Ex Parte Downey et al

Patent Trial and Appeal Board

Apr 27, 2017

12388676 (P.T.A.B. Apr. 27, 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.
10139/22503 1894
EXAMINER
MAHMUD, ATIYA S
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
12/388,676 02/19/2009
76960 7590
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
David Downey
04/28/2017 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 DAVID DOWNEY, CHRISTOPH ROTH,
GLEN PIERSON, SEAN KERR, and ALIRECBER
Appeal 2015-006524
Application 12/388,676
Technology Center 3700
Before LINDA E. HORNER, JILL D. HILL, and BRENT M. DOUGAL,
Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 2—6, 8—16, 18, and 20-31. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appeal 2015-006524
Application 12/388,676
CLAIMED SUBJECT MATTER
The claims are directed to a nail and a method for implanting the nail
in bone. Claims 20 and 26 are independent. Claim 20, reproduced below, is
illustrative of the claimed subject matter:
20. A nail for insertion into a patient’s bone, comprising:
a shaft extending from a proximal end to a distal end along
a longitudinal axis thereof;
a cannulated bore extending from the proximal end to the
distal end;
a plurality of spiral blades extending along a distal portion
thereof, each of the blades extending from a first end to a second
end; and
a cutout portion removing a distal portion exposing a
portion of the bore so that injectable material injected through
the cannulated bore flows out of the shaft away from the
longitudinal axis in one direction only away from an inner wall
of a remaining portion of the bore.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Haig US 4,494,535 Jan. 22, 1985
Roth US 6,835,197 B2 Dec. 28,2004
Fourcault US 2004/0068261 A1 Apr. 8, 2004
Wisnewski US 2007/0260250 A1 Nov. 8, 2007
REJECTIONS
I. Claims 3 and 20 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Fourcault.
II. Claims 3, 4, and 20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Roth and Fourcault.
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Application 12/388,676
III. Claims 2, 5—16, 18, and 20-30 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Haig and Roth.
IV. Claim 31 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Haig, Roth, and Wisnewski.
OPINION
Rejection I
Appellants argue the patentability of claim 20 and rely on these
arguments for all of the claims under Rejection I. See generally Appeal Br.
4—9. We select claim 20 as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellants argue that claim 20 is not anticipated because Fourcault
does not teach: ‘“a cutout portion removing a distal portion exposing a
portion of the bore so that injectable material injected through the
cannulated bore flows out of the shaft away from the longitudinal axis in one
direction only away from an inner wall of a remaining portion of the bore.”'’
Appeal Br. 6.
The Examiner finds that “the device of Fourcault comprises both the
cannulated bore and cutout necessary to receive and direct an injectable
material.” Final Act. 13. Further, the Examiner finds “material injected into
the cannulated bore and flowing out of the cut out could only flow ‘away
from an inner wall of a remaining portion of the bore’ [where] . . . ‘away
from an inner wall of a remaining portion of the bore’ defines the [claimed]
one direction.” Id. (emphasis added, emphasis in original omitted). The
Examiner also found “that a highly viscous fluid could creep slowly in a
linear direction through the cutout and maintain the same linear direction,
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Application 12/388,676
and that the direction of flow is also dependent upon the material properties
of the injectable fluid.” Ans. 13—14.
Here, Appellants do not contest the Examiner’s finding that Fourcault
discloses “a cutout portion removing a distal portion exposing a portion of
the bore,” but argue instead that the cutout portion is not configured “so that
injectable material injected through the cannulated bore flows out of the
shaft away from the longitudinal axis in one direction only away from an
inner wall of a remaining portion of the bore” Appeal Br. 6.
Although “[a] patent applicant is free to recite features of an apparatus
either structurally or functionally . . . , choosing to define an element
functionally . . . carries with it a risk.” In re Schreiber, 128 F.3d 1473, 1478
(Fed. Cir. 1997). This risk is that Appellants bear the burden to prove that
the prior art does not possess the functional characteristic, once the
Examiner has shown a sound basis for believing the claimed structure to be
the same as the prior art structure. See In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990).
Appellants argue that the claimed “cutout portion . . . recites a
particular type of physical structure, i.e., the cutout ‘exposing a portion of
the bore so that injectable material injected through the cannulated bore
flows out of the shaft away from the longitudinal axis in one direction only
away from an inner wall of a remaining portion of the bore.’” Appeal Br. 6.
Appellants cite to Figures 8 and 9 of the Specification as “show[ing] an
exemplary structure that meets this requirement.” Id. at 7. Appellants also
state:
The Specification of the present application describes this cutout
as a cannulation 128 such that “the material 102 may be injected
under pressure to allow the material 102 to flow down the
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Application 12/388,676
cannulation 128 and out of the most distal end 124,” and the
distal end 12 [4] of the nail allows material 103 to flow
preferentially in one direction.
Id. at 6—7 (citing Spec. 190) (italics added).
As noted in italics above, the Specification teaches that the cannulated
bore and cutout “allow the material 102 to flow down the cannulation 128
and out of the most distal end 124” and further “allows material 103 to flow
preferentially in one direction.” This is consistent with other teachings of
the Specification, which clarify that a number of conditions must be met in
order for the material to flow through the nail and exit in a particular
direction. For example, the Specification states:
