Ex Parte Draper

Patent Trial and Appeal Board

Sep 20, 2017

12628866 (P.T.A.B. Sep. 20, 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.
12/628,866 12/01/2009 Edward Draper P007C1 6724
118733 7590
Moximed, Inc
26460 Corporate Ave
Suite 100
Hayward, CA 94545
09/22/2017 EXAMINER
HAMMOND, ELLEN CHRISTINA
ART UNIT PAPER NUMBER
3733
NOTIFICATION DATE DELIVERY MODE
09/22/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ip@cnmiplaw.com
acermak @cnmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD DRAPER1
Appeal 2016-008017
Application 12/628,866
Technology Center 3700
Before JOHN G. NEW, RYAN H. FLAX, and
DEVON ZASTROW NEWMAN Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to an apparatus for controlling the load on articular cartilage
of a knee joint. Claims 35—67 are on appeal as rejected under 35 U.S.C.
§§ 102 and 103. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellant identifies the Real Party in Interest as Moximed, Inc. Br. 3.
Appeal 2016-008017
Application 12/628,866
STATEMENT OF THE CASE
The Specification2 states, “[t]he present invention relates to devices
for restricting or controlling the movement or loading levels on joints in the
human or animal body.” Spec. 2. An embodiment is illustrated at Fig. 1,
which is reproduced, as annotated, below:
Fig. 1 shows a fixator 10 for attachment to the bones of and across a joint,
having a first fixation assembly 11 and a second fixation assembly 12
connected via respective pivots 14, 15 to a link assembly 13. Spec. Tflf 42—
47. Figs. 3C and 3D illustrate two embodiments of link assemblies that can
be used with such a fixator 10; they are reproduced below:
2 When citing to the Specification (or “Spec.”) herein, we refer to the version
filed February 22, 2010.
2
Appeal 2016-008017
Application 12/628,866
Fig. 3D (above right) shows a link assembly 60 including a compression
spring 67, provided “to counteract the natural compressive forces
experienced by the joint.” Id. 1 54. Fig. 3C (above left) shows a link
assembly 50 including a pair of tension springs 57, 58, provided “to apply
greater compression forces than those normally experienced by the joint.”
Id. 153.
Claims 35, 49, and 62 are independent claims; we find claims 35 and
49 representative and they are reproduced below:3
35. An apparatus for controlling the load on articular cartilage
of a human or animal knee joint comprising:
3 Appellant states, “[f]or the purposes of this appeal, Claims 35-48 and 62-
67 stand or fall together, and Claims 49-61 stand or fall together.” Br. 4.
3
Appeal 2016-008017
Application 12/628,866
a first fixation assembly configured for rigid attachment to
a first bone of the knee joint;
a second fixation assembly configured for rigid attachment
to a second bone of the knee joint; and
a link assembly coupled to the first and second fixation
assemblies, the link assembly including
a first pivot connected to the first fixation assembly,
a second pivot connected to the second fixation
assembly, and
a compression spring configured to counteract the
natural compressive forces experienced by the joint and reduce
the load on the joint surfaces,
wherein the link assembly is configured to permit full
mobility of the knee joint in three perpendicular planes.
49. An apparatus for controlling the load on articular cartilage
of a human or animal joint comprising:
a first fixation assembly configured for rigid attachment to
a first bone;
a second fixation assembly configured for rigid attachment
to a second bone; and
a link assembly coupled to the first and second fixation
assemblies, the link assembly including
a first pivot connected to the first fixation assembly,
a second pivot connected to the second fixation
assembly, and
a set of two parallel helical springs,
wherein the link assembly is configured to permit full
mobility of the joint in three perpendicular planes.
Br. 15—17 (Claims App’x).
4
Appeal 2016-008017
Application 12/628,866
The following rejections are on appeal:
Claims 35—37, 40-41, 43—51, 54, 56—58, 60—63, 65, and 67 stand
rejected under 35 U.S.C. § 102(b) as anticipated by Orsak.4 Final Action 2.
Claims 38, 39, 42, 52, 53, 55, 59, 66, and 64 stand rejected under 35
U.S.C. § 103(a) over Orsak. Id. at 6.
FINDINGS OF FACT
Except where otherwise indicated herein, we adopt the Examiner’s
findings of fact, reasoning on scope and content of the claims and prior art,
and conclusions set out in the Final Action and Examiner’s Answer. The
findings of fact set forth below are provided to highlight certain evidence.
FF1. Orsak discloses “[a] joint fixator apparatus conforms to
the natural axis of rotation of the joint in question, such as a
patient's wrist or knee to avoid the possibility of bone fragment
displacement and/or fracture reduction. The apparatus includes
two fixation rod sections or shaft sections with a spring module
therebetween.” Orsak Abstract; see also Final Action 2—8, and
Ans. 2—9 (discussing Orsak).
FF2. Further to the preceding finding of fact, FIG. 1 of Orsak
illustrates a joint fixator apparatus; we reproduce FIG. 1, as
annotated, below:
4U.S. Patent No. 6,162,223 (issued Dec. 19, 2000) (“Orsak”).
5
Appeal 2016-008017
Application 12/628,866
"proximal damp 2S” ami "distal damp
yr teach (he claimed "lirst fixation
assembly '* and “second fixation
assembly." which, u ilh horn* pin* and
rod, attach to a paiicnt% bones on
either side of a joint (< )r*ak 4:41 4” t
"connector member 1V" w ith. inter
tilt'd, “rod sect ton] xf 15 and tf>.
teaches the claimed ‘link assembly/'
w hieh "Ilexes, extends, and
.mutilates'" tmhersalk in all direction*
and plane* tOt'sak 3;23 2t*. 4:54 5“t
Orsak states, “FIG. 1 is a perspective view of the preferred
embodiment of the apparatus of the present invention.” Orsak
3:37—38; see also Final Action 2—8, and Ans. 2—9 (discussing
Orsak). The teaching of a link assembly is highlighted above in
yellow and the teaching of the fixation assemblies is highlighted
above in blue. The “first and second fixation assemblies” taught
by Orsak are shown to be rigidly attached to bones on either side
of a joint. The link assembly taught by Orsak is shown to be
coupled to the first and second fixation assemblies at first and
second respective pivots and includes a coil spring section 22 for a
compression spring.
6
Appeal 2016-008017
Application 12/628,866
FF3. Orsak discloses “[t]he flexible spring module [of the
connector 19] can be pre-compressed and held in place with a
locking clip” so that “the spring counters the tension force” at the
joint. Orsak 3:14—19; see also Final Action 2—8, and Ans. 2—9
(discussing Orsak).
FF4. Orsak discloses, as a connection between the connector
19 and each of the clamps 28 and 29, a pivot composed of an
opening 36 portion fixedly attached to the clamps 28/29 and a
hemispherically-shaped projecting portion 37 fixedly attached to
the connector 19, which are connected to one another via a set
screw 39 and nut 42 so as to be adjustable. Orsak 5:1—23; see also
Final Action 2—8, and Ans. 2—9 (discussing Orsak). Orsak FIG. 5
illustrates this pivot connection and is reproduced below:
FIG. 5.
7
Appeal 2016-008017
Application 12/628,866
“FIG. 5 is a perspective view of a clamp for use with the fixation
apparatus of the present invention,” and shows the adjustable, ball-
and-socket, relationship between the clamp and the clamp body 30
attached to the connector 19 rods 15, 16 (not shown in FIG. 5, see
FIG. 1). Orsak 3:47-48; see also Final Action 2—8, and Ans. 2—9
(discussing Orsak).
FF5. Orsak discloses “[i]n FIGS. 11-15, the fixation apparatus
10 of the present invention can be used for fixating a patient’s knee
68 while allowing the knee to flex through its normal range of
motion.” Orsak 5:64—66; see also Final Action 2—8, and Ans. 2—9
(discussing Orsak). Orsak FIG. 11 illustrates such an embodiment
and is reproduced below:
FIG. II.
“FIG. 11 is a side fragmentary view of the preferred embodiment
of the apparatus of the present invention illustrating its use as a
fixator at a patient’s knee wherein the flexible shaft coupler and
8
Appeal 2016-008017
Application 12/628,866
two rod end portions are illustrated.” Orsak 3:63—67; see also
Final Action 2—8, and Ans. 2—9 (discussing Orsak).
DISCUSSION
Only those arguments made by Appellants in the Briefs have been
considered in this Decision. Arguments not presented in the Briefs are
waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015).
Anticipation
A patent claim is invalid for anticipation under 35 U.S.C. § 102 when
a prior art reference describes “each and every claim limitation and enable[s]
one of skill in the art to practice an embodiment of the claimed invention
without undue experimentation.” ClearValue, Inc. v. Pearl River Polymers,
Inc., 668 F.3d 1340, 1344 (Fed. Cir. 2012) (quoting Am. Calcar, Inc. v. Am.
Honda Motor Co., 651 F.3d 1318, 1341 (Fed. Cir. 2011)). Further,
“apparatus claims cover what a device is, not what a device does.” Hewlett-
Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990).
We find the Examiner has established that claim 35 is anticipated by
Orsak. The Examiner provides a sufficient explanation as to how Orsak
discloses the claimed subject matter. Final Action 2—8 and Ans. 2—9; see
also FF1—FF5 (highlighting certain evidence). Appellants have not
produced evidence showing, or persuasively argued, that the Examiner’s
determination is incorrect. We address Appellants’ arguments below.
Appellants argue Orsak does not disclose that its spring-loaded
connector will permit motion in three perpendicular planes, contending that
the claimed pivots must contribute to this motion. Br. 9. This is not
9
Appeal 2016-008017
Application 12/628,866
persuasive because the claims do not require that it be the claimed pivots
that provide such motion, but merely the link assembly as a whole. The
spring-loaded connector of Orsak is disclosed as providing unlimited motion
matching that of the joint itself, as well as additional compression/counter­
compression motion, which discloses the argued claim element.
Appellants argue the pivots of claims 35 and 62 must be part of the
link assembly and that Orsak does not teach such a configuration. Br. 11.
This is not persuasive because the pivots, while recited as part of the link
assembly, are defined by the claims to be the connection points between the
first and second fixation assemblies and the link assembly. Thus, the
pivotable connections between the fixation portions and the connector
portion of Orsak are pivots as claimed.
In view of the above, we affirm the Examiner’s rejection as to claims
35-37, 40-41, 43—48, 62, 63, 65, and 67.
As for claim 49, Appellants argue the claim
is separately patentable from the subject matters of Claims 35
and 62 at least because there is no evidence in the record, and the
Office Action does not allege that there is any, which would tend
to suggest to a person of ordinary skill in the art to include two
helical springs in the link assemblies.
Br. 12. The Examiner has cited Orsak’s Fig. 12 as disclosing this claim
element. Final Action 4. We do not agree with the Examiner’s position.
As contended by Appellants, Orsak’s Fig. 12 “simply illustrates two
of Orsak’s devices, one mounted to each of the lateral and medial sides of a
knee joint.” Br. 12. We do not find it reasonable that “the term [link]
assembly is being broadly interpreted to require various parts gathered or
grouped together to achieve a common purpose” to the extent that such
10
Appeal 2016-008017
Application 12/628,866
language would include two wholly separate devices attached to one patient,
as contended by the Examiner. Ans. 9. Claim 49 requires that “a set of two
parallel helical springs” are included in “a link assembly” (underlining
added), which we find is not disclosed by Orsak’s Fig. 12.
For these reasons, we reverse the Examiner’s rejection as to claim 49.
Claims 50, 51, 54, 56—58, 60, and 61 depend from claim 49 and, for the
same reasons, we reverse the Examiner’s rejection of these claims.
Obviousness
Because Appellants make the same arguments, based on the same
evidence, in support of the patentability of claims 38, 39, 42, 52, 53, 55, 59,
64, and 66 as presented over the anticipation rejection and state “[cjlaims 38,
39, 42, 52, 53, 55, 59, 64, and 66 stand or fall with the independent claim
from which each ultimately depends,” we affirm the Examiner’s
obviousness rejection as to claims 38, 39, 42, 64, and 66, which depend from
claims 35 and 62, and reverse the Examiner’s obviousness rejection as to
claims 52, 55, and 59, which depend from claim 49.
SUMMARY
The rejection under 35 U.S.C. § 102(b) over Orsak is affirmed with
respect to claims 35—37, 40-41, 43—48, 62, 63, 65, and 67, and is reversed
with respect to claims 49—51, 54, 56—58, 60, and 61.
The rejection under 35 U.S.C. § 103(a) over Orsak is affirmed with
respect to claims 38, 39, 42, 64, and 66, and is reversed with respect to
claims 52, 55, and 59.
11
Appeal 2016-008017
Application 12/628,866
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-IN-PART
12