Ex Parte Pischl et al

Patent Trial and Appeal Board

Aug 30, 2017

13293375 (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.
13/293,375 11/10/2011 Susanne PISCHL 30265 8753
535 7590
KF ROSS PC
311 E York St
Savannah, GA 31401-3814
09/01/2017 EXAMINER
SHIRSAT, MARCELA
ART UNIT PAPER NUMBER
3776
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
following e-mail address(es):
savannah@kfrpc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUSANNE PISCHL and STEFFEN DIRR
Appeal 2015-007738
Application 13/293,375
Technology Center 3700
Before CHARLES N. GREENHUT, JILL D. HILL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-007738
Application 13/293,375
STATEMENT OF THE CASE
Appellants Susanne Pischl and Steffen Dirr1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision, as set forth in the Final Office
Action dated March 6, 2013 (“Final Act.”), rejecting claims 1—12. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a bone plate. Claims 1 and 6 are the
independent claims on appeal. Claim 1, reproduced below with disputed
limitations italicized for emphasis, is illustrative of the claimed subject
matter:
1. In combination:
a bone plate formed with a throughgoing hole centered on
an axis and formed with a radially inwardly open outer groove;
a screw fastener having a shaft engageable coaxially
through the hole and a head of larger diameter than the shaft and
adapted to bear axially on the plate around the hole, the shaft
being formed offset from the head with a radially outwardly a
projecting ridge defining a radially outwardly open inner groove
aligned radially with the outer groove when the fastener is fitted
through the hole with the head bearing on the plate; and
an elastically deformable ring of a diameter corresponding
to that of the hole at the outer groove, annularly surrounding the
shaft at the inner groove, and formed with at least one radially
inwardly directed projection that, when the ring is fitted to the
outer groove and the fastener is seated in the hole, projects
radially inward into the inner groove of the fastener.
1 Appellants identify Ulrich GmbH & Co. KG as the real party in
interest. Appeal Brief, dated June 18, 2014 at 1 (“Br.”).
2
Appeal 2015-007738
Application 13/293,375
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Petersen
Duong
Boomer
Konieczynski
US 4,367,602 Jan. 11, 1983
US 2005/0049593 A1 Mar. 3, 2005
US 2005/0240185 A1 Oct. 27, 2005
US 2006/0241616 A1 Oct. 26, 2006
REJECTIONS
The Examiner made the following rejections:
1. Claims 1—11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Duong, Konieczynski, and Petersen.
2. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Duong, Konieczynski, Petersen, and Boomer.
Appellants seek our review of these rejections.
DISCUSSION
The Rejection of Claims 1—11
as Unpatentable Over Duong, Konieczynski, and Petersen
Appellants argue claims 1—11 as a group. Appeal Br. 6—9. We select
claim 1 as the representative claim, and claims 2—11 stand or fall with claim
1. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Duong discloses all of the limitations of
claim 1 except for a ring formed with at least one radially inwardly directed
projection, and that sits annularly surrounding the shaft at the inner groove.
Final Act. 3. For these missing limitations, the Examiner finds that
Konieczynski discloses a “ring (locking member 70) annularly surrounds the
shaft (elongated body 62) at the inner groove (groove 60 with bottom flange
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Application 13/293,375
54 and top flange 48),” and Petersen discloses a ring (lock 46) formed with
at least one radially inward directed projection (legs 49). Id. (citing
Konieczynski 179, Figs. 1A, 2A; Peterson 3:23—32). The Examiner
determines that it would have been obvious “to modify the apparatus in
Duong by adding an inward directed projection in view of Petersen in order
to enhance the grip between the fastener and the ring, and to modify the
apparatus by adding a screw with an groove about the shaft in view of
Konieczynski in order for the compressive force between the retaining ring
and the screw to be more evenly distributed between the shaft and the
bottom shoulder of the head, as opposed to by the head alone adding to the
structural stability of the screw.” Id. at 3^4.
Appellants argue that the rejection of claim 1 is erroneous for several
reasons. First, Appellants argue that Petersen is non-analogous art. Appeal
Br. 10-12.
To qualify as prior art for an obviousness analysis, a reference
must quality as “analogous art,” i.e., it must satisfy one of the
following conditions: (1) the reference must be from the same
field of [the inventor’s] endeavor; or (2) the reference must be
reasonably pertinent to the particular problem with which the
inventor is involved.
K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012)
(quoting Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321
(Fed. Cir. 2011)). Appellants argue that Petersen and the inventor’s field of
endeavor are different: “[t]here is no way that a system for mounting an
excavator tooth would be considered a teaching for how to make a piece of
surgical equipment. The very idea of a surgeon consulting the bulldozer art
for guidance is comical.” Id. at 10.
