Ex Parte Martin

Patent Trials and Appeals BoardMar 29, 2019

13023228 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/023,228 02/08/2011 26096 7590 04/02/2019 CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR Christopher Harris Martin 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. 67145-421 PUSl 8263 EXAMINER WEISS, JESSICA ART UNIT PAPER NUMBER 3775 NOTIFICATION DATE DELIVERY MODE 04/02/2019 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): ptodocket@cgolaw.com cgolaw@yahoo.com PTOL-90A (Rev. 04/07) UNITED ST ATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPHER HARRIS MARTIN Appeal2018-006785 Application 13/023,228 Technology Center 3700 Before EDWARD A. BROWN, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Christopher Harris Martin ("Appellant") appeals under 35 U.S. C. Â§ 134(a) from the Examiner's decision to reject claims 1, 2, 4--13, 15, 17-19, 24--28, and30-36. Claims 21-23 have been withdrawn from consideration. Claims 3, 14, 16, 20, and 29 have been canceled. We have jurisdiction under35 U.S.C. Â§ 6(b). We AFFIRM. Appeal 2018-006785 Application 13/023,228 CLAIMED SUBJECT MATTER The claimed subject matter relates to devices "for fixation of distal radial fractures." Spec. 4:23-24; Figs. 1, 3. Claims 1, 24, and 30 are independent. Claim 1 is illustrative of the claimed subject matter and recites: 1. A low profile dorsal plate for internal fixation of a radius fracture, comprising: a single longitudinal portion having a distal end; a transverse portion fixed across a distal-most portion of the distal end at a fixed angle of 18Â° to 26Â° from perpendicular with respect to the longitudinal portion such that a radial branch forms an obtuse angle with the longitudinal portion and an ulnar branch forms an acute angle with the longitudinal portion, the transverse portion includes a continuous x-y curvature, the transverse portion also having a convex z-axis curvature or being flexible to form a convex z-axis curvature, where said z-axis curvature corresponds to a dorsal contour of a distal radius, wherein the longitudinal portion and the transverse portion are comprised of a metallic material; a frrst plurality of screw holes positioned along the longitudinal portion; and a second plurality of screw holes positioned along the transverse portion, wherein there are at least two screw holes on either side of the transverse portion. THE REJECTIONS I. Claims 1, 2, 4--13, 15, 17-19, and 30-36 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over by Castaneda(US 2010/0069966 Al, published Mar. 18, 2010). 2 Appeal 2018-006785 Application 13/023,228 II. Claims 24--28 standrejectedunder35 U.S.C. Â§ 103(a)as unpatentable over Castaneda and Swords (US 2005/0288790 Al, published Dec. 29, 2005). ANALYSIS Rejection I - Obviousness over Castaneda Claims 1, 2, 4-13, 15, and 17-19 Appellant does not offer arguments in favor of dependent claims 2, 4-- 13, 15, and 17-19 separate from those presented for independent claim 1. See Appeal Br. 8-11. 1 We select claim 1 as the representative claim, and claims 2, 4--13, 15, and 17-19 stand or fall with claim 1. 37 C.F.R. Â§ 4I.37(c)(l)(iv). We address claims 30-35 and 36 separately below. Regarding claim 1, the Examiner fmds that Castaneda discloses a low profile plate having all the claimed limitations except a transverse portion that "is fixed across the distal end at a fixed angle of 18 degrees to 26 degrees from perpendicular with respect to [a] longitudinal portion, wherein a radial branch forms an obtuse angle with the longitudinal portion and an ulnar branch forms an acute angle with the longitudinal portion," as claimed. Final Act. 2-3. 2 More particularly, the Examiner fmds that Castaneda discloses "a transverse portion ( 114) fixed across a distal-most portion of the distal end (Figs. 5---6), capable of forming a continuous x-y curvature" and notes that "Castaneda[' s plate] is structured to permit independent reconfiguration of holes of the plate and is fully capable ofbeing arranged so 1 Appeal Brief ("Appeal Br."), filed Dec. 11, 2017. 2 Final Office Action ("Final Act."), dated July 13, 2017. 3 Appeal 2018-006785 Application 13/023,228 that the transverse portion forms a x-y curvature." Final Act. 2; see also Castaneda Abstract. The Examiner further fmds that the transverse portion of Castaneda's plate has "a convex z-axis curvature (132, Fig. 7, Paragraph [0045]), [ and is] sufficiently flexible so that the z-axis curvature is adjustable both prior to positioning the plate on the bone or after initial attachment of the dorsal plate to the radius" because "[t]he plate is capable of being adjustable prior to positioning the plate on the bone or reconfigured even while the plate is located on the bone (Paragraph [0008]), where said z- axis curvature is capable of corresponding to a dorsal contour of a distal radius (Paragraph [0008], Lines 1-2)." Final Act. 2-3. The Examiner also points out that Castaneda discloses an embodiment in which a transverse portion (424a, 424b) [is] fixed at an angle (90 degrees minus P) of 30 degrees from perpendicular with respect to the longitudinal portion ( 424b, Paragraph [0052]), wherein the transverse portion comprises two extensions ( 424a, 424b, Paragraph [0052]) with the frrst extension ( 424b) forming an obtuse angle with the longitudinal portion (Fig. 19) and the second extension (424a) forming an acute angle with the longitudinal portion (Fig. 19). Id. at 4. The Examiner concludes that it would have been obvious to modify the angle between the transverse and longitudinal portions of the Id. plate of Castaneda [] to be between 18 and 26 degrees from perpendicular, wherein a radial branch forms an obtuse angle with the longitudinal portion and an ulnar branch forms an acute angle with the longitudinal portion and a sum of the obtuse angle and the acute angle is greater than 180 degrees as taught by Castaneda [] in order to provide a plate that is more readily and specifically shaped to accommodate the anatomy. Appellant contends that Castaneda "fails to disclose a dorsal plate having a transverse portion with a z-axis curvature that 'corresponds to a 4 Appeal 2018-006785 Application 13/023,228 dorsal contour of a distal radius,'" and that"[ a ]t best, the 'reconfigurable' shape teaching [by Castaneda] would only support the conclusion that the plate of Castaneda can be reconfigured to establish a better fit on the metacarpal and phalanx bones." Appeal Br. 9. In support for this contention, Appellant argues that: ( 1) Castaneda's plate "does not exhibit a 'continuous' curvature" (id.); (2) Castaneda "teaches away from reconfiguring the transverse portion 114 to include the claimed x-y curvature" because Castaneda "discloses that the plates of the system are 'uniquely' shaped for fixation of metacarpal/phalanx fractures, and preferably include a straight shaped plate, T -shaped plate, Y-shaped plate, or a TY-shaped plate that each exhibits a laterally symmetrical design" (id.; citing Castaneda ,r,r 7, 62); (3) "the Examiner's sole argument[] that the proposed modifications would 'provide a plate that is more readily and specifically shaped to accommodate the anatomy"' is conclusory because the modified plate of Castaneda "would be less shaped to accommodate the metacarpal and phalanx bones" (id. citing Castaneda Abstract; ,r,r 6, 42); (4) the proposed modification would render Castaneda's plate unsatisfactory for its intended purpose because Castaneda "is specifically and 'uniquely' designed for repairing metacarpal and phalanx fractures of the hand" and thus the Examiner's proposed modification is based on improper hindsight reconstruction(id. at 11; citing Castaneda Abstract; ,r,r 6, 42, 62); and (5)the proposed modification would frustrate Castaneda's "goal of providing a plate having a laterally symmetrical design" (id.). See also Reply Br. 2-3. 3 3 Reply Brief("Reply Br."), filed June 18, 2018. 5 Appeal 2018-006785 Application 13/023,228 Appellant's contentions are unpersuasive for the following reasons. Castaneda discloses a plate having a "continuous" curvature in the x-y plane as seen in Figures 10 and 14 and thus does not "teach[] away from reconfiguring the transverse portion 114 to include the claimed x-y curvature." See Castaneda Figs. 10, 14. Castaneda does not require symmetry in its plate because, as Appellant points out, Castaneda's plate only ''preferably include[ s] a straight shaped plate, T -shaped plate, Y-shaped plate, or a TY-shaped plate that each exhibits a laterally symmetrical design." Appeal Br. 9; In re Lamberti, 545 F.2d 747, 750 (CCPA 1976) (A reference disclosure is not limited only to its preferred embodiments, but is available for all that it discloses and suggests to one of ordinary skill in the art). We further note that Castaneda does not have a "goal of providing a plate having a laterally symmetrical design" as can be seen in the non- symmetrical plates shown in Figs. 1, 3, 19, and 22. See Castaneda Figs. 1, 3, 19, and 22. In addition, the Examiner's proposed modification is not conclusory because Castaneda discloses that "plate 10 and all plates of the system, can be readily shortened in length or otherwise modified in shape to accommodate a particular bone fracture, bone feature, or individual patient anatomy." Castaneda ,r 44 ( emphasis added). 4 We note that Castaneda discloses that "[t]he plates are very thin," which thus allows bending. See Castaneda Abstract; see also id. at ,r 44 ( disclosing "bending the plate while the plate is positioned on the bone"); id. at,r 45 (disclosing "the surgeon can 4 The holding and italicizing of any reference number from the cited prior art is omitted. 6 Appeal 2018-006785 Application 13/023,228 more freely manipulate the extensions in bending" and "conform[ing] to the shape of the bone which the plate is seated"). As such, the proposed modification would not render Castaneda's plate unsatisfactory for its intended purpose because Castaneda, as Appellant points out, "is specifically and 'uniquely' designed for repairing metacarpal and phalanx fractures of the hand." See Appeal Br. 11. Instead, because Castaneda discloses that its plate can be "modified in shape to accommodate a particular bone fracture, bone feature, or individual patient anatomy" ( Castaneda ,r 44) as pointed out above, we agree with the Examiner that Castaneda's plate is capable of being shaped to correspond to a dorsal contour of a distal radius. See Ans. 14--15. 