Ex Parte Kubiak et al

Patent Trial and Appeal Board

Aug 9, 2017

12577688 (P.T.A.B. Aug. 9, 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.
12/577,688 10/12/2009 Erik N. Kubiak 026389-9134-01 4779
23409 7590 08/11/2017
MICHAEL BEST & FRIEDRICH LLP (Mke)
100 E WISCONSIN AVENUE
Suite 3300
MILWAUKEE, WI 53202
EXAMINER
SEVILLA, CHRISTIAN ANTHONY
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
08/11/2017 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIK N. KUBIAK and CHARLES L. SALTZMAN
Appeal 2016-005856
Application 12/577,688
Technology Center 3700
Before FRANCISCO C. PRATS, JEFFREY N. FREDMAN, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal1 under 35U.S.C. § 134 involving claims to a bone
plate system. The Examiner rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
Statement of the Case
Background
“Bone plates are surgical tools used to assist in the healing of bones
that are fractured or have undergone surgery. Fractures may be set and held
in place using bone plates. Bone plates can be applied to fractures occurring
in many bones throughout the skeleton” (Spec. 12).
1 Appellants identify the Real Party in Interest as the University of Utah
Research Foundation (see App. Br. 2).
Appeal 2016-005856
Application 12/577,688
The Claims
Claims 1—13, 21, 22, and 24—32 are on appeal.2 Independent claim 1
is representative and reads as follows:
1. A bone plate system for stabilizing portions of bone,
the system comprising
a plate, having a bone engaging surface and
configured to be fastened to two bone portions having a joint
line therebetween; and
a keel projecting from the bone engaging surface, the
keel extending into the bone portions and spanning the joint
line when the plate is fastened to the bone portions;
wherein a ratio of an average thickness of the plate to
an average width of the plate is less than or equal to about
0.11.
The Issues3
A. The Examiner rejected claims 1,8, and 21 under 35 U.S.C. § 103(a)
as obvious over Zucherman4 and Crook5 (Final Act. 2—3).
B. The Examiner rejected claims 22 and 24—27 under 35 U.S.C. § 103(a)
as obvious over Zucherman, Crook, and Lester6 (Final Act. 3—4).
C. The Examiner rejected claims 2—5 under 35 U.S.C. § 103(a) as
obvious over Zucherman, Crook, and Sevrain7 (Final Act. 4—5).
2 As Appellants note, claim 14 was cancelled, rendering the rejection of
claim 14 moot (see App. Br. 16).
3 We note the indefiniteness rejection over claim 26 was withdrawn in the
Examiner’ Advisory Action mailed Oct. 19, 2015.
4 Zucherman et al., US 6,045,552, issued Apr. 4, 2000.
5 Crook, US 5,344,421, issued Sept. 6, 1994.
6 Lester et al., US 6,183,475 Bl, issued Feb. 6, 2001.
7 Sevrain, US 2003/0135216 Al, published July 17, 2003.
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Application 12/577,688
D. The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as obvious
over Zucherman, Crook, Sevrain, and Denis8 (Final Act. 5—6).
E. The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as obvious
over Zucherman, Crook, and Uthgenannt9 (Final Act. 6).
F. The Examiner rejected claims 9-12 under 35 U.S.C. § 103(a) as
obvious over Zucherman, Sevrain, and Huddleston10 (Final Act. 6—8).
G. The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as obvious
over Zucherman, Sevrain, and Denis (Final Act. 8—9).
H. The Examiner rejected claim 28 under 35 U.S.C. § 103(a) as obvious
over Zucherman and Huddleston (Final Act. 9—10).
I. The Examiner rejected claims 29-32 under 35 U.S.C. § 103(a) as
obvious over Zucherman, Huddleston, and Wall* 11 (Final Act. 10-11).
