12742339 (P.T.A.B. Jun. 21, 2016)

Ex Parte Dell

Patent Trial and Appeal BoardJun 21, 2016

12742339 (P.T.A.B. Jun. 21, 2016)

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. 12/742,339 05/11/2010 Alberto A. Fernandez Dell'Oca 10139/16813 4826 76960 7590 06/21/2016 Fay Kaplun & Marcin, LLP 150 Broadway, suite 702 New York, NY 10038 EXAMINER WEISS, JESSICA ART UNIT PAPER NUMBER 3776 MAIL DATE DELIVERY MODE 06/21/2016 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 ALBERTO A. FERNANDEZ DELL’OCA ____________________ Appeal 2014-007499 Application 12/742,3391 Technology Center 3700 ____________________ Before JILL D. HILL, JEREMY M. PLENZLER, and THOMAS F. SMEGAL, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 9–18. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant identifies DePuy Synthes Products, LLC and Johnson & Johnson, Inc. as the real parties in interest. App. Br. 2. Appeal 2014-007499 Application 12/742,339 2 CLAIMED SUBJECT MATTER Claim 9 is the sole independent claim on appeal, and is reproduced below: 9. An apparatus for securing a cerclage member about a bone within a living body, the apparatus comprising: a first crimp member including first and second lumens extending longitudinally therethrough, the first and second lumens being sized and shaped to slidably receive a cerclage member therein; a second crimp member defining third and fourth lumens extending therethrough, the third and fourth lumens being positioned within the second crimp member so that, when the second crimp member is coupled to the first crimp member in an initial configuration, the first lumen aligns with the third lumen and the second lumen aligns with the fourth lumen; and a driving member selectively moving the second crimp member relative to the first crimp member from the initial configuration to a locking configuration in which the first lumen is moved out of alignment with the third lumen to lock the cerclage member relative to the first and second crimp members, maintaining a desired tension on the cerclage member. REJECTIONS 1. Claims 9 and 10 are rejected under 35 U.S.C. § 102(b) as being anticipated by Pagoda (US 2,893,090, iss. July 7, 1959); and 2. Claims 11–18 are rejected under 35 U.S.C. § 103(a) as being obvious over Pagoda and Stafford (US Pat. App. No. 2005/0015940 A1, pub. Jan. 27, 2005). Appeal 2014-007499 Application 12/742,339 3 OPINION Anticipation Appellant argues claims 9 and 10 as a group. App. Br. 3–6. We select claim 9 as representative. Claim 10 stands or falls with claim 9. The Examiner finds that Pagoda discloses each limitation of claim 9. Final Act. 2. In the Appeal Brief, Appellant only refutes the Examiner’s findings directed to the “driving member” limitation recited in claim 9.2 See App. Br. 3–6. The Examiner finds that Pagoda’s shaft 24, which includes pinion 26 and handle 27, corresponds to the “driving member” recited in claim 9. Appellant does not dispute that Pagoda’s shaft 24 (the driving member) moves clamping bar 20 (the second crimp member) relative to top plate 15 (the first crimp member). Nor does Appellant dispute that the relative movement causes displacement of Pagoda’s clamping bar 20 from a first configuration where openings 21 (the third and fourth lumens) of clamping bar 20 are aligned with openings 18, 19 (first and second lumens) of top plate 15 to a second configuration where openings 21 are out of alignment with openings 18, 19. Rather, the dispute focuses on whether Pagoda’s 2 Appellant presents an additional new argument in its Reply Brief, but does not show good cause or contend that the argument is responsive to anything in the Examiner’s Answer. See Reply Br. 2–6. We do not consider that new argument in this appeal. See 37 C.F.R. § 41.41(b)(2) (“Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer . . . will not be considered by the Board for purposes of the present appeal, unless good cause is shown.”). Appeal 2014-007499 Application 12/742,339 4 second configuration meets the “locking configuration” recited by the claim that “maintain[s] a desired tension.” See App. Br. 4–6. Appellant’s arguments are unpersuasive. Claim 9 defines the locking configuration as when “the first lumen is moved out of alignment with the third lumen to lock the cerclage member relative to the first and second crimp members, maintaining a desired tension on the cerclage member.” Review of Pagoda’s disclosure supports the Examiner’s position that Pagoda discloses the locking configuration by having its opening 18, 19 (first lumen) moved out of alignment with its opening 21 (third lumen). See, e.g., Pagoda, Fig. 5. Pagoda explains, for example, that handle 27 is . . . turned . . . to cause the bar 20 to move from its position of Figure 4 to its position of Figure 5. This movement of the bar 20 displaces the openings 21 out of alignment with the openings 18 and 19 so that parts of the lace loops 33' are clamped in the tightener 10. Pagoda 3:8–14. Although Appellant argues that Pagoda’s tightener 10 does not provide locking and would not “maintain[] a desired tension” as recited in claim 9, it provides no persuasive argument to support its position. The disclosure of Pagoda runs counter to the position advanced by Appellant. See, e.g., Pagoda 1:28–29 (“tightener . . . will eliminate the need for tying the ends of the shoelace together”); see also id. at 1:21–24 (“tightener is adjustable for clamping portions of the shoelace therein for holding the instep of the shoe tightened to a desired extent”). Accordingly, Appellant has failed to apprise us of Examiner error in the rejection of claims 9 and 10. Obviousness In addressing claims 11–18, Appellant simply contends that Stafford fails to cure the deficiencies in the rejection of claim 9. App. Br. 7. As Appeal 2014-007499 Application 12/742,339 5 indicated above, however, we are apprised of no deficiencies in that rejection. Accordingly, Appellant has failed to apprise us of Examiner error in the rejection of claims 11–18. DECISION We AFFIRM the Examiner’s decision to reject claims 9 and 10 as anticipated by Pagoda. We AFFIRM the Examiner’s decision to reject claims 11–18 as obvious over Pagoda and Stafford. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED