Ex Parte Biedermann et al

Board of Patent Appeals and Interferences

Aug 16, 2012

10306057 (B.P.A.I. Aug. 16, 2012)

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.
10/306,057 11/27/2002 Lutz Biedermann 56732/B884 8926
23363 7590 08/16/2012
CHRISTIE, PARKER & HALE, LLP
PO BOX 29001
Glendale, CA 91209-9001
EXAMINER
RAMANA, ANURADHA
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
08/16/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte LUTZ BIEDERMANN and JURGEN HARMS
____________________

Appeal 2010-006113
Application 10/306,057
Technology Center 3700
____________________

Before: KEN B. BARRETT, CHARLES N. GREENHUT, and
MICHAEL L. HOELTER, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF CASE
This is a response to a Request for Rehearing. Requests for Rehearing
are limited to matters overlooked or misapprehended by the Panel in
rendering the original decision. See 37 C.F.R. § 41.52.
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OPINION
Initially, Appellants allege that the Board, by its reliance on
“interchangeability” as opposed to “efficiency” and by referring to the
Machinery’s Handbook, which was not previously of record, has entered a
new grounds of rejection. Request 1-3. We disagree. Appellants take the
term “interchangeability” out of context. Request at 2, 3. The paragraph in
our opinion subsequent to the sentence cited by Appellants makes it clear
that by “interchangability” we meant that the record demonstrates a
likelihood that the threadforms grouped by Steinbock could successfully be
substituted into Cotrel’s device. Opinion 5. We never suggested that all
threadforms would function exactly the same or achieve exactly the same
results. Cotrel clearly expresses the desirability of minimizing or
eliminating the radial component of load on screwing up. Opinion 4. The
Examiner may have specifically proposed in the Office Action to select a
thread “for the most efficient load transfer” as opposed to one that
minimized or eliminated radial loading due to contact or interference.
However, first, the threadforms Steinbock describes as efficient are so in
part due to the lack of radial contact or interference which reduces friction.
Second, the portion of Cotrel cited by the Examiner, specifically col. 2, ll.
54-58, provides all the express guidance one needs in selecting appropriate
threadforms.
Regarding our use of the Machinery’s Handbook, as we pointed out in
the opinion, Steinbock’s background discussion is nearly a word-for-word
reproduction of the portion of the Machinery’s Handbook we relied upon.
The only fact detrimental to Appellants based upon this extrinsic evidence
was confirming that the “saw-tooth” and “buttress” threading described by
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Cotrel and Steinbock, respectively, referred to essentially the same thing1.
Opinion p. 4, n. 3. Appellants were already aware of this fact. See Oral
Hearing Transcript p. 8, ll. 6-14. We have not altered the thrust of the
rejection so as to deprive Appellants a fair opportunity to respond. Request
at 3 citing In re Leithem, 661 F .3d 1316,1319, 100 USPQ 2d 1155, 115 8
(Fed. Cir. 2011 ). Rather, we have merely relied upon a reference akin to a
technical dictionary to confirm the meaning of terms used in the references
before us. Any number of references on the subject, and not just the
Machinery’s Handbook, would have confirmed these facts. In our Opinion
we cited several cases sanctioning a similar approach, none of which
Appellants have distinguished. See Opinion p. 4, n. 3(citations omitted).
Appellants’ incorrect interpretation of “interchangeability” discussed
above, forms the basis for Appellants’ next argument. Request at 3-5.
Again, Steinbock’s grouping was regarded as a suggestion that, in addition
to a saw-tooth or buttress thread, good results may also be achieved using an
Acme or Square thread which share certain characteristics that Cotrel
recognized as important—the ability to eliminate or minimize radial loading.
Appellants’ extrapolation that all threadforms are interchangeable (Request
at 4) results from Appellants flawed logic and not a flawed premise on our
part. A more plausible interpretation of someone familiar with the
threadforms described by Steinbock, or consulting the Machinery’s
Handbook, is that, due to the thread angle, the saw-tooth or buttress thread
would eliminate radial loads under an axial force in one direction, the square
thread would eliminate such loads under a force in either axial direction, and

1 This reference also confirmed Steinbock’s and Appellants’ characterization
of square threadforms as being more difficult to manufacture than, for
example, the Acme thread.
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the Acme thread, would reduce, but not eliminate the radial component as
compared to some threadforms, but not as compared to the square or the
buttress threads axially loaded in that one direction. Contra Request at 5.
Appellants further contend that we overlooked the negative teachings
in Steinbock. Request at 5-6. We did not. See Opinion 5-6. As discussed
above, one benefit of the square thread is the elimination of radial loading
under axial force in multiple directions. The drawback, according to
Steinbock, is difficulty cutting. The record, when considered as a whole,
does not support Appellants’ position that difficulty cutting square threads
would lead one away from their use if one desired the aforementioned
benefit. To the extent we mentioned Appellants’ Specification, we did so
only to examine the problem perceived by Appellants as evidence of the
state of the art concerning machinability of square threads and not to
reconstruct Appellants invention through hindsight. Contra request 6.
Finally, Appellants contend we overlooked objective indicia of
nonobviousness. Request 7-8. The record does not actually contain any
objective indicia of nonobviousness like that discussed in Mintz v. Dietz and
Watson (Fed. Cir. No. 2010-1341, May 30, 2012) (cited by Appellants). The
crux of what Appellants perceive to be “objective indicia” is that Cotrel is
ten years old and the Examiner has failed to cite a reference demonstrating
the use of square threads in a spinal implant during that time. See Request 7;
Oral Hearing Transcript 10-11. It is well-established that the lack of an
anticipatory teaching or a single reference expressly disclosing a specific
combination does not demonstrate nonobviousness. Such a requirement
would undermine the purpose of 35 U.S.C. § 103(a) since that which is
obvious frequently goes without explication. While we cannot agree with
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Appellants that use of the phrase “easy to handle” demonstrates the
“reversibility feature” was anything more than an afterthought (Request 7),
such a feature would, in any case, seem to be the predictable result of using a
symmetric threadform. Ultimately, the record before us demonstrates that
the claimed subject matter results from the simple substitution of
threadforms having a similar characteristic known to be critical in Cotrel’s
spinal implant. Such substitution does not appear to yield any unpredictable
results and Appellants have not provided any factual evidence to
demonstrate nonobviousness. Appellants have not apprised us of any
matters overlooked or misapprehended in reaching our conclusion that the
claimed subject matter would have been obvious to one having ordinary skill
in the art.

DECISION
Upon reconsideration, the rejection of claims 32, 33, 35-37, 39, and
48 remains affirmed.

DENIED

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