DePuy Synthes Products, Inc.

Patent Trials and Appeals Board

Mar 20, 2020

Added 110712 PRPS --> 14929628 - (D) (P.T.A.B. Mar. 20, 2020)

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.
14/929,628 11/02/2015 Roque Humberto Irigoyen Ferreyro 101896-1796
DEP6088USCNT3
5557
21125 7590 03/20/2020
NUTTER MCCLENNEN & FISH LLP
SEAPORT WEST
155 SEAPORT BOULEVARD
BOSTON, MA 02210-2604
EXAMINER
BOLES, SAMEH RAAFAT
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
03/20/2020 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@nutter.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROQUE HUMBERTO IRIGOYEN FERREYRO and
MARIO MARQUEZ MIRANDA
____________

Appeal 2018-006313
Application 14/929,628
Technology Center 3700
____________

Before JOHN C. KERINS, WILLIAM A. CAPP, and
GEORGE R. HOSKINS, Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 6–152 in this application. The Board
has jurisdiction over the appeal under 35 U.S.C. § 6(b).
A hearing was held on March 4, 2020. See Transcript (entered
Mar. 18, 2020) (“Tr.”).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies DePuy Synthes Products, Inc. as the
real party in interest. Appeal Br. 1.
2 Claims 1–5 are canceled. See Appeal Br. (Claims App.).
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Application 14/929,628

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CLAIMED SUBJECT MATTER
Claim 6 is the sole independent claim on appeal, and it recites, with
our emphasis added:
6. A device for delivering a viscous bone cement material
under fluoroscopy to a site in a patient, comprising:
an injection part for placement next to a patient having a
chamber loaded with viscous bone cement prior to the viscous
bone cement having set, an exit port connected to a bone needle,
and a plunger that pushes the viscous bone cement through the
exit port for injection into a vertebral body;
a hollow pressure part having a closed hydraulic space for
transmitting pressure to the plunger;
a hydraulic pressure generator containing enough volume of
an incompressible fluid to impel the plunger of the injection part
to deposit the required quantity of viscous bone cement in the
vertebral body; and
a hydraulic tube for pressure transmission connecting the
hydraulic pressure generator to the pressure part;
wherein the hydraulic tube connecting the hydraulic
pressure generator to the pressure part facilitates the generation
of hydraulic pressure from a location outside a field of
fluoroscopic imaging of the patient so that a flow of viscous bone
cement can be hydraulically driven through the exit port to the
desired injection site within the patient whilst reducing exposure
of an operator to ionizing radiation.
Appeal Br. (Claims App.) (emphases added).
REJECTIONS ON APPEAL
Claims 6, 7, and 9–15 are rejected under 35 U.S.C. § 102(b) as
anticipated by Dardik (US 4,250,887, iss. Feb. 17, 1981).
Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Dardik.
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Application 14/929,628

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OPINION
A. Anticipation by Dardik
As reflected above, claim 6 recites “an injection part . . . having a
chamber loaded with viscous bone cement prior to the viscous bone cement
having set.” Appeal Br. (Claims App.). In construing claim 6, the Examiner
determines “the bone cement is not [positively] recited in” claim 6. Ans. 6.
Therefore, the Examiner’s view is that Dardik need not disclose loading the
injection part’s chamber with bone cement in order for Dardik to anticipate
claim 6, and instead it is sufficient for anticipation if Dardik’s syringe 24 is
merely capable of being loaded with and injecting bone cement. Final
Act. 2–3 (finding Dardik’s syringe 24 is “capable [of] delivering a viscous
bone cement material,” and “can be loaded with and inject viscous bone
cement”) (emphases added), 4–5 (“the chamber of Dardik can be loaded
with viscous bone cement”) (applying In re Schreiber, 128 F.3d 1473, 1477–
78 (Fed. Cir. 1997)); Ans. 5–6.
Appellant objects that claim 6 does positively recite viscous bone
cement, via the limitation reciting “a chamber loaded with viscous bone
cement.” Appeal Br. 2, 10; Reply Br. 2.3 In Appellant’s view: “There is no
reasonable way to read ‘a chamber loaded with viscous bone cement’ as ‘a
chamber that can be loaded with viscous bone cement’” as the Examiner has
done, because this “simply changes the claim language to be something
other than what it is.” Reply Br. 2–3 (emphases modified): Tr. 8:19–9:4,
11:23–12:20. Appellant asserts the Specification supports Appellant’s

3 Appellant’s Reply Brief does not include page numbers. Our citations
treat the cover page as page 1, extending through page 5 which bears the
signature of Appellant’s attorney.
Appeal 2018-006313
Application 14/929,628

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interpretation. Reply Br. 3 (citing Spec. ¶¶ 9, 52). When claim 6 is thus
properly construed, according to Appellant, Dardik does not anticipate
because Dardik’s syringe 24 “is loaded with ‘radiopaque dye,’ not viscous
bone cement.” Appeal Br. 2, 10, 11 (citing Dardik, 2:52–54, 2:63–65).
We agree with Appellant. Claim 6, in reciting “an injection part . . .
having a chamber loaded with viscous bone cement,” positively requires an
amount of bone cement that is loaded in the chamber. Appeal Br. (Claims
App.). The Examiner’s contrary construction is unreasonable, based on the
“loaded with” term in claim 6. The Examiner’s construction in effect reads
claim 6 as reciting a chamber that is capable of being loaded with bone
cement, which is not what the claim recites.
Thus, in order to anticipate claim 6, Dardik must disclose that
syringe 24 is loaded with bone cement. Dardik falls short in that regard,
because Dardik discloses only that syringe 24 is loaded with radiopaque dye,
not bone cement. See Dardik, Abstract, 1:5–8, 2:52–65, 3:67–4:5, 4:59–60.
For the foregoing reasons, we do not sustain the rejection of claim 6,
and claims 7 and 9–15 depending therefrom, as anticipated by Dardik.
B. Obviousness over Dardik
The Examiner’s additional consideration of claim 8, and the
obviousness of claim 8 based on Dardik, does not cure the deficiency of
Dardik as to parent claim 6 noted above. See Final Act. 4. Therefore, for
the reasons identified above, we do not sustain the rejection of claim 8 as
unpatentable over Dardik.
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Application 14/929,628

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CONCLUSION
In summary we reverse each of the rejections on appeal, as
summarized in the following table:
Claim(s)
Rejected
35 U.S.C. § Reference Affirmed Reversed
6, 7, 9–15 102(b) Dardik 6, 7, 9–15
8 103(a) Dardik 8
Overall
Outcome
6–15
REVERSED