Ex Parte FriggDownload PDFPatent Trial and Appeal BoardJun 19, 201512017666 (P.T.A.B. Jun. 19, 2015) Copy Citation 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. 12/017,666 01/22/2008 Robert Frigg 10139/06604 6776 76960 7590 06/19/2015 Fay Kaplun & Marcin, LLP 150 Broadway, suite 702 New York, NY 10038 EXAMINER COLEY, ZADE JAMES ART UNIT PAPER NUMBER 3775 MAIL DATE DELIVERY MODE 06/19/2015 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 ROBERT FRIGG ____________ Appeal 2012-010581 Application 12/017,6661 Technology Center 3700 ____________ Before LORA M. GREEN, ROBERT A. POLLOCK, and ELIZABETH A. LaVIER, Administrative Patent Judges. LaVIER, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks reversal of the Examiner’s rejections of claims 64–83, pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM-IN-PART. BACKGROUND The Specification relates to bone plates. (Spec. ¶ 2.) Claims 64 and 83 are representative: 1 Appellant states the real party in interest is Synthes, Inc. (Appeal Br. 2.) Appeal 2012-010581 Application 12/017,666 2 64. A bone plate, comprising: a first fixation element receiving hole extending therethrough from an outer surface to a bone facing surface of the plate, the first hole including a first substantially circular segment defining a first segment axis and at least one thread for engaging a head of a fixation element inserted therethrough, the at least one thread extending along a wall of the first segment over an angle of at least 180° with respect to the first segment axis and a second segment open to the first segment, a length of the second segment in a direction parallel to a longitudinal axis of the plate being longer than a diameter of the first segment and longer than a width of the second segment in a direction substantially perpendicular to the longitudinal axis, the width of the second segment being longer than the diameter of the first segment. 83. A bone plate, comprising: a first fixation element receiving hole extending therethrough from an outer surface to a bone facing surface of the plate, the first hole including a first substantially circular segment defining a first segment axis, a wall of the first segment including a fixation element engaging structure for engaging a head of a fixation element inserted therethrough, the engaging structure extending along a wall of the first segment over an angle of at least 180° with respect to the first segment axis and a second segment open to the first segment, the second segment including a curved recess adjacent to the outer surface for engaging a head of a fixation element inserted thereinto to provide compression of fractured bone fragments coupled to the plate. (Appeal Br. 23 (Claims App.) (emphases added).) Appeal 2012-010581 Application 12/017,666 3 REJECTIONS The Examiner maintains the following rejections on appeal: 1. Claim 83 is rejected under 35 U.S.C. § 102(b) as anticipated by Johnston.2 (Ans. 5.) 2. Claims 64–71 and 73–82 are rejected under 35 U.S.C. § 103(a) as unpatentable over Johnston, Frigg,3 Wolter,4 and Talos.5 (Ans. 5.) 3. Claim 72 is rejected under 35 U.S.C. § 103(a) as unpatentable over Johnston, Frigg, Wolter, Talos, and Baker.6 (Ans. 10.) DISCUSSION A. Rejection 1: Anticipation Johnston describes a bone plate for fixation of an olecranon fracture. (Johnston Abstract.) Figure 3 of Johnston is set forth below: 2 Johnston, US 3,716,050 (issued Feb. 13, 1973). 3 Frigg et al., US 6,206,881 B1 (issued Mar. 27, 2001). 4 Wolter, US 6,322,562 B1 (issued Nov. 27, 2001). 5 Talos et al., US 5,709,686 (issued Jan. 20, 1998). 6 Baker et al., US 5,569,251 (issued Oct. 29, 1996). Appeal 2012-010581 Application 12/017,666 4 Figure 3 of Johnston depicts a perspective view of the olecranon plate 20. Several of the apertures (26, 32, and 34) “are of the keyhole type and include slot extensions 26’ and 32’ extending in opposite directions along the long flange 22. . . .” (Johnston col. 2, l. 24–27.) The apertures have beveled counter-bores for receiving screws having heads with beveled undersurfaces. (Id. at col. 3, ll. 35–38.) In rejecting claim 83 as anticipated by Johnston, the Examiner finds: Johnston discloses a bone plate (Fig. 3) comprising a fixation element receiving hole (Fig. 3; 32) that extends through the plate. This receiving hole is substantially circular and the wall has an engaging structure (col. 2, lines 34-38) for the head of the fixation element. The circular segment covers an angle greater than 180 degrees with respect to the axis. The second segment (Fig. 3; 32’) is open to the first segment and it has a curved recess that is adjacent to the outer surface (Fig. 3) capable of engaging with the head of a fixation element and it could provide compression of fractured