5 Based on the foregoing reasons, the Examiner's rejection is based on sound technical reasoning as well as evidence disclosed in the cited prior art, rather than improper hindsight reconstruction. See Ans. 14--21. In summary, and based on the record presented, we are not persuaded the Examiner erred in rejecting independent claim 1 as unpatentable over Castaneda. Accordingly, we sustain the Examiner's rejection of claim 1. We further sustain the rejection of claims 2, 4--13, 15, and 17-19, which fall with claim 1. Claims 30-35 Appellant does not off er arguments in favor of dependent claims 31- 35 separate from those presented for independent claim 30. See Reply Br. 3-5. We select claim 30 as the representative claim, and claims 31-35 stand or fall with claim 30. 37 C.F.R. Â§ 4I.37(c)(l)(iv). 5 Examiner's Answer ("Ans."), dated Apr. 16, 2018. 7 Appeal 2018-006785 Application 13/023,228 Appellant contends that in regard to claim 30, Castaneda does not disclose the limitation "a frrst plurality of screw holes positioned along the longitudinal portion, and at least two of the frrst plurality of screw holes are elongated in shape and are the distal most screw holes of the single longitudinal portion." See Reply Br. 3-5. As an initial matter, we note that Figure 1 of Castaneda shows two oblong holes 18b. See Castaneda Fig. 1. Further, the Examiner explains in the Final Office Action that Castaneda "clearly discloses that the plate is structured to permit independent reconfiguration of holes of the plate relative to a longitudinal axis (Abstract)" and that it would have been obvious to modify the screw hole arrangement of the bone plate of Castaneda [] so that the two distal most screw holes of the longitudinal portion are oblong and elongated in shape in order to provide a plate that has a combination of locking and non- locking screw holes that allow[ s] a surgeon to insert locking and dynamic screws at multiple angles to accommodate a particular bone fracture, bone feature, or individual patient anatomy during a fixation procedure. Final Act. 8-9. The Examiner's findings are reasonable and the Examiner's reasoning is based on rational underpinnings. Appellant does not apprise us of error. In summary, and based on the record presented, we are not persuaded the Examiner erred in rejecting independent claim 30 as unpatentable over Castaneda. Accordingly, we sustain the Examiner's rejection of claim 30. We further sustain the rejection of claims 31-35, which fall with claim 30. 8 Appeal 2018-006785 Application 13/023,228 Claim 36 Appellant contends that Castaneda does not disclose that the transverse portion of its plate "is positioned at the fixed angle of 18Â° to 26Â° prior to positioning the plate at the radius," as claimed. See Appeal Br. 12. In the Answer, the Examiner points out that Paragraphs 5 and 8 of Castaneda "disclose that the plates in the system can be bent off the bone through trial and error or reconfigured in shape even while the plate is located on the bone" and that paragraph 5 of Castaneda "further discloses that bending the plate off the bone provides the benefit of permitting proper access to the plate." Ans. 22; Castaneda ,r,r 5, 8. The Examiner reasons that the transverse portion ( 114) of Castaneda "is fully capable of being reconfigured to achieve the claimed angle both prior to positioning the plate on the bone or after initial attachment to the bone" and that a skilled artisan would have been motivated to position the transverse portion of the plate of Castaneda "at the fixed angle as claimed before positioning it against bone in order to provide the surgeon with proper access to the plate during the trial and error shaping and reconfiguring process." Ans. 22. The Examiner's fmdings are reasonable and the Examiner's reasoning is based on rational underpinnings. Appellant does not apprise us of error. Accordingly, we sustain the Examiner's rejection of claim 36 as unpatentable over Castaneda. 9 Appeal 2018-006785 Application 13/023,228 Rejection II - Obviousness over Castaneda and Swords Appellant does not offer arguments in favor of claims 25-28 separate from those presented for independent claim 24. See Appeal Br. 12-13. We select claim 24 as the representative claim, and claims 25-28 stand or fall with claim 24. Regarding claim 24, the Examiner fmds that Castaneda discloses a low profile plate having the claimed limitations as discussed above. Final Act. 10-11. The Examiner fmds that "the screw holes of the plate of Castaneda [] appear to have a countersunk configuration as seen in Fig. 6; however, a clear depiction of the screw and plate once installed is not shown and a countersunk configuration is not positively recited." Id. at 12. The Examiner fmds that Swords discloses a bone plate that has "countersunk holes (115) to receive the head of a surgical screw (Paragraph [0042])." Id. The Examiner concludes that it would have been obvious to modify the low profile plate of Castaneda to have countersunk holes as taught by Swords "in order to minimize potential soft tissue irritation from the head of a screw upon implantation." Id. at 12-13. Appellant contends that Castaneda "fails to disclose a dorsal plate having a transverse portion with a z-axis curvature that 'corresponds to a dorsal contour of a distal radius,'" and Castaneda "fails to teach or suggest a transverse portion that includes 'a continuous x-y curvature."' Appeal Br. 12. Appellant's contentions are similar to those presented above for Rejection I. And, as discussed above, these arguments are not persuasive. See also Ans. 22-25. 10 Appeal 2018-006785 Application 13/023,228 Appellant argues that Castaneda "also fails to teach that the 'screw' includes a countersunk configuration once received within the screw hole." Appeal Br. 13 ( citing Castaneda Figs. 6, 25). 6 Appellant further argues that Swords "does not disclose any bone plate" but rather "a titanium mesh." Id. Appellant contends that "rather than completely redesigning the bone plate of Castaneda by altering the various curvatures and angles, a person of ordinary skill in the art having the benefit of Swords would more than likely be motivated to use the titanium mesh to accommodate a given anatomy" and that "Swords therefore teaches away from the proposed modifications to Castaneda." Id.; italics omitted. These arguments are unpersuasive for the following reasons. We frrst note that Castaneda appears to disclose a countersunk hole as seen in the second-left most hole of the plate shown in Figure 25 and in disclosing that "[l]ocking screw holes 18a hav[ e] internal threads 20 for engaging the threads at the head of a locking screw 620 (FIG. 29) or for receiving a guide 30 (FIG. 4)" and"[ s ]crew holes 18b are dynamic compression plate (DCP) holes each with a respective upper recess 22 for receiving the convex lower surface of a non-locking multidirectional screw 640 (FIG. 31)." See 6 In the Appeal Brief, Appellant contends that in regard to claim 24, Castaneda "fails to disclose that at least two of the plurality of screw holes that are positioned along the longitudinal portion of the plate 'are elongated in shape' and are the distal most screw holes of the single longitudinal portion." Appeal Br. 13. However, in the Answer, the Examiner points out that claim 24 "does not recite these limitations" and in the Reply Brief, Appellant admits that "[t]he features of the 'distal most screw holes' are part of claim 30 rather than claim 24. Appellant inadvertently presented these arguments as part of claim 24 in the opening appeal brief." See Appeal Br. 13; Ans. 26; Reply Br. 3, footnote 1. This argument was addressed above for claim 30. 11 Appeal 2018-006785 Application 13/023,228 Castaneda Fig. 25; ,r 42. Second, even if Castaneda does not disclose countersunk holes, the use of countersunk holes is well-known in the art as evidenced by the disclosure of Swords. See Swords ,r 42; see also Ans. 27 (The Examiner stating that "it is well known and common in the art to use a countersunk screw hole and screw configuration within a bone plate system" such that "the head of a bone screw will lie flush with or not protrude above the upper surface of a bone plate in order to minimize irritation with tissue surrounding the bone plate site.") Third, in response to Appellant's contentions about Swords teaching away from the proposed modifications to Castaneda, the Examiner points out, "as the rejection of record indicates, the device of Swords was not bodily incorporated into the plate (110) of Castaneda[], nor was the device of Swords used to teach the recited limitations of claim 24 as a whole." Ans. 28; see also Final Act. 10-13. Given that the Examiner proposes to modify "the plate holes and screw configuration of Castaneda" merely in view of "the countersunk hole and screw configuration," as taught by Swords (see Ans. 28; see also Final Act. 10-13), Appellant does not provide sufficient evidence or argument to persuade us that Swords teaches away from the proposed modifications to Castaneda. In summary, and based on the record presented, we are not persuaded the Examiner erred in rejecting independent claim 24 as unpatentable over Castaneda and Swords. Accordingly, we sustain the Examiner's rejection of claim 24. We further sustain the rejection of claims 25-28, which fall with claim 24. 12 Appeal 2018-006785 Application 13/023,228 DECISION We AFFIRM the decision of the Examiner to reject claims 1, 2, 4--13, 15, 17-19, and 30-36 as unpatentable over Castaneda. We AFFIRM the decision of the Examiner to reject claims 24--28 as unpatentable over Castaneda and Swords. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 13