Robert Frigg et al.

Patent Trials and Appeals BoardAug 30, 2019

15158200 - (D) (P.T.A.B. Aug. 30, 2019)

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. 15/158,200 05/18/2016 Robert FRIGG 10139/20104 1008 76960 7590 08/30/2019 Fay Kaplun & Marcin, LLP 150 Broadway, suite 702 New York, NY 10038 EXAMINER LAWSON, MATTHEW JAMES ART UNIT PAPER NUMBER 3775 MAIL DATE DELIVERY MODE 08/30/2019 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 ROBERT FRIGG, ALFRED NIEDERBERGER, and CHRISTOPH FUERST1 ____________ Appeal 2019-001319 Application 15/158,200 Technology Center 3700 ____________ Before JAMES P. CALVE, MICHAEL L. WOODS, and ALYSSA A. FINAMORE, Administrative Patent Judges. WOODS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 20–34. Appeal Br. 1. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We AFFIRM. 1 According to Appellants, the real party in interest is DePuy Synthes Products, Inc. Appeal Br. 2. Appeal 2019-001319 Application 15/158,200 2 CLAIMED SUBJECT MATTER Appellants’ invention relates to a bone plate for the treatment of fractured bones. Spec. 1 (Field of the Invention). Claim 20 is the sole independent claim (Appeal Br. 10–11 (Claims Appendix)) and is reproduced below, with emphases added to limitations discussed in this Decision. 20. A bone plate comprising: a base plate defining an upper surface and a bone contacting surface, the base plate including an anchoring portion extending along a longitudinal axis of the base plate from a first end of the base plate and including a first plate hole extending through the anchoring portion from the upper surface to the bone contacting surface, an intermediate portion of the base plate extending along the longitudinal axis from the anchoring portion to a coupling portion of the base plate, the coupling portion extending along the longitudinal axis to a second end of the base plate and including a sliding plate receiving slot, the sliding plate receiving slot extending from the upper surface to a supporting surface extending substantially parallel to the upper surface at a depth T equal to a thickness of a first sliding plate between upper and bone contacting surfaces, the supporting surface including a central opening extending entirely through the coupling portion to open a portion of the sliding plate receiving slot between the upper and lower surfaces, the sliding plate receiving slot being open at the second end of the base plate and including an end wall at an end thereof closest to the first end of the base plate; and a first sliding plate received in the sliding plate receiving slot, an outer surface of the first sliding plate on the supporting surface and interacting with surfaces of the sliding plate receiving slot to mechanically prevent the first sliding plate from moving perpendicular to the upper surface of the coupling portion while permitting the first sliding plate to slide along the longitudinal axis relative to the coupling portion, a range of motion of the first sliding plate being defined by the end wall of the sliding plate receiving slot, a second plate hole extending through the first sliding plate from an upper surface thereof to a Appeal 2019-001319 Application 15/158,200 3 bone facing surface of the first sliding plate, the second plate hole being a locking hole extending through the first sliding plate so that, when the sliding plate is received in the sliding plate receiving slot, the second plate hole opens to the central opening. Id. (underlined emphases added). THE REJECTIONS The Examiner rejected: (a) Claims 20–34 under 35 U.S.C. § 112, second paragraph, as being indefinite. Final Act. 3. (b) Claims 20, 24–26, and 28–34 under 35 U.S.C. § 102(b) as anticipated by Morrison et al. (US 6,280,445 B1, issued Aug. 28, 2001). Final Act. 4. (c) Claims 21–23 under 35 U.S.C. § 103(a) as unpatentable over Morrison and Huebner et al. (US 2007/0055251 A1, published Mar. 8, 2007). Final Act. 9. (d) Claim 27 under 35 U.S.C. § 103(a) as unpatentable over Morrison. Final Act. 11. (e) Claims 20 and 24–34 under 35 U.S.C. § 103(a) as unpatentable over Morrison and Hoogland et al. (US 4,957,497, issued Sept. 18, 1990). Final Act. 11. (f) Claims 21–23 under 