A. 35 U.S.C. § 103(a) over Zucherman and Crook
The Examiner finds “Zucherman discloses a bone plate system” that
“comprises a plate (232) having a bone engaging surface” and “a keel (260)
projecting from the bone engaging surface” (Final Act. 2—3). The Examiner
acknowledges “Zucherman fails to disclose a ratio of an average thickness of
the plate to an average width of the plate is less than or equal to about 0.11”
{id. at 3). The Examiner finds “Crook discloses a rectangular bone plate
8 Denis et al., US 2007/0233122 Al, published Oct. 4, 2007.
9 Uthgenannt et al., US 2009/0084491 Al, published Apr. 2, 2009.
10 Huddleston, III, US 2008/0294201 Al, published Nov. 27, 2008
(“Huddleston”).
11 Wall et al., US 2005/0277933 Al, published Dec. 15, 2005.
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Application 12/577,688
having a length of approximately 2.2 inches, a width of approximately 1.1
inches, and a thickness of 0.1 inch” (id.).
The Examiner finds it obvious to combine the teachings “in order to
provide a suitable size and shape for implantation on bone” (Final Act. 3).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Zucherman and Crook render
the bone plate system of claim 1 obvious?
Findings of Fact
1. Figure 29 of Zucherman is reproduced below:
Figure 29 shows an embodiment where “the first plate portion 234 is
disposed at an angle to the second plate portion 236. Additionally, keels or
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fms 260 and 262 extend from both the posterior and anterior sides 264, 266
respectively in order to strengthen the apparatus 230” (Zucherman 7:10-15).
2. Zucherman teaches that
the spine fixation plating apparatus of the present invention is
used for immobilizing a first vertebra relative to a second
vertebra. The spine fixation plating apparatus includes a plate
with a first plate portion adapted to be positioned adjacent to a
first outer surface of a first vertebra and a second plating
portion adapted to be positioned adjacent to a second outer
surface of a second vertebra. The spine fixation plate system
further includes a keel extending at an angle from said plate,
with said keel adapted to penetrate into at least one of the first
and second vertebra.
(Zucherman 1:36-46).
3. Zucherman teaches “it is contemplated that the keels are
approximately 15 mm long so they project approximately 1/3 of the way into
the vertebral body. In smaller people, the keels would be only about 10
mm—12 mm in length from the base of the keel” (Zucherman 4:3—7).
4. Crook teaches:
In fusing two vertebral bodies or setting a bone fracture,
it is common practice to use a securing mechanism to hold the
bone or vertebral bodies in place while the bone tissue fuses or
heals. A commonly used securing mechanism is referred to as
a bone plate. A bone plate aids the healing process by
maintaining the fractured bone or vertebral bodies in a stable
position.
(Crook 1:11-17).
5. Crook teaches: “Plate 12 comprises a substantially rectangular
plate having a length on the order of approximately 2.2 inches, a width on
the order of approximately 1.1 inches, and a thickness on the order of 0.1
inch” (Crook 2:51—54).
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6. Crook teaches “the size of plate 12 may be varied to
accommodate use with different bone fusion applications” (Crook 2:58—60).
Principles of Law
“[Wjhere the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Analysis
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 2—3; FF 1—6) and agree that the
claims are obvious over Zucherman and Crook. We address Appellants’
arguments below.
Appellants contend “it would not have been obvious to simply alter
the dimensions of the plate 232 as taught by Zucherman with the dimensions
of the plate 12 as taught by Crook to achieve the claimed thickness to width
ratio as suggested by the Examiner” (App. Br. 7—8). Appellants contend
“Zucherman is not overly concerned with how far the apparatus 230 projects
away from the spine” and “Zucherman visibly does not provide motivation
to be less prominent” (id.). Appellants further contend:
The dimensions of the plate 12 as taught by Crook are also
dependent on application (e.g., stress and strain measurements),
slot quantity and size, and material(s). The bone plate 12 as
taught by Crook combines these factors to arrive at the noted
dimensions, and although Crook is not explicit as to these
particular factors, typical engineering factors related to design
of bone plates cannot simply be ignored to formulate a prima
facie case of obviousness.
(id.).
