Timothy J. Horan et al.Download PDFPatent Trials and Appeals BoardNov 29, 201913538407 - (D) (P.T.A.B. Nov. 29, 2019) Copy Citation 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. 13/538,407 06/29/2012 Timothy J. HORAN 10139/15715 5822 76960 7590 11/29/2019 Fay Kaplun & Marcin, LLP 150 Broadway, suite 702 New York, NY 10038 EXAMINER LAWSON, MATTHEW JAMES ART UNIT PAPER NUMBER 3775 NOTIFICATION DATE DELIVERY MODE 11/29/2019 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): bnasunova@fkmiplaw.com okaplun@fkmiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIMOTHY J. HORAN, CHRISTOPHER H. SCHOLL, and DANEEN K. TOUHALISKY Appeal 2019-003128 Application 13/538,407 Technology Center 3700 Before BRETT C. MARTIN, JILL D. HILL, and ERIC C. JESCHKE, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 21–26 and 28–43. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and ENTER A NEW GROUND OF REJECTION. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as DePuy Synthes Products, LLC, of which Johnson & Johnson, Inc. is the parent corporation. Appeal Br. 2. Appeal 2019-003128 Application 13/538,407 2 BACKGROUND Appellant’s invention relates to a tibial bone plate. Independent claims 21 and 34 are pending. Claim 21, reproduced below, illustrates the claimed invention, with certain limitations italicized: 21. A bone plate for securing two tibial bone segments for a tibial leveling osteotomy procedure, comprising: a distal body portion having an elongated shaft, the shaft comprising a first distal plate hole extending along a first distal plate hole axis from an upper surface to a bone-facing lower surface, the bone-facing surface extending along a base plane, the first distal plate hole being sized and shaped to receive a first bone fixation element therethrough, the distal body portion being symmetrical about a mid-plane, wherein the mid-plane extends orthogonal to and bisects the base plane, the bone-facing surface of the distal body portion including a plurality of recesses configured to form gaps defining, when the plate is mounted on a bone as desired, between portions of the bone-facing surface and a bone on which the plate is mounted; and a proximal body portion adjacent the distal body portion and having a first extension portion extending to a first tip and a second extension portion extending to a second tip, the first and second extension portions being separated by a notch, the proximal body portion being asymmetrical about the mid-plane, a first portion of the proximal body portion located on a first side of the mid-plane having a first proximal plate hole sized and shaped to receive a second bone fixation element therethrough, the first proximal plate hole extending from an upper surface to a bone-facing lower surface along a first proximal plate hole axis, the bone-facing lower surface of the proximal body portion being separated from the base plane and a second portion of the proximal body portion located on a second side of the mid-plane having a second proximal plate hole extending along a second proximal plate hole axis and shaped to receive a third bone fixation element therethrough, wherein the second portion includes the notch, the notch further comprising first and second outer walls converging to enclose an angle therebetween, the first outer wall extending from the first tip to a vertex, the second Appeal 2019-003128 Application 13/538,407 3 outer wall extending from the second tip to the vertex, the notch being separated from the mid-plane, wherein a shape of the bone- facing lower surface of the proximal body portion is configured to conform to a shape of a portion of bone over which it is to be mounted, a contour of the bone-facing lower surface formed as an arc of a cylinder having a contour axis extending in a plane including a first rotation axis defined by an intersection of the mid-plane and a transverse plane and rotated relative to the mid- plane about the first rotation axis by a first angle. REJECTIONS I. Claims 21–26 and 28–38 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Esser (US 6,096,040, issued Aug. 1, 2000) and Grady, Jr. (US 2005/0010226 A1, pub. Jan. 13, 2005).2 Final Act. 2. II. Claims 21 and 39–43 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Esser and Klaue (US 5,002,544, iss. Mar. 26, 1991). Final Act. 13. ANALYSIS Independent claim 21 recites, inter alia, “a contour of the bone-facing lower surface formed as an arc of a cylinder having a contour axis extending in a plane including a first rotation axis defined by an intersection of the mid-plane and a transverse plane and rotated relative to the mid-plane about the first rotation axis by a first angle.” Independent claim 34 recites substantially the same language. 2 Although claim 38 is not listed in the rejection over Esser and Grady, Jr. (Final Act. 2), the Examiner addresses claim 38 (Final Act. 12) in the rejection. We, therefore, consider the Examiner’s omission of claim 38 in the statement of the rejection to have been a typographical error. Appeal 2019-003128 Application 13/538,407 4 Appellant contends that support for the newly-added claim language at issue in this appeal can be found in Paragraph 45 of the Specification. Paragraph 45 of the originally-filed disclosure refers to the embodiment of Figures 7–9 and discloses the preferred angles of the center axes for the superior hole 30, cranial hole 31, and caudal hole 32 from the mid-plane 44. Spec. ¶ 45. Paragraph 45 is silent regarding a contour surface of the device, and fails to support the added claim language. We note that Paragraph 43 of the originally-filed disclosure, which directs us to Figures 4 through 6 thereof, provides some support for the added claim language. This paragraph explains that the contoured shape of the bone-contacting surface 22 of the proximal portion 14 can be formed by an arc of a cylinder 29 having a centerline that “can be viewed perpendicularly by rotating the plate” (1) “about 5-15° . . . in a clock-wise fashion about a first rotation axis 48 that is defined by the intersection of the mid-plane 44 and an off-set transverse plane 46” (see Fig. 4), and (2) “about 15-30° . . . downward about a second rotation axis 49 defined by the intersection of the off-set, rotated, transverse plane and the base plane 42” (see Fig. 5). Spec. ¶ 43. The rotation axes 48 and 49 referred to in (1) and (2) above are shown in Figures 4A and 5A, respectively. The Specification explains that “[t]his rotation results, as shown in Fig. 6, with the bone- contacting surface 22 . . . being defined by cylinder 29 that has its center axis 40 perpendicular to the page after the rotations.” Id. While this paragraph discloses a contoured shape of surface 22 that forms an arc of a cylinder having a centerline that is perpendicular to the drawing sheet by rotating the plate along two axes (48 and 49), the Specification does not explicitly disclose a contour axis. While a skilled artisan may, upon Appeal 2019-003128 Application 13/538,407 5 considering the claims in light of the Specification, conclude that the claimed “contour axis” could be the center axis 40 shown in Figure 6, this conclusion would not likely be made with certainty and Appellant has not provided an enlightening relevant explanation; rather, Appellant points to Paragraph 45 of the Specification, which does not discuss the contour at all. Regarding the recitation in claim 21 of “and rotated relative to the mid-plane about the first rotation[al] axis,” it is unclear what element is so rotated. The mid-plane is defined as element 44, and the first rotational axis is defined as element 48. In the Specification, only the plate 10 is disclosed to rotate about the first rotational axis 48. However, the plate 10 does not appear to be the structure modified by this relative rotation limitation, making its meaning uncertain, even when the claim is interpreted in light of the Specification. Paragraph 45, referred to by Appellant as supporting this disclosure (Appeal Br. 3), does not assist us in understanding the metes and bounds of this recitation. Thus, in this situation, newly added claim language does not track the language used in Appellant’s Specification, and Appellant has not provided an adequate explanation of the meaning of, or basis for, the newly-added language in the appellate briefing. Id. We are, thus, unable to clearly ascertain the meaning of the new language, even when considering the claim language in light of the Specification. For the reasons explained above, we find that a skilled artisan would not understand the metes and bounds of “a contour of the bone-facing lower surface formed as an arc of a cylinder having a contour axis extending in a plane including a first rotation axis defined by an intersection of the mid- plane and a transverse plane and rotated relative to the mid-plane about the Appeal 2019-003128 Application 13/538,407 6 first rotation axis by a first angle.” This language appears in both of the pending independent claims. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW GROUND OF REJECTION of claims 21–26 and 28–43 under 35 U.S.C. § 112, second paragraph, as being indefinite. We do not reach the merits of the obviousness rejections. Before a proper review of these rejections can be performed, the subject matter encompassed by the claims on appeal must be reasonably understood without resorting to speculation. Since independent claims 21 and 34 fail to satisfy the requirements of the second paragraph of 35 U.S.C. § 112, we reverse, pro forma, both of the pending rejections under 35 U.S.C. § 103(a). See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language.); see also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“If no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious—the claim becomes indefinite.”). CONCLUSION In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed New Ground 21–26 and 28–38 103(a) Esser and Grady, Jr. 21–26 and 28–38 21 and 39– 43 103(a) Esser and Klaue 21 and 39–43 21–26 and 28–43 112, second paragraph Indefiniteness 21–26 and 28–43 Appeal 2019-003128 Application 13/538,407 7 Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed New Ground Overall Outcome 21–26 and 28–43 21–26 and 28–43 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under §41.52 by the Board upon the same record. . . . REVERSED; 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation