Ex Parte Biedermann et al

Board of Patent Appeals and Interferences

May 30, 2012

10306057 (B.P.A.I. May. 30, 2012)

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.
10/306,057 11/27/2002 Lutz Biedermann 56732/B884 8926
23363 7590 05/30/2012
CHRISTIE, PARKER & HALE, LLP
PO BOX 29001
Glendale, CA 91209-9001
EXAMINER
RAMANA, ANURADHA
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
05/30/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte LUTZ BIEDERMANN and JURGEN HARMS
____________________

Appeal 2010-006113
Application 10/306,057
Technology Center 3700
____________________

Before: KEN B. BARRETT, CHARLES N. GREENHUT, and
MICHAEL L. HOELTER, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-006113
Application 10/306,057
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
32, 33, 35, 36, 37, 39, and 48. App. Br. 3. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

The claims are directed to an element with a shank and a holding
element connected to it for connecting to a rod. Claim 32, reproduced below,
is illustrative of the claimed subject matter:
32. A holding device comprising:
a shank portion;
a holding portion connected to the shank portion for
holding a rod; and
a locking element to lock the rod in the holding portion;
wherein the holding portion comprises a recess on one
end having a U-shaped cross-section and two open legs for
receiving the rod, and an inner thread on the open legs;
wherein the locking element comprises an outer thread
having two flanks, the outer thread cooperating with the inner
thread, one of the two flanks of the outer thread facing the one
end of the holding portion and the other of the two flanks of the
outer thread facing away from the one end of the holding
portion; and
wherein the inner thread comprises two flanks, one of the
two flanks of the inner thread facing the one end of the holding
portion and the other of the two flanks of the inner thread facing
away from the one end of the holding portion, each of the two
flanks of the inner thread enclosing an angle of 90° with a
central axis (M) of the holding portion;
wherein a crest of the outer thread of the locking element
is spaced from a root of the inner thread when the locking
element is tightened such that an axial force acts on the holding
device to prevent the legs from splaying.
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ortloff
Steinbock
Cotrel
US 4,688,832
US 4,846,614
US 5,005,562
Aug. 25, 1987
Jul. 11, 1989
Apr. 9, 1991

REJECTION
Claims 32, 33, 35-37, 39, and 48 are rejected under 35 U.S.C. §
103(a) as being unpatentable over Cotrel, Steinbock, and Ortloff. Ans. 3.

OPINION
Appellants argue claims 32, 35, 37, and 39 as a group. App. Br. 3.
We select claim 32 as the representative claim, and claims 35, 37, and 39
will stand or fall with claim 32. 37 C.F.R. § 41.37(c)(1)(vii).
Regarding claim 32, the Examiner correctly found, and Appellants do
not dispute, that Cotrel discloses the basic device claimed absent the specific
thread arrangement. Ans. 3. The Examiner relies upon Steinbock to support
the position that it would have been obvious to one having ordinary skill in
the art to replace the threads of Cotrel with square threads. Ans. 3.
Appellants do not dispute that substitution of square threads1 would result in
a structure wherein “each of the two flanks of the inner thread enclose[e] an
angle of 90° with a central axis (M) of the holding portion” as claimed.
Rather, Appellants contend such a substitution would not have been obvious
in view of Cotrel and Steinbock. App. Br. 4-6.

1 Appellants also refer to such threads as “flat threads” or threads having a
substantially rectangular cross section. Spec. 5:19-25.
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Appellants recognize that Cotrel addresses the problem of splaying by
providing a thread having a saw-tooth pitch. Spec. 1:19-25; Cotrel col. 2, ll.
54-58. Appellants have found that the claimed threadform also solves this
problem. Spec. 7:24-27. Cotrel does not illustrate in detail, or provide any
further explanation of, what is meant by the term “saw-tooth.” Neither
Appellants nor the Examiner make any evidence of record to help clarify
what Cotrel means by “saw-tooth.” We, like Appellants2, understand the
saw-tooth thread to refer to a particular type of buttress thread.3
The Examiner does not rely on any of Steinbock’s inventive teachings
to support the rejection of claim 32. App. Br. 4. Rather, the Examiner only
relies upon Steinbock for the discussion in the background section of various
threadforms4 as evidence that square threadforms were known in the art.
Ans. 3 (citing Steinbock col. 1, ll. 14-44). The fact that Steinbock groups
square, Acme5, and buttress threadforms would at least suggest their
interchangeability. To say that Steinbock would not have suggested use of a

2 See Transcript of Oral Arguments held May 3, 2012.
3 See e.g., E. Oberg, et al., Machinery’s Handbook (26th Edition), 1817
(2000). retrieved from
http://www.knovel.com/web/portal/browse/display?_EXT_KNOVEL_DISP
LAY_bookid=309&VerticalID=0; See e.g., In re Boon, 439 F.2d 724, 726-
28 (CCPA 1971)(discussing when it is appropriate to consult extrinsic
evidence to fill in evidentiary gaps); Warner-Jenkinson Co. v. Hilton Davis
Chem., Co., 520 U.S. 17, 22 (1997)(consulting an Encyclopedia as evidence
of the meaning of pH); In re Barr, 444 F.2d 588, 591 n.5 (CCPA
1971)(relying on extra-record references to bolster a weak point which is
supported by some evidence in the record).
4 A substantial amount of Steinbock’s “Description of the Prior Art” appears
to be a verbatim repetition of an edition of the portion of Machinery’s
Handbook describing screw thread forms. See e.g., Machinery’s Handbook
(26th Edition), 1706.
5 An Acme thread is essentially a symmetric trapezoidal thread with an angle
of 29o between the threads. Machinery’s Handbook (26th Edition), 1792.
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square thread in place of Cotrel’s thread because Steinbock teaches the use
of such threads only for translation (App. Br. 4; Reply Br. 2) is to read
Steinbock in isolation. Cotrel already recognized the desirability of
“eliminating the radial component of the load on screwing” and the
suitability of a threadform, the saw-tooth or buttress form, that may have
typically been used for translational applications to do so. Cotrel, col. 2, ll.
56-58; Steinbock, col. 1, ll. 28-30. Thus, one of ordinary skill in the art
would have a reasonable expectation that a square threadform, which, like
the buttress thread is also typically used for axial translation, would function
in a manner similar to a saw-tooth or buttress thread to eliminate the radial
component of a load on screwing, thereby discouraging spreading of
Cotrel’s flanks 4, or “splaying.”
The Examiner’s discussion as to the benefits that would be realized by
Cotrel from improved efficiency is limited. App. Br. 4; Ans. 3. However,
this characteristic appears to be just one of several factors, including
machinability6, that one of ordinary skill in the art would consider when
selecting an appropriate threadform. The ability to easily or cost-effectively
manufacture a thread is subjective. Though not referred to as a “saw-tooth”
thread, WO 00/27 297, discussed in Appellants’ Specification, appears to
have similar characteristics to a “saw-tooth” and, according to Appellants, is
difficult to produce—a problem Appellants perceive as mitigated by use of a
square thread. Spec. 7:26-27. Our reviewing court has recognized that a
given course of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate any or all reasons to combine

6 See Steinbock col. 1, ll. 30-32; See also Machinery’s Handbook (26th
Edition), 1817 (including an angle between the sides of a square thread,
essentially making it trapezoidal and similar to an Acme thread, facilitates
manufacture).
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teachings. See Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8
(Fed. Cir. 2000). While square threads may exhibit additional desirable and
undiscovered properties as compared to a saw-tooth thread, such as
reversibility7, discovery of those properties does not render an otherwise
unpatentable device patentable. See In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990) (“The discovery of a new property or use of a previously known
composition, even when that property and use are unobvious from the prior
art, can not impart patentability to claims to the known composition.[]”)
(Footnote omitted); See also Graham v. John Deere Co., 383 U.S. 1, 25
(1966)(The Court was skeptical of arguments directed toward an allegedly
beneficial function of a claimed arrangement when that benefit was not
disclosed in the Specification.).
Appellants additionally argue that the fact that no spinal implant
reference which uses a square thread is identified by the Examiner compels a
conclusion of nonobviousness. App. Br. 5. However, we find no requirement
for the prior art to expressly state that which the totality of the record renders
obvious in order to sustain a rejection under 35 U.S.C. § 103(a). KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)(“As our precedents make
clear, however, the analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.”) Appellants’ argument that no reference discussing a
square thread does so with respect to a partial thread is similarly
unpersuasive as Cotrel already teaches a partial threadform. App. Br. 5.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art

7 See Transcript of Oral Arguments held May 3, 2012.
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disclosures. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).
Regarding the “gap” or “the outer thread of the locking element is
spaced from a root of the inner thread when the locking element is tightened
such that an axial force acts on the holding device to prevent the legs from
splaying” the Examiner found that such a gap would be inherent to prevent
binding. Ans. 4. In the alternative, the Examiner found that Ortloff discloses
a gap as claimed and it would have been obvious to include a gap “for
efficient transfer of load between the flanges of the internal and external
threads.” Ans. 4. Appellants disagree with this latter point. App. Br. 6.
However, we need not reach it. We note that the gap discussed by Ortloff in
the portion cited by the Examiner (See Ans. 4 citing col. 5, ll. 8-26) is
between torque shoulders 30, 32 and not the inner one that meets the outer
thread crest and inner thread root as claimed. Ortloff does appear to show
gaps in the location claimed in figures 2 and 2A (also cited by the
Examiner), but Ortloff does not discuss this structure further. In any case,
even absent reliance on Ortloff, we agree with the Examiner’s finding that
the buttress or saw-tooth form of Cotrel and the square form of Steinbock
would inherently have a gap as claimed and that the claimed subject matter
including such a gap would have been obvious to one having ordinary skill
in the art. We note that it is not the particular threadform itself that must
necessarily have a gap.8 A threadform that would eliminate the radial
component of the load on screwing as in Cotrel, must have a gap otherwise a
radial load would be present. Similarly, the lack of a gap in a threadform
such as the square form of Steinbock would significantly increase friction

8 Although these threadforms most typically do have a gap of a specific size.
See Machinery’s Handbook (26th Edition), 1817.
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thereby decreasing, as opposed to increasing, efficiency during translation.
While where the prior art renders obvious a claimed apparatus or method, a
specific statement that a prior art apparatus would perform the same function
or yield the same result (See App. Br. 6 arguing that the prior art “gap” does
not “‘… prevent the legs from splaying’”) is not necessary to support a
rejection on that prior art,9 Cotrel expressly indicates that this function is
performed as a result of using the saw-tooth thread. We see no reason
Cotrel’s device would not function similarly upon substitution of a square
thread.
Appellants’ arguments concerning claims 33, 36, and 48 (App. Br. 6-
8) essentially repeat those arguments addressed above and are unpersuasive
for similar reasons. Appellants’ argument concerning the matching threads
of claim 36 and the differential thread of Steinbock (App. Br. 7) is
unpersuasive because it does not address the position taken by the Examiner
discussed above—relying only on the background section of Steinbock.

DECISION
The Examiner’s rejection of claims 32, 33, 35-37, 39, and 48 is
affirmed.

9 See, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) (claims
directed to an apparatus must be distinguished from the prior art in terms of
structure rather than function); Bristol-Myers Squibb Co. v. Ben Venue Lab.,
Inc. 246 F.3d 1368, 1376-77 (Fed. Cir. 2001)(While new uses of known
processes may be patentable, newly discovered results of known processes
directed to the same purpose are not patentable because such results are
inherent.)
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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