Ex Parte Burke

Board of Patent Appeals and Interferences

May 11, 2012

11185376 (B.P.A.I. May. 11, 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.
11/185,376 07/19/2005 Shawn Burke T0217.13U 2639
29633 7590 05/11/2012
ROGERS TOWERS, P.A.
1301 RIVERPLACE BOULEVARD, SUITE 1500
JACKSONVILLE, FL 32207
EXAMINER
YANG, ANDREW
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
05/11/2012 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 SHAWN BURKE
____________

Appeal 2010-003951
Application 11/185,376
Technology Center 3700
____________

Before PHILLIP J. KAUFFMAN, JAMES P. CALVE, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
1-25 under 35 U.S.C. § 103(a) as unpatentable over Lin (US 6,458,133 B1;
iss. Oct. 1, 2002) and Lemole (US 2003/0187509 A1; pub. Oct. 2, 2003).
App. Br. 5. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
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THE INVENTION
Claim 1 illustrates the claimed subject matter on appeal:
1. A bone fixation plate device comprising a one-
piece main body having a first opposing end containing screw-
receiving apertures and a second opposing end containing
screw-receiving apertures, said first opposing end and said
second opposing end joined by a plurality of bridging members,
said bridging members having an I-beam configuration in
cross-section.

ANALYSIS
Claims 1-25 as unpatentable over Lin and Lemole
Appellant presents argument for independent claims 1, 10, and 19 and
dependent claims 5, 8, 14, 15, 18, and 20. App. Br. 12-18. We select claims
1, 10, and 19 as representative of each group and address the arguments for
claims 5, 8, 14, 15, 18, and 20. 37 C.F.R. § 41.37(c)(1)(vii) (2011). The
other dependent claims stand or fall with their respective independent claim.
Claims 1-4, 6, 7, and 9
The Examiner found that Lin discloses a one-piece bone fixation plate
100 with first and second opposing ends having screw receiving apertures
120 and joined by a plurality of bridging members (Fig. 2a), but does not
disclose bridging members with an I-beam configuration. Ans. 3-4. The
Examiner found that Lemole discloses an I-beam 30 that connects opposing
ends 10 of a bone plate system used with vertebrae. Ans. 4. The Examiner
determined that it would have been obvious to make Lin with bridging
members having an I-beam configuration in view of Lemole to provide high
mechanical strength and reduce the amount of material needed for the device
and the manufacturing cost. Ans. 4.
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Appellant argues that Lin is a one-piece device whereas Lemole joins
two vertebral plates 10 with two I-beam members 30 that are fastened to the
plates 10 by a screw or fastening device. App. Br. 12. This argument is not
persuasive because the Examiner relied on Lin to disclose a one-piece device
with bridging members and Lemole to teach the use of an I-beam bridging
member in a bone fixation device such as Lin’s device. Ans. 3-4, 5.
Appellant also argues that the Examiner engaged in hindsight by
combining an I-beam of Lemole with Lin’s one-piece plate because the
Examiner has not found any prior art devices that incorporate an I-beam
configuration in a one-piece main body. App. Br. 13. Appellant further
argues that Lemole’s I-beams are used as connecting members to adjust the
spacing between plate members and Lemole does not promote an I-beam
configuration as beneficial in a one-piece device. App. Br. 13.
The Examiner’s reason for combining Lemole’s I-beams with Lin’s
one-piece main body is supported by a rational underpinning of improving
mechanical strength while reducing materials and cost. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007) (“when a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result”); see also Ans. 4.1 Lemole’s I-beams fix two bone
plates together and are constructed of titanium or other rigid materials.
Lemole, para. [0028]. While the I-beams 30 allow adjustment between the
bone plates, the I-beams ultimately fix the v-plates 10 as a single unit and