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We do not find these arguments persuasive because both Zucherman
and Crook suggest optimizing dimensions of bone plate systems (FF 3, 6),
consistent with the Examiner’s finding that the prior art suggests “a suitable
size and shape for implantation on bone” (Final Act. 3). Indeed, Crook
specifically suggests “the size of plate 12 may be varied to accommodate use
with different bone fusion applications” (FF 6). Thus, the ordinary artisan,
interested in optimizing parameters including plate thickness and width,
recognized as relevant by Crook (FF 5), would have recognized these
“dimensional variables were result-effective, rendering their optimization
within the grasp of one of ordinary skill in the art.” In re Applied Materials,
Inc., 692 F.3d 1289, 1296 (Fed. Cir. 2012).
We note that Appellants provide no persuasive evidence and “no
indication that obtaining the claimed dimensions was beyond the capabilities
of one of ordinary skill in the art or produced any unexpectedly beneficial
properties.” Id. at 1297.
Appellants contend
the Examiner cannot simply ignore the washers 14 of Crook
and the importance they provide to the bone plate 12 to achieve
a bone plate with the noted dimensions and additional factors
that make the bone plate 12 usable. The Examiner should not
ignore the thickness of the washers 14 in Crook when
calculating a ratio of plate thickness to plate width.
(App. Br. 8-9).
We find this argument unpersuasive because it does not address the
combination of references, where Crook is relied upon to suggest that the
dimensions of Zucherman may be optimized (FF 3, 6). Crook was also
relied upon to demonstrate that the claimed values were consistent with prior
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art bone plate systems (FF 5; Final Act. 3). “Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references.” In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986). A reference “must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole.” Id.
Appellants provide no persuasive evidence that the ordinary artisan,
optimizing the dimensions of Zucherman, would necessarily either include
or exclude the washer measurements of Crook that were not necessarily part
of the Zucherman bone plate system (FF 1).
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that
Zucherman and Crook render the bone plate system of claim 1 obvious.
B. 35 U.S.C. § 103(a) over Zucherman, Crook, and Lester
The Examiner relies upon Zucherman and Crook but finds
“Zucherman fails to disclose a fin projecting substantially orthogonally and
integrally from the keel such that the long axis of the fin is substantially not
parallel to a long axis of the plate” (Final Act. 4).
The Examiner finds Lester teaches “a bone plate having a bone
engaging portion (30) wherein a keel has an integral fin extending along a
longitudinal axis substantially perpendicularly to the plate and extending
perpendicularly from a keel to secure the plate to a bone” (id.). The
Examiner finds it obvious to include the Lester fin because “the Lester
modification might further improve structural stability, similar to how
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perpendicular portions in an i-beam help substantially improve structural
stability in various ways” (Ans. 3).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Zucherman, Crook, and
Lester render obvious “a fin projecting from the keel and wherein the fin is
configured to span the joint line when the plate is fastened to the bone
portions” as required by claim 22?
Findings of Fact
7. Figure 1 of Lester is reproduced below:
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Figure 1 of Lester depicts a “blade 30, having a T-shaped cross-section, is
connected to the end portion 20a of the plate 20 in any conventional
manner” (Lester 3:23—25).
8. Lester teaches
The system includes a plate having a blade connected and
extending at an angle to the plate. The plate extends across the
osteotomy site with the blade extending in an opening of one of
the bones. At least one fastener extends through openings in
the plate and into at least one of the bones to fasten the plate to
the bones and secure the blade in the opening.
(Lester 4:20—26).
Analysis
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 3^4; FF 1—8) and agree that the
claims are obvious over Zucherman, Crook, and Lester. We address
Appellants’ arguments below.
Appellants contend Lester “fails to disclose a fin configured to span a
joint line when the plate is fastened to the bone portions” (App. Br. 9).
Appellants also contend “it would not have been obvious to provide the keel
260 as taught by Zucherman with the asserted fin of the blade 30 as taught
by Lester” (id. at 10).
We are not persuaded. The Examiner explains that the inclusion of a
fin would have been obvious to “further improve structural stability,
similar to how perpendicular portions in an i-beam help substantially
improve structural stability in various ways” (Ans. 3). With regard to
locating a fin at the joint line, figure 29 of Lester clearly discloses fin
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projections along the entire plate, necessarily overlapping the joint line
between two bone portions (see FF 1).
Appellants contend
one of ordinary skill in the art would not have found it obvious
to provide the keel 260 as taught by Zucherman with the
asserted fin of the blade 30 as taught by Lester because the
assembly 230 of Zucherman was designed to be affixed to a
spine whereas the plate 20 of Lester was designed to be affixed
to a femur.
(App. Br. 10).
We interpret Appellants’ argument as suggesting that the bone plate
system of Lester (FF 8) is not analogous art to the bone plate system of
Zucherman or claim 22 because Lester focuses on different bones. The test
for non-analogous art is first whether the art is within the field of the
inventor’s endeavor and, if not, whether it is “reasonably pertinent to the
particular problem with which the inventor was involved.” In re Wood, 599
F.2d 1032, 1036 (CCPA 1979). “A reference is reasonably pertinent if, even
though it may be in a different field” of endeavor, it logically would have
commended itself to an inventor’s attention in considering his problem
“because of the matter with which it deals.” In re Clay, 966 F.2d 656, 659
(Fed. Cir. 1992).
In the instant fact pattern, the bone plate systems of Zucherman,
Crook, or Lester are all used by medical personnel for treatment of bones
that require fixation (FF 2,4, 8) and therefore, within the same field as each
other and within the field of the inventor’s endeavor as a bone plate system.
In addition, since all three references involve bone fixation (FF 2, 4, 8), the
same intended use of “stabilizing portions of bone” as recited in the
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preamble of claim 1, these references are also reasonably found to be
pertinent to each other and the claimed invention.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that
Zucherman, Crook, and Lester render obvious “a fin projecting from the keel
and wherein the fin is configured to span the joint line when the plate is
fastened to the bone portions” as required by claim 22.
C. 35 U.S.C. § 103(a) over Zucherman, Crook, and Sevrain
Appellants contend “neither the first fastener 10 nor the second
fastener 20 spans a joint line. Rather, as illustrated by Fig. 2 of Sevrain, it
appears that the fasteners 10, 20 extend into a bone V parallel to a joint line,
which, for example, in Sevrain may be a removed cervical disk 30” (App.
Br. 11).
Appellants contend:
if one of ordinary skill in the art were to apply the teachings of
Sevrain to Zucherman, the fasteners on opposite sides of a same
keel 258 would engage each other. As illustrated by Fig. 29,
this would not be possible. Substantial and non-obvious design
changes would be required in Zucherman so that Zucherman,
Crook, and Sevrain could be combined to arrive at the claimed
invention set forth in claim 2.
(id.).
The Examiner responds
the teaching of Sevrain is applied to the first and second
fasteners (e.g. the fasteners shown in annotated Fig. 29 of Final
Rejection [Sec. 5]). The Examiner submits that it is this
combination (applying the modification to the first and second
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fasteners), not the one that the Appellants have set forth, which
would have resulted in fasteners spanning the joint line.
(Ans. 4).
We find the Examiner has the better position. We find Appellants’
arguments unpersuasive for both claims 2 and 4 because “when a patent
simply arranges old elements with each performing the same function it had
been known to perform and yields no more than one would expect from such
an arrangement, the combination is obvious.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 417 (2007). In this situation, Appellants provide no
persuasive evidence of any criticality or unexpected results regarding the
specific location of the fastener.
D. 35 U.S.C. § 103(a) over Zucherman, Crook, Sevrain, and Denis
Appellants do not separately argue claim 6 in this obviousness
rejection, instead relying upon their arguments to overcome the combination
of Zucherman, Crook, and Sevrain. The Examiner provides sound fact-
based reasoning for combining Denis with these references (see Final Act.
5—6). Having affirmed the obviousness rejection of claim 1 over Zucherman
and Crook for the reasons given above, we also find that the further
combination with Denis renders claim 6 obvious for the reasons given by the
Examiner.
E. 35 U.S.C. § 103(a) over Zucherman, Crook, and Uthgenannt
Appellants do not separately argue claim 7 in this obviousness
rejection, instead relying upon their arguments to overcome the combination
of Zucherman and Crook. The Examiner provides sound fact-based
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reasoning for combining Denis with these references (see Final Act. 6).
Having affirmed the obviousness rejection of claim 1 over Zucherman and
Crook for the reasons given above, we also find that the further combination
with Denis renders claim 7 obvious for the reasons given by the Examiner.
F. 35 U.S.C. § 103(a) over Zucherman, Sevrain, and Huddleston
The Examiner finds Zucherman teaches
a bone plate system (Fig. 29). . . The plate is capable of being
fastened to two bone portions having joint line there between.
Note keel 260. The keel can extend into two bone portions and
span a joint line when fastened to the bone portions. . . . The
system comprises a first fastener, as shown in annotated Fig. 29
above, configured to extend through the first hole and fasten the
plate to two bone portions having a joint line therebetween.
(Final Act. 7). The Examiner acknowledges that Zucherman does not teach
“the first fastener spans the joint line” or a “ratio of average thickness being
less than or equal to about 0.08” (id. at 7—8).
The Examiner finds Sevrain teaches “a bone plate secured to bone by
means of fasteners 10, 20 extending through holes in a bone plate P at an
angle relative to the plate wherein one of the fasteners 20 threadably engages
an opening 12 in another of the fasteners 10” (Final Act. 7). The Examiner
finds “Huddleston, in similar art, shows a bone plate can have average
thickness of 2—10 millimeters and average width of 20—30 millimeters” (id.
at 8).
The Examiner finds it obvious to use Sevrain’s fasteners in
Zucherman’s bone plate “in order to secure a bone plate to bone” and to use
Huddleston’s dimensions “in order to provide suitable size for implantation
on a bone” (Final Act. 8).
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The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Zucherman, Sevrain, and
Huddleston render the bone plate system of claims 9 and 11 obvious?
Findings of Fact
9. Figure 1 of Sevrain is reproduced below:
“[Ajnchoring system S . . . comprises first and second screws 10 and 12,
respectively, which are adapted to be introduced in the vertebra at an angle
and convergingly towards each other, as seen in FIG. 1” (Sevrain 121).
10. Huddleston teaches “the present invention relates to an anterior
adherent plate for the fixation of thoracic and lumbar vertebra” (Huddleston
14).
11. Huddleston teaches: “In one form, the plate 20 has an average
width (from the first side surface 26 to the second side surface 28) of 20
millimeters to 30 millimeters. In one form, the plate 20 has an average
thickness (from the inner surface 24 to the outer surface 22) of 2 millimeters
to 10 millimeters” (Huddleston 135).
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12. Huddleston teaches “the same design principles (anatomic fit
and bone side composition of a material that supports bone ingrowth) could
apply to plates designed for use along the entire spine” (Huddleston 142).
Analysis
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 6—8; FF 1—3, 9-11) and agree
that the claims are obvious over Zucherman, Sevrain, and Huddleston. We
address Appellants’ arguments below.
Claim 9
Appellants contend “it would not have been obvious to simply alter
the dimensions of the plate 232 as taught by Zucherman with the dimensions
of the plate 20 as taught by Huddleston to achieve the claimed thickness to
width ratio as suggested by the Examiner” (App. Br. 14).
As discussed above regarding claim 1, we do not find these arguments
persuasive because Zucherman suggests optimizing dimensions of bone
plate systems for specific patients (FF 3), consistent with the Examiner’s
finding that the prior art suggests to “provide suitable size for implantation
on a bone” (Final Act. 8). Moreover, Huddleston teaches ranges for the
spinal plates (FF 11) and indicates that these design principles may be more
widely applied to bone plates (FF 12). Thus, the ordinary artisan, interested
in optimizing parameters including plate thickness and width, recognized as
relevant by Huddleston (FF 11—12), would have recognized these
“dimensional variables were result-effective, rendering their optimization
within the grasp of one of ordinary skill in the art.” Applied Materials, 692
F.3d at 1296.
