Ex Parte Clifford et al

Patent Trial and Appeal Board

Nov 20, 2014

12690687 (P.T.A.B. Nov. 20, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANTON G. CLIFFORD, MARY O’CONNELL,
JOSHUA MAKOWER, and RICHARD G. VECCHIOTTI
____________

Appeal 2012-009985
Application 12/690,687
Technology Center 3700
____________

Before ERIC B. GRIMES, ULRIKE W. JENKS, and
ROBERT A. POLLOCK, Administrative Patent Judges.

JENKS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims directed to
a device for relieving knee pain. The Examiner rejects the claims as
anticipated. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
The Specification provides a device that “has the capacity to absorb
energy in addition to transfer energy from the joint. The simplest
embodiment of the present invention incorporates a linear elastic spring.”
(Spec. 10: ¶ 36.) The Specification shows in Fig. 7, reproduced below, that

1 Appellants identify Moximed, Inc., as the Real Party in Interest. (App.
Br. 2.)
App
App

the f
flexi
“FIG
exist
(Spe
Claim
repre
eal 2012-0
lication 12
orces on th
on during
. 7 is a gra
ing in a ga
In one e
during k
the com
increase
which e
As the k
and will
c. 14: ¶ 51
Claims 1
s Append
sentative
Claim 1
implanta
09985
/690,687
e knee are
a gait cycl
ph, illustr
it cycle” (
mbodimen
nee extens
pression o
d joint un-
nsures dev
nee move
cause littl
.)
–6, 9–15,
ix of the A
of the claim
: An im
ble device
greatest w
e.
ating the f
Spec. 19: ¶
t, the dev
ion. Unlo
f the devi
loading. T
ice elong
s into fle
e to no join
and 18 are
ppeal Bri
s on appe
plantable
comprisin
2
hen the k
lexion/ext
71.)
ice is desig
ading in t
ce – incre
he device
ation resu
xion, the
t off-load
on appea
ef (App. B
al, and re
device fo
g:
nee is app
ension ang
ned to of
his phase
ased com
is anchor
lting from
device is
ing.
l, and can
r. 18–20)
ads as foll
r relieving
roaching z
le and join
f load the
is governe
pression y
ed in a pos
knee fle
un-compre
be found i
. Claim 1
ows:
knee pain
ero degree
t force
joint
d by
ields
ition
xion.
ssed
n the
is
, the

Appeal 2012-009985
Application 12/690,687

3
first and second base components configured for
attachment to a lateral or medial side of a knee joint;
an energy manipulation member connectable to the first
and second base components at first and second connections
respectively, wherein the energy manipulation member is
configured such that the first and second connections move
apart as the knee joint moves from 0° flexion to at least 60°
flexion;
wherein the energy manipulation member comprises a
spring; and
wherein the spring is arranged in the energy manipulation
member to act in compression and to exert no force on the joint
in tension.
Claim 10, the only other independent claim, also recites that “the
spring is arranged in the energy manipulation member to act in compression
and to exert no force on the joint in tension.”
The Examiner has rejected2 claims 1–6, 9–15, and 18 under 35 U.S.C.
§ 102(b) as being anticipated by Draper.3
The Issue: Anticipation by Draper
The Examiner finds that Draper’s device
comprises a link assembly (energy manipulation member; 60),
including compression spring (67), connectable to fixation
assemblies (first and second base component; 11 and 12), meets
the claimed structural limitations and is considered at least fully
capable of being configured such that the first and second

2 In the Final Action dated Sept. 28, 2011, the Examiner provisionally
rejected claims 1, 2, 5, 6, 9–11, 14, 15, and 18 on the ground of nonstatutory
obviousness-type double patenting over the copending Application
12/605,564 (Final Act. 6). Appellants do not request review of this
rejection. (See App. Br. 16.) We therefore, summarily affirm this rejection.
See MPEP § 1205.02 (“If a ground of rejection stated by the examiner is not
addressed in the appellant’s brief, that ground of rejection will be summarily
sustained by the Board.”).
3 Edward Draper, US 2005/0261680 Al, published Nov. 24, 2005.
App
App

(Ans
on th
65 is
assem

Exam
mem
not i

Find

used
(Dra

load
“FIG
artic
eal 2012-0
lication 12
connecti
least 60º
knee join
individu
. 8.)
Appellan
e joint in
reached, r
bly” (Ap
Does the
iner’s fin
ber with t
n tension?
ings of Fa
FF1. D
to counter
per 1: ¶ 23
FF2. D
on articula
. 1 shows
ular cartila
09985
/690,687
ons move
flexion, d
t, as well
al patient’
ts contend
tension wh
egardless
p. Br. 9 (e
preponde
ding that t
he spring o

ct
raper discl
act the co
.)
raper discl
r cartilage
a perspec
ge.” (Dra
apart as th
epending o
as the ana
s knee.
that Drap
en the ma
of the arra
mphasis o
rance of th
he Draper
f the mem
osed that “
mpressive
osed load
. Fig. 1 is
tive view o
per 2: ¶ 35
4
e knee join
n the loca
tomical dim
er’s “link
ximum lim
ngement o
mitted); R
e evidenc
disclosed
ber arrang
[t]raction
loads norm
controlling
reproduce
f a fixator
.) The fix
t moves f
tion of the
ensions o
assembly
it of sepa
f the sprin
eply Br. 3)
e of record
an energy
ed to act i
across a jo
ally expe
devices f
d below:
for contro
ator comp
rom 0º to
device on
f the
60 will ex
ration of th
g 67 in th

support t
manipulat
n compres
int has lon
rienced by
or control

lling load
rises two f
at
the
ert force
e lugs 64,
e link
he
ion
sion and
g been
the joint.
ling the
s on
ixation

