Ex Parte Meyer

Patent Trial and Appeal Board

Aug 30, 2017

13102293 (P.T.A.B. Aug. 30, 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.
13/102,293 05/06/2011 Thomas L. Meyer III MEYEF 105 6770
2555 7590 09/01/2017
KREMBLAS & FOSTER
7632 SLATE RIDGE BOULEVARD
REYNOLDSBURG, OH 43068
EXAMINER
KAMIKAWA, TRACY L
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
09/01/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS L. MEYER III
Appeal 2016-001409
Application 13/102,2931
Technology Center 3700
Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
NEWMAN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a surgical bone
fixation screw. The Examiner entered final rejections for anticipation and
obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
STATEMENT OF THE CASE
Background
This invention relates generally to medical bone
fixation/stabilization systems which are devices that commonly
1 Appellant identifies the Real Party in Interest as Thomas L. Meyer, III, and
the assignee of record, Syberpine Limited. App. Br. 2.
Appeal 2016-001409
Application 13/102,293
comprise a system of screws, plates and rods that are attached
to bones in various surgical procedures. The invention more
particularly relates to an improved screw for use in such bone
fixation/stabilization systems. The improved screw has
structural features that guide the screw along the trajectory of a
bore or passageway that has been preformed by a surgeon. The
self-guiding feature allows the surgery to be performed with a
smaller incision that is characteristic of surgical procedures that
use a guide wire while allowing the guide wire to be removed
prior to insertion of the screw so that complications that
sometimes occur when a screw is guided by a guide wire can be
avoided.
Spec. 11.
The invention is a surgical bone fixation screw that is
improved by a self-guiding end segment that is threadless,
elongated and has a smooth outer surface with no cutting edges.
The end segment has a length of at least 8 mm and preferably
15 mm and has a bluntly rounded end and an outer contour that
is smoothly blended to the threaded shank of the screw. Most
preferably, the bluntly rounded end is substantially a prolate
hemispheroid.
Id. 17.
The Claims
Claims 1—3, 9, 10, and 12 are on appeal. Final Action l.2 Claim 1 is
illustrative and reads as follows (emphasis added):
1. An improved surgical bone fixation screw having a
bone fixation screw head, an end segment distally from the head
and an intermediate shank having outwardly protruding screw
threads, the intermediate shank being interposed between and
connecting the head and the end segment, wherein the
improvement makes the screw self-guiding during a surgical
installation procedure and comprises:
2 Examiner’s Final Action, mailed December 4, 2014.
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Application 13/102,293
the threads of the intermediate shank extending
continuously along the intermediate shank to the end
segment; and
the end segment formed adjacent the screw threads of the
intermediate shank as a threadless, elongated, guiding end
segment having a smooth outer surface with no cutting
edges, the end segment also having
(a) a length of at least 8 mm; and
(b) a bluntly rounded end that is smoothly and
directly blended to the intermediate shank and
having no identifiable junction with the
intermediate shank, wherein the bluntly rounded
end is a shape selectedfrom the group consisting
of a three-dimensional quadratic surface, a
hemiellipsoid, a prolate hemispheroid, and an
elliptic paraboloid.
App. Br. 11 (Claims Appendix).
The Issues
The following rejections are before us to review:
Claim 1 is rejected under pre-AIA 35 U.S.C. § 102(b) as
anticipated by Dill.3 Final Act. 7.
Claims 2, 3, 9, 10, and 12 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as obvious over Dill. Id. at 8.
I
The Examiner has rejected claim 1 as anticipated by Dill. The
Examiner finds that Dill discloses all of the limitations of claim 1. Final
Act. 7. Specific to the issues on appeal, the Examiner finds Dill discloses
“outwardly protruding screw threads (26) (col. 6 /11. 63 - col. 7 711. 20)
3 US 7,232,283 B2. Issued June 19, 2007 (“Dill”).
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shown in Figs. 1-2, .. . and a bluntly rounded end . . . wherein the bluntly
rounded end is a three-dimensional quadratic surface.” Id.
The issue in this rejection is whether a preponderance of the evidence
supports the Examiner’s finding that Dill anticipates claim 1.
Appellant argues Dill does not anticipate claim 1 because:
the Dill fastener cannot be rotated into a hole like a screw.
