Ex Parte Orbay et al

Patent Trials and Appeals Board

Jan 31, 2019

13604931 - (D) (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.
§ 134(a) of the Examiner's decision rejecting claims 19, 21, 22, and 24. 2
We have jurisdiction under 35 U.S.C. § 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2 Claims 1-18 are cancelled, and claims 20 and 23 are withdrawn.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.).
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Appeal2018-003790
Application 13/604,931
REJECTION
Claims 19, 21, 22, and 24 are rejected under 35 U.S.C. § 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
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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
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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
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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
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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
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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. § 1.136(a)(l )(iv).
AFFIRMED
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