Ex Parte Wallenstein et al

Patent Trial and Appeal Board

Aug 21, 2017

13251622 (P.T.A.B. Aug. 21, 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.
13/251,622 10/03/2011 Todd Wallenstein 1449-241 7742
31554 7590 08/23/2017
CARTER, DELUCA, FARRELL & SCHMIDT, LLP
445 BROAD HOLLOW ROAD
SUITE 420
MELVILLE, NY 11747
EXAMINER
SHIRSAT, MARCELA
ART UNIT PAPER NUMBER
3776
NOTIFICATION DATE DELIVERY MODE
08/23/2017 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):
docket @ cdfslaw. com
tgiordano@cdfslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TODD WALLENSTEIN, MEGAN MCMULLEN, and
LARRY MCCLINTOCK
Appeal 2015-007708
Application 13/251,6221
Technology Center 3700
Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Todd Wallenstein et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner’s final decision rejecting claims 1—4, 6—10, and 14—23.2
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 According to Appellants, K2M, Inc. is the real party in interest. Br. 2
(filed Jan. 2, 2015).
2 Claims 5 and 11—13 are canceled. Br. 2.
Appeal 2015-007708
Application 13/251,622
INVENTION
Appellants’ invention relates to an orthopedic plate attachable to a
vertebrae that can modify its length in order to maintain a constant loading
on the vertebrae. Spec. para. 2.
Claims 1 and 21 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A bone plate operatively attachable to a bone, the bone
plate comprising:
a first segment;
a second segment, the first and second segments
positioned along a longitudinal axis and movable relative to one
another;
a locking mechanism that inhibits relative axial
movement of the first and second segments along the
longitudinal axis away from one another and any non-axial
movement of the first and second segments relative to one
another; and
a rail extending axially from the first segment, wherein a
portion of the rail is slidably engageable with the second
segment independent of the locking mechanism.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1, 4, 6, 7, 9, and 20—23 under
35 U.S.C. § 102(b) as being anticipated by Freid et al. (US
2008/0065070 Al, pub. Mar. 13, 2008, hereafter “Freid”).
II. The Examiner rejected claims 1—3, 6, 7, and 14—16 under
35 U.S.C. § 102(b) as being anticipated by Abdou (US
2005/0177163 Al, pub. Aug. 11,2005).
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Application 13/251,622
III. The Examiner rejected claims 8—10 and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Abdou and Barrall et al.
(US 2006/0116683 Al, pub. June 1, 2006, hereafter “Barrall”).
IV. The Examiner rejected claims 17—19 under 35 U.S.C. § 103(a)
as being unpatentable over Abdou, Barrall, and Bono (US
5,954,722, iss. Sept. 21, 1999).
ANALYSIS
Rejection I
Appellants have not presented arguments for the patentability of
claims 4, 6, 7, 9, and 20 apart from claim 1 and for the patentability of
claims 22 and 23 apart from claim 21. See Br. 5— 6. Therefore, in
accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select claims 1 and 21 as
representative claims to decide the appeal of the rejection of these claims,
with claims 4, 6, 7, 9, and 20 standing or falling with claim 1 and claims 22
and 23 standing or falling with claim 21.
The Examiner finds that Freid discloses a plate that is attachable to a
bone including, inter alia, a first segment (second plate 34), a second
segment (first plate 32), a locking mechanism (movement mechanism 52 and
flexible arm 68), and a rail extending axially from the first segment, such
that “a portion of the rail is slidably engageable with the second segment. . .
independent of the locking mechanism.” Final Act. 2—3 (transmitted July
31, 2014) (citing Freid, paras. 83—85, Fig. 6).3 Shown below is the
Examiner’s annotated Figure 6 of Freid:
3 Parentheticals refer to the nomenclature of Freid.
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Application 13/251,622
The Examiner’s annotated Figure 6 of Freid shows rails on each side of the
first segment (second plate 34).* * 4 Id. at 3.
Appellants argue that because Freid discloses that when first and
second plates 32, 34 are coupled with coupling members 36, coupling
cavities 38, and coupling member opening 78, serrations 54 on first plate 32
engage protrusion 56 on flexible arm 68 of second plate 34 such that first
plate 32 is inhibited from moving away from second plate 34. Br. 5. Hence,
according to Appellants, Freid fails to disclose “a rail extending axially from
the first segment, wherein a portion of the rail is slidably engageable with
the second segment independent of the locking mechanism,” as recited by
each of claims 1 and 21. Id. at 4 (emphasis omitted).
We are not persuaded by Appellants’ Arguments for the reasons set
forth by the Examiner. See Ans. 11 (transmitted June 17, 2015).
Specifically, we agree with the Examiner that because in Freid the rails
extend axially further than flexible arm 68, plates 32, 34 can slide into
engagement before movement mechanism 52 on plate 32 engages flexible
4 Although the Examiner refers to this Figure as “Figure 1,” we note that this
is an annotated version of Freid’s Figure 6.
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Application 13/251,622
arm 69 on plate 34. Id.; see also Final Act 11. Accordingly, in contrast to
Appellants’ position, Freid discloses a rail that slides independent of the
locking mechanism, as called for by each of claims 1 and 21.
We further agree with the Examiner that “coupling members (36) still
allow for the movement of the plates (32, 34) towards each other as the
vertebral bodies settle” because Freid discloses that the insertion of coupling
members 36 through coupling cavities 38 of plate 32 results in inhibiting the
rotation and/or torquing of plate 30 during its use, and not its axial
movement. Ans. 11 (citing Freid, para. 84). Appellants, thus, have not
adequately apprised us of error in the Examiner’s findings and reasoning.
In conclusion, for the foregoing reasons, we sustain the rejection of
claims 1 and 21 under 35 U.S.C. § 102(b) as anticipated by Freid. Claims 4,
6, 7, 9, and 20—23 fall with claim 1 and claims 22 and 23 fall with claim 21.
Rejection II
Appellants have not presented arguments for the patentability of
claims 2, 3, 6, 7, and 14—16 apart from claim 1. See Br. 6— 8. Therefore, we
select claim 1 as a representative claim to decide the appeal of the rejection
of these claims, with claims 2, 3, 6, 7, and 14—16 standing or falling with
claim 1.
The Examiner finds that Abdou discloses a plate that is attachable to a
bone including, inter alia, a first segment 20, a second segment 110, a
locking mechanism (locking element 30 and screw 21), and a rail 2101 (rod)
extending axially from first segment 20, wherein a portion of rail 2101 is
slidably engageable with second segment 110 independent of locking
mechanism 21, 30. Final Act. 5—6 (citing Abdou, paras. 53—55, 64, 72, 74,
and 81, Figs. 8, 9, 13, 14A, and 14B). According to the Examiner, when
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Application 13/251,622
locking mechanism 21, 30 is in a locked position, plates 20, 110 can move
towards each other as the bones in the affected area settle, but cannot move
away from each other. Id. at 10-11 (citing Abdou, paras. 74, 81).
Appellants argue that Abdou does not disclose a locking mechanism
that prevents the claimed first and second segments from axially moving
away from each other. Appeal Br. 7—8. According to Appellants, because
Abdou discloses that when screw 21 is in a locked position components 20
and 30 move in unison within opening 1162 of component 110, Abdou’s
system does not inhibit “relative axial movement of the first and second
segments along the longitudinal axis away from one another,” as called for
by claim 1. Id. at 8.
We are not persuaded by Appellants’ arguments for the reasons set
forth by the Examiner. See Ans. 12—13. Specifically, Abdou discloses that
when screw 21 is in an open position component 110 and locking
component 30 cannot move relative to one another, but component 20 can
move freely relative to components 30, 110 along rods 2101 and thus,
provide a plate of variable length. Id. at 12; see also Abdou paras. 73, 74,
Fig. 14A. However, when screw 21 is in a closed position, side arm 320 of
locking component 30 engages protrusion 250 of component 20 and both
components 20, 30 move in unison along length “L” within opening 1162 of
component 30 and thus, can accommodate bone subsidence. Id. at 12—13;
see also Abdou para. 74, Figs. 13, 14B. Abdou further explains that when
screw 21 is in a closed position the length of the plate is locked at a “set
length,” but the components 20, 110 can still move towards each to
accommodate bone settling. Id. at 13; see also Abdou para. 81. Hence,
although Abdou’s locking mechanism 21, 30 allows axial movement of
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Application 13/251,622
components 20, 110 towards each other, the locking mechanism prevents
axial movement of components 20, 110 away from each other. Appellants,
thus, have not adequately apprised us of error in the Examiner’s findings and
reasoning.
In conclusion, for the foregoing reasons, we sustain the rejection of
claim 1 under 35 U.S.C. § 102(b) as anticipated by Abdou. Claims 2, 3, 6,
7, and 14—16 fall with claim 1.
Rejections III and IV
Appellants rely on the arguments discussed supra in Rejection II. See
Br. 8—9. Therefore, for the same reasons discussed above, we likewise
sustain the rejections under 35 U.S.C. § 103(a) of claims 8—10 and 20 as
unpatentable over Abdou and Barrall and of claims 17—19 as unpatentable
over Abdou, Barrall, and Bono.
SUMMARY
The Examiner’s decision to reject claims 1, 4, 6, 7, 9, and 20—23 under
35 U.S.C. § 102(b) as being anticipated by Freid is affirmed.
The Examiner’s decision to reject claims 1—3, 6, 7, and 14—16 under
35 U.S.C. § 102(b) as being anticipated by Abdou is affirmed.
The Examiner’s decision to reject claims 8—10 and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Abdou and Barrall is affirmed.
The Examiner’s decision to reject claims 17—19 under 35 U.S.C.
§ 103(a) as being unpatentable over Abdou, Barrall, and Bono is 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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