DePuy Synthes Products, Inc.Download PDFPatent Trials and Appeals BoardMar 31, 202014747876 - (D) (P.T.A.B. Mar. 31, 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. 14/747,876 06/23/2015 Marc OESCH 10139/09203 (SYN0787USCNT 8348 76960 7590 03/31/2020 Fay Kaplun & Marcin, LLP 150 Broadway, suite 702 New York, NY 10038 EXAMINER WILEY, DANIEL J ART UNIT PAPER NUMBER 3678 NOTIFICATION DATE DELIVERY MODE 03/31/2020 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): bnasunova@fkmiplaw.com okaplun@fkmiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MARC OESCH and ANDREAS LANZ ____________ Appeal 2019-005365 Application 14/747,876 Technology Center 3600 ____________ Before STEFAN STAICOVICI, JAMES P. CALVE, and WILLIAM A. CAPP, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final rejection of claims 16–34. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies DePuy Synthes Products, Inc. as the Applicant and real party in interest. Appeal Br. 2. Appeal 2019-005365 Application 14/747,876 2 THE INVENTION Appellant’s invention is a clamp. Spec. 1. Claim 27, reproduced below with paragraph indentation added, is illustrative of the subject matter on appeal. 27. A clamp for securing longitudinal fixation elements, comprising: a clamp body having a substantially S-shape and including three clamping arms defining first and second clamp openings for receiving longitudinal fixation elements therein, the first and second clamp openings extending along channel axes corresponding to longitudinal axes of the longitudinal fixation elements to be received therein and being open to an exterior of the clamp body via insertion slots through which the longitudinal fixation elements are insertable into the first and second clamp openings laterally relative to the channel axes, wherein elastic deformation of the clamp body constricts and expands the insertion slots, wherein the channel axes of the first and second clamp openings are parallel in a plane orthogonal to a longitudinal axis of the clamp body. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: NAME REFERENCE DATE Walulik US 6,702,814 B2 Mar. 9, 2004 Biller US 7,159,626 B2 Jan. 9, 2007 Bazunova RU 2,061,911 C1 June 10, 1996 Appeal 2019-005365 Application 14/747,876 3 The following rejections are before us for review:2 1. Claim 27 is rejected under 35 U.S.C. § 102(b) as anticipated by Bazunova. 2. Claims 16, 18–30, and 32–34 are rejected under 35 U.S.C. § 103 as being unpatentable over Walulik and Bazunova. 3. Claims 17 and 31 are rejected under 35 U.S.C. § 103 as being unpatentable over Walulik, Bazunova, and Biller. OPINION Anticipation of Claim 27 by Bazunova The Examiner finds that Bazunova discloses each limitation of claim 27. Final Act. 4. In particular, the Examiner finds that Bazunova discloses channel axes of first and second clamp openings that are parallel in a plane that is orthogonal to a longitudinal axis of the clamp body. Id. at 4–5. Appellant argues that the channel axes of Bazunova’s clamp form a plane and that the longitudinal axis of the clamp lies in this plane, rather than orthogonal to such plane. Appeal Br. 5–6. Appellant furnishes an annotated version of Bazunova’s Figure 7 to illustrate the point. Id. at 6. The Examiner disagrees with Appellant’s argument. Ans. 3. According to the Examiner: 2 An indefiniteness rejection under 35 U.S.C. § 112(b) has been withdrawn by the Examiner. Final Act. 2; Ans. 3. Also, a rejection of claims 16, 17, 19–21, 27, and 31 under the ground of nonstatutory double patenting has been obviated by the filing of a terminal disclaimer. Final Act. 2–3; see Terminal Disclaimer dated May 10, 2018. Appeal 2019-005365 Application 14/747,876 4 Bazunova clearly discloses (Fig. 7) a clamp body having a substantially S-shaped clamp body having the first and second clamp openings (designated by Examiner as Pl, P2) are parallel in a plane that is 90 degrees in orientation, i.e., orthogonal, to a longitudinal axis of rotation of the clamp body. Appellant is arguing a more narrow interpretation of orthogonal in that it can’t be in the same plane. However, orthogonal merely means perpendicular or intersecting at right angles. As it can be seen in the annotated figures drawn by the