1 Our affirmance of the Examiner’s rationale is not based upon the “obvious
to try” line of reasoning (Ans. 4-5), and for that reason we need not address
Appellants’ corresponding argument (App. Br. 14).
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provide rigidity. See Lemole, para. [0028]; fig. 5; Ans. 5. The Examiner
has substituted Lemole’s I-beams in Lin to fix opposing ends of a bone
fixation plate. As such, we sustain the rejection of claims 1-4, 6, 7, and 9.
Claims 5 and 8
Claims 5 and 8 depend indirectly from claim 1. Claim 5 calls for the
first and second opposing ends to comprise spanning members having an I-
beam configuration. Claim 8 calls for the first and second opposing ends to
comprise spanning members. The Examiner determined that it would have
been obvious to incorporate an I-beam structure into the spanning portions
of Lin’s bone plate to provide high mechanical strength while reducing the
material needed and the manufacturing cost. Ans. 4-6. Appellant argues
that the Examiner has engaged in hindsight because none of the prior art
devices incorporate an I-beam in a transverse configuration as a spanning
member and reiterates arguments from claim 1. App. Br. 14-15.
The Examiner’s reason for incorporating Lemole’s I-beam in Lin to
improve mechanical strength and reduce materials and manufacturing cost is
supported by a rational underpinning. Appellant has not persuaded us of
error in the findings or conclusion of obviousness. Appellant acknowledges
that an I-beam “is a well-known engineering construct that is highly resistant
to bending from load and shear forces.” Spec. 7, ll. 15-16. As such, we
sustain the rejection of claims 5 and 8.
Claims 10-13, 16, and 17
Independent claim 10 recites a bone fixation plate with a one-piece
body and bridging members that comprise a web member extending between
two generally parallel flange members. The Examiner found that Lemole’s
I-beam corresponds to the claimed web and flange members and determined
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that it would have been obvious to incorporate Lemole’s I-beams into Lin to
improve mechanical strength and reduce materials and manufacturing cost as
set forth for claim 1. Ans. 3-5.
Appellant argues that the web and flange members may encompass a
typical I-beam configuration, but the thicknesses of the web and flange are
not limited to that of an I-beam. App. Br. 15. Appellant also argues that
Figure 4 of Appellant’s Specification illustrates a cross-section with a thick
web member 22 and thin flanges 21 that is not an I-beam configuration.
App. Br. 15-16. These arguments are not persuasive because Lemole’s I-
beam has a web member extending between two generally parallel flange
members as called for in claim 10. See Lemole, fig. 6; Ans. 6. Appellant
acknowledges as much. We decline to limit claim 10 to a particular
embodiment when the claim language is broader than that embodiment.
Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004). Accordingly, we sustain the rejection of claims 10-13, 16, and 17.
Claims 14, 15, and 18
Claims 14, 15, and 18 depend indirectly from claim 10. Claims 14
and 18 call for opposing ends to comprise spanning members having a web
member extending between generally parallel flange members. Claim 15
calls for two spanning members to define an interior opening in an opposing
end. The Examiner found that Lin’s opposing ends are spanning members
(fig. 2a) that can include an interior opening (fig. 6) and Lemole’s I-beam
has a web member extending between two parallel flange members (fig. 6).
Ans. 3-4. The Examiner determined that it would have been obvious to
incorporate Lemole’s I-beam into Lin as spanning members to provide high
mechanical strength and reduce material and manufacturing cost. Ans. 4.
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Appellant argues that the Examiner has engaged in hindsight because
the Examiner has not found any prior art devices with a transverse web and
flange configuration for spanning members. App. Br. 16. This argument is
not persuasive for the reasons set forth supra for claim 5. Appellant also
reiterates arguments that were made for claim 1. App. Br. 16; see Ans. 6.
These arguments are not persuasive for the reasons set forth for claim 1.
As such, we sustain the rejection of claims 14, 15, and 18.
Claims 19-25
Appellant argues claims 19 and 21-25 as a group. App. Br. 17. We
select claim 19 as representative. See 37 C.F.R. § 41.37(c)(10(vii) (2011).
Claims 21-25 stand or fall with claim 19. The Examiner found that Lin
discloses a bone fixation plate with first and second opposing ends that
comprise spanning members extending between screw-receiving apertures
and that are joined by bridging members. Ans. 3-4. The Examiner found
that Lemole discloses I-beam bridging and spanning members having a web
and parallel flange members. Ans. 4, 6. Appellant incorporates previous
arguments that Lemole teaches the use of I-beams as connecting members
for spacing plate members, Lin does not disclose any flanges, and neither
reference discloses flanged spanning members. App. Br. 17. We find that
the Examiner’s reason for incorporating Lemole’s I-beam/web and flange
into Lin is supported by a rational underpinning as discussed supra.
Appellant has not persuaded us of error in the Examiner’s findings or
determination of obviousness. As such, we sustain the rejection of claim 19
and claims 21-25.
The Examiner found that Lin discloses a bone plate with non-flanged
screw receiving apertures as called for in claim 20 and that modifying the
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bridging and spanning portions of Lin with I-beams from Lemole will not
produce flanged screw receiving apertures. Ans. 6. Appellant’s argument
that Lemole teaches the use of I-beams and Lin does not disclose any flanges
(App. Br. 17-18) does not persuade us of error in the Examiner’s findings for
claim 20. As such, we sustain the rejection of claim 20.
DECISION
The rejection of claims 1-25 under 35 U.S.C. § 103(a) as unpatentable
over Lin and Lemole is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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