that extends axially from the bottom surface to the top surface or is configured such that the break-off head blocks axial access to the apertures. Ans. 5. The Examiner found that Johnson teaches a plug with a body having an aperture that extends through the entire length of the body (i.e., from the bottom surface to the top surface) and concluded that it would have been obvious “to form and position the apertures of the body of the plug of Sherman et al. in view of Dent (without pass through openings in the break- Appeal 2010-006842 Application 10/142,614 4 off head), such that the aperture is positioned between a central axis of the body and a periphery of the body and extends through the entire length of the body” because “[s]uch an aperture would allow a pin of a removal tool to securely hold the plug during turning and removal of the plug.” Ans. 5. Appellant argues that Sherman, Dent, and Johnson teach a skilled artisan to provide access to the apertures in the plug at all times even when the break-off head is in place. App. Br. 12. Appellant argues that none of these references teaches the key element of the invention—a break-off head that blocks access to removal apertures in the closure body. Reply Br. 3. Appellant also argues that this feature prevents a surgeon from deliberately or accidentally over-torquing a closure by accessing removal apertures in the closure instead of torquing just the break-off head until it breaks off from the closure at proper torque. Reply Br. 4; App. Br. 12. The Examiner has not pointed to any teaching in Sherman, Dent, or Johnson of a break-off head that is free of pass through openings being used with a closure plug having apertures such that the break-off head operably blocks axial access to the apertures in the closure body until the break-off head breaks from the body as called for in independent claims 1, 10, and 21.1 The Examiner found that Sherman and Dent “do not disclose that the aperture . . . [is] configured such that the break-off head blocks axial access to the apertures.” Ans. 5. The Examiner relied on Johnson to disclose a 1 Claim 10 calls for a closure body “having at least one axially extending aperture therein with said aperture opening onto said body top and being sized and shaped to receive a removal tool.” Claim 21 calls for a closure body with “said top of said body having at least one axially aligned aperture therein opening onto the top thereof and being sized and shaped to receive a removal tool.” Appeal 2010-006842 Application 10/142,614 5 plug with an aperture extending through the entire length of the body of the plug, but not to disclose a break off head. Figs. 3-5. The Examiner found that Sherman discloses “the break-off head as claimed” (i.e. without any pass through openings) and relied on Dent and Johnson “mainly for their teachings regarding the offset apertures in the closure body, not for their teachings regarding a break-off head.” Ans. 7. We agree that adding Dent’s axial holes 20 to Sherman’s plug body 55 may help a surgeon to remove the plug, as the Examiner found. Ans. 5. However, the Examiner has not explained why a skilled artisan would modify only the plug 55 of Sherman to include axial holes when Dent uses axial openings 20 in a plug body 14B of a screw only in conjunction with a break-off head 14A that also includes axial holes 20 that are aligned with the axial holes in the plug body 14B.2 Figs. 9, 14, 15. The Examiner’s selection of only the apertured closure body 14B of Dent’s two-section screw is based on impermissible hindsight using Appellant’s disclosure. The Examiner’s finding that “Dent teaches, at least in fig. 15, a body (without a break-off head) having offset apertures for the purpose of unscrewing of the body” demonstrates this fact because Dent discloses this embodiment initially in Figure 14 as a screw with a first drive section 14A with axial holes 20 and a second section 14B with aligned axial holes 20 and Figure 15 illustrates the screw “when the section 14A has been 2 The axial holes 20 provide a way to implant a screw with a circular head by using a special tool with two pins that engage holes 20 in the break-off head 14A to turn the screw and shear off the break-off head 14A and later using the same tool to remove the plug 14B. Page 2, ll. 46-52 and 69-75; fig. 9. Dent also discloses the use of axial holes 20 in a break-off head 14A and a frusto-conical plug body 14B wherein a first special tool with two pins is used to drive the screw and a different tool with two pins is used to unscrew the frusto-conical screw. Page 2, ll. 97-118; figs. 14-16. Appeal 2010-006842 Application 10/142,614 6 sheared from the remainder as shown in Figure 15.” Page 2, ll. 112-118. While Johnson discloses a special wrench with an eccentric longitudinal pin 16 that aligns with an eccentric hole 13 in a screw head 11 so that the screw can only be removed by the special wrench (page 1, col. 37-41; figs. 1-5), Johnson does not block this hole 13 with a break-off head or other device because the eccentric hole 13 in the screw head 11 also is used to insert the screw and “has a particular advantage in small size screws because the screw has sufficient frictional engagement with the pin 16 to be held thereby so that a ready means of holding the screw during insertion is provided.” Page 1, ll. 97-102. Thus, the Examiner has used Appellant’s disclosure to pick and choose features from the prior art to reconstruct the claimed invention. Thus, we cannot sustain the rejection of claims 1-7, 10-15, and 21. The addition of Wagner does not remedy the deficiencies of Sherman, Dent, and Johnson as discussed supra. Accordingly, the rejection of claims 8, 9, 17, and 18 likewise cannot be sustained. DECISION We REVERSE the rejection of claims 1-15, 17, 18, and 21. REVERSED hh