35 U.S.C. § 103(a) as unpatentable over Morrison, Hoogland, and Huebner. Final Act. 17. Appeal 2019-001319 Application 15/158,200 4 ANALYSIS I. Claims 20–34 Rejected as Indefinite In rejecting independent claim 20 and its dependent claims 21–34 for being indefinite, the Examiner determines that it is unclear if Appellants are “attempting to claim two sliding plates distinct from one another or the same sliding plate,” as claim 20 recites “a first sliding plate” twice. Final Act. 3. Appellants do not contest this rejection. See Appeal Br.; see also Reply Br. Absent any argument by Appellants, we summarily affirm the rejection of claims 20–34 as indefinite. See 37 C.F.R. § 41.37(c)(1)(iv) (“The arguments [in the appeal brief] “shall explain why the examiner erred as to each ground of rejection contested by appellant.”); see also In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (noting that an argument not first raised in the brief to the Board is waived on appeal). II. Claims 20, 24–26, and 28–34 Rejected as Anticipated by Morrison A. Examiner’s Rejection In rejecting the claims as anticipated by Morrison, the Examiner cites in part to Morrison’s Figures 8a–8e. Final Act. 4–5. According to the Examiner, Figures 8a–8e depict the claimed bone plate comprising base plate 100 and first sliding plate 26. Id. at 4–6. The Examiner also submits annotated version of Morrison’s Figures 8d, 8e, and 7b. Id. at 8–9. Below, we reproduce annotated Figures 8e and 8d. Appeal 2019-001319 Application 15/158,200 5 Figure 8e is a bottom view of an orthopedic plate. Id. at col. 3, ll. 7–8. According to the Examiner, and as shown above in annotated Figure 8e, Morrison discloses base plate 100 with a coupling portion, an intermediate portion, and an anchoring portion. See Final Act. 4–5. The Examiner further finds that Morrison’s coupling portion has a “sliding plate receiving slot” for receiving a “first sliding plate.” Id. at 5. Appeal 2019-001319 Application 15/158,200 6 Figure 8d is an end view of the plate illustrated in Figure 8e. See id. at col. 3, ll. 5–6. According to the Examiner, Morrison’s base plate includes a “bone contacting surface,” labeled “Bone Facing Contacting” in the annotated Figure, and an “upper surface.” See Final Act. 5. To illustrate the feature that the Examiner considers to be Morrison’s “first sliding plate” (see Final Act. 5), we also reproduce the Examiner’s annotated Figure 7b, below: Figure 7b depicts a cross-sectional view of a stabilizer taken from Figure 5a. Morrison col. 2, ll. 59–61. The Examiner finds that Morrison also discloses the claimed “first sliding plate” (stabilizer 26) to be received in the “sliding plate receiving slot,” illustrated in Figures 8d and 8e. See Final Act. 5. Appeal 2019-001319 Application 15/158,200 7 B. Appellants’ Argument Appellants contend that “Morrison fails to teach or suggest a sliding plate receiving slot ‘extending from the upper surface to a supporting surface extending substantially parallel to the upper surface at a depth T equal to a thickness of a sliding plate between upper and bone contacting surfaces.’” Appeal Br. 4. Appellants assert that “Morrison shows a sliding plate receiving slot extending in the opposite direction—from a bone contacting surface toward the upper surface—with a supporting surface disposed therebetween.” Id. (emphasis added); see also Reply Br. 3 (arguing “the sliding plate receiving slot of Morrison extends in an opposite direction”). In a nutshell, if we are to apply the Examiner’s findings, Appellants argue that Morrison’s “bone contacting surface” does not contact the bone, rather, its “upper surface” is the surface that contacts the bone. See Appeal Br. 4–6. We agree. C. Analysis The issue is whether Morrison discloses a “bone contacting surface” and what it means to be such a surface. The Examiner’s position is that either of Morrison’s surfaces are capable of contacting a bone, and that the claimed “bone contacting” limitation is merely a claimed intended use. See Ans. 2 (“Appellant is arguing the function/intended use of their device. The surface identified by the Examiner is clearly capable of contacting the bone.”); see also id. at 3 (“For instance, the