Ex Parte Appenzeller et al

Patent Trial and Appeal Board

Jul 31, 2017

12766452 (P.T.A.B. Jul. 31, 2017)

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.
12/766,452 04/23/2010 Andreas APPENZELLER 10139/18002 (T01063US1) 1471
76960 7590
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
EXAMINER
COLEY, ZADE JAMES
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
08/01/2017 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 ANDREAS APPENZELLER, TOM OVERES, ROBERT FRIGG,
NICHOLAS BOUDUBAN, SILAS ZURSCHMIEDE, and
SIMON STUCKI
Appeal 2015-004974
Application 12/766,4521
Technology Center 3700
Before LYNNE H. BROWNE, JEREMY M. PLENZLER, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
Final Decision rejecting claims 1—7, 9-11, 13—16, 25—29, 31, 32, 34, and
37-43. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants indicate that the pending application is assigned to DePuy
Synthes Products, LLC, and that Johnson & Johnson, Inc. is the parent
corporation of DePuy Synthes Products, LLC. App. Br. 2.
Appeal 2015-004974
Application 12/766,452
CLAIMED SUBJECT MATTER
Claims 1, 25, and 37 are independent, with claims 2—7, 9-11, 13—16,
26—29, 31, 32, 34, and 38-43 depending from claim 1, 25, or 37. Claim 1 is
representative of the claims on appeal, and is reproduced below:
1. A bone fixation element, comprising:
a shaft extending substantially along a longitudinal axis of
the fixation element; and
a head extending from and integrally formed with the
shaft, the head including a plurality of fixation element openings
distributed about a perimeter thereof, each of the fixation element
openings extending through the head from a proximal surface
thereof to a distal surface of the head, each of the fixation element
openings extending through the head along an opening axis,
wherein at least two of the fixation element openings are partly
open, wherein a first one of the openings includes a threading
along an inner surface thereof to lockingly engage a
corresponding threading on a head of a bone fixation element to
be inserted therethrough.
REJECTIONS
1. Claims 1—7, 9-11, and 13—16 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Bouttens (US 2005/0256583 Al, pub. Nov. 17, 2005).
2. Claims 25—29, 31, 32, 34, and 43 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Bouttens and Winslow (US 7,241,314
Bl, iss. July 10, 2007).
3. Claims 37-42 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bouttens and Keller (US 2005/0090826 Al, pub. Apr. 28,
2005).
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Appeal 2015-004974
Application 12/766,452
OPINION
Claims 1—7, 9—11, and 13—16
Appellants argue claims 1—7, 9-11, and 13—16 as a group. App. Br.
4—6. We select claim 1 as representative. Claims 2—7, 9—11, and 13—16
stand or fall with claim 1. See 37 C.F.R. 41.37(c)(l)(iv) (2015).
The Examiner finds that Bouttens discloses each element of claim 1.
Final Act. 3^4. Figures 4 and 5 of Bouttens are reproduced below for
reference.
?
F1G.4
Figure 4 of Bouttens is a top view of a shoulder prosthesis element and
Figure 5 is a section view of that shoulder prosthesis element. Bouttens
H 25—26. The Examiner cites element 7 in Bouttens as corresponding to the
bone fixation element recited in claim 1, with bushing 14 corresponding to
the recited shaft, plate 13 corresponding to the recited head, and holes 18
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Appeal 2015-004974
Application 12/766,452
and 21 corresponding to the recited fixation element openings. Final Act. 3—
4.
The dispositive issue in this case is the meaning of “the fixation
element openings [being] partly open.” See App. Br. 4—6. Appellants do not
dispute the Examiner’s findings, other than those related to whether holes 18
and 21 in Bouttens are “partly open.” Id. Appellants contend that “[a]s
described in the Specification of the present application, ‘partly open’ means
that the openings are ‘only partially enclosed by the head - i.e., a proximal
portion of each of the openings may be left open.’” App. Br. 4 (citing Spec.
110).2 Appellants contend that “[t]he holes [in Bouttens] are not partly
open” because “each hole is still closed around its circumference.” Id. at 5.
Appellants note that “[i]n contrast, the openings of the present application
are enclosed by the plate approximately 240 degrees to 270 degrees to
reduce the size of the head.” Id. at 6 (citing Spec. 110).
Appellants’ claims do not provide the scope alleged. During
examination of a patent application, pending claims are given their broadest
reasonable construction consistent with the specification. In re Prater, 415
F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. ofSci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004). Applying that standard, we generally
interpret the claim terms of an application according to their ordinary and
customary meaning in the context of the written description. See In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The plain
meaning of “partly open” does not require any circumferential opening
2 Appellants cite paragraph 27 of the Specification, but that citation appears
to be to US 2010/0274296 Al, which corresponds to paragraph 10 of the
Specification filed with the United States Patent Office. We cited to the
Specification as filed herein.
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Appeal 2015-004974
Application 12/766,452
along the axial extent of the fixation openings, and Appellants provide no
reason for us to believe otherwise. When we look to the Specification, and
particularly to paragraph 10 cited by Appellants, we are left to conclude that
the broadest reasonable interpretation of the claim does not require that “the
openings are ‘only partially enclosed by the head - i.e., a proximal portion of
each of the openings may be left open’” (i.e., that the openings are not
closed about their circumference), as Appellants allege. Rather, the
Specification leads us to conclude that the opposite is true.
Although the Specification explains that “the openings 116 may be
only partially enclosed by the head . . . between approximately 240° and
270°,” it also explains that “each of the openings may be enclosed . . . 360°,
where the opening 116 is fully enclosed.” Spec. 110. The phrase “partly
open” is not found in the Specification. Although the term “partially” is
used in the Specification, it is used to modify “enclosed.” “Partly open,” as
recited in claim 1, is more akin to the full enclosure than the partial
enclosure described in the Specification. For example, the fixation openings
in the full enclosure arrangement are only open at axial ends thereof, while
in the partial enclosure arrangement those fixation openings are also open
along a portion of their circumferential extent, making the full enclosure
arrangement “partly open” relative to the partial enclosure arrangement.
Based on the record before us, we determine that the phrase “the
fixation element openings are partly open” includes arrangements where
holes are only open at their axial ends (i.e., the full enclosure described in
paragraph 10 of the Specification). There is no dispute that holes 18, 21 in
Bouttens satisfy this requirement. Accordingly, Appellants do not apprise us
of error, as none of the other findings are disputed.
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Appeal 2015-004974
Application 12/766,452
For the reasons set forth above, we sustain the Examiner’s decision
rejecting claim 1, and claims 1—7, 9-11, and 13—16, which fall therewith, as
anticipated by Bouttens.
Claims 25—29, 31, 32, 34, and 37—43
Appellants’ contentions regarding claims 25—29, 31, 32, 34, and 37—
43 are the same as those discussed above relative to claim 1, and are
unpersuasive for similar reasons. App. Br. 6—8. Accordingly, we are also
not apprised of error in the rejection of those claims.
For these reasons, we sustain the Examiner’s decision rejecting claims
25—29, 31, 32, 34, and 43 as unpatentable over Bouttens and Winslow, as
well as the Examiner’s decision rejecting claims 37-42 as unpatentable over
Bouttens and Keller.
DECISION
We AFFIRM the Examiner’s decision to reject claims 1—7, 9—11, 13-
lb, 25-29, 31, 32, 34, and 37-43 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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