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We note that Appellants provide no persuasive evidence and “no
indication that obtaining the claimed dimensions was beyond the capabilities
of one of ordinary skill in the art or produced any unexpectedly beneficial
properties.” Id. at 1297.
Appellants contend
it would not have been obvious to alter the dimensions of the
plate 232 as taught by Zucherman with the dimensions of the
plate 20 as taught by Huddleston to achieve the claimed
thickness to width ratio as suggested by the Examiner because
bone plates are designed and shaped for different areas of the
spine. Loads on the human spine vary greatly by location, and
therefore, the dimensions of a bone plate designed for one area
of the spine may fail in another area of the spine.
(App. Br. 14). Appellants contend “if the dimensions of the plate 232 as
taught by Zucherman were altered to be the dimensions of the plate 20 as
taught by Huddleston, the new length of the plate 232 would render the plate
232 unusable for its intended purpose” (App. Br. 15).
We find these arguments unpersuasive because Huddleston expressly
teaches “the same design principles (anatomic fit and bone side composition
of a material that supports bone ingrowth) could apply to plates designed for
use along the entire spine” (FF 12). Thus, Huddleston evidences that the
ordinary artisan, informed by the prior art of Zucherman, Sevrain, and
Huddleston, would have had a reasonable expectation of success in
optimizing bone plates based on the disclosed prior art design principles (FF
1-3, 9-12).
We also note that Appellants provide no persuasive evidence that the
dimensions of Huddleston would render Zucherman unsuitable for use as a
bone plate, whether for the specific indication disclosed by Zucherman or
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more generally as a bone plate for spinal treatment, as desired by both
Zucherman and Huddleston (FF 1, 10). “[Attorney argument [is] not the
kind of factual evidence that is required to rebut a prima facie case of
obviousness.” In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
Appellants contend “Sevrain does not teach including a fastener
which extends beyond a joint line. Therefore, if one of ordinary skill in the
art were to apply the teachings of Sevrain to Zucherman, the fasteners on
opposite sides of a same keel 258 would engage each other” (App. Br. 15).
We remain unpersuaded by this argument for the reasons already
given above, consistent with the Examiner’s finding that
It would have been obvious to one having ordinary skill in the
art at the time the invention was made to combine the teaching
of a bone plate having fasteners extending through holes in a
bone plate at an angle relative to the plate wherein one of the
fasteners threadably engages an opening in another of the
fasteners, as taught by Sevrain, to the plate as per Zucherman,
in order to secure a plate to a bone.
(Final Act. 5).
Claim 11
We recognize, but find unpersuasive, Appellants’ contention that “if
one of ordinary skill in the art were to apply the teachings of Sevrain to the
combination of Zucherman, the fasteners on opposite sides of a same keel
258 would engage each other” (App. Br. 16). Appellants do not explain
why this would render Zucherman inoperative or otherwise problematic, nor
do Appellants provide any evidence or reason why incorporating the
fasteners of Sevrain into Zucherman’s spinal fixation bone plate system (FF
1) would not have been an obvious use of known prior art fasteners
disclosed by Sevrain for use in spinal bones (FF 9).
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Conclusion of Law
The evidence of record supports the Examiner’s conclusion that
Zucherman, Sevrain, and Huddleston render the bone plate system of claims
9 and 11 obvious.
G. 35 U.S.C. § 103(a) over Zucherman, Sevrain, Huddleston,12 and
Denis
Appellants do not separately argue claim 13 in this obviousness
rejection, instead relying upon their arguments to overcome the combination
of Zucherman and Sevrain (and Huddleston in the rejection of claim 9, as
discussed above). The Examiner provides sound fact-based reasoning for
combining Denis with these references (see Final Act. 8—9). Having
affirmed the obviousness rejection of claim 9 over Zucherman and Sevrain
(and Huddleston) for the reasons given above, we also find that the further
combination with Denis renders claim 13 obvious for the reasons given by
the Examiner.