plate could be screwed into a patient’s radius such that the ‘top surface’ rests on the radius [of a bone] while the ‘bone contacting Appeal 2019-001319 Application 15/158,200 8 surface’ abuts the ulna which is in close proximity to the radius at both its proximal and distal bone ends.”). The Examiner’s interpretation of the claimed “bone contacting surface,” however, is unreasonably broad. In the present case, the claims require “a base plate defining an upper surface and a bone contacting surface.” Appeal Br. 20 (Claims Appendix). The claims do not merely recite a base plate defining a top surface and a bottom surface, or a base plate defining a first surface and a second surface, which would be consistent with the Examiner’s interpretation. Id.; see also Ans. 2–3. Indeed, the claim explicitly requires one of the surfaces to be a “bone contacting surface,” and the Specification provides clear guidance as to the meaning of this term. Specifically, the Specification consistently describes the base plate as having two opposed surfaces: bottom surface 10, which contacts the bone to be healed, and one which faces away from the bone, or, top surface 11. See, e.g., Spec. Fig. 1 (depicting top surface 11 opposite that of the bone contacting surface that is in direct contact with the bone). A skilled artisan, upon reviewing the claims in light of the Specification, would understand that the “bone contacting surface” is a “surface apt for bone contact” and includes some structure for contacting a bone, such as by having a bone-contacting geometry. See, e.g., Spec. 6 (“In a further embodiment the base plate has a bottom surface apt for bone contact with an invariable geometry.”), original claim 6 (same). The Examiner’s interpretation effectively reads out the term “bone contacting” from the claim and is, therefore, unreasonably broad. For example, the upper surface of Morrison’s plate is not apt for bone contact because bone Appeal 2019-001319 Application 15/158,200 9 bolts protrude above that surface. See Appeal Br. 5–6; Morrison, Figs. 2, 3, 15a, 15b. For the foregoing reasons, we do not sustain the rejection of independent claim 20 and its dependent claims 24–26 and 28–34 as anticipated by Morrison. III. Claims 21–23 Rejected as Unpatentable over Morrison and Huebner and Claim 27 Rejected as Unpatentable Over Morrison In rejecting dependent claims 21–23 and 27, the Examiner relies on the same unreasonable claim interpretation and finding discussed above. See Final Act. 9–11. For the same reasons we do not sustain the rejection of claim 20 as anticipated by Morrison, we do not sustain the rejection of dependent claims 21–23 as unpatentable over Morrison and Huebner, and we do not sustain the rejection of claim 27 as unpatentable over Morrison. IV. Claims 20 and 24–34 Rejected as Unpatentable Over Morrison and Hoogland A. Examiner’s Rejection The Examiner presents this alternative rejection, explaining, [E]ven if the Examiner has erred in their view that the bone contacting surface identified by the Examiner in Morrison is not capable of contacting bone as Appellant believes to be the case. The Examiner has done an additional rejection under 35 U.S.C. 103([a]) of Morrison in view of Hoogland who expressly teaches having a sliding plate receiving slot in the “top surface” opposite the “bottom” bone contacting surface which engages the fractured bone. Ans. 3. Appeal 2019-001319 Application 15/158,200 10 In this instance, the Examiner acknowledges that Morrison does not disclose the claimed “sliding plate receiving slot extending from the upper surface to a supporting surface . . . extending substantially parallel to the upper surface at a depth T . . . between upper and bone contacting surfaces.” Final Act. 13. To address this limitation, the Examiner relies on Hoogland for teaching this structure and submits an annotated version of Hoogland’s Figure 3 (id. at 14), which we reproduce below: Figure 3 is a cross-sectional view of an osteosynthesis plate. Hoogland col. 3, ll. 45–51. The Examiner finds that Hoogland discloses base plate 10 with a sliding plate receiving slot (formed by arms 14, 15) extending from the upper/top surface to supporting/bone