Dill’s threads are so close to parallel to the axis of the Dill
fastener that the threads would merely ream out (cut radially
into) any hole into which the Dill fastener was inserted and then
rotated. Although the Dill “threads” are helical they are like the
cutting edges along a high speed drill bit. Unlike a screw, a nail
is axially driven into a material by a hammer or impact tool.
App. Br. 5.
Appellant further argues:
The examiner argues that Dill shows a three-dimensional
quadratic surface and cites Fig. 2. . . . Fig. 2 looks like it is
made up of arcs of a circle, not exponential curves. More
importantly, the examiner cites nothing in the text to support
the conclusion that Dill shows a quadratic surface. Dill says in
connection with Figs. 1 and 2 that his end portion 12 has an
“ogive shape or configuration, which may either be that of a
secant ogive or a tangent ogive” [col. 6, lines 7—9].
Reply Br. 2. Appellant argues Dill does not disclose shapes beyond
the two ogive shapes disclosed and that the “ogive shapes have contours
made up of circular arcs with a radius [and] are not quadratic or exponential
shapes. Id. at 3.
We agree with Appellant that the evidence does not support the
Examiner’s finding that Dill teaches all of the limitations of claim 1.
The Specification discloses that the “outwardly protruding screw
threads” anchor the screw in the surrounding material, such as bone:
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Application 13/102,293
The surgeon then begins to insert the distal guiding end
segment of the bone fixation screw into the preformed passage
though the soft tissue and into the preformed bore in the bone.
This is initially done with a longitudinal thrust without rotation
of the screw until the threads of the screw engage the bore in
the bone.
Spec. 131. The Specification contrasts the function of the threadless
guided end segment, and further explains the function of “outwardly
protruding screw threads”:
It is very important that the guiding end segment of the
invention be threadless. The absence of threads along the entire
guiding end segment prevents the leading end of the screw from
digging into the wall of the bore and resisting an initial, manual,
longitudinal push of the screw into the preformed bore by the
surgeon. Because of the length of the guiding end segment, the
screw threads on the shank engage the bore in the bone only
after the surgeon has positioned the screw in substantial
alignment with the bore. This feature is important because such
positioning must be done by feel, without the advantage of
seeing the entrance of the screw into the bore. The term
“threadless” means that there are no screw threads on the
guiding end segment. Threads are relatively sharp, helically
arranged ridges that protrude outwardly from a surface so that
they can engage a surrounding material and function to retain
the screw in the material.
Id. 121.
With regard to screw threads, the Examiner points us Figure 2 and the
following disclosure of Dill, reproduced below:
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Figure 2 is “an enlarged side elevational view of the new and
improved first embodiment fastener . . . wherein the new and improved
fastener is illustrated as being inserted into, and mounted within, a pair of
overlapping thin gauge sheet metal members.” Dill 5:11—15.
Continuing further, it is noted that the intermediate shank
portion 14 of the fastener 10 comprises a forwardly disposed 65
spiral-threaded shank portion 22 which is integrally connected
at the forward end portion thereof to the pointed end portion 12
of the fastener 10, and a rearwardly disposed between the
spiral-threaded shank portion 22 and the head portion 16 of the
fastener 10. The forwardly disposed spiral-threaded shank
portion 22 comprises a plurality of spiral threads 26 which are
disposed at an angle of approximately 30° with respect to the
longitudinal axis 18 of the fastener 10, and it is noted that the
purpose of providing such spiral threads 26 upon the shank
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portion 22 of the fastener 10, which is disposed immediately
upstream or rearwardly of the pointed end portion 12 of the
fastener 10 so as to be interposed between the pointed end
portion 12 of the fastener 10 and the annularly fluted shank
portion 24 of the fastener 10, is to effectively extrude and
thereby form mating thread forms within the annular walls or
rim portions 28, 30 of the thin gauge sheet metal components or
structures 32, 34 which effectively define or surround the
apertures 36, 38 previously formed within the thin gauge sheet
metal components or structures 32, 34 by means of the pointed
end portion 12 of the fastener 10, all as can best be appreciated
from FIG. 2.
Dill 6:63-7:20 (emphasis added).
