Ex Parte McKinley et al

Patent Trial and Appeal Board

Dec 17, 2018

14624031 (P.T.A.B. Dec. 17, 2018)

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.
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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.
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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:
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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.
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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).
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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.
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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
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