Ex Parte Frigg et al

Patent Trial and Appeal Board

May 24, 2017

13527241 (P.T.A.B. May. 24, 2017)

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.
13/527,241 06/19/2012 Robert Frigg 10139/07103
(00370-06PUS2
5760
76960 7590
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
05/24/2017 EXAMINER
COTRONEO, STEVEN J
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
05/24/2017 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 and MARCEL FUHRER
Appeal 2014-004970
Application 13/527,241
Technology Center 3700
Before JOHN C. KERINS, LEE L. STEPINA, and PAUL J. KORNICZKY,
Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2014-004970
Application 13/527,241
STATEMENT OF THE CASE
Appellants Robert Frigg and Marcel Fuhrer1 appeal under 35 U.S.C.
§134 from the Examiner’s decision, as set forth in the Final Action dated
May 20, 2013 (“Final Act.”), rejecting claims 21—35 under 35 U.S.C.
§ 102(b) as anticipated by Kilpela (US 6,123,708, issued September 26,
2000).2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
THE CLAIMED SUBJECT MATTER
The claims are directed to an intramedullary nail. Claim 21, the only
independent claim, is reproduced below:
21. An intramedullary nail comprising:
a nail body extending along a central longitudinal axis
from a proximal end to a distal end;
at least one hole extending through the nail body along a
central hole axis transverse to the longitudinal axis of the nail
body, the at least one hole configured to receive a locking
element therein, and the central hole axis located in a first plane;
a longitudinal slot extending through the nail body distally
from the proximal end of the nail body in the first plane, the
longitudinal slot having an unexpanded width b measured
perpendicularly to the first plane; and
a connecting element removably coupleable to the
proximal end of the nail body to move the longitudinal slot
between an expanded configuration and a retracted
configuration, the at least one hole expanding in the expanded
1 Appellants identify DePuy Synthes Products LLC and Johnson &
Johnson, Inc. as the real parties in interest. Appeal Br. 2.
2 Page 1 of the Final Action and Appellants’ Appeal Brief reference
claim 35, but page 2 of the Final Action does not. We understand that
page 2 contains a typographical error and claim 35 is part of the rejection.
Appeal Br. 2. Claims 1—20 are cancelled. Id.
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Appeal 2014-004970
Application 13/527,241
configuration to receive a locking element and contracting in the
retracted configuration to secure the locking element therein.
DISCUSSION
The Rejection of Claims 21—35 as Anticipated By Kilpela
The Examiner finds that Kilpela discloses all of the limitations of
independent claim 21, including the following two limitations: (1) a
longitudinal slot extending from “the proximal end of the nail body,” and (2)
“a connecting element removably coupleable to the proximal end of the nail
body.”
With respect to the first limitation, the Examiner finds that Kilpela’s
slot 24 extends from the proximal end of the nail body 10 based, in part, on:
(1) the location of slot 9 in the embodiment in Figures 1—4 in the
Specification, and (2) paragraph 40 of the Specification which states, in part,
“longitudinal slot 9 extends from its opening situated at the distal end . . .
slightly further to the proximal end.” Ans. 5. According to the Examiner,
the location of slot 24 and the proximal end of Fumer’s nail 10 is consistent
with the location of slot 9 and the proximal end of the Specification’s nail 1.
Id.
Disputing these findings by the Examiner, Appellants argue that claim
21 describes the embodiment in Figures 6—8 of the Specification, which
shows slot 9 located at the proximal end of nail 1. Reply Br. 2—\\ see Spec.
147 (“Figs.6—8 illustrate a variation of the intramedullary nail 1, whereby
the longitudinal slot 9 is provided not at the distal end 4, but at the proximal
end 3 of the intramedullary nail 1.”). Claim 21 does not describe the
embodiment in Figures 1—4, which shows slot 9 located at the distal end of
the nail, not the proximal end. Reply Br. 2—\\ see Spec. 127 (“Fig.l shows .
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Appeal 2014-004970
Application 13/527,241
. . an intramedullary nail slotted at the distal end”). Thus, Appellants argue
that, based upon the usage of “proximal end” and “distal end” in the
Specification, Kilpela’s slot 9 extends from the distal end of nail 10, not
from the proximal end, as required by claim 21. Reply Br. 3^4.
Appellants are correct. Based upon the usage of the term “proximal
end” and “distal end” in the Specification, the Examiner erred in finding that
Kilpela’s slot 9 extends from the proximal end of the nail.
With respect to the second limitation, the Examiner finds that “if a
[tapered] screw [i.e., connecting element] was inserted into [Kilpela’s] upper
hole 28, lower hole 28 will expand larger than the diameter of a screw and[,]
if the surgeon choses to distract the slot by removing the upper screw[,] the
lower hole will tighten on the lower screw [i.e., locking element].” Final
Act. 2—3 (citing Kilpela 4:40-45). For the reasons discussed above,
Kilpela’s upper and lower holes 28 are located at the distal end, not the
proximal end, of the nail body. Appellants correctly argue that Kilpela’s
tapered screws couple to the distal end of the nail body. Reply Br. 4 (“a
portion of the nail 10 immediately proximal of a more proximal one of the
distal transverse holes 28 does not constitute a proximal end of the nail body
12 and inserting a screw 34 the proximal one of the transverse holes 28
along the slot 24 does not show coupling an element to the proximal end of
the nail as required by the claim”). The Examiner erred in finding that
Kilpela discloses a connecting element removably coupleable to the
proximal end of the nail body, as recited in claim 21.
For the reasons above, the Examiner’s rejection of claim 21, and
claims 22—35 which depend from claim 21, is not sustained.
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Appeal 2014-004970
Application 13/527,241
DECISION
For the above reasons, the Examiner’s rejection of claims 21—35
under 35 U.S.C. § 102(b) is REVERSED.
REVERSED
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