”
App
App

assem

fixat
(Dra

repro
Fig.
sprin
eal 2012-0
lication 12
blies (11
FF3. D
ors can be
[The] lo
articulat
side of a
second b
second b
and seco
controlle
per 2: ¶ 47
FF4. D
duced bel
3D shows
g. (Drape
FF5. Fi
[A] link
separatio
compris
being m
displace
means fo
towards
09985
/690,687
, 12) conn
raper discl
used on e
ad controll
ing joint b
first bone
one pins 3
one using
nd bones a
d by the f
; Ans. 5.)
raper discl
ow:
a perspect
r Fig. 3D;
g. 3D of D
assembly
n of pivot
es a pair of
ounted on
able there
r biasing
a maximu
ected by a
osed that o
ither side o
ing fixator
y way of f
using the
0 screwed
the second
re on eith
ixator.
osed a link
ive view o
see also A
raper show
60 provide
s 14, 15 in
lugs 64 a
a central s
along. A c
the distanc
m limit of
5
link assem
ne or two
f an articu
10 may b
irst bone p
first fixati
into a cor
fixation
er side of
assembly
f a link as
ns. 6)
s:
s for a var
hubs 62,
nd a pair o
haft 66 an
ompressio
e of separ
separation
bly (13).
load contr
lating join
e attached
ins 30 scre
on assemb
respondin
assembly 1
an articula
as shown

sembly wi
iable dista
63. Link a
f lugs 65,
d being ax
n spring 6
ation of th
of the lug
(Draper 2
olling dev
t.
to an
wed into
ly 11, and
g side of a
2. The fir
ting joint t
in Fig. 3D
th compre
nce of
ssembly 6
each pair
ially
7 provide
e pivots 14
pairs 64,
: ¶ 42.)
ices or
one

st
o be
,
ssion
0
s a
, 15
65
Appeal 2012-009985
Application 12/690,687

6
so as to counteract the natural compressive forces experienced
by the joint.
(Draper 3: ¶ 54; Ans. 6)

Principle of Law
“[A]pparatus claims cover what a device is, not what a device does.”
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed.
Cir. 1990).

Analysis
Appellants contend that “Draper explicitly teaches against moving the
lugs apart during knee flexion, and instead teaches moving the lugs apart
during knee extension in order to reduce pressure on the joint.” (App. Br.
10.)
We are not persuaded. “It is noted that joints of the skeleton naturally
experience compression and the fixators . . . can provide amelioration of this
by applying tension.” (Draper 4: ¶ 72.) Draper states that its compression
spring embodiment “counteract[s] the natural compressive forces
experienced by the joint” (FF 5). As evidenced by Appellants’ own Figure
7, the compressive forces on a knee are increased during extension, not
flexion. Thus, Draper’s compression spring embodiment compresses, and
provides a counteracting force in the opposite direction, during knee
extension. (Draper 3: ¶ 60.) Draper’s fixation device, however, is not
limited to a particular context of mounting the device to the side of an
articulating joint. Draper recognizes that “[s]ome or all of the compression
that would otherwise be carried by the joint may be taken by the device, and
Appeal 2012-009985
Application 12/690,687

7
this can be a function of the angle of support[,] by control of spring strength
and angle of fixation to the bones.” (Draper 4: ¶ 76.) Draper thus
acknowledges that placement of the device affects the function.
The claim limitation recites that “the energy manipulation member is
configured such that the first and second connections move apart as the knee
joint moves from 0° flexion to at least 60° flexion.” This limitation,
however, does not require that the connections reach the maximum
separation at 60° flexion. We agree with the Examiner’s position that this is
a functional limitation. “An intended use or purpose usually will not limit
the scope of the claim because such statements usually do no more than
define a context in which the invention operates.” Boehringer Ingelheim
Vetmedica v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003)
(citing Griffin v. Bertina, 285 F.3d 1029, 1033 (Fed. Cir. 2002); In re Sinex,
309 F.2d 488, 492 (CCPA 1962) (statement of intended use in an apparatus
claim did not distinguish over the prior art apparatus); see also In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). As explained above, the
device behaves differently depending on the position of the device in
relation to the articulating joint (see Draper 4: ¶ 76). Thus, we agree with
the Examiner’s interpretation that this limitation is a functional limitation.
Appellants contend that “the link assembly 60 will exert force on the
joint in tension when the maximum limit of separation of the lugs 64, 65 is
reached, regardless of the arrangement of the spring 67 in the link assembly”
(App. Br. 9 (emphasis omitted), 14; Reply Br. 3).
We are not persuaded. The Specification provides “[w]hen the spring
is not engaged no absorbing or load transfer occurs. The device may utilize
rigid and coaxial elements that ride into or through each other. Load transfer
Appeal 2012-009985
Application 12/690,687

