DePuy Synthes Products, Inc.

Patent Trials and Appeals Board

Jul 1, 2021

2020006647 (P.T.A.B. Jul. 1, 2021)

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.
15/013,172 02/02/2016 Jean-Noel Bordeaux 104525.007022 1356
53443 7590 07/01/2021
BakerHostetler
Cira Centre, 12th Floor
2929 Arch Street
Philadelphia, PA 19104-2891
EXAMINER
PRONE, CHRISTOPHER D
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
07/01/2021 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEAN-NOEL BORDEAUX and TIMOTHY J. HORAN

Appeal 2020-006647
Application 15/013,172
Technology Center 3700
____________

Before JENNIFER D. BAHR, EDWARD A. BROWN, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant, DePuy Synthes Products, Inc.,1 appeals under 35 U.S.C.
§ 134(a) from the Examiner’s final decision rejecting claims 1–4, 6, 12–16,
19, 20, and 27–29. Final Act. 1. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies itself as the sole real party in interest and discloses that
it is “a Johnson & Johnson company.” Appeal Br. 1.
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STATEMENT OF THE CASE
The Specification
Appellant’s disclosure relates “to systems, apparatus, and methods for
performing a tibial tuberosity advancement procedure.” Spec. ¶2.
The Claims
Claims 1–4, 6, 12–16, 19, 20, and 27–29 are rejected. Final Act. 1;
Ans. 3. Claims 24–26 are withdrawn from consideration. Final Act. 1.
Claims 21–23, 30, and 31 were rejected in the Final Action, but their
rejection has been withdrawn. Final Act. 1; Ans. 3. Claim 1 is the sole
independent claim on appeal. Appeal Br. A1–A2. It is illustrative and
reproduced below.
1. A tibial tuberosity advancement system configured
to maintain a tuberosity, that has been moved cranially from an
initial position to an advanced position relative to a tibial body,
in the advanced position, the tibial tuberosity advancement
system comprising:
an implant including an implant body, the implant body
defining a proximal end portion, a distal end portion, and an
intermediate portion that extends between the proximal end
portion and distal end portion, the intermediate portion shaped
such that when the distal end portion is attached to the tibial
body, a first surface of the proximal end portion faces the
tuberosity, a second surface of the proximal end portion is
opposite the first surface the implant body defining a fastener
hole that extends through the proximal end portion along a
central axis that is nonparallel with respect to a direction normal
to the first surface;
a spacer configured and sized to fit at least partially
within a gap disposed between the tuberosity and the tibial
body when the tuberosity is in the advanced position, the spacer
including a spacer body and a slot that extends through the
spacer body; and
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a spacer fixation member that includes a first end portion
configured to be attached to the tuberosity, a second end portion
that is configured to be attached to the tibial body, and an
intermediate fixation portion that extends between the first end
portion and the second end portion, the intermediate fixation
portion configured and sized to be at least partially received in
the slot so as to couple the spacer fixation member to the
spacer.
Id.
The Examiner’s Rejections
The following rejections, both pursuant to 35 U.S.C. § 103, are before
us:
(1) claims 1–4, 6, 12, 19, 20, and 27–29 as unpatentable over
Lafaver2 and Medoff3 (Final Act. 3; Ans. 3); and
(2) claims 13–16 as unpatentable over Lafaver, Medoff, and Gall4
(Final Act. 4).
DISCUSSION
Appellant argues against both rejections, and with respect to all
rejected claims, on the basis of purported error in the rejection of claim 1.
Appeal Br. 15–18.5

2 Sarah Lafaver et al., Tibial Tuberosity Advancement for Stabilization of the
Canine Cranial Cruciate Ligament-Deficient Stifle Joint: Surgical
Technique, Early Results, and Complications in 101 Dogs, 36 VETERINARY
SURGERY 573–86 (2007) (“Lafaver”).
3 US 6,077,266, issued June 20, 2000 (“Medoff”).
4 US 2008/0269808 Al, published Oct. 30, 2008 (“Gall”).
5 Appellant also presented arguments specific to independent claim 21 and
dependent claims 22, 23, 30, and 31 (Appeal Br. 18–20), but the Examiner
ultimately withdrew the rejection of those claims. Ans. 3.
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The Examiner found that Lafaver discloses the subject matter of
claim 1 save “a fastener hole that extends through the proximal end portion
along a central axis that is nonparallel with respect to a direction normal to
the first surface,” as recited in claim 1. Final Act. 3 (citing Lafaver Figs. 1
and 5C). Lafaver discloses fastener holes that extend through a proximal
end portion but does not describe them as angled. Lafaver Fig. 1 (refs. 2–8).
However, the Examiner found that “Medoff teaches the use of bone
plate implants comprising through hole sections with angled openings non-
parallel to a direction normal to the surface for the purpose of guiding bone
screws or pins into the desired final orientation.” Final Act. 3; see also Ans.
4–6 (citing Medoff Figs. 1–2). The Examiner concluded:
It would have been obvious to one having ordinary skill in
the art at the time the invention was made to modify the holes of
the implant body of Lafaver to be angled in the same orientation
as the fasteners as taught by Medoff in order to better guide the
fasteners and prevent any jamming or sticking.
Final Act. 3–4.
Appellant argues against the rejection but does so, in part, by
mischaracterizing the Examiner’s proposed modification of Lafaver in an
attempt to show error in the Examiner’s reasoning for the modification.
More specifically, Appellant argues:
The Examiner cites Medoff for teaching a bone plate
having screw holes that are configured to receive bone screws to
attach to an underlying fractured bone to assist with bone healing
(See Col. 1, lines 1–45, Col. 2, lines 10–16, and claim 1). The
Examiner attempts to replace the apertures of Lafaver’s implant
that receive fork and pegs with the screw holes of Medoff.
However, in doing so, the Examiner has failed to establish
a credible motivation why one having ordinary skill in the art
would modify the first portion of Lafaver’s implant that attaches
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to the tuberosity with Medoff’s screw holes, as opposed to the
second portion that attaches to the tibia and in fact defines bone
screw holes. As noted above, Lafaver’s second portion that
attaches to the tibia is the only portion of Lafaver’s implant that
is disclosed as including bone screw holes that are configured to
receive bone screws.
Appeal Br. 16. But the Examiner did not propose to replace Lafaver’s
apertures with screw holes. The Examiner proposed modifying the existing
apertures in Lafaver’s proximal portion to make them angled to match the
angle of the pegs/tines/pins.6 Final Act. 3–4; Ans. 4 (“[I]t would have been
obvious to modify the openings of Lafaver receiving the angled pins, to have
an angled orientation.”). And the Examiner provides an adequate reason
based on the prior art: “in order to guide the pins to a desired consistent
angle and to prevent any jamming or sticking during the insertion process.”
Ans. 4. As the Examiner further notes:
When a pin or a plurality of pins all need to be inserted at the
same angle [as in Lafaver] it would have been obvious to utilize
an opening angled to the same degree. Medoff specifically
teaches that it is old and well known in the art of bone plates to
modify the opening of a plate to match the desired insertion angle
of the fastener extending there through.
Ans. 4.

6 All three terms—pegs, tines, and pins—are used in the record before us to
refer to the same structure disclosed in Lafaver: the angled insertion
structures illustrated in Figure 1 of Lafaver. See Appeal Br. 15 (“The first
portion [of Lafaver] is secured to the tuberosity by inserting pegs of a fork
through apertures that extend through the first portion”); Aug. 27, 2019,
Advisory Act. (“[T]he holes of Lafaver are not angled to the same
orientation as the tines.”); Ans. 4 (“Lafaver specifically discloses that the
fastener pins all should be inserted at an angle.”).
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With respect to the actual modification proposed by the Examiner,
Appellant appears to argue that the prior art teaches away from it. In that
regard, Appellant argues “changing the orientation of the Lafaver’s apertures
that receive the pegs of the fork [to] better guide the fasteners and prevent
any jamming or sticking . . . run[s] contrary to the explicit teachings of
Lafaver.” Appeal Br. 16. The explicit teaching identified by Appellant is
the following: “Note that the central peg of the fork has a notch to match the
smaller square central hole of the plate to snap both pieces together.”
Lafaver 576 (Fig. 4D caption) (bold typeface omitted).
But Appellant’s argument is not persuasive. That the fork and
proximal portion are snapped or locked together once they are in the desired
mated configuration is quite different than whether they get stuck or jammed
during mating and in an undesired configuration. It is for purposes of
avoiding the latter that the Examiner reasons a person of ordinary skill in the
art would have made the proposed modification. And the Examiner makes
this abundantly clear in the Answer. See Ans. 4 (“[I]t would have been
obvious to modify the openings of Lafaver receiving the angled pins, to have
an angled orientation in order to guide the pins to a desired consistent angle
and to prevent any jamming or sticking during the insertion process.”
(emphasis added)). And as the Answer points out, the proposed
modification does not preclude maintaining a notch on a peg so that the peg
can retain its snap lock fit. Ans. 4. To the extent that the angled opening
might interfere with the snap lock fit—as Appellant argues (Appeal Br.
17)—a person of ordinary skill in the art would know how to compensate for
the angling of the aperture to retain a snap lock fit, for example, by similarly
angling the notch. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421
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(2007) (“A person of ordinary skill is also a person of ordinary creativity,
not an automaton.”).
Appellant describes Lafaver’s apparatus as a “specialized implant
designed to achieve a specific type of fixation (tibial and advanced
tuberosity).” Appeal Br. 17. Appellant argues that, despite being “aware of
bone screw fixation technology [and] angulating fixation members,”
“Lafaver intentionally . . . maintains the normal orientation of the apertures
[and] ensures that the central aperture is sufficiently small to ensure
attachment of the implant to the fork.” Id. This argument is not persuasive
that the Examiner’s proposed modification would not have been obvious.
First, the test is not what Lafaver and her co-authors would have
found obvious. It is what would have been obvious to a hypothetical person
of ordinary skill in the art. See In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir.
1998) (“Obviousness is determined from the vantage point of a hypothetical
person having ordinary skill in the art to which the patent pertains.”).
Second, the Examiner’s proposed modification need not be the best
solution to be an obvious solution. See PAR Pharm., Inc. v. TWI Pharms.,
Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014) (“Par also argues that there
were better methods available to address the viscosity and interpatient
variability concerns with Megace OS. Our precedent, however, does not
require that the motivation be the best option, only that it be a suitable
option from which the prior art did not teach away.”); In re Fulton, 391 F.3d
1195, 1200 (Fed. Cir. 2004) (“[A] finding that the prior art as a whole
suggests the desirability of a particular combination need not be supported
by a finding that the prior art suggests that the combination claimed . . . is
the preferred, or most desirable, combination.”).
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Appellant does not apprise us of error in the rejection of claim 1.
Accordingly, we affirm the rejection of claim 1. In addition, because
Appellant does not present separate arguments for any other rejected claim,
we likewise affirm the rejection of claims 2–4, 6, 12, 19, 20, 27–29 and the
rejection of claims 13–16.
SUMMARY
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/ Basis Affirmed Reversed
1–4, 6, 12,
19, 20, 27–
29
103 Lafaver, Medoff 1–4, 6, 12,
19, 20, 27–
29

13–16 103 Lafaver, Medoff,
Gall
13–16
Overall
Outcome
1–4, 6, 12–
16, 19, 20,
27–29

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2019).
AFFIRMED