appellant in the arguments, the parallel lines are intersecting at a right angle to the longitudinal axis. Id. We are unable to reconcile the Examiner’s position with basic geometric principles of what it means for an axis (or line) to be orthogonal to a plane. In claim 27, there are first and second clamp openings that define first and second channel axes. Claims App. The channel axes are parallel to each other so as to define a plane. Id. The clamp also has a longitudinal axis. Id. The longitudinal axis is orthogonal to the plane. Id. For a prior art reference to anticipate a claim, it must disclose all of the limitations of the claim, “arranged or combined in the same way as in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008). We agree with Appellant, as illustrated in Appellant’s annotated version of Bazunova Figure 7, that the longitudinal axis of Bazunova (A1) lies in the same plane as the first and second channel axes (C1, C2), and, therefore, is not oriented orthogonal to such plane as required by claim 16. See Appeal Br. 6. The Examiner’s position is not supported by a preponderance of the evidence. Consequently, we do not sustain the Examiner’s anticipation rejection of claim 27. Appeal 2019-005365 Application 14/747,876 5 Unpatentability of Claims 16, 18–30, and 32–34 over Walulik and Bazunova Claim 16 Claim 16 is an independent claim and, similar to claim 27, contains a limitation directed to first and second clamp opening axes that are parallel in a plane that is orthogonal to a first, or borehole, axis. Claims App. The Examiner finds that Walulik discloses the invention substantially as claimed except for a first clamp having an S-shape with three arms that define first and second clamp openings for receiving longitudinal fixation elements therein for which the Examiner relies on Bazunova. Final Act. 6. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to provide one of Walulik’s clamps with an S-shape. Id. According to the Examiner, a person of ordinary skill in the art would have done this to receive two elongated elements on opposite sides of the clamp. Id. Appellant argues that neither Walulik nor Bazunova disclose an S-shaped clamp with first and second clamp openings that are parallel in a plane that is orthogonal a first (borehole) axis. Appeal Br. 8. In response, the Examiner repeats the same erroneous finding of fact that caused us not to sustain the anticipation rejection of claim 27 as discussed hereinabove. Furthermore, the Examiner makes no findings and offers no persuasive technical reasoning as to how Walulik and Bazunova can be combined in such a manner that the limitation directed to channel axes of first and second clamp openings that are parallel in a plane orthogonal to the first axis could be met. Thus, the Examiner’s findings of fact are not supported by a preponderance of the evidence and the legal conclusion of unpatentability is Appeal 2019-005365 Application 14/747,876 6 not well founded. Accordingly, we do not sustain the Examiner’s unpatentability rejection of claim 16 over Walulik and Bazunova. Claims 18–30 and 32–34 These claims depend, directly or indirectly, from either independent claim 16 or independent claim 27. Claims App. The Examiner’s rejection of these claims suffers from the same infirmity that was identified above with respect to claims 16 and 27. Thus, for essentially the same reason expressed above in connection with claims 16 and 27, we do not sustain the rejection of claims 18–30 and 32–34. Unpatentability of Claims 17 and 31 over Walulik, Bazunova, and Biller These claim depend from claims 16 and 27 respectively. Claims App. The Examiner’s rejection of these claims suffers from the same infirmity that was identified above with respect to claims 16 and 27, which infirmity is not cured by the Biller reference. Thus, for essentially the same reason expressed above in connection with claims 16 and 27, we do not sustain the rejection of claims 17 and 31. CONCLUSION Claims Rejected § Reference(s)/Bases Aff’d Rev’d 27 102 Bazunova 27 16, 18-30, 32-34 103 Walulik, Bazunova 16, 18-30, 32-34 17, 31 103 Walulik, Bazunova, Biller 17, 31 Overall Outcome 16–34 REVERSED Copy with citationCopy as parenthetical citation