Ex Parte McKinley et alDownload PDFPatent Trial and Appeal BoardDec 17, 201814624031 (P.T.A.B. Dec. 17, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/624,031 02/17/2015 104326 7590 12/19/2018 Schwegman Lundberg & Woessner/ Zimmer P.O. Box 2938 Minneapolis, MN 55402 FIRST NAMED INVENTOR Laurence McKinley 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 5394.207US2 1001 EXAMINER COTRONEO, STEVEN J ART UNIT PAPER NUMBER 3773 NOTIFICATION DATE DELIVERY MODE 12/19/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): SLW@blackhillsip.com USPTO@slwip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LAURENCE MCKINLEY, MICHAEL FULTON, GREGORY CAUSEY, JEFFREY THRAMANN, DAMON BELLON!, TERRY ZIEMEK, and ALAN BURKHOLDER1 Appeal 2017-011436 Application 14/624,031 Technology Center 3700 Before RICHARD M. LEBOVITZ, ULRIKE W. JENKS, and JOHN E. SCHNEIDER, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL This appeal involves claims directed to a bone fastener assembly for connecting a bone to a stabilizing construct. The Examiner rejected the claims as anticipated under 35 U.S.C. § 102(e) and as obvious under 35 U.S.C. § 103(a). Pursuant to 35 U.S.C. § 134(a), Appellants appeal the Examiner's determination that the claims are unpatentable. We have jurisdiction under 35 U.S.C. § 6(b ). The rejections are reversed. 1 The Appeal Brief ("Appeal Br."; entered Mar. 10, 2017) identifies Zimmer Biomet Spine, Inc. as the real party in interest. Appeal 2017-011436 Application 14/624,031 STATEMENT OF THE CASE As stated in the Examiner's Answer ("Ans."), claims 1, 2, 4, 5, 9, 13, 14, 16, 17, and 20 stand rejected as follows: Claims 1, 2, 4, 13, 14, 16 and 20 under pre-AIA 35 U.S.C. § I02(e) as anticipated by Jackson (US 2006/0149240 Al, published Jul. 6, 2006) ("Jackson '240"). Ans. 2. Claims 5, 9, 17 under pre-AIA 35 U.S.C. I03(a) as obvious over Jackson '240 and Jackson (US 2006/0271047 Al, published Nov. 30, 2006) ("Jackson '047"). Ans. 6. There are two independent claims on appeal, claims 1 and 13. Claim 1 is illustrative and reads as follows: 1. A bone fastener assembly for connecting a bone to a stabilizing construct, comprising: a connecting member having a connecting member axis extending from a proximal end to a distal end, a first opening adjacent the proximal end, a second opening adjacent the distal end, and a first spherical surface; a one-piece fastener seat having a first end, a second end, a passageway extending from the first end to the second end along a seat axis, and a second spherical surface configured to slidably engage the first spherical surface; and a bone fastener having a shank and a head, the shank extending though the passageway, the head engaging a head- mating surface of the fastener seat, wherein the fastener seat is insertable through the first opening and the bone fastener is insertable through the second opening. Claim 13 is also directed to a bone fastener assembly. The assembly in claim 13 comprises a rod holder, a one-piece fastener, and a bone fastener. The rod holder is the same as the connecting member of claim 1. 2 Appeal 2017-011436 Application 14/624,031 Figure 4 of the Specification shows an embodiment of the claimed bone fastener assembly (annotated with labels to identify the claimed features of the bone fastener assembly): Figure 4, reproduced above, shows a bone fastener assembly with one-piece fastener seat 108, connecting member 105, and bone fastener 104. The connecting member 105 is also referred to as "rod holder 106." Spec. 3 Appeal 2017-011436 Application 14/624,031 ,r 63. The one-piece fastener seat 108 has a "passageway extending from the first end to the second end along a seat axis." Claim 1. REJECTION BASED ON JACKSON '240 The Examiner found that Jackson '240 describes a bone fastener assembly that anticipates claims 1 and 13. Ans. 2. Appellants contend that Jackson '240 does not describe a bone fastener assembly comprising a one- piece fastener seat as required by both claims. Appeal Br. 7. The Examiner relied on the following drawing from Jackson '240 as showing the claimed one-piece fastener seat (annotated herein): Fig. 7 of Jackson '240, reproduced above, shows a cross-section of the head of the bone assembly of Jackson '240 comprising "two-part retainer structure 12" or "two-piece retainer structure 12" which comprises "first piece or part 90" and "second piece or part 92." Jackson '240 ,r,r 31, 75, and 77. When the retainer pieces 90 and 92 are fully installed in head 10, they abut and hold a bone screw shank (not shown) in place: 4 Appeal 2017-011436 Application 14/624,031 With reference to FIG. 10, the pieces 90 and 92 continue the downward movement until the bottom surfaces 100 and 101 abut and seat upon the annular seating surface 45 of the shank 4. Once seated upon the annular surface 45, the retainer structure sloping surface 106 frictionally engages the capture structure side surface 48 and the sloping retainer structure surface 107 frictionally engages the capture structure side surface 49. Jackson '240 ,r 90. The Examiner found that part 90 or part 92 serves as the claimed one- piece fastener seat. While the Examiner recognized that retainer 12 has two parts, the Examiner found that the claims do not state that the one-piece fastener "consists of only one" part. Ans. 2. Based on this interpretation, the Examiner found that each part of the retainer 12 meets the limitations of the claimed "one-piece fastener seat." Id. at 7. Claim interpretation Because the dispute in this rejection involves the proper interpretation of "one-piece fastener," we begin with claim interpretation. A claim cannot be compared to the prior art until it is properly interpreted. During patent examination proceedings, claim terms are given "the 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 (Fed. Cir. 1997). As shown in Figure 4 of the Specification reproduced above, the one- piece fastener is depicted as a single structure made of only one part or piece. Claim 1 requires the fastener to have a passageway (see 152 in Fig. 5 Appeal 2017-011436 Application 14/624,031 4). The shank of the bone fastener is recited in claim 1 to extend through the passageway. The term "passageway" is not defined in the Specification. We adopt its definition as it appears in a general purpose dictionary to mean "a long narrow space with walls or fences on both sides, that connects one place or room with another" or "a narrow way for passage, as a hall, corridor, or alley; passage."2 Claim 1 requires the head of the bone fastener to engage the one-piece fastener seat ("the head engaging a head-mating surface of the fastener seat"). The connecting member, one-piece fastener seat, and bone fastener is "for connecting a bone to a stabilizing construct" and therefore these three components must cooperate together to perform this function. Thus, the one-piece fastener seat of claim 1 must be made of one piece, have a passageway with walls for the shank of the bone fastener to extend through it, and to cooperate with the connecting member and bone fastener in "connecting a bone to stabilizing construct." Claim 13 is also directed to a "bone fastener assembly for connecting a bone to a stabilizing construct." The assembly also comprises a one-piece fastener seat. The seat has a "passage." We interpret "passage" to have the same meaning as "passageway" in claim 1. Claim 13 recites that "the fastener seat engages the bone fastener and retains the bone fastener in the rod holder." Thus, in claim 13, the one-piece fastener seat must have a passageway with walls and must be capable of retaining the bone fastener in the rod holder. 2 https://www.collinsdictionary.com/us/dictionary/english/passageway (accessed Dec. 12, 2018). 6 Appeal 2017-011436 Application 14/624,031 Discussion Each retainer part 90 and 92 of Jackson '240 is a one-piece, but neither alone has a passageway with walls as required by claim 1. Parts 90 and 92 cooperate together to form a passageway having walls and a corridor through which the shank passes. Jackson '240 ,r 90, Figs. 8, 10. However, a single one-piece part does not form a passageway, i.e., a narrow passage, such as a hall or corridor having walls, as required by the claim. The one- piece retainer part of Jackson '240 also does not cooperate with the connecting member and bone fastener shank to connect a bone to a stabilizing construct as required by the claim. Rather, the two pieces 90 and 92 are needed to form the passage and cooperate to connect the bone to the stabilizing construct. For the foregoing reasons, we are compelled to reverse the anticipation rejection of claim 1, and dependent claims 2 and 4. Claim 13 requires the fastener seat to have a "passage" and to "engage[] the bone fastener and retain[] the bone fastener in the rod holder." As discussed for claim 1, neither single part 90 or 92 of Jackson '240 forms a passage as that term is reasonably interpreted in view of the Specification. Rather, a passageway is only formed when both pieces are present. In addition, neither single part 90 or 92 alone is capable of retaining the bone fastener in the holder as recited in the claim ("the fastener seat engages the bone fastener and retains the bone fastener in the rod holder"), but requires both parts to do so. For these reasons, the anticipation rejection of claim 13, and dependent claims 14, 16, and 20, is reversed. 7 Appeal 2017-011436 Application 14/624,031 REJECTION BASED ON JACKSON '240 AND JACKSON '047 The Examiner further cited Jackson '047 to meet the limitations recited in dependent claims 5, 9, and 17. The Examiner did not assert that Jackson '047 meets the deficiencies described above in Jackson '240. Accordingly, the obviousness rejection of claims 5, 9, and 17 is reversed. REVERSED 8 Copy with citationCopy as parenthetical citation