bone fragments coupled to the bone plate. (Ans. 5.) Appellant presents two arguments, neither of which is persuasive. Accordingly, we affirm the Examiner’s rejection of claim 83 as anticipated by Johnston for the reasons of record, and as explained further herein. First, Appellant asserts that Johnston fails to disclose “a fixation element engaging structure for engaging a head of a fixation element inserted therethrough” (see Appeal Br. 4–6; Reply Br. 2–5), but this argument mistakenly reads structural requirements into a functional limitation. Indeed, while Appellant insists that “the term ‘for engaging’ denotes an actual state of configuration and structure” (Reply Br. 3), Appellant does not describe what that structure is, only what it does (see id.). Appeal 2012-010581 Application 12/017,666 5 We agree with the Examiner that claim 83 “does not require Johnston to indicate whether the head of the screw engages any part of the aperture because this is an intended use limitation[;] [t]he wall of Johnston just has to be capable of a screw head engaging with it,” and that Johnston’s wall “includes a structure that can engage with many things,” including a fixation element such as a screw. (Ans. 11.) Appellant’s citation to the Specification as allegedly imparting a structural restriction on “for engaging” (see Reply Br. 3–4 (citing Spec. 7, ll. 8–13, Fig. 3) is not persuasive in part because the cited passages are exemplary, not definitional. Second, Appellant argues that Johnston does not teach a “second segment including a curved recess adjacent to the outer surface for engaging a head of a fixation element inserted thereinto.” (See Appeal Br. 6–8; Reply Br. 5–6.) However, Appellant’s argument seems to focus on the shape of the edge of the aperture in Johnston, i.e., in a direction perpendicular to the bone plate. (See, e.g., Reply Br. 5 (“[t]he bottom half of the screw [] also appear[s] to be conical in shape, thereby necessitating the apertures 26, 32, and 34 to include a linear disposition”).) In contrast, we understand the Examiner’s position to rely on the curved shape of the extended segment of the aperture itself, i.e., a curve in a direction parallel to the bone plate. (See Ans. 12) In particular, the Examiner finds that: The second segment (Fig. 3; 32’) does indicate in Figure 3 that the extension 32’ is a recess. It is a recess that comes off the larger first segment 32. . . . It is clear in Figures 2 and 3 that the recess is curved. Note how the extension portion (‘the second segment’) is not squared off. (Id.) We find no error in the Examiner’s interpretation, as claim 83 only requires the curved recess be “adjacent” to the outer surface, which broadly Appeal 2012-010581 Application 12/017,666 6 encompasses the types of curvature envisioned by the Examiner as well as by Appellant. Appellant suggests that the Examiner’s reliance on the figures of Johnston to teach the curved recess is inappropriate pursuant to Hockerson-Halberstadt, Inc. v. Avia Group International. (See Appeal Br. 7; Reply Br. 6.) But Hockerson stands for the proposition that “patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.” 222 F.3d 951, 956 (Fed. Cir. 2000) (citing In re Wright, 569 F.2d 1124, 1127 (CCPA 1977)). Here, the Examiner relies on the figures of Johnston for the general shape of the aperture, not its precise dimensions. B. Rejections 2 and 3: Obviousness Per the highlighted elements of claim 64 recited supra, claim 64 includes three proportionality requirements: the second segment must be (1) longer than the diameter of the first segment, (2) longer than its own width, and (3) wider than the diameter of the first segment. The Examiner relies solely on Figure 3 of Johnston to teach the first two of these requirements. (See Ans. 5–6.)7 Here, Appellant’s citation to Hockerson is on point, as there is no indication that Figure 3 of Johnston is to scale. The Examiner’s other references do not cure this deficiency of Johnston, and so we reverse rejection of claim 64. Each of claims 65–82 depends directly or indirectly on claim 64. (See Appeal Br. 13–16.) Accordingly, we also reverse the rejections of claims 65–82. 7 The Examiner subsequently cites column 2, lines 45–53 of Johnston in discussing the angle of the screw with respect to the hole (see Ans. 13), but this passage is silent regarding the relative dimensions of the apertures. Appeal 2012-010581 Application 12/017,666 7 CONCLUSION The Examiner’s final rejection of claim 83 under 35 U.S.C. § 102(b) is affirmed for the reasons of record. The Examiner’s final rejections of claims 64–82 under 35 U.S.C. § 103(a) are reversed. 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-IN-PART tc Copy with citationCopy as parenthetical citation