11473903 (P.T.A.B. Mar. 21, 2013)

Ex Parte Beutter et al

Patent Trial and Appeal BoardMar 21, 2013

11473903 (P.T.A.B. Mar. 21, 2013)

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. 11/473,903 06/22/2006 INV001Florian Beutter 10139/07602(00291-06PUS1) 8986 76960 7590 03/21/2013 Fay Kaplun & Marcin, LLP 150 Broadway, suite 702 New York, NY 10038 EXAMINER BECCIA, CHRISTOPHER J ART UNIT PAPER NUMBER 3775 MAIL DATE DELIVERY MODE 03/21/2013 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 FLORIAN BEUTTER and WERNER PAULI ____________ Appeal 2011-000937 Application 11/473,903 Technology Center 3700 ____________ Before TONI R. SCHEINER, DONALD E. ADAMS, and STEPHEN WALSH, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134 involves claims 1-20 (App. Br. 2; Reply Br. 2; Ans. 2). We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE CASE The claims are directed to a bone plate for affixing to a bone (claims 1-19) and a method of fixing a bone plate to a bone (claim 20). Claims 1 and 20 are representative and are reproduced in the Claims Appendix of Appellants’ Brief. Appeal 2011-000937 Application 11/473,903 2 Claims 1-13 and 15-19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Campbell1 and Steger.2 Claims 14 and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Campbell, Steger, and Frigg.3 We reverse. ISSUE Does the preponderance of evidence on this record support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 1. Campbell suggests “osteosynthesis devices for the spinal column, the devices comprising a plate and a mechanism for locking the bone screw or anchoring member in position” (Campbell, col. 1, ll. 6-9). FF 2. Campbell’s Figures 1 and 5 are reproduced below: “FIG. 1 is a perspective view of a first embodiment of [Campbell’s] … invention” (id. at col. 4, ll. 1-2). “FIG. 5 is a perspective view of a second embodiment of [Campbell’s] … invention” (id. at col. 4, ll. 14-15). 1 Campbell et al., US 6,602,255 B1, issued August 5, 2003. 2 Steger et al., US 7,052,499 B2, issued May 30, 2006. 3 Frigg et al., US 6,206,881 B1, issued March 27, 2001. Appeal 2011-000937 Application 11/473,903 3 FF 3. Examiner finds that Campbell suggests a bone plate “comprising: an upper side, an underside …, a middle part (11) and, adjoining thereon, a peripheral region comprising four extensions (four regions containing bores 2) forming a substantially ‘X’ shape …, and at least four plate boreholes extending from the upper side to the underside” (Ans. 3). FF 4. Examiner finds that Campbell fails to suggest “each of the four extensions being connected to the middle, part via a connecting region, the connecting region having a width that is smaller than a width of each of the four extensions” (id. at 7). FF 5. Examiner’s annotation of Steger’s Figure 11a is reproduced below: Examiner finds that, as illustrated in the annotation of Steger’s Fig. 11a, “Steger discloses a bone plate (28F in Fig. 11a) wherein each of the four extensions … [is] connected to the middle, part via a connection region … having a width that is smaller than a width of each of the four extensions” (id. (emphasis removed)). FF 6. Examiner finds that Frigg suggests a bone plate wherein the head of … at least one bone screw consists of a material harder than that of the bone plate in the region of the plate borehole and acts as means for rigid, angularly stable anchoring of the at least one bone screw … in order to provide optimal geometric locking between the harder screw and softer bone plate. (id. at 10.) Appeal 2011-000937 Application 11/473,903 4 ANALYSIS The combination of Campbell and Steger: Based on the combination of Campbell and Steger, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious to modify the bone plate of Campbell with the connecting region modifications of Steger in order to allow the plate to easily retain its shape when contoured to cooperate with the region of bone to be secured and provide a bridge region, enabling attachment between the bores and middle region of the plate. (Ans. 8 (emphasis removed).) In this regard, Examiner explains, that “lengthening each of the four regions of Campbell to include an additional opening, using a narrow connection region as taught by Steger would … result in meeting the limitations of” Appellants’ claimed invention (id. at 12). Stated differently, Examiner relies on Steger to suggest adding additional extensions (e.g., Steger’s region 36F) to Campbell’s extensions (e.g., Campbell’s element comprising bores 2) (see FF 5 and 3; Ans. 12). We are not persuaded. Examiner appreciates that Campbell fails to suggest a connection region that (1) connects each of the four extensions to the middle part of the plate and (2) has a width that is smaller than a width of each of the four extensions, as required by Appellants’ claimed invention (FF 4; App. Br. 6; Reply Br. 5). As Appellants explain, adding additional extensions to Campbell’s plate, such as those suggested by Steger, fails to make up for the foregoing deficiency in Campbell and merely suggests lengthening Campbell’s extensions (App. Br. 6; Reply Br. 5). Appeal 2011-000937 Application 11/473,903 5 The combination of Campbell, Steger, and Frigg: Based on the combination of Campbell, Steger, and Frigg, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious to modify the bone plate suggested by Campbell and Steger with the “material modifications of Frigg in order to provide optimal geometric locking between the harder screw and softer bone plate” (Ans. 10 (emphasis removed); FF 6). Examiner, however, fails to establish an evidentiary basis on this record to support a conclusion that Frigg makes up for the foregoing deficiency in the combination of Campbell and Steger (see App. Br. 7; Reply Br. 6). CONCLUSION OF LAW The preponderance of evidence on this record fails to support a conclusion of obviousness. The rejection of claims 1-13 and 15-19 under 35 U.S.C. § 103(a) as unpatentable over the combination of Campbell and Steger is reversed. The rejection of claims 14 and 20 under 35 U.S.C. § 103(a) as unpatentable over the combination of Campbell, Steger, and Frigg is reversed. REVERSED lp