Ex Parte Senn et alDownload PDFPatent Trial and Appeal BoardJan 4, 201311221648 (P.T.A.B. Jan. 4, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/221,648 09/07/2005 Peter Senn 10139/10702 6734 76960 7590 01/07/2013 Fay Kaplun & Marcin, LLP 150 Broadway, suite 702 New York, NY 10038 EXAMINER COTRONEO, STEVEN J ART UNIT PAPER NUMBER 3733 MAIL DATE DELIVERY MODE 01/07/2013 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 PETER SENN, ANDRE SCHLIENGER, and MARKUS BUETTLER __________ Appeal 2012-001118 Application 11/221,648 Technology Center 3700 __________ Before JEFFREY N. FREDMAN, ERICA A. FRANKLIN, and SHERIDAN K. SNEDDEN, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a locking screw for an intramedullary nail. The Examiner rejected the claims as anticipated and as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Appeal 2012-001118 Application 11/221,648 2 Statement of the Case Background “The present invention relates to orthopaedic implants and, more particularly, to a locking screw for use with an intramedullary nail, wherein the screw includes a head portion with a passage for receiving a longitudinal wedge element” (Spec. 1 ¶ 0002). The Claims Claims 1-5 and 8-25 are on appeal. Claim 1 is representative and reads as follows: 1. A locking screw for an intramedullary nail having at least one transverse borehole, the locking screw having a central longitudinal axis and comprising: a screw shaft, at least a portion of which includes an external thread having an outer diameter; a screw head having a diameter greater than the outer diameter of the external thread; and a passage formed through the screw head configured and dimensioned to receive a longitudinal wedging element to be passed therethrough into a clearance between an outer surface of the external thread and an inner surface of the transverse borehole, the passage extending in a first direction generally parallel to the longitudinal axis of the screw. The issues A. The Examiner rejected claims 1-3, 10-12, 18, 19, 23, and 24 under 35 U.S.C. § 102(e) as anticipated by Reed1 (Ans. 5-6). B. The Examiner rejected claims 1-3, 11-15, 18, 19, 23, and 24 under 35 U.S.C. § 102(b) as anticipated by While2 (Ans. 6-7). 1 Reed, G., US 6,439,817 B1, issued Aug. 27, 2002. Appeal 2012-001118 Application 11/221,648 3 C. The Examiner rejected claims 4, 5, 8, 9, and 20 under 35 U.S.C. § 103(a) as obvious over Reed and Neuschotz3 (Ans. 8-10). D. The Examiner rejected claims 16 and 17 under 35 U.S.C. § 103(a) as obvious over Reed (Ans. 10). E. The Examiner rejected claims 21 and 22 under 35 U.S.C. § 103(a) as obvious over While and Mack4 (Ans. 10-11). F. The Examiner rejected claim 25 under 35 U.S.C. § 103(a) as obvious over Lawes5 and Reed (Ans. 11-12). A. 35 U.S.C. § 102(e) over Reed The Examiner finds that: Reed discloses a locking screw (see fig 5 below) comprising: a screw shaft (see fig 5 below), at least a portion of which includes an external thread having an outer diameter; a screw head (fig 5, 40) having a diameter greater than the outer diameter of the external thread; and a passage (fig 5, 43) formed through the screw head configured and dimensioned to receive a longitudinal wedging element (fig 5, 47) to be passed therethrough into a clearance between an outer surface of the external thread and an inner surface of the transverse borehole, the passage extending in a first direction generally parallel to the longitudinal axis of the screw (see fig 5 below). (Ans. 5). The issue with respect to this rejection is: Does the evidence of record support the Examiner’s conclusion that Reed anticipates claim 1? 2 While et al., US 4,645,394, issued Feb. 24, 1987. 3 Neuschotz, R., US 3,650,309, issued Mar. 21, 1972. 4 Mack, M., US 969,382, issued Sep. 6, 1910. 5 Lawes, P., US 5,454,813, issued Oct. 3, 1995. Appeal 2012-001118 Application 11/221,648 4 Findings of Fact The following findings of fact (“FF”) are supported by a preponderance of the evidence of record. 1. Reed teaches “a thread repair sleeve having a substantially cylindrical shape and interior and exterior threads used to replace damaged threads” (Reed, col. 1, ll. 7-9). 2. Reed teaches that after “the insert has been placed within the material to be repaired, a hole may be drilled extending the cylindrical bore into the juncture of the exterior threads of the insert and the threads of the bore in the material” (Reed, col. 2, ll. 54-58). 