DePuy Synthes Products, Inc.

Patent Trials and Appeals Board

Sep 1, 2020

16031792 - (D) (P.T.A.B. Sep. 1, 2020)

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.
16/031,792 07/10/2018 Timothy J. Horan 10139/15718 8137
76960 7590 09/01/2020
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
09/01/2020 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 2020-001042
Application 16/031,792
Technology Center 3700
____________

Before ANTON W. FETTING, ULRIKE W. JENKS, and AMEE A. SHAH,
Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s final decision to reject claims 21–36, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
“DePuy Synthes Products, LLC.” Appeal Br. 2.
Appeal 2020-001042
Application 16/031,792

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CLAIMED SUBJECT MATTER
The Appellant’s “invention relates to surgical plates for fixing two
separate bone segments and methods for using the plates. More specifically,
the plates can be used for tibial plateau leveling osteotomy procedures,
particularly for use with canines.” Spec. ¶ 1.
Claims 21, 31, and 36 are the independent claims. Claim 21 is
illustrative of the subject matter on appeal and is reproduced below (with
added bracketing and paragraphing):
21. A bone plate dimensioned for securing two tibial bone
segments of an animal as part of a tibial leveling osteotomy
procedure, the bone plate comprising:
[(a)] a distal portion comprising an elongated segment
configured for attachment to a shaft of a tibia, the distal portion
[(a1)] having disposed therein a plurality of distal
portion screw holes each designed to accept a screw
therethrough to secure the distal portion to the shaft of the
tibia and
[(a2)] defining a base plane including a bone
contacting surface of the distal portion and a mid-plane
bisecting the distal portion perpendicular to the base plane;
[(b)] a proximal portion configured for attachment to a
resected proximal portion of the tibia,
[(b1)] the resected portion comprising an articular
surface at which the tibia interacts with a femur;
[(b2)] the proximal portion having an upper surface
and a bone-contacting surface opposite the upper surface,
[(b2i)] the bone-contacting surface being pre-
contoured to conform to a target portion of a surface
of the resected portion of the tibia to which the
proximal portion is to be attached,
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Application 16/031,792

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[(b3)] the proximal portion being partially defined
by
[(b3i)] a concave bone contacting surface,
[(b3ii)] a curvature of at least a portion of the
bone contacting surface extending about a radius of
curvature extending in a rotation axis plane
including a first rotation axis defined by an
intersection of the base plane and a transverse plane
transverse to the midplane and the base plane,
[(b3iii)] the rotation axis plane being rotated
relative to the base plane about the first rotation axis
by a first angle, and
[(biv)] wherein the radius of curvature is
rotated within the rotation axis plane by a second
angle relative to a second rotation axis defined by
an intersection of the mid-plane and the transverse
plane; and
[(c)] a plurality of proximal portion locking screw holes
located in the proximal portion extending through the bone-
contacting surface,
[(c1)] the proximal portion locking screw holes
locking bone screws inserted therethrough along screw
axes selected to pass into the resected portion of bone
without intersecting the articular surface.
Appeal Br. 14–15 (Claims App.).

REJECTIONS
Claims 21–27, 31, and 36 stand rejected under pre-AIA 35 U.S.C.
§ 102(e) as being anticipated by Forstein et al. (US 2006/0173458 A1, pub.
Aug. 3, 2006) (“Forstein”).
Claims 28–30 and 32–35 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being obvious over Forstein.
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Application 16/031,792

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OPINION
Anticipation
After careful review of the record, we agree with the Appellant’s
contention that the Examiner’s rejection of independent claims 21, 31, and
36 is in error because “Forstein does not show or suggest that the contour of
the head 112 is curved along a radius of curvature defined with respect to the
planes and axes recited in the claims.” Appeal Br. 8; see also id. at 11,
Reply Br. 5, 7.
Independent claim 21 requires, in relevant part, a bone plate with a
proximal portion “being pre-contoured to conform to a target portion of a
surface of the resected portion of the tibia to which the proximal portion is to
be attached” (limitation (b2i) and “being partially defined by a concave bone
contacting surface” (limitation (b3i), and “a curvature of at least a portion of
the bone contacting surface extending about a radius of curvature extending
in a rotation axis plane including a first rotation axis defined by an
intersection of the base plane and a transverse plane transverse to the
midplane and the base plane” (limitation (b3ii)). Appeal Br. 14–15 (Claims
App.). Each of independent claims 31 and 36 contains similar features. See
id. at 17, 19. The Examiner finds that Forstein discloses these features in, at
least, Figures 9–11. See Final Act. 4–5, 13–15; Ans. 4–7. Specifically, the
Examiner finds “the Appellant is referencing their invention based upon
imaginary axes and planes of their plate to achieve a curved shape in the arc
of a cylinder to which the bone plate is to cover.” Ans. 4. The Examiner
acknowledges that “the written description of Forstein does not expressly
teach these axes and plane [sic] in the prior art drawings or specification,”
but finds that “the same arced cylindrical curvature and the claimed axes as
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Application 16/031,792

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Appellant’s can be found and were provided in the Final Office Action
(reproduced below) to expressly show how the prior art achieve the same
curvature as their invention.” Id.

Forstein’s Figure 10 as annotated by the Examiner shows the arced
curvature, axes, and planes considered by the Examiner to meet the claimed
limitations.
We find persuasive the Appellant’s argument’s that “the claimed
planes and axes are in no way imaginary, as suggested by the Examiner, but
rather, the planes and axes are explicitly defined in the claims, with respect
to structural features of the bone plate.” Appeal Br. 9; Reply Br. 6. As the
Appellant points, out “claim 21 recites a distal portion ‘defining a base plane
including a bone contacting surface of the distal portion and a mid-plane
bisecting the distal portion perpendicular to the base plane’,” as recited
limitation (a2). Appeal Br. 9. Further, the Specification defines each of the
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Application 16/031,792

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additional planes and axes relative to the base axis (see id.; Spec. ¶ 41) and
depicts the axes in Figures 2B, 2C, and 2B (reproduced below).

Figures 2B, 2C, and 2D depicting end, side, and top views,
respectively, of the claimed bone plate.
In Fig. 2B, the plate 10 is viewed from the end of the distal
portion 12 longitudinally along its shaft. A base plane 42 is
defined by the flat distal portion 12 at the bone-contacting
surface 22. A mid-plane 44 is defined as bisecting the base plane
in the distal portion 12 of the plate 10 and extending along the
length of the plate. A transverse plane 46 is defined as being
orthogonal to the base plane 42 and the mid-plane 44.
Spec. ¶ 41. These figures clearly show the base plane as flat, i.e., straight, at
the distal portion and not curved, and the relationships of the base, mid, and
transverse planes as perpendicular to each other. Thus, we agree with the
Appellant that the Examiner’s interpretation of Forstein’s base plane as
curved does not meet the claimed base plane and its relationships to the mid
and transverse planes, i.e., bisected by and perpendicular/orthogonal to.
For the above reason, we do not sustain the Examiner’s rejection
under 35 U.S.C. § 102(e) of independent claims 21, 31, and 36, and of
dependent claims 22–27, which rely on the same inadequate finding.
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Application 16/031,792

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Obviousness
The Examiner’s rejection of claims 28–30 and 32–35 does not cure
the deficiencies set forth above with respect to independent claims 21
and 31. Therefore, we do not sustain the rejection of claims 28–30 and
32–35 under 35 U.S.C. § 103(a).
CONCLUSION
The Examiner’s decision to reject claims 21–27, 31, and 36 under
35 U.S.C. § 102(e) is not sustained.
The Examiner’s decision to reject claims 28–30 and 32–35 under
35 U.S.C. § 103(a) is not sustained.

In summary:
Claim(s)
Rejected 35 U.S.C. § References Affirmed Reversed
21–27, 31, 36 102(e) Forstein 21–27, 31, 36
28–30, 32–35 103(a) Forstein 28–30, 32–35
Overall
Outcome 21–36

REVERSED