Ex Parte Anderson

Board of Patent Appeals and Interferences

May 31, 2012

11033586 (B.P.A.I. May. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte KENT ANDERSON
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Appeal 2010-000722
Application 11/033,586
Technology Center 3700
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Before JENNIFER D. BAHR, LINDA E. HORNER and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s 2
final decision rejecting claims 1-10, 26-29 and 42. The Examiner rejects 3
claims 26-29 under 35 U.S.C. § 102(e) as being anticipated by Fallin (US 4
2004/0260306 A1, publ. Dec. 23, 2004); and claims 1-10 and 42 under 355

1 The Appellant identifies the real party in interest as Warsaw
Orthopedic, Inc.
Appeal No. 2010-000722
Application No. 11/033,586

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U.S.C. § 103(a) as being unpatentable over Fallin and Bailey (US 1
2003/0208204 A1, publ. Nov. 6, 2003). Claims 11-25 and 30-41 are 2
cancelled. We have jurisdiction under 35 U.S.C. § 6(b). 3
We REVERSE. 4
Claims 1 and 26 are independent claims. Claim 26, with italics added, 5
is illustrative of the claims on appeal: 6
26. A spinal system, comprising: 7
a plate including at least a first hole 8
therethrough extending along a central axis 9
between an upper surface and a lower surface of 10
said plate to receive an anchor for engaging said 11
plate to a bony segment, said plate including a first 12
receptacle about said first hole, said anchor 13
including a second receptacle about a head of said 14
anchor; and 15
a partially annular retaining member 16
defining an aperture sized to allow passage of a 17
bone engaging portion of said anchor therethrough, 18
said retaining member being 19
received in said first receptacle in a 20
first configuration and being radially 21
outwardly moveable in said first 22
receptacle in response to passage of 23
said head of said anchor 24
therethrough, 25
said retaining member being 26
configured to return toward said first 27
configuration to engage said head of 28
said anchor at said second receptacle 29
when said second receptacle aligns 30
with said retaining member, 31
wherein said first receptacle 32
and said second receptacle are sized 33
relative to said retaining member to 34
Appeal No. 2010-000722
Application No. 11/033,586

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allow said anchor to toggle in said 1
first hole while said retaining member 2
blocks said anchor from backing out 3
of said first hole. 4
Fallin describes a plate 100 and fasteners or anchors 200 for 5
stabilizing sections of bone. The plate 100 includes a plurality of fastener-6
retaining passageways or holes 110. (Fallin, para. [0044] and [0051].) Each 7
passageway 110 has lip 142 overhanging an undercut or first receptacle 140. 8
(Fallin, para. [0051] and fig. 5A.) Each fastener 200 has a head 250. Fallin 9
teaches providing each fastener 200 with a retaining ring 230 extending 10
outwardly from a slot or second receptacle 237 incorporated into the fastener 11
head 250. (Fallin, para. [0020]; see also id., para. [0058] and figs. 4A and 12
5A.) 13
The lip 142 of a retaining passageway or hole 110 through the plate 14
100 elastically compresses the retaining ring 230 of a fastener or anchor 200 15
as the anchor 200 is initially driven into the hole 110. (See Fallin, para. 16
[0020].) As the head 250 of the anchor 200 moves past the lip 142 into the 17
undercut or first receptacle 140 of the hole 110, the retaining ring 230 18
relaxes to some degree. Nevertheless, the retaining ring 230 appears to 19
remain biased radially outwardly into contact with the inner wall of the 20
undercut 140 so long as the retaining ring 230 remains in the undercut 140. 21
(See Fallin, para. [0066] (“Also, because the retaining ring 230 is radially 22
compressed and bias[ed] toward radial expansion, the retaining ring 230 is 23
fully engaged in the undercut. This helps to better resist axial backout.”).) 24
The Examiner finds that Figure 5A of Fallin depicts the first 25
configuration in which Fallin’s retaining ring 230 is received in a retaining 26
passageway or hole 110 of the plate 100. (Ans. 3-4 and 8-9.) Once in this 27
Appeal No. 2010-000722
Application No. 11/033,586

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first configuration, Fallin’s retaining ring 230 remains biased outwardly 1
against the inner radial wall of the undercut or first receptacle 140. Once the 2
retaining ring 230 in its first configuration presses against the inner wall of 3
the first receptacle 140, it is no longer “radially outwardly moveable in said 4
first receptacle in response to passage of said head of said anchor” through 5
the first receptacle 140. (See App. Br. 9.) Furthermore, to say that the 6
retaining ring 140 is “configured to return toward said first configuration” 7
while in its first configuration would interpret the term “return” improperly 8
as superfluous. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 9
(Fed. Cir. 2007). (See App. Br. 10.) 10
The Examiner offers no alternative findings or reasoning which might 11
indicate that Fallin’s retaining ring 230 is capable of meeting the functional 12
limitations of claim 26. Since the Examiner has not shown that Fallin’s 13
plate 100 and fasteners 200 are capable of meeting all functional limitations 14
of claim 26, we do not sustain the rejection of claims 26-29 under § 102(e) 15
as being anticipated by Fallin. 16
Claim 1 recites a spinal plating system in which a retaining member 17
is: 18
received in said first receptacle in a first 19
configuration and is radially outwardly moveable 20
in said first receptacle in response to passage of a 21
head of said anchor therethrough, 22
wherein said retaining member returns toward said 23
first configuration to engage said head of said 24
anchor and prevent said anchor from backing out 25
of said first hole. 26
Fallin alone does not teach a plate 100 and fasteners 200 capable of meeting 27
both of these limitations. 28
Appeal No. 2010-000722
Application No. 11/033,586

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The Examiner finds that Bailey discloses “a spinal plating system with 1
partially annular retaining member (16) with opposing first and second ends 2
that are simultaneously accessible through an access bore.” (Ans. 6; see also 3
Bailey, Figs. 2 and 5.) The Examiner reasons that it would have been 4
obvious: 5
to modify the spinal plating system taught by 6
Fallin et al. by aligning the first and second ends of 7
the retaining member with the first and second 8
access bores, as is taught by Bailey et al. because 9
aligning the ends of the retaining member allows 10
for a tool to simultaneously access each end which 11
aids in the outwardly radial movement of the 12
retaining member to disengage the anchor. 13
(Ans. 6.) This reasoning does not provide any persuasive reason why one of 14
ordinary skill in the art might have modified Fallin’s plate 100 and fasteners 15
200 so as to possess the capability of meeting the two functional limitations 16
quoted above. Since the Examiner fails to provide persuasive reasoning 17
with some rational underpinning to explain why one of ordinary skill in the 18
art might have had reason to modify a plate 100 and fasteners 200 of the 19
type described by Fallin so as to include all limitations of independent claim 20
1, we do not sustain the rejection of claims 1-10 and 42 under § 103(a) as 21
being unpatentable over Fallin and Bailey. 22
23
DECISION 24
We REVERSE the Examiner’s decision rejecting claims 1-10, 26-29 25
and 42. 26
27
REVERSED 28
Klh 29