3. Reed teaches that: a cylindrical pin is driven into the cylindrical bore through the shoulder and into the drilled area of the exterior threads of the insert and the threads of the bore of the material so that the insert will no longer readily move with respect to the material because the flight of the threads of the insert on an exterior surface thereof will be opposed by the placement of the cylindrical pin and its retention by the threads of the bore of the material. Where the insert already includes a vertical channel defining a thread gap aligned with the cylindrical bore of the insert’s shoulder, the drilling step is not mandatory. In this case, driving the cylindrical pin will actually improve insert retention because the threads in the bore contacted by the pin distort and therefore enhance retention of the insert in the bore. (Reed, col. 2, l. 58 to col. 3, l. 5). Appeal 2012-001118 Application 11/221,648 5 4. Figure 5 of Reed is reproduced below: “FIG. 5 depicts one operative characteristic of the present invention” (Reed, col. 4, ll. 23-24). 5. Reed teaches that “the clearance 49 can be regarded as an interruption of the thread in an area vertically aligned with hole 43. . . Driving the pin into bore 43 will then deform the thread of the material M around the clearance 49 providing even more interference, sealing and resistance from removal” (Reed, col. 8, l. 65 to col. 9, l. 5). Principles of Law “A single prior art reference that discloses, either expressly or inherently, each limitation of a claim invalidates that claim by anticipation.” Perricone v. Medicis Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005). Analysis Reed teaches a screw which has a central longitudinal axis which comprises a screw shaft with an external thread (FF 4). Figure 5 of Reed teaches a screw head which has a diameter greater than the outer diameter of the external thread (FF 4). Reed teaches a bore (i.e., passage) 43 formed Appeal 2012-001118 Application 11/221,648 6 through the screw head where “[d]riving the pin into bore 43 will then deform the thread of the material M around the clearance 49 providing even more interference, sealing and resistance from removal” (Reed, col. 8, l. 65 to col. 9, l. 5; FF 5). Figure 5 shows that the bore 43 is parallel to the longitudinal axis of the screw (FF 4). Reed teaches that “driving the cylindrical pin will actually improve insert retention because the threads in the bore contacted by the pin distort and therefore enhance retention of the insert in the bore” (Reed, col. 3, ll. 2-5; FF 3). Appellants contend that the “cylindrical hole 43 in no way shows a clearance between an outer surface of an external thread and an inner surface of a borehole” (App. Br. 6). Appellants also contend that “no clearance exists between the threads of insert 10 and the borehole of material M, as evidenced by the absence of such a clearance in Figs. 1,4 and 8A – 12” (App. Br. 8). We are not persuaded. As the Examiner correctly points out, “[c]laim 1 does not say that the outer surface of the threads is defined by the greatest radial dimension of the thread. The claim just states there is a clearance between an outer surface of the threads and the inner surface of the bore” (Ans. 12, emphasis added). Figure 5 of Reed shows that both the upper and lower flanks of the external screw thread have a clearance with the inner surface of the borehole, as required by claim 1. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”). Appellants contend that the cylindrical hole 43 of the Reed reference passes through the threads of the insert 10 and the receiving material M and Appeal 2012-001118 Application 11/221,648 7 deforms the material M in the process. Thus, this hole 43 and the pin 47 inserted thereinto, does not reside in any clearance between the insert 10 and the material M and the cited art neither shows nor suggests “a clearance between an outer surface of the external thread and an inner surface of the transverse borehole” - nor could any pin in such a hole perform any wedging function. (App. Br. 7). We are not persuaded. Reed specifically teaches that the pin performs a wedging function since Reed