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Application 13/293,375
In response to Appellants’ arguments, the Examiner explains that
Petersen is analogous art under the second test, not the first test. Final Act.
6—7. According to the Examiner,
the clip, or retaining ring, in Peterson deals with the same
problem as applicant was confronted by namely, the need for a
secure attachment means to keep two pieces from disengaging
from one another. The use of retaining rings to keep two pieces
from disengaging is a defining characteristic of retaining rings
themselves (i.e. it is what they are intended to be used for), and
are so generic within the scope of the engineering art that absent
some novel use of the retaining ring any reference providing a
retaining ring for preventing two parts from disengaging would
commend itself to an inventors attention in considering his
problem. Thereby making it an analogous reference since it is
solving the same problem.
Id. at 7; see also Answer, dated June 4, 2015, at 6—7 (“Ans.”).
We discern no error in the Examiner’s finding that retaining rings for
securing two pieces together are generic in the engineering art. “Familiar
items may have obvious uses beyond their primary purposes.” KSR Int'l Co.
v. Teleflex, Inc., 550 U.S. 398, 420 (2007). The decision in In re Paulsen,
30 F.3d 1475 (Fed. Cir. 1994) is instructive. In Paulsen, the Federal Circuit
found that an inventor considering a latch mechanism for portable computers
would naturally look to references employing other “housings, hinges,
latches, springs, etc.,” which came from areas such as “a desktop telephone
directory, a piano lid, a kitchen cabinet, a washing machine cabinet, a
wooden furniture cabinet, or a two-part housing for storing audio cassettes.”
Id. at 1481—82. Here, the problems encountered by the inventors—the need
to connect a ring around a shaft located inside a groove —are not unique to
bone plates. In any event, because Appellants only address the first
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Application 13/293,375
analogous-art test and do not address the Examiner’s findings under the
second analogous-art test, Appellants do not identify Examiner error.2
Second, Appellants argue the Petersen does not disclose “a ‘ring’ that
is ‘annularly surrounding’ a shaft of a bolt.” Br. 11—12. The Examiner,
however, finds that (1) Duong, not Petersen, discloses a ring that projects
radially inward into the inner groove 166 (Final Act. 2—3), and (2)
Konieczynski, not Petersen, discloses a ring (i.e., locking member 72)
annularly surrounding the shaft (i.e., elongated body 62) at the inner groove
(i.e., groove 60 with bottom flange 54 and top flange 48), as recited in claim
1. Final Act. 3; In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.”). Appellants do not address the rejection as
articulated by the Examiner and, thus, do not identify error by the Examiner.
Third, Appellants argue that Petersen’s “bump 51” “works by bearing
outwardly into the surrounding outer groove, which is the opposite of this
invention.” Br. 12. Contrary to Appellants’ argument, the Examiner finds
that Petersen’s inwardly projecting legs 49, not bumps 51, correspond to the
“inwardly directed projection” recited in claim 1. Ans. 7—8; see also
Petersen Figs. 4, 4A. Appellants do not address the rejection as articulated
by the Examiner and, thus, do not identify error by the Examiner.
For the reasons above, the rejection of claim 1 is sustained. Claims 2—
11 fall with claim 1.
2 Appellants state that amended claim 6 is directed to “two projections”
that produce a “centering function.” Br. 13—14. Claim 6 does not recite
these limitations. Br. 24, Claims App’x.
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The Rejection of Claim 12
as Unpatentable Over Duong, Konieczynski, Peterson, and Boomer
Claim 12, which depends from independent claim 1, recites “the
recess has a frustoconical surface and the head has a complementary surface
engageable therewith.”
In response to the Examiner’s rejection of claim 12, Appellants repeat
the identical arguments presented above for claim 1. Compare Br. 8—14 and
Br. 14—21. For the same reasons discussed above with respect to the
rejection of claim 1, Appellants’ arguments regarding claim 12 are
unpersuasive.
With respect to Boomer, Appellants argue that Boomer “does not
show a fixation ring of any type” and the “use of a ring-retained screw in a
tapered hole is nowhere suggested in Boomer.” Br. 20. The Examiner,
however, finds that Duong and Konieczynski, not Boomer, discloses the ring
recited in claim 1. Final Act. 2—3. The Examiner relies on Boomer for
disclosure of a recess having a frustonconical surface. Final Act. 5; In re
Merck & Co., 800 F.2d at 1097 (“Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references.”). Again, Appellants do not
address the rejection as articulated by the Examiner and, thus, do not
identify error by the Examiner.
The rejection of claim 12 is sustained.
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Application 13/293,375
DECISION
For the above reasons, the Examiner’s rejections of claims 1—12 are
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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