contacting surface 16. Final Act. 14. In combining Morrison with Hoogland, the Examiner reasons that: It would have been obvious to one of ordinary skill in the art at the time of invention to have constructed the bone plate of Morrison et al. to have the first sliding plate disposed in a sliding plate receiving slot formed in the upper surface of the plate instead of the bone contacting surface as taught by Hoogland et al. as it is a known alternative manner of providing Appeal 2019-001319 Application 15/158,200 11 a slidable plate nested within a larger bone plate for the purpose of allowing compression of a bone fracture and slidable adjustment of the bone fragments when fasteners are installed there through. Additionally, having the sliding plate disposed such that it does not slide along a bone contacting surface would reduce the likelihood of abrasion of the bone and discomfort to the patient as the slidable plate would be elevated above the bone surface. Final Act. 14 (emphasis added). B. Appellants’ Argument Appellants contest the rejection of claims 20 and 24–34 collectively. See Appeal Br. 8; Reply Br. 8–9. We select claim 20 as representative, treating claims 24–34 as standing or falling with representative claim 20. See 37 C.F.R. § 41.37(c)(1)(iv). In their Appeal Brief, Appellants merely refer to their argument that Morrison doe not disclose the claimed sliding plate receiving slot and that Hoogland does not cure this deficiency. Appeal Br. 8; see also Ans. 3 (“Appellant only argues that Hoogland fails to cure the deficiencies of Morrison.”). In its Reply Brief, however, Appellants contend that “the Examiner’s interpretation that the elongated member 100 of Morrison may simply be ‘flipped’ to incorporate the teachings of Hoogland is entirely unreasonable.” Reply Br. 9. Appellants argue “that the purported modification asserted by the Examiner is entirely based on speculation and/or impermissible hindsight.” Id. Appellants’ argument is not persuasive. The Examiner reasons that the proposed modification “would reduce the likelihood of abrasion of the bone and discomfort to the patient as the Appeal 2019-001319 Application 15/158,200 12 slidable plate would be elevated above the bone surface.” Final Act. 14 (emphasis added). Appellants do not explain why the Examiner’s reasoning is either “unreasonable” or “based on speculation.” See Reply Br. 8–9. Rather, we find that the Examiner’s reasoning is supported by rational underpinnings. In particular, we agree with the Examiner that Hoogland teaches this alternative arrangement, and we find persuasive the Examiner’s reasoning that such a modification would reduce the likelihood of bone abrasion. Final Act. 14. As Appellants’ arguments do not persuade us of Examiner error, we sustain the rejection of claim 20, and claims 24–34—which fall with claim 20—as unpatentable over Morrison and Hoogland. V. Claims 21–23 Rejected as Unpatentable Over Morrison, Hoogland, and Huebner In contesting this rejection, Appellants rely on the same unpersuasive arguments relied on in contesting the rejection of claims 20 and 24–34 as unpatentable over Morrison and Hoogland. See Appeal Br. 8–9; see also Reply Br. 9–10. Because Appellants’ arguments do not persuade us of Examiner error, we affirm the rejection of claims 21–23 as unpatentable over Morrison, Hoogland, and Huebner. SUMMARY We affirm the rejection of claims 20–34 under 35 U.S.C. § 112, second paragraph, as indefinite. We reverse the rejection of claims 20, 24–26, and 28–34 under 35 U.S.C. § 102(b) as anticipated by Morrison. Appeal 2019-001319 Application 15/158,200 13 We reverse the rejection of claims 21–23 under 35 U.S.C. § 103(a) as unpatentable over Morrison and Huebner. We reverse the rejection of claim 27 under 35 U.S.C. § 103(a) as unpatentable over Morrison. We affirm the rejection of claims 20 and 24–34 under 35 U.S.C. § 103(a) as unpatentable over Morrison and Hoogland. We affirm the rejection of claims 21–23 under 35 U.S.C. § 103(a) as unpatentable over Morrison, Hoogland, and Huebner. No time period for taking any subsequent action in connection with this appeal may be extended. See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED