Ex Parte Roth et al

Board of Patent Appeals and Interferences

Feb 1, 2012

10992261 (B.P.A.I. Feb. 1, 2012)

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.
10/992,261 11/18/2004 Christoph Andreas Roth 10139/01714 7572
30636 7590 02/01/2012
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
EXAMINER
HOFFMAN, MARY C
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
02/01/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CHRISTOPH ANDREAS ROTH and HARRY T. HALL IV
__________

Appeal 2010-009869
Application 10/992,261
Technology Center 3700
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and
FRANCISCO C. PRATS, Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-25, directed to a method of treating a bone fracture. The claims
have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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Application 10/992,261

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STATEMENT OF THE CASE
Claims 1-25 are pending and on appeal. Appellants do not present
separate arguments for the claims. Therefore, we select claim 1 as
representative of the subject matter on appeal, and claims 2-25 will stand or
fall accordingly. 37 C.F.R. § 41.37(c)(i)(vii). Claim 1 reads as follows
(emphasis added):
1. A method for treating at least one bone fracture, comprising the
steps of:
(a) providing a first fracture fixation implant and a second fracture
fixation implant wherein the first fracture fixation implant comprises a shaft
having a proximal end and a distal end, the shaft defining a longitudinal axis
between the proximal end and the distal end, a plurality of blades being
disposed on at least a distal bladed portion of the shaft and helically twisted
about the longitudinal axis, a non-bladed portion of the shaft extending
proximally from the bladed portion, the non-bladed portion including a
tapered region having a diameter that decreases in a direction toward the
bladed portion and a substantially flat engagement surface configured and
dimensioned to be engaged by a prong of a body member, and wherein the
second fracture fixation implant comprises a bore configured to receive the
first fracture fixation implant;
(b) positioning the second fracture fixation implant in relation to a
first bone fracture; and
(c) inserting the first fracture fixation implant through the bore of the
second fraction fixation implant so that at least a part of the non-bladed
portion extends on a distal side of the second fracture fixation implant, the
first fracture fixation implant being allowed to slide within the bore, wherein
the prong and the substantially flat engagement surface, when engaged,
prevent rotation and limit sliding of the first fracture fixation implant.
Claims 1-11 and 14-25 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Fujiwara (US 6,406,477 B1, June 18, 2002).
In addition, claims 11-13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Fujiwara and Stapert (US 5,458,600, October 17, 1995).
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Application 10/992,261

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FINDINGS OF FACT
1. Figure 2 of Fujiwara is a partly sectional view illustrating an
intramedullary nail used to treat a fracture of the proximal portion of the
femur (Fujiwara, col. 1, ll. 8-9; col. 3, ll. 22-24). Fujiwara‟s Figure 2 is
reproduced below in pertinent part:

Figure 2 shows an intramedullary nail 10, which includes a “rod-shaped nail
member 16 inserted into the inner cavity (medullary cavity) 14 of a femur 12
. . . and a lag screw 22 . . . for connecting to the main portion of the femur 12
a bone portion [ ] separated from the main portion of the femur 12 . . . along
a fracture line 18” (id. at col. 3, ll. 53-59). Fujiwara explains that:
[T]he proximal portion of the lag screw 22 is formed with a
plurality of grooves 34 extending on the peripheral surface
thereof along the axis of the lag screw 22 (in the lag screw
shown in FIGS. 1 and 2, four grooves 34 are disposed on the
peripheral surface of the lag screw 22 at intervals of 90° around
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the axis of the lag screw 22). The lag screw 22 is inserted into
the femur 12 with the engaging means 32 thereof directed
ahead, and further slidably inserted into the main through hole
24 of the nail member 16 thereby to penetrate into the separated
bone portion [ ]. Thus, the lag screw is 22 is fixedly secured in
the separate bone portion [ ] by causing the engaging means 32
at one end of the lag screw to engage the separated bone portion
[ ]. Finally, the separated bone portion [ ] is fixed to the main
portion of the femur 12 by securing the other end of the lag
screw 22 to the main through hole 24 of the nail member 16
installed in the femur 12.
(Id. at col. 4, ll. 18-34.)
2. Figure 5 of Fujiwara “is a partly sectional view of the
intramedullary nail for explaining the principle on which [a] clamping force
is applied by a set screw to a lag screw via [a] spacer and by which the
rotation of the lag screw is prevented” (Fujiwara, col. 3, ll. 29-32). Figure 5
is reproduced below in pertinent part (annotation added):

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Figure 5 of Fujiwara (annotation added) depicts legs 46b of spacer 46
engaging the grooves 34, thereby clamping the lag screw 22 in the through
hole 24 of the nail member 16.
3. Fujiwara teaches that “the lower ends of the legs 46b come into
engagement with the grooves 34 of the lag screw 22, thereby securing the
lag screw 22 in the nail member 16 while at the same time preventing the
rotation of the lag screw 22” (Fujiwara, col. 5, ll. 21-25).
ANTICIPATION
Issue
The Examiner finds that Fujiwara discloses a method for treating a
bone fracture that meets all of the requirements of the claims, including
“providing a first fracture fixation implant (22) and a second fracture
fixation implant (16)” (Ans. 3), wherein the first fracture fixation implant
(22) has “a substantially flat engagement surface (34) configured and
dimensioned to be engaged by a prong of a body member (46)” (id.).
According to the Examiner, Figure 5 of Fujiwara shows that the
grooves 34 in lag screw 22 “clearly have two substantially flat engagement
surfaces” for legs 46b (id. at 8).
Finally, the Examiner finds that “the prong [46b] and the substantially
flat engagement surface [34], when engaged, prevent rotation and limit
sliding of the first fracture fixation implant [22]” (id. at 4) when the first
fracture fixation implant (22) is inserted through a bore in the second
fracture fixation implant (16).
Appellants contend that Fujiwara‟s “plurality of grooves 34 is not a
substantially flat engagement surface” (App. Br. 6), and “[t]here is no
suggestion or disclosure that the grooves 34 disposed on the lag screw 22
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would create a substantially flat surface” (id.). Appellants contend that “the
grooves 34 are disposed on a circular surface at 90° around an axis of the lag
screw 22 . . . [thus] the resulting surface with the grooves would also exhibit
a curvature. That is, the plurality of grooves 34 would create a substantially
curved surface” (id.).
Appellants further contend that the Examiner‟s “reliance on Fig. 5 of
Fujiwara is misplaced” (Reply Br. 4) because “[t]here is no disclosure in
Fujiwara stating that the dimensions of Fig. 5 are to scale” (id.), and “the
teachings associated with Fig. 5 are for illustration of the mechanics only,
not as a means to accurately show the components thereof” (id.).
Finally, Appellants contend that Fujiwara “does not disclose or
suggest a functionality of limiting a sliding of the first fracture fixation
implant, as recited in claim 1” (App. Br. 6). Appellants acknowledge that
Fujiwara “indicates that a rotational movement [of the lag screw 22] may be
prevented” when the grooves 34 are engaged, but contend that Fujiwara “is
silent as to preventing a sliding motion” of the lag screw 22 (id.).
The issue raised by this appeal is whether the evidence of record
supports the Examiner‟s finding that Fujiwara discloses a substantially flat
engagement surface, which, when engaged with a prong, prevents rotation
and limits sliding of the first fracture fixation implant in the second fracture
fixation implant.
Principles of Law
“[T]he words of a claim „are generally given their ordinary and
customary meaning.‟ . . . [T]he ordinary and customary meaning of a claim
term is the meaning that the term would have to a person of ordinary skill in
the art in question at the time of the invention.” Phillips v. AWH Corp., 415
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F.3d 1303, 1312-13 (Fed. Cir. 2005). “It is the claims that measure the
invention. . . . [L]imitations from the specification are not to be read into the
claims.” Sjolund v. Musland, 847 F.2d 1573, 1583 (Fed. Cir. 1988).
“[I]t is well established 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.” Hockerson-
Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956 (Fed. Cir. 2000).
However, “a drawing in a utility patent can be cited against the claims
of a utility patent application even though the feature shown in the drawing
was unintended or unexplained in the specification of the reference patent.”
In re Aslanian, 590 F.2d 911, 914 (CCPA 1979). See also In re Meng, 492
F.2d 843, 847 (CCPA 1974) (“[A] claimed invention may be anticipated or
rendered obvious by a drawing in a reference, whether the drawing
disclosure be accidental or intentional” and “a drawing is available as a
reference for all that it teaches a person of ordinary skill in the art.”).
Discussion
We begin by noting that the Examiner‟s position is that each side of
Fujiwara‟s groove 34 - rather than the grooved surface of lag screw 22 -
provides the required “substantially flat engagement surface” for leg (or
prong) 46b.
Appellants contend that Fujiwara‟s “plurality of grooves 34 is not a
substantially flat engagement surface” (App. Br. 6), and the Examiner‟s
“reliance on Fig. 5 of Fujiwara is misplaced” (Reply Br. 4) because “[t]here
is no disclosure . . . stating that the dimensions of Fig. 5 are to scale” (id.),
and “the teachings associated with Fig. 5 are for illustration of the mechanics
only, not as a means to accurately show the components thereof” (id.).
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Appellants‟ argument is not persuasive. It is true that the figures of a
patent cannot be relied for the particular proportions or sizes of the elements
if the Specification is otherwise silent on those matters; however, the issue
here is shape, not scale. It is well settled that “a drawing is available . . . for
all that it teaches a person of ordinary skill in the art” even if the feature
relied on is unintended or unexplained. Meng, 492 F.2d at 847; Aslanian,
590 F.2d at 914. Fujiwara‟s Figure 5, shown above, while not drawn to
scale, depicts groove 34 as square-cut, i.e., groove 34 is depicted as a right
angled channel with straight sides (FF2), and therefore flat engagement
surfaces.
In addition, Appellants acknowledge that Fujiwara “indicates that a
rotational movement [of the lag screw 22] may be prevented” when the
grooves 34 are engaged, but contend that Fujiwara “is silent as to preventing
a sliding motion” of the lag screw 22 (App. Br. 22).
Appellants‟ argument is not persuasive. Fujiwara discloses that the
lag screw 22 is “slidably inserted into the main through hole 24 of the nail
member 16” and “fixedly secured in the separate bone portion [ ] by causing
the engaging means 32 at one end of the lag screw to engage the separated
bone portion [ ]” and “the separated bone portion [ ] is fixed to the main
portion of the femur 12 by securing the other end of the lag screw 22 to the
main through hole 24 of the nail member 16 installed in the femur 12”
(Fujiwara, col. 4, ll. 25-34; FF2). In other words, the lag screw 22 is
“slidably inserted” into the main through hole 24 of the nail member 16, and
then secured to the nail 16 through hole 24. Fujiwara further explains that
“the lower ends of the legs 46b come into engagement with the grooves 34
of the lag screw 22, thereby securing the lag screw 22 in the nail member 16
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while at the same time preventing the rotation of the lag screw 22.” (FF3;
Fujiwara, col. 5, ll. 21-25 (italics ours)). Thus, Fujiwara teaches that
“securing” the lag screw is different than “preventing the rotation” of the lag
screw, i.e., the lag screw 22 is secured against both sliding and rotating when
the legs 46b are engaged by the grooves 34.
Finally, we note that Fujiwara‟s arrangement, with two legs (or
prongs) engaged by both sides of two discrete grooves, differs from the
embodiment of the invention illustrated in the Figures of the Specification,
which depict a fracture fixation implant with a single flat surface engaged by
a single prong. However, that difference is not captured by the broad
language of the claims, and it is well settled that “limitations from the
specification are not to be read into the claims.” Sjolund, 847 F.2d at 1583.
OBVIOUSNESS
With respect to the Examiner‟s rejection of claims 11-13 as obvious
over Fujiwara and Stapert, Appellants contend essentially that Stapert does
not remedy the deficiencies of Fujiwara (App. Br. 8-9).
This argument is not persuasive for the reasons discussed above.
SUMMARY
The rejection of claims 1-11 and 14-25 as anticipated by Fujiwara is
affirmed.
The rejection of claims 11-13 as unpatentable over Fujiwara and
Stapert is affirmed as well.
Appeal 2010-009869
Application 10/992,261

10
TIME PERIOD FOR RESPONSE
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

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