Ex Parte Orbay et al

Patent Trial and Appeal BoardJan 31, 2019

13604931 (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/604,931 09/06/2012 Jorge L. Orbay 26135 7590 01/31/2019 LOTT & FISCHER, P.L. P.O. BOX 141098 CORAL GABLES, FL 33114-1098 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. 19202-1-0060 2000 EXAMINER SIPP,AMYR. ART UNIT PAPER NUMBER 3775 MAIL DATE DELIVERY MODE 01/31/2019 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 JORGE L. ORBA Y, THOMAS H. NORMAN, and JUAN SALCEDO Appeal2018-003790 Application 13/604,931 1 Technology Center 3700 Before EDWARD A. BROWN, BRETT C. MARTIN, and RICHARD H. MARSCHALL, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Jorge L. Orbay et al. (Appellants) seek review under 35 U.S.C. Â§ 134(a) of the Examiner's decision rejecting claims 19, 21, 22, and 24. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 Skeletal Dynamics L.L.C. is identified as the real party in interest. Appeal Br. 3. 2 Claims 1-18 are cancelled, and claims 20 and 23 are withdrawn. Id. at 19- 20 (Claims App.). Appeal2018-003790 Application 13/604,931 CLAIMED SUBJECT MATTER Claim 19, reproduced below, is representative of the claimed subject matter on appeal: 19. A hook plate for use in conjunction with a fracture fixation plate, said fracture fixation plate including a bone contacting surface and an opposite surface, said hook plate compnsmg: a substantially rigid plate having a first portion and a second portion; the first portion closely matching the contour of, and adapted for slidable engagement with, said opposite surface of said fracture fixation plate; the second portion configured to wrap around an edge of said fracture fixation plate to engage a bone fragment and reduce a fracture in a direction from said second portion towards said first portion; the first portion being substantially flat and defining a first portion plane; the second portion having at least two projections which curve below the first portion plane and terminate in hook ends adapted to engage said bone fragment; the first portion including a slot that transects said hook plate from a surface of said hook plate that faces the fracture fixation plate to an opposing surface of said hook plate for engagement with a fastener on said opposite surface of said fracture fixation plate; said slot having a completely enclosed periphery and being elongated in a direction parallel to a line extending from said first portion to said second portion; and the first portion including a tensioning aid to facilitate sliding of said hook plate with respect to said fracture fixation plate prior to fastening. Appeal Br. 19 (Claims App.). 2 Appeal2018-003790 Application 13/604,931 REJECTION Claims 19, 21, 22, and 24 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Heam (US 2002/0143336 Al, published Oct. 3, 2002) and Bremer (US 2002/0177850 Al, published Nov. 28, 2002). ANALYSIS As to claim 19, the Examiner finds that Heam discloses a hook plate ( first plate 212) for use in conjunction with a fracture fixation plate ( second plate 214) including a bone contacting surface (surface 226) and an opposite surface (surface 224). Final Act. 3 (citing Heam, Fig. 16). The Examiner finds that the hook plate includes a first portion (first joining portion 230) and a second portion ("212 to the left of230 and [ratchet teeth] 262 as shown in Fig. 16, [first attachment member] 222"). Id. The Examiner finds that Heam does not disclose that the first portion of the hook plate includes a slot and a tensioning aid, as claimed. Id. at 4--5. The Examiner reasons, however, that it would have been obvious to one of ordinary skill in the art to modify Heam' s device by providing joining portion 232 on the hook plate and joining portion 230 and release member 216 on the fracture fixation plate. Id. at 6. That is, the Examiner proposes to reverse the locations of these elements in Heam, which the Examiner characterizes as a mere reversal of the working parts of a ratcheting mechanism that involves only routine skill in the art. Id. at 6. This modification of Heam results in the first portion of the hook plate including a slot (slot 234) that transects the hook plate from a surface of the hook plate facing the fracture fixation plate to an opposing surface of the hook plate (as "shown in Fig. 16 on plate 214") capable of engagement with a fastener ( release member 216) on the opposite 3 Appeal2018-003790 Application 13/604,931 surface of the fracture fixation plate ( as "shown in Fig. 16 on plate 212 "), with the slot having a completely enclosed periphery and being elongated in a direction parallel to a line extending from the first portion to the second portion (as "shown in Fig. 16 on plate 214"). Id. The Examiner finds that Bremer discloses a hook plate (fastener element 10) comprising a plate having a first portion (shank 12) including a tensioning aid ( section 18) capable of facilitating sliding of the hook plate with respect to a fracture fixation plate (locking element 17) prior to fastening. Id. at 5 (citing Bremer, Figs. 1--4, 7, Abstract, ,r,r 26, 31). The Examiner concludes that one of ordinary skill in the art would have modified joining portion 230 on Ream's hook plate by adding a tensioning aid, as taught by Bremer, to "provide a structure that one can grip to maintain the position of the hook plate while moving the translation plate into engagement or that one can pull on to move the hook plate into engagement with the fixation plate and subsequently shorten the overall length of the ratchetted portion." Id. at 6-7. Appellants contend that both Heam and Bremer fail to disclose a hook plate adapted for slidable engagement with the surface opposite to the bone contacting surface of a fracture fixation plate. Appeal Br. 13. In contrast, Appellants contend, Heam discloses first plate 212 that engages the bone contacting surface of second joining portion 232 of second plate 214 (id. at 14 ( citing Heam f 40, Fig. 16) ), and first plate 212 does not include "any portion 'closely matching the contour of, and adapted for slidable engagement with, [the] opposite