Ex Parte Konieczynski et al

Board of Patent Appeals and Interferences

May 16, 2007

10335597 (B.P.A.I. May. 16, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DAVID D. KONIECZYNSKI, THOMAS V. DOHERTY,
ALEXANDER GRINBERG, and ERIC D. KOLB
__________

Appeal 2007-1707
Application 10/335,597
Technology Center 3733
__________

DECIDED: May 16, 2007
__________

Before DONALD E. ADAMS, TONI R. SCHEINER, and RICHARD M.
LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 1-3 and
5-11. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

STATEMENT OF CASE
The claimed invention relates to a bone plate comprising a resilient
aperture. According to the specification, “[b]one fixation devices are useful
for promoting the proper healing of injured or damaged vertebral bone
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Application 10/335,597

segments caused by trauma, tumor growth, or degenerative disc disease.”
(Specification 1: 17-18.)
One type of external bone fixation device is an osteosynthesis
plate, more commonly referred to as a bone plate, that can be
used to immobilize adjacent skeletal parts such as vertebral
bones. . . . The plate is fastened to the respective bones, using
anchors such as bone screws, so that the plate remains in
contact with the bones and fixes them in a desired position.
(Specification 1: 25-30.)
[S]ome bone screws and bone plates are constructed such that
the bone plate is placed onto the intended area to be fixed, and
then the bone screws are inserted through the plate to secure the
plate to the bone segments. In other bone plate and screw
systems, the screws are inserted into the bone segments first,
then the plate is secured to the screws.
(Specification 2: 10-14.)
The claimed invention provides a bone plate comprising a “resilient
aperture” that can “expand and contract” to receive a bone screw
(Specification 6: 1-9). With this feature, bone screws can be first inserted
into the bone, and then the plate can be attached to the screws by inserting
the screws through the “resilient aperture” which expands to permit the
screw head to pass through it. This system offers “the surgeon the ability to
either assemble the screws to the plate, or the plate to the screws, depending
on the surgeon’s preference and the patient’s anatomical conditions.”
(Specification 3: 3-5.)

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All pending claims stand rejected over prior art (Br. 2). The
Examiner relies on the following evidence of unpatentability:

Nelson US 5,381,588 Jan. 17, 1995
Assaker WO 99/56653 Nov. 11, 1999

Claims 1-3 and 5-11 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Assaker (Br. 2).
Claims 1-3 and 6 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Nelson (Br. 2). The claims in this grouping stand or fall
together because Appellants have not provided separate reasons for
patentability of any individual claims. See 37 C.F.R. § 41.37(c)(1)(vii).
We select claim 1, the only independent claim on appeal, as
representative of each rejection. Claim 1 reads as follows:
1. A bone plate comprising:
a body including a first surface, a second, bone-
contacting surface opposed to the first surface, and at least one
resilient aperture extending through the first and second
surfaces, the at least one resilient aperture having a predefined
shape and size, and being configured to expand and contract for
receiving a bone screw.
DISCUSSION
Anticipation by Assaker
Claims 1-3 and 5-11 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Assaker.
Assaker discloses an anterior cervical bone plate with bone anchorage
screws for attaching the plate to bone (Assaker, p. 2, ll. 6-15). The bone
plate comprises an aperture (12) for an anchorage screw (6), and a sliding
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plate (22) which is “slidably mounted” on the bone plate enabling it to slide
over the anchorage screw head (15) to lock the screw into place (Assaker,
p. 2, ll. 9-23; p. 6, ll. 8-19; Fig. 2).
The Examiner contends that the aperture (12) through which the
anchorage screw fits combined with the sliding plate (22) is a “resilient
aperture” which is “configured to expand and contract for receiving a bone
screw” as required by claim 1 (Answer 4). The Examiner explains that
“Assaker clearly disclose an aperture which is defined in part by a slide 22
that alters the configuration of the aperture depending on its position. . . .
[O]ne common definition of resilient refers to an ability to ‘adjust easily’[],
which the device of Assaker clearly possesses” (Answer 4).
Appellants contend that
Assaker discloses a bone plate that utilizes a locking
mechanism to engage a bone screw. In particular, as shown
above in Figure 2, the bone plate includes a pair of large
cavities with a number of apertures therein that accommodate
screws for affixing the bone plate to bone. Each cavity includes
a slide (22) that slides over a portion of the opening of the
cavity to reveal or hide portions of the cavity that may
accommodate screws. When the slide (22) is in an open
position, a bone screw can be inserted through the aperture. The
slide (22) can then be moved to a closed position to engage the
screw. Accordingly, the aperture itself does not expand and
contract, as suggested by the Examiner, but rather a portion of
the aperture is covered by the slide. The actual size of the
aperture always remains the same.
(Br. 3.)
This rejection turns on the interpretation of the claimed “resilient
aperture . . . being configured to expand and contract for receiving a bone
screw.” To properly interpret the phrase, we first turn to the Specification
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for guidance because claims are interpreted in view of the specification as
they would be understood by one of ordinary skill in the art. In re Crish,
393 F.3d 1253, 1256, 73 USPQ2d 1364, 1367 (Fed. Cir. 2004). As
explained in the Specification, the “invention” provides
single-component bone screws and bone plates that offer the
surgeon the ability to either assemble the screws to the plate, or
the plate to the screws. . . . With this invention, the surgeon is
given intraoperative flexibility regarding the approach taken
when applying the system, allowing the clinician to use either a
plate first or anchors first approach with the same screws and
plate. . . . [T]he bone screws and bone plates can include
material resilience features to allow expansion/contraction
during assembly to enable bi-directional attachment one
another.
(Specification 3: 3-11.)
Figs. 11-12 of the Specification illustrate a bone plate with a resilient
aperture. The aperture is characterized as a “resilient aperture” – the same
phrase recited in claim 1 – having “material resilience.” (Specification 23:
10-11.) The “material resilience” enables the aperture to stretch (“expand”)
over the screw head when the bone plate is forced over it, and then to
contract back around it, holding the bone plate in place. In other words, it is
the aperture material, itself, which possesses the resilient property.
The term “resilient” is not defined in the Specification. However, the
Examiner finds that “resilient” means “adjusts easily” (Answer 4). In the
context of the Specification which describes the resilient aperture as having
“material resilience,” we interpret “resilient aperture” to mean that aperture
“adjusts easily” to force by being comprised of a material capable of
expanding and contracting.
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In sum, when read in the light of the Specification, the skilled worker
would understand that it is the aperture, itself, which is “resilient” and
“configured to expand and contract” as required by the claim. The purpose
is to enable bi-directional assembly, permitting 1) the screws to be inserted
and held securely (Specification 3: 20) by the bone plate for an “anchors first
approach” or 2) to enable the bone plate to snap on to screws which have
already been attached to the bone (Specification 2: 9-16). In the latter
approach, the resilient aperture expands to accommodate the screw head,
and then returns to its original form after having been stretched.
Having properly interpreted the claim, we can now turn to the
anticipation rejection. The aperture shown in Assaker does not “expand and
contract” as required by the claim. Its dimension changes when the slide is
pushed over it, but this change is caused by a “sliding plate” which modifies
the size of the aperture after the screw has been secured to the bone. The
aperture structure, itself, is not resilient and does not change in size. The
PTO’s mandate is to give the words in a claim their “broadest reasonable
meaning in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997). The Examiner’s conclusion
that the Assaker’s sliding plate configuration is a “resilient aperture” is not
based on a reasonable meaning of the claim term when read in light of the
Specification. Thus, the Examiner erred in interpreting claim 1.
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“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). Because Assaker does
not describe a bone plate comprising a “resilient aperture . . . being
configured to expand and contract for receiving a bone screw,” we find that
it does not anticipate claim 1. We reverse the rejection of independent claim
1 and dependent claims 2, 3, and 5-11.

Anticipation by Nelson
Claims 1-3 and 6 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Nelson.
Nelson describes a retaining device to a hold a pair of socks for
washing and drying (col. 1, ll. 40-45). The Examiner contends that Nelson’s
device meets all the limitations of claim 1.
Nelson discloses a plate comprising a body 1 including first and
second surfaces (see Figure 2), and at least one resilient
aperture 3 extending through the first and second surfaces. The
at least one aperture has a predefined shape and size and is
configured to expand and contract. The plate also has at least
one slit extending from the aperture 3, and a hole 112. The
aperture has a circular shape (see Figures 1 and 2).
(Answer 4.)
Appellants contend that Nelson cannot anticipate claim 1 because
“Nelson lacks any mention or suggest of a bone plate” (Br. 6). They assert
that “it must be shown that Nelson’s sock rack can be utilized as a bone
plate” (Br. 6). They also argue that “[e]very object that has a resilient
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aperture extending through the first and second opposed surfaces and
configured to expand and contract cannot be considered to be a ‘bone plate’”
(Reply Br. 5).
Although we recognize that Nelson’s sock retaining device is for a
different purpose than the claimed bone plate, it has the same structural
features as the claimed bone plate: a plate and a resilient aperture configured
to expand and contract. Based on the correspondence of structures between
Nelson’s device and the claimed invention, the Examiner put the burden on
Appellants1 to show that their bone plate is the same as Nelson’s sock
retaining device.
In our opinion, the Examiner has sound basis for asserting that the
claimed invention and Nelson’s sock retainer are the same, properly shifting
the burden to Appellants to show they are not.
The claim does not require the bone plate to have a particular size,
shape, or configuration. According to the Specification, a bone plate is
“[t]ypically . . . a rigid metal or polymeric plate positioned to span bones or
bone segments” (Specification 1: 27-28). Nelson’s sock retainer also can be
comprised of a polymeric material, polyethylene (Nelson, col. 2, ll.
38-49). Appellants argue that a “bone plate” is “well known to persons
skilled in the art,” but offer no explanation why Nelson’s sock retainer could

1 “[W]hen the PTO shows sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the burden of
showing that they are not. In re King, 801 F.2d 1324, 1327, 231 USPQ 136,
138 (Fed. Cir. 1986); In re Ludtke, 441 F.2d 660, 664, 169 USPQ 563, 566
(CCPA 1971).” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658
(Fed. Cir. 1990).
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not function as a bone plate nor do they present evidence which describes
the requirements of a bone plate (Reply Br. 5), distinguishing it from
Nelson’s sock retainer.
Neither we nor the Examiner are in a position to conclude that the
properties which characterize Nelson’s sock retainer (e.g., its materials and
dimensions) would make it unsuitable as a bone plate. Appellants had the
opportunity to offer evidence and arguments that Nelson’s sock device
cannot be used as a bone plate and would not be recognized as such, but
provide only conclusory statements2 which we find insufficient to overcome
the prima facie case of anticipation.
Appellants have not met their burden of rebutting the Examiner’s
prima facie case of anticipation, thus, we affirm the rejection of claim 1.
Claims 2, 3, and 6 fall with claim 1 because they were not argued separately.
In reaching this decision, we are not ignoring or failing to treat the phrase
“bone plate” as a claim limitation; we are just not persuaded by the evidence
before us that Nelson’s device could not perform this function.

2 Arguments of counsel cannot take the place of evidence lacking in the
record. Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 593, 44 USPQ2d
1610, 1615 (Fed. Cir. 1997).
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TIME PERIOD
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-IN-PART

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