DePuy Synthes Products, Inc.Download PDFPatent Trials and Appeals BoardMar 20, 2020Added 110712 PRPS --> 14929628 - (D) (P.T.A.B. Mar. 20, 2020) Copy Citation 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.). Appeal 2018-006313 Application 14/929,628 2 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. Appeal 2018-006313 Application 14/929,628 3 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 4 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. Appeal 2018-006313 Application 14/929,628 5 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 Copy with citationCopy as parenthetical citation