Ex Parte Bohrmann et al

Patent Trial and Appeal Board

Jun 21, 2017

11525235 (P.T.A.B. Jun. 21, 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.
11/525,235 09/20/2006 Peter Bohrmann LSG06333 8025
50488 7590 06/21/2017
AT T .F.MAN HAT T MCCCiY RT TSSF.T T fr TT TTTT F T T P
EXAMINER
806 SW BROADWAY BATES, DAVID W
SUITE 600
PORTLAND, OR 97205-3335 ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
06/21/2017 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 PETER BOHRMANN, LORENZ GABELE,
AXEL WAIZENEGGER, and HEINER WILD
Appeal 2015-005048
Application 11/525,2351
Technology Center 3700
Before GEORGE R. HOSKINS, BRADLEY B. BAYAT, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Peter Bohrmann et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1, 2, 4—11, 13—18, 21, and 222
under 35 U.S.C. § 103(a) as unpatentable over James (US 2006/0149265 Al,
pub. July 6, 2006) and O’Driscoll (US 2005/0131413 Al, pub. June 16,
2005). We have jurisdiction over this appeal under 35 U.S.C. § 6(b). An
oral hearing was held on June 6, 2017.
We REVERSE.
1 According to Appellants, the real party in interest is Karl Leibinger
Medizintechnik GmbH. Appeal Br. 3 (filed Nov. 17, 2014).
2 Claims 3, 12, 19, and 20 have been canceled. Final Act. 2.
Appeal 2015-005048
Application 11/525,235
INVENTION
Appellants’ invention relates to “a system for the fixation of bone
segments or bone fragments.” Spec. 12.
Claims 1 and 14 are independent claims. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A system for the fixing of bone segments or bone
fragments comprising:
an implant plate or an implant surface plate having a bore
or a cut-out; and
an implant screw which can be guided through the bore or
cut-out of the plate, wherein the implant screw has a screw shaft
and a screw head, wherein both the screw shaft and the screw
head have a thread with identical pitches, wherein the screw head
has a larger outer thread diameter than the screw shaft, wherein
the bore or cut-out of the plate is provided with an internal thread
and the thread of the screw head is able to engage the internal
thread of the bore or cut-out of the plate, wherein an outer thread
diameter of the screw shaft is less than an inner thread diameter
of the bore or cut-out of the plate so that the implant screw is
initially screwed through the bore or cut-out of the plate without
any connection to the plate, and wherein a thread height in a
region of the screw head is smaller than a thread height in a
region of the screw shaft.
Appeal Br. 18 (Claims App.) (emphasis added).
ANALYSIS
The bone fixation system that claims 1 and 14 recite includes, inter
alia, an implant plate and a corresponding screw, wherein both the shaft and
head of the screw have threads with “identical pitches” and the height of the
threads in the head region are “smaller than” the height of the threads in the
shaft region. Id. at 18, 20. The Examiner relies on James as the primary
reference, but finds it “fails to teach the threads . . . having identical pitches,
and fails to teach the thread height in a region of the screw head . . . being
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Appeal 2015-005048
Application 11/525,235
smaller than a thread height in a region of the screw shaft.” Final Act. 3.
Finding O’Driscoll cures the deficiencies with James, the Examiner
concludes, “[i]t would have been obvious to one with ordinary skill in the art
at the time of the invention to substitute the O'Driscoll screw ... for the
James screw . . . and to modify the screw thread ... of the plate to correlate
with the O’Driscoll screw thread.” Id. The Examiner determines a skilled
artisan would have made the substitution “in order to provide a screw design
[to permit] positioning of the plate away from the bone (e.g., a space beneath
the plate).” Id. (citing O’Driscoll 123).
O’Driscoll teaches using a “locking screws such as screw 10, in
conjunction with one or more apertures of a bone plate, may allow at least a
portion of the plate to be optionally positioned away from the bone.”
O’Driscoll 123 (emphasis added). In addition, O’Driscoll teaches that
threaded apertures “may be used to leave a space or gap between the plate
and bone.” Id. 1 8. Specifically, O’Driscoll explains,
a bone screw inserted through a threaded aperture will thread into
both the plate and bone. Thus, there will be a space between the
plate and bone if the screw is threaded fully into the plate (such
that the screw cannot turn any more) before compression occurs
between the bone and the plate.
Id. As a result, the Examiner finds O’Driscoll “demonstrates that threaded
interaction between a screw and bore is known in the prior art as a method of
causing such spacing.” Ans. 9 (citing O’Driscoll 1 8).
We agree with the Examiner that O’Driscoll shows it was known to
use a bone screw/plate configuration with a threaded connection to create
spacing between the plate and bone. This disclosure, however, notably
speaks about screw/plate threaded connections generally, rather than
establishing a known connection between the claimed pitch and/or height of
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Appeal 2015-005048
Application 11/525,235
the screw threads with the spacing formed between the plate and bone. In
fact, given the general nature of O’Driscoll’s teaching, it is unclear what, if
any, difference in the spacing would result from the screw James discloses
versus the screw O’Driscoll discloses. Moreover, it is not readily apparent
why a skilled artisan would have viewed O’Driscoll’s screw for creating a
space between the plate and bone as having any advantage over the screw
taught by James, and the Examiner fails to provide any supporting facts, or
technical reasoning to support such a finding. As a result, the rejection lacks
a rational underpinning to support the Examiner’s determination that a
skilled artisan would have been motivated to modify James’s screw thread
pitches and heights in the manner claimed.
Therefore, for the foregoing reasons, we do not sustain the Examiner’s
rejection of independent claims 1 and 14. Because claims 2, 4—11, 13, 15—
18, 21, and 22 depend from either claim 1 or 14, we do not sustain the
Examiner’s rejections of the dependent claims for the same reasons.
DECISION
We reverse the Examiner’s decision to reject claims 1, 2, 4—11, 13—
18, 21, and 22.
REVERSED
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