teaches that “the clearance 49 can be regarded as an interruption of the thread in an area vertically aligned with hole 43. . . Driving the pin into bore 43 will then deform the thread of the material M around the clearance 49 providing even more interference, sealing and resistance from removal” (Reed, col. 8, l. 65 to col. 9, l. 5; FF 5). The ordinary meaning of wedging is reasonably interpreted as positioning a material so as to prevent an object from readily moving with respect to the material, which is something that the pin 43 performs in the screw of Reed (FF 3, 5). The deformation of the pin to provide interference and resistance from removal by unscrewing the external thread is reasonably interpreted as a “wedging” function as required by claim 1. See In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989) (“[D]uring patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.”) Conclusion of Law The evidence of record supports the Examiner’s conclusion that Reed anticipates claim 1. Appeal 2012-001118 Application 11/221,648 8 B. 35 U.S.C. § 102(b) over While The Examiner finds that: While et al. discloses a locking screw (see fig 6 below) comprising: a screw shaft (see fig 6 below), at least a portion of which includes an external thread having an outer diameter; a screw head (fig 6, 10C) having a diameter greater than the outer diameter of the external thread; and a passage (see fig 6 below) formed through the screw head configured and dimensioned to receive a longitudinal wedging element (fig 6, 35) to be passed therethrough into a clearance between an outer surface of the external thread and an inner surface of the transverse borehole, the passage extending in a first direction generally parallel to the longitudinal axis of the screw (see fig 6 below). (Ans. 6-7). The issue with respect to this rejection is: Does the evidence of record support the Examiner’s conclusion that While anticipates claim 1? Findings of Fact 6. While teaches a “fastening apparatus is adapted to be inserted and removed from one side of a work piece having an opposite side which is substantially inaccessible to a worker. A first, externally threaded member is threadingly engaged with a receiving structure, and a second member is inserted within corresponding seats or grooves for interlocking the two members” (While, abstract). Appeal 2012-001118 Application 11/221,648 9 7. Figure 6 of While is reproduced below: “FIG. 6 is a sectional view of a third embodiment of the fastener” (While, col. 2, ll. 35-36). 8. While teaches that “the fastener is installed in a receiving structure 20C comprising panels 22C, 23C, in which an internally threaded bore 21 is formed for receiving the first member 10C” (While, col. 5, ll. 51- 54). 9. While teaches that “[i]ndentations 45C, 46C are preferably cut into the second panel member 23C for receiving the distal end portions 40, 41 of the second member 35, for locking the fastener first member 10C relative to the receiving structure 20C” (While, col. 5, ll. 55-59). Analysis While teaches a fastening apparatus which comprises a “second member 35, for locking the fastener first member 10C relative to the receiving structure 20C” (While, col. 5, ll. 55-59; FF 9). We agree with Appellants that “the path traversed by the second member 35 of While is neither analogous to nor equivalent to the passage Appeal 2012-001118 Application 11/221,648 10 recited in claim 1 as the second member 35 is not located in any clearance between an outer surface of the external thread and an inner surface of the transverse borehole” (App. Br. 11). Consequently, we also agree with Appellants that “[a]ccordingly, the While reference fails to teach or suggest, ‘a passage formed through the screw head configured and dimensioned to receive a longitudinal wedging element to be passed therethrough into a clearance between an outer surface of the external thread and an inner surface of the transverse borehole ...’” (App. Br. 11). The Examiner also argues here that the “outer surface need not be limited to greatest radial dimension but can include the surface that is created when the thread is penetrated to allow the wedge to pass into place” (Ans. 13). However, figure 6 of While upon which the Examiner relies does not clearly show that the element 35 interacts with the thread at any surface, much less the greatest radial dimension. Further claim 6 does not demonstrate that there any necessary “clearance” as required by claim 1. Also, it is unclear that While discloses a screw head with a diameter greater than the outer diameter of the external thread. Conclusion of Law The evidence of record does not support the Examiner’s conclusion that While anticipates claim 1. C. 35 U.S.C. § 103(a) over Reed and Neuschotz The Examiner finds it obvious to “substitute the one groove of Reed with the two grooves in view of Neuschotz because one groove and the two grooves are mere functional equivalents, and because such a substitution of Appeal 2012-001118 Application 11/221,648 11 one for the other would have achieved the same predicable result of allowing for a wedge to be moved from an unlocked to a locked position” (Ans. 9). The Examiner provides sound fact-based reasoning for combining Neuschotz and Reed. We adopt the fact finding and analysis of the Examiner as our own. Appellants’ arguments are directed at elements taught by Reed as discussed in the primary rejection, but not at the combination of Neuschotz and Reed. Therefore, consistent with the rejection which we affirmed above, we affirm this rejection for the reasons stated by the Examiner. D. 35 U.S.C. § 103(a) over Reed The Examiner finds it obvious to “have the passage having a diameter between .8 and 1.2mm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art” (Ans. 10). The Examiner provides sound fact-based reasoning for modifying Reed. We adopt the fact finding and analysis of the Examiner as our own. Appellants’ arguments are directed at elements taught by Reed as discussed in the primary rejection. Therefore, consistent with the rejection which we affirmed above, we affirm this rejection for the reasons stated by the Examiner. E. 35 U.S.C. § 103(a) over While and Mack This rejection relies upon the underlying anticipation rejection over claim 1 with While. Having reversed the rejection of claim 1 over While, we necessarily reverse this obviousness rejection further including Mack, since Mack does not cure the deficiencies of While. Appeal 2012-001118 Application 11/221,648 12 F. 35 U.S.C. § 103(a) over Lawes and Reed The Examiner finds “Lawes discloses inserting an intramedullary nail having one transverse bore hole into the medullary canal of a bone (fig 6) and inserting a locking screw into the transverse borehole (fig 1)” (Ans. 11). The Examiner finds it obvious to “substitute the wedge on the external surface of Lawes with the wedge that is passed through a passage in view of Reed because a wedge on the surface and the wedge that passes through a passage are mere functional equivalents, and because such a substitution of one for the other would have achieved the same predicable result of preventing unwanted movement of the screw” (Ans. 11-12). The Examiner provides sound fact-based reasoning for combining Lawes and Reed. We adopt the fact finding and analysis of the Examiner as our own. Appellants’ arguments are directed at elements taught by Reed as discussed in the primary rejection, but not at the combination of Lawes and Reed. Therefore, consistent with the rejection which we affirmed above, we affirm this rejection for the reasons stated by the Examiner. SUMMARY6 In summary, we affirm the rejection of claim 1 under 35 U.S.C. § 102(e) as anticipated by Reed. Pursuant to 37 C.F.R. § 41.37(c)(1), we also affirm the rejection of claims 2, 3, 10-12, 18, 19, 23, and 24, as these claims were not argued separately. We reverse the rejection of claims 1-3, 11-15, 18, 19, 23, and 24 under 35 U.S.C. § 102(b) as anticipated by While. 6 We note that there are no affirmed rejections for claims 13-15. Appeal 2012-001118 Application 11/221,648 13 We affirm the rejection of claims 4, 5, 8, 9, and 20 under 35 U.S.C. § 103(a) as obvious over Reed and Neuschotz. We affirm the rejection of claims 16 and 17 under 35 U.S.C. § 103(a) as obvious over Reed. We reverse the rejection of claims 21 and 22 under 35 U.S.C. § 103(a) as obvious over While and Mack. We affirm the rejection of claim 25 under 35 U.S.C. § 103(a) as obvious over Lawes and Reed. 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 dm Copy with citationCopy as parenthetical citation