Ex Parte Capote

Board of Patent Appeals and Interferences

May 21, 2012

11876021 (B.P.A.I. May. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARCO D. CAPOTE
____________

Appeal 2011-002220
Application 11/876,021
Technology Center 3700
____________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1, 11, 21, 22, and
24-29 (App. Br. 2; Ans. 2).
1
We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to an orthopedic surgical apparatus. Claims 1,
24, and 25 are representative and are reproduced in the “CLAIMS
APPENDIX” of Appellant‟s Brief.

1
Claims 2, 3, 5-10, and 12 stand withdrawn from consideration (App. Br. 2).
Appeal 2011-002220
Application 11/876,021

2
Claims 1, 11, 21, 22, 25-27, and 29 stand rejected under 35 U.S.C. §
103(a) as unpatentable over the combination of Yuan
2
and Young.
3

Claims 24 and 28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Yuan, Young, and Rogozinski.
4

We affirm.

The combination of Yuan and Young:
ISSUE
Does the preponderance of evidence on this record support a
conclusion that Yuan suggests a plate member or pair of plate members that
fall within the scope of Appellant‟s claimed invention?
FACTUAL FINDINGS (FF)
FF 1. Appellant‟s apparatus comprises, inter alia, “a pair of plate
members, each plate member defining a respective slot” (Spec. 2: 2-4; see
also, e.g., Claim 1).
FF 2. Appellant‟s Specification discloses that a plate may have “a first
substantially straight side wall opposite a second substantially straight side
wall and a pair of curved end walls separated from each other by the first
and second side walls, and the side walls and end walls define a slot” (Spec.
3: 23 - 4: 3).
FF 3. Appellant‟s Specification discloses that “[t]he devices of the present
disclosure are constructed of any suitable biocompatible material; for
example . . . plastics, and polymers” (Spec. 14: 3-5; Ans. 14).

2
Yuan et al., US 5,342,361, issued August 30, 1994.
3
Young, US 6,626,906 B1, issued September 30, 2003.
4
Rogozinski, US 6,379,354 B1, issued April 30, 2002.
Appeal 2011-002220
Application 11/876,021

3
FF 4. Examiner finds that Yuan suggests Appellant‟s “claimed invention
except for the first coupling member including a through bore,” which is
suggested by Young (Ans. 8; see generally Ans. 3-8).
FF 5. For clarity, Yuan‟s Fig. 1 and Fig. l-a are reproduced below:

“FIG. 1 shows an exploded view of a preferred embodiment of . . . [Yuan‟s]
invention. FIG. 1-a is a side elevational view of a connecting member . . .
having a threaded hole indicated by dotted lines, according to . . .[Yuan‟s]
invention as shown in FIG. 1” (Yuan, col. 2, ll. 34-39; see generally Ans. 3-
8).
FF 6. Yuan discloses that element 20, illustrated in Yuan‟s FIG. 1, “are
lower auxiliary locking members” (Yuan, col. 2, ll. 51-52; Ans. 3).
FF 7. As illustrated in Yuan‟s FIG. 1, “[t]he lower auxiliary locking
members 20 are fitted respectively, in a sequential order of A, B, C, D, and
back to A, into slits made by the four spinal pins 10” (Yuan, col. 3, ll. 20-22;
Ans. 4 and 14).
Appeal 2011-002220
Application 11/876,021

4
FF 8. Yuan suggests that a lower auxiliary locking member can be a
GRAF band (Yuan, col. 4, ll. 65-68; Ans. 3 and 14).
FF 9. Examiner finds that Yuan suggests “a plurality of lower auxiliary
locking members . . . and each lower auxiliary locking member takes the
form [of] a GRAF band” (Ans. 14).
FF 10. Examiner finds that “[i]t is well known in the art that a GRAF band .
. . is in the form of a braided polyester band” that has a slot and supports this
finding with reference to a number of evidentiary documents and
illustrations (Ans. 10-13).
ANALYSIS
Claim 1:
Appellant contends that Examiner‟s interpretation of Yuan‟s lower
auxiliary locking members “as plate members goes against the ordinary
meaning of the term „plate member‟, the use of the term in the application,
and the meaning of the term as understood by one of ordinary skill in the
art” (App. Br. 6). We are not persuaded. Notwithstanding Appellant‟s
contentions to the contrary, Appellant‟s use of the term “plate member” in
the context of this invention fails to distinguish that element from the
structure described in the prior art (see FF 1-3 and 8-10). Therefore, we are
not persuaded by Appellant‟s contention that “Yuan does not support the
interpretation that the locking members are plate members” (App. Br. 7).
Appellant contends that “Yuan discloses that „a GRAF band may be
used‟ (col. 4, l. 67). The use of the term „a‟ clearly indicates that a single
band may be used and extend through each of the pins, such as that
illustrated in Figure 1” (id.). We are not persuaded. The portion of Yuan
relied upon by Appellant refers to a GRAF band as an alternative to “a rod-
Appeal 2011-002220
Application 11/876,021

5
shaped lower auxiliary locking member” (Yuan, col. 4, ll. 66-67 (emphasis
added); FF 8). Accordingly, a person of ordinary skill in this art would
reasonably understand Yuan to suggest that if more than one lower auxiliary
locking member is used, more than one GRAF band can be used. For the
foregoing reasons we are not persuaded by Appellant‟s contention that Yuan
fails to suggest “slotted plate members” or “a pair of plate members that
each include a slot” (App. Br. 8).

Claim 25:
Appellant contends that “neither Yuan nor Young disclose or make
obvious plate members” (id.). We are not persuaded for the reasons set forth
above.
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
that Yuan suggests a plate member or pair of plate members that fall within
the scope of Appellant‟s claimed invention. The rejection of claims 1 and
25 under 35 U.S.C. § 103(a) as unpatentable over the combination of Yuan
and Young is affirmed. Because they are not separately argued, Claims 11,
21, and 22 fall together with claim 1 and claims 26, 27, and 29 fall together
with claim 25. 37 C.F.R. § 41.37(c)(1)(vii).

The combination of Yuan, Young, and Rogozinski:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
Appeal 2011-002220
Application 11/876,021

6
ANALYSIS
Appellant relies upon the arguments set forth with regard to claims 1
and 25 discussed above. For the foregoing reasons, we find no error in the
Examiner‟s prima facie case of obviousness. Accordingly, we are not
persuaded by Appellant‟s contentions.
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claims 24 and 28 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Yuan, Young, and Rogozinski is
affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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