Thus, Dill discloses that the spiral threads on the shank function to
extrude the material defining the aperture, not to anchor the screw in the
bone. Id. Indeed, Dill discloses that the anchoring is accomplished as
follows:
engaged interaction, defined between the annular walls or rim
portions 28, 30 of the thin gauge sheet metal components or
structures 32, 34, and the particular ones of the rearward,
radially inwardly inclined annular faces 44 of the rearwardly
disposed annularly fluted shank portion 24 of the fastener 10,
serves to effectively secure and lock the fastener 10 within the
thin gauge sheet metal structures or components 32, 34 such
that the fastener 10 exhibits a significantly high pull-out
resistance value with respect to the thin gauge sheet metal
structures or components 32, 34.
Id. 8:37-46.
Accordingly, the spiral-threaded shank portion identified by the
Examiner does not meet the limitation of “outwardly protruding screw
threads.” Even if we considered the radially inwardly inclined annular faces
of the rearwardly disposed annularly fluted shank portion of the fastener to
meet that limitation, Dill would not disclose “the threads of the intermediate
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Application 13/102,293
shank extending continuously along the intermediate shank to the end
segment; and the end segment formed adjacent the screw threads of the
intermediate shank.” We further agree with Appellant (Reply Br. 2) that the
Examiner’s conclusory statement that “the bluntly rounded end is a three-
dimensional quadratic surface” (Final Act. 7) does not sufficiently explain
why the disclosure of Dill meets the limitation “wherein the bluntly rounded
end is a shape selected from the group consisting of a three-dimensional
quadratic surface, a hemiellipsoid, a prolate hemispheroid, and an elliptic
paraboloid.”
Because the Examiner has not provided evidence sufficient to support
a prima facie case of anticipation, we reverse the rejection of claim 1 as
anticipated by Dill.
II
The Examiner has rejected claims 2, 3, 9, 10, and 12 as obvious over
Dill. The issue in this rejection is whether a preponderance of the evidence
supports the Examiner’s conclusion that Dill suggests the limitations of
claims 2, 3, 9, 10, and 12.
Claims 2 and 3
The rejection of claims 2 and 3 relies upon the Examiner’s reasoning
applied in the anticipation rejection over Dill for the teaching of “having
outwardly protruding screw threads” and “wherein the bluntly rounded end
is a shape selected from the group consisting of a three-dimensional
quadratic surface, a hemiellipsoid, a prolate hemispheroid, and an elliptic
paraboloid.” Having reversed the anticipation rejection for the reasons given
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above, we necessarily reverse the obviousness rejection of claims 2 and 3 as
the Examiner does not overcome the deficiencies noted above.
Claims 9, 10, and 12
The Examiner finds Dill discloses “outwardly protruding screw
threads (126) (col. 11 /11. 21—54), shown in Fig. 4.” Final Act. 9. The
Examiner further finds Dill Figure 4 discloses “a bluntly rounded end (distal
non-cylindrical portion of 112) smoothly and directly blended to the shank
extension segment and having no identifiable junction with the shank
extension segment wherein the bluntly rounded end is a prolate
hemispheroid.” Id. at 10.
Figure 4 of Dill is reproduced below:
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Application 13/102,293
Figure 4 “is an enlarged side elevational view, similar to that of FIG.
1, showing, however, a second embodiment of a new and improved
fastener.” Dill 5:30—32.
Appellant’s arguments regarding the deficiencies of Dill were made
jointly in the briefs with regard to both rejections and will not be repeated
here for brevity.
The Examiner’s identification of element 126 of Dill as the
“outwardly protruding screw threads” correlates to the Examiner’s
identification of element 26 in Figure 1 as discussed above with regard to the
anticipation rejection. Accordingly, we rely on and apply here our prior
conclusion that Dill does not teach “outwardly protruding screw threads”
and further find that Dill does not otherwise render such threads obvious to
the skilled artisan.
We further find that the Examiner’s conclusory statement that “the
bluntly rounded end is a prolate hemispheroid” (Ans. 10) does not
sufficiently explain why the disclosure of Dill meets the limitation “wherein
the bluntly rounded end is a shape selected from the group consisting of a
three-dimensional quadratic surface, a hemiellipsoid, a prolate
hemispheroid, and an elliptic paraboloid.”
Because the Examiner has not provided evidence sufficient to support
a prima facie case of obviousness, we reverse the rejection of claims 9, 10,
and 12 as obvious over Dill. See In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (“In rejecting claims under 35 U.S.C. § 103, the examiner bears
the initial burden of presenting a prima facie case of obviousness. Only if
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that burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.”).
SUMMARY
We reverse both rejections on appeal.
REVERSED
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