H. 35 U.S.C. § 103(a) over Zucherman and Huddleston
Appellants contend:
it would not have obvious to alter the dimensions of the plate
122 as taught by Zucherman with the dimensions of the plate 20
as taught by Huddleston to achieve the claimed thickness to
12 We recognize the Examiner inadvertently omitted Huddleston from this
rejection, while relying upon Huddleston for the rejection of independent
claim 9 from which claim 13 ultimately depends. However, we find the
error harmless since the arguments relating to claim 13 do not focus on
Huddleston.
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width ratio as suggested by the Examiner because bone plates
are designed and shaped for different areas of the spine. Loads
on the human spine vary greatly by location, and therefore, the
dimensions of a bone plate designed for one area of the spine
may fail in another area of the spine.
(App. Br. 18).
We remain unpersuaded for the reasons given above. To briefly
recap, Zucherman suggests optimizing dimensions of bone plate systems for
specific patients (FF 3) and Huddleston expressly teaches “the same design
principles (anatomic fit and bone side composition of a material that
supports bone ingrowth) could apply to plates designed for use along the
entire spine” (FF 12). Thus, the ordinary artisan, interested in optimizing
parameters including plate thickness and width recognized as relevant by
Huddleston (FF 11—12), would have recognized these “dimensional
variables were result-effective, rendering their optimization within the grasp
of one of ordinary skill in the art.” Applied Materials, 692 F.3d at 1296.
We recognize, but remain unpersuaded by, Appellants’ contention that “if
the dimensions of the plate 122 as taught by Zucherman were altered to be
the dimensions of the plate 20 as taught by Huddleston, the new length of
the plate 122 would render the plate 122 unusable for its intended purpose”
(App. Br. 19). Appellants provide no persuasive evidence that the
dimensions of Huddleston would render Zucherman unsuitable for use as a
bone plate, whether for the specific indication disclosed by Zucherman or
more generally as a bone plate for spinal treatment as desired by both
Zucherman and Huddleston (FF 1, 10). “[Attorney argument [is] not the
kind of factual evidence that is required to rebut a prima facie case of
obviousness.” Geisler, 116 F.3d at 1470.
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Appeal 2016-005856
Application 12/577,688
I. 35 U.S.C. § 103(a) over Zucherman, Huddleston, and Wall
Appellants contend
it would not have been obvious to add a first protrusion 14a and
a second protrusion 14b as taught by Wall to the plate 122 as
taught by Zucherman. Particularly, the protrusions 14a, 14b are
positioned between the bridge member 12 and fasteners 68.
Accordingly, Wall teaches that the protrusions 14a, 14b should
be positioned on the plate 122 as taught by Zucherman between
the keel 130 and fasteners 134, 136. This does not appear
feasible as the fasteners 134, 136 of Zucherman appear at the
end of the keel 130.
(App. Br. 20).
The Examiner responds that the rejection “relied on the Wall
reference for the proposition that a protrusion extending perpendicular to a
bone facing surface and long axis of a device provides, predictably, bone
securement functionality” (Ans. 5).
We find that the Examiner has the better position. Wall teaches a
“spinal correction system” that “includes a spinal staple having a bridge
member with a length sufficient to span the vertebral endplate growth
centers on either side of a vertebral disk” (Wall 117). Wall teaches the
“legs of the staple are equipped with barbs to resist backing out or loosening
of the staple after it has been affixed to a vertebra” (Wall 118). We agree
with the Examiner that inclusion of the barbs of Wall in the spinal
attachment system of Zucherman and Huddleston would have been obvious
to improve bone securement functionality (see Ans. 5). We are not
persuaded by unsupported attorney argument that the combination “does not
appear feasible” (App. Br. 20). Geisler, 116 F.3d at 1470.
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Appeal 2016-005856
Application 12/577,688
SUMMARY
In summary, we affirm the obviousness rejections.
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
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