Low viscosity materials tend to find the path of least resistance
and flow into these areas preferentially. A higher viscosity
material, such as the material of the present invention can flow
in the direction of injection, rather than back-flowing, and will
form a bolus of material.
Spec. 161 (emphasis added).
A heated cartridge of PCL may be attached to the proximal end
of the blade 122 and the material 102 may be injected under
pressure to allow the material 102 to flow down the cannulation
128 and out of the most distal end 124. The modification to the
distal end 124 allows the material 102 to flow preferentially in
one direction, in this case the superior direction.
Id. 190 (emphasis added).
The cutout portion 200 of the nail 126 allows the surgeon to
direct the outflow of the injectable material 102 such that the
material 102 flows preferentially in one direction only, in this
case past the distal end 124 of the nail 126 and superiorly of the
nail 126 when properly positioned in situ, as generally illustrated
in Fig. 9.
Id. 1101 (emphasis added).
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Among other things, the viscosity of the material and the orientation
or positioning of the nail in situ are not claimed. But, it is clear from the
Specification that the cutout alone does not cause the material to flow in one
direction, but rather allows it to flow in one direction when under the proper
conditions. Under other conditions the material would flow in other
directions, such as in “the path of least resistance” or simply out the claimed
distal end of the cannulated bore. See also Figure 8, distal end 124 (“an
exemplary structure that meets [the claimed] requirement” as stated in
Appeal Br. 7).
In view of the above teachings from the Specification and findings by
the Examiner, we determine that the Examiner has provided a sound basis
for believing that the claimed structure is the same as the structure of
Fourcault and that the structure of Fourcault is capable of performing the
claimed function.
Though Appellants argue that Fourcault does not teach the claimed
limitations, they do not identify any structure that differentiates Fourcault
from claim 20. See Ans. 13-14 (addressing Appellants’ argument that the
three teeth 11A of Fourcault differ from the claimed structure). Appellants
do argue that Fourcault’s structure “would permit fluid to flow in multiple
different radial directions,” (Appeal Br. 7) but this does not mean that it
would not “allow[] material []to flow [] in one direction” as highlighted by
Appellants and discussed above.
Appellants also argue that Fourcault “does not contemplate injecting a
material therethrough.” Appeal Br. 7. Claim 20 is an apparatus claim and,
as such, prior art relied on in the rejection is not required to perform the
intended function of the claim, but is merely required to be capable of
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performing the intended function. See In re Schreiber, 128 F.3d 1473, 1477
(Fed. Cir. 1997) (finding that an oil can in the prior art taught all of the
structural limitations of the claimed popcorn dispenser, and was capable of
performing the claimed functional characteristics). Appellants do not argue
that Fourcault is not capable of injecting a material therethrough. Thus, we
are not informed of error in the Examiner’s rejection.
For all of the above reasons we sustain the Examiner’s anticipation
rejection.
Rejection II
Appellants rely on the reasoning discussed above, to argue the
patentability of the claims under Rejection II. Appeal Br. 10—11. We
sustain the Examiner’s obviousness rejection for the same reasons as
discussed above.
Rejections III & IV
Appellants argue the patentability of claim 20 and rely on these
arguments for all of the claims under Rejection HE See generally Appeal
Br. 11—16. We select claim 20 as representative. See 37 C.F.R. § 41.37(c)
(l)(iv). Appellants also rely on the arguments presented for claim 20 as the
basis for patentability of dependent claim 31, which is subject to Rejection
IV. Appeal Br. 16-17 (arguing that Wisnewski does not cure the
deficiencies in Haig and Roth as to claim 20).
The Examiner finds that Haig teaches a nail with the bore and cutout
portion of claim 20. Final Act. 5—6. The Examiner also finds that Haig
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teaches blades on the nail, but relies on Roth for teaching a nail with spiral
blades as claimed. Id. at 6.
Appellants argue that Haig fails to teach or suggest claim 20’s
‘“cutout portion removing a distal portion exposing a portion of the bore so
that injectable material injected through the cannulated bore flows out of the
shaft away from the longitudinal axis in one direction only away from an
inner wall of a remaining portion of the bore.'''’'’ Appeal Br. 12. This is
because “Haig only describes fluid flow out of ports 20 in multiple different
radial directions so as to surround the leading end 17 of nail 10.” Id.
Appellants’ premise is incorrect. Appellants do not address the
teaching of Haig relied upon by the Examiner of a single port used to eject
polymer. Final Act. 15; Ans. 17 (noting Haig discloses “one or more
ports'j. Rather Appellants point to the illustrated embodiment with multiple
ports and a sentence in Haig describing this embodiment. Appeal Br. 12—13
(citing Haig col. 1:68—col. 2:3 “Polymer 56, ejected from port 20 . . .
permeates the surrounding bone to stabilize it and to adhere to the nail 10.”).
Thus, Appellants have not identified error in the Examiner’s rejection.
Appellants also argue against modifying Haig to meet the above-
referenced claim limitation. Id. at 14. The Examiner found that the single
port 20 of Haig teaches the claimed cutout that is capable to perform the
claimed function, thus no modification is necessary. As the rejection does
not require the argued upon modification of Haig, we are not informed of
error in the Examiner’s rejection.
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DECISION
The Examiner’s rejections of claims 2—6, 8—16, 18, and 20-31 are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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