8
and energy absorption occurs when the spring is engaged.” (Spec. 15 ¶ 54)
We agree with the Examiner’s position that the limitation of the spring to
“act in compression and exert no force on the joint in tension” is a functional
limitation that is directed to a property associated with the spring within the
energy manipulation member (Ans. 8). Generally, when springs are at their
relaxed state no force is acting on the spring. Here, the positioning of the
device in relation to the joint will dictate whether the spring is engaged in
Draper’s fixation member (Draper 4: ¶ 76; see also FF 4–5). We agree with
the Examiner’s finding that Draper’s device in Fig. 3D, “meets the claimed
structural limitations, and is considered at least fully capable of performing
the claimed functional limitations.” (Ans. 8–9.)
Appellants contend that “the mere allegations that the spring 67
‘appears’ to not be fixed to lugs 64, 65 . . . is insufficient to establish a prima
facie case of anticipation or obviousness4“ (Appeal Br. 4; Reply Br. 2).
Specifically, the Examiner finds that “spring (67) [in Draper] appears
to be unattached to the lugs (64, 65). . . . [T]he examiner maintains that it
appears from fig. 3D of Draper that the spring (67) is not fixed to the lugs

4 We note that the Examiner’s prima facie case is based on anticipation
under 35 U.S.C. §102(b) by Draper (Ans. 4–6). In the response to
arguments section of the Final Action dated Sept. 28, 2011, the Examiner
additionally takes the position that it would also have been obvious “to
modify the spring to act in compression and exert no force on the joint in
tension, in order to take weight off the articular surfaces of the joint, as
would be recognized by one of ordinary skill in the art.” (Final Act. 3; see
also Ans. 9.) In their response, Appellants acknowledge that “[c]laims 1–6,
9–15, and 18 stand rejected under 35 U.S.C. §102(a) as purportedly
anticipated by [Draper], or alternatively under 35 U.S.C. § 103(a)” (App. Br.
4). Because we affirm the rejection under 35 U.S.C. §102(b), we do not
address the merits of any obviousness arguments made by Appellants in
their Briefs.
Appeal 2012-009985
Application 12/690,687

9
(64, 65), which would also meet the limitation of acting in compression and
exerting no force on the joint in tension.” (Ans. 9.)
Ordinarily the reliance on a drawing for the purpose of anticipation is
acceptable provided the drawing clearly show the claimed features. In re
Mraz, 455F.2d 1069 (CCPA 1972), see also In re Wright, 569 F.2d 1124
(CCPA 1977). Draper discloses applying traction across a joint to relieve
compression on the joint (FF 1–3). With respect to Fig. 3D, Draper
disclosed that the lugs are attached to a central shaft (FF 4–5). Draper,
however, is silent with respect to the mounting (or lack thereof) of the spring
in the link assembly itself (FF 4–5). The Examiner relies on Fallin5 to
establish that it was generally “known in the art that springs used in
prosthetic devices can be fixed at both ends or not fixed at either end” (Final
Act. 3).
Whether or not the spring in Draper’s Fig 3D (FF 4–5) is attached to
the lugs is not material to our decision in this case. The claim recites that the
“spring is arranged” to act in compression. There is nothing in the claim that
requires a particular physical connection of the compression spring within
the energy manipulation member. Draper discloses that, whether its
compression spring is attached or not, it functions to “provides a means for
biasing the distance of separation of the pivots 14, 15 towards a maximum
limit of separation of the lug pairs 64, 65 so as to counteract the natural
compressive forces experienced by the joint” (FF 5). Because the spring is
described as providing a force that counteracts the natural compressive
forces, it meets the claim limitation of acting in compression. Accordingly,

5 T. Wade Fallin et al., US 2006/0189983 Al, published Aug. 24, 2006 (of
record see form 892 mailed Sept. 28, 2011).
Appeal 2012-009985
Application 12/690,687

10
we agree with the Examiner’s finding that Draper’s device in Fig. 3D,
“meets the claimed structural limitations, and is considered at least fully
capable of performing the claimed functional limitations.” (Ans. 8–9.)
Appellants’ arguments with respect to claim 10 are essentially the
same as those addressed above for claim 1 (App. Br. 11–16). As Appellants
do not argue the claims separately, we focus our analysis on claims 1 and 10,
and claims 2–6, 9, 11–15, and 18 fall with those claims (App. Br. 16). 37
C.F.R. § 41.37 (c)(1).

SUMMARY
We affirm the rejection of claims 1–6, 9–15, and 18 under 35 U.S.C.
§ 102(b) as being anticipated by Draper.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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