surface of [a] fracture fixation plate,"' as claimed (id. at 15). Appellants also contend that, in Heam, slot 234 is located on second joining portion 232, not on first plate 212, and fastener 4 Appeal2018-003790 Application 13/604,931 216 is threaded onto the "hook plate," whereas "the fastener on the present invention is threaded onto the facture fixation plate." Id. These contentions are unpersuasive. To the extent it is Appellant's position that Heam and/or Bremer must explicitly disclose a hook plate adapted for slidable engagement with the surface opposite to a bone contacting surface of a fracture fixation plate, we disagree. As stated in KSR, "the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Appellants' contentions that address Heam or Bremer separately fail to adequately take into account the Examiner's findings and reasoning in regard to what the references disclose or suggest in combination, as well as the Examiner's modification of Heam based on a "reversal of parts" rationale. Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Keller, 642 F.2d 413, 425--426 (CCPA 1981 ). The Examiner's rejection modifies Heam by reversing the ratcheting mechanism to "result in the hook plate [i.e., bottom surface of first plate 212 in Fig. 16] slidably engaging the fracture fixation plate surface [top surface of plate 214 in Fig. 16] that is opposite the bone engaging surface, the slot being located on the hook plate, and the corresponding fastener being located on the fracture fixation plate." Ans. 2-3. A combination that "'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 5 Appeal2018-003790 Application 13/604,931 such an arrangement" is obvious. See KSR, 550 U.S. at 417. Appellants do not apprise us of any error in the Examiner's reasoning for modifying Heam by reversing the elements of the ratcheting mechanism. Reply Br. 5. Appellants' contention also fails to acknowledge that the Examiner's proposed modification changes the location of Heam' s release member 216 to result in "a fastener on said opposite surface of said fracture fixation plate," as claimed. Id. Appellants contend that the hook plate of the present invention would not be functional in Ream's device. Appeal Br. 14. According to Appellants, the fracture fixation plate in the present invention is designed to be attached to the bone before the hook plate is engaged with the fracture fixation plate, which is opposite to how Ream's first plate is used. Id. It appears to be Appellants' position that because Ream's first plate 212 is positioned relative to sternum contacting surface 226 of second plate 214 as shown in Figure 16, "the hook plate of the present invention" would not be functional in Heam if it were substituted for first plate 212. The relevant issue, however, is whether it would have been obvious to modify Ream's device, in the manner proposed by the Examiner, to include a hook plate having the limitations recited in claim 19. Appellants assert that "the positioning of the hook plate relative to the bone contacting surface of the fracture fixation plate, and the procedure for using each of these devices, would be different." Appeal Br. 14. Even if these purported differences are correct, we note the preamble of claim 19 recites "[a] hook plate for use in conjunction with a fracture fixation plate." Appeal Br. 19 (Claims App. (emphasis added)). Accordingly, claim 19 is directed to a hook plate having an intended use, and not to a combination of the hook plate and a fracture 6 Appeal2018-003790 Application 13/604,931 fixation plate. Nor is claim 19 directed to a method of using the hook plate with a fracture fixation plate. As recognized by the Examiner, claim 19 does not recite "the procedure for using [ the claimed hook plate and fracture fixation plate]." Ans. 3. Moreover, Appellants do not explain persuasively how the purported differences in how the elements are used would cause the modified first plate to be non-functional when used with the modified second plate in Ream's device. See Appeal Br. 14. Appellants contend that Ream's first plate lacks a tensioning aid. Appeal Br. 15. However, the Examiner acknowledges that Heam does not disclose this feature and relies on Bremer for this teaching. Final Act. 5-7. Appellants also contend that Bremer does not disclose a hook plate, or a hook plate including a slot for slidable engagement with a fracture fixation plate, and does not enable the reduction of a fracture in the direction of relative movement of the purported hook elements. Id. at 15-16. Accordingly, Appellants contend, one of ordinary skill in the art would not have been motivated to combine these elements with Heam. Id. at 16. However, the Examiner's rejection does not rely on Bremer for teaching a hook plate that includes a slot for slidable engagement with a fracture fixation plate. Ans. 4. Indeed, Appellants acknowledge the Examiner relies on Bremer "as providing two plates with a ratchet coupling mechanism that comprises a tensioning aid for maintaining contact between the two plates during use and handling." Id.; Reply Br. 6. Claim 19 recites "a tensioning aid to facilitate sliding of said hook plate with respect to said fracture fixation plate prior to fastening." Appeal Br. 19 (Claims App.). Claim 19 does not specify the structure of the "tensioning aid," but only recites language as to its function. The Examiner has articulated reasoning 7 Appeal2018-003790 Application 13/604,931 as to why one of ordinary skill would have modified Heam to include a tensioning aid, as claimed. Final Act. 6-7. Appellants' contentions do not apprise us of error in the Examiner's finding that Bremer teaches a tensioning aid, or in the Examiner's reasoning for modifying Heam to include a tensioning aid. For the foregoing reasons, we sustain the rejection of claim 19, of dependent claims 21, 22, and 24, which are not separately argued, as unpatentable over Heam and Bremer. DECISION The rejection of claims 19, 21, 22, and 24 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended according to 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 8