Ex Parte Elsbury

Patent Trial and Appeal Board

Oct 11, 2018

12947761 (P.T.A.B. Oct. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/947,761
91681 7590
MDBeck Filings
125 Spring Drive
Zionsville, IN 46077
FILING DATE FIRST NAMED INVENTOR
11/16/2010 Andrew Elsbury
10/12/2018
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
NEXXT-9 2521
EXAMINER
JOHANAS, JACQUELINE T
ART UNIT PAPER NUMBER
3773
MAIL DATE DELIVERY MODE
10/12/2018 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 ANDREW ELSBURY 1
Appeal2017-001006
Application 12/94 7,761
Technology Center 3700
Before DEBORAH KATZ, TA WEN CHANG, and
KRISTI L. R. SA WERT, Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
fixation system, which have been rejected as obvious. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
STATEMENT OF THE CASE
The Specification states that the invention relates to an implant
fixation system "for engaging an elongated member, such as a spinal rod, to
a bone" using a "poly- or multi-axial bone fastener." (Spec. ,r 2.) The
1 Appellant identifies the Real Party in Interest as Nexxt Spine, LLC.
(Appeal Br. 2.)
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Appeal2017-001006
Application 12/947,761
Specification further states that there is a need for "an implant fixation
system that can provide assurances to the surgeon that the [implant]
components are properly situated so that components can be effectively
locked together." (Spec. ,r 5.)
According to the Specification, the invention provides a fixation
system comprising an elongated rod, a fastener, a yoke, and an insert,
wherein the insert is configured to be disposed within the yoke and
comprises a supporting surface and a pair of resiliently deflectable fingers
for supporting and receiving the elongated rod, and further comprises tabs
configured to be received within bores in the yoke. (Id. ,r,r 6-7.) The
Specification states that "[ t ]he resiliently deflectable fingers and tabs provide
a tactile feel and an audible indication when the insert is fully disposed
within the yoke" and that "[ t ]he fingers are further configured to engage the
rod within the insert and yoke to form a stable fixation assembly." (Id. ,r 9.)
Claims 1, 2, 5-12, 15-20, and 22 are on appeal. 2 Claim 1 is
illustrative and reproduced below:
1. A fixation system comprising:
an elongated rod having a diameter;
a fastener including a head and an elongated shank
having a bone engaging portion;
a yoke including opposite arms defining a slot
therebetween sized for receiving said rod therein, a base portion
defining an opening in communication with said slot sized to
2 Claim 21 is also pending in the application. However, as discussed below,
the Examiner appears to have withdrawn all the rejections with respect to
claim 21. (See infra n. 7.) As also discussed below, to the extent objections
relating to claim 21 remain, such objections are matters petitionable to the
Director of the US PTO and are not properly before the Board. (See infra n.
6.)
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Application 12/947,761
receive said shank of said fastener therethrough and a surface
adjacent said opening for supporting said head of said fastener,
said yoke further defining a cross bore passing through each of
said arms transverse to said slot;
an insert having a base configured for slidable insertion
between said arms of said yoke, said base defining a rod
supporting surface supporting the rod thereon when said insert
is within said yoke, said base further defining an opening for
providing access to the head of said fastener therethrough, said
insert further including a pair of resiliently deflectable fingers
extending from said base to define a slot configured to receive
said rod therebetween, each of said resiliently deflectable
fingers including a tab projecting therefrom toward said cross
bore when said insert is disposed within said yoke and
configured to be received within a cross bore in a corresponding
one of said arms of said yoke, each tab defining a beveled face
configured to bear against said opposite arms of said yoke as
said insert is advanced into said slot of said yoke, said beveled
face configured to deflect said resiliently deflectable fingers
toward each other until said insert is advanced far enough into
said yoke for said tabs to align with said cross bores in said
arms of said yoke, said insert further including a pair of side
walls corresponding to each of said resiliently deflectable
fingers, each side wall of said pair of side walls extending from
said base and offset from and flanking a corresponding one of
said resiliently deflectable fingers, wherein each resiliently
deflectable finger is deflected relative to each corresponding
side wall of said pair of side walls away from said yoke as the
insert is slidably inserted into said yoke,
wherein said tab of each of said resiliently deflectable
fingers includes an inwardly projecting portion projecting into
said slot of said insert and spaced apart a distance less than the
diameter of said elongated rod.
(Appeal Br. 17-18 (Claims App.).)
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Appeal2017-001006
Application 12/947,761
The Examiner rejects claims 1, 2, 5, 8-12, 15, 18-2 0, and 22 under
pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Garamszegi3 and
Altarac. 4 (Ans. 2, 9.)
The Examiner rejects claims 6, 7, 16, and 17 under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Garamszegi, Altarac, and Nilsson. 5
(Ans. 7, 14.)6
DISCUSSION
Issue
The same issues are dispositive for both rejections on appeal; we
therefore discuss the rejections together. 7 The Examiner finds that
Garamszegi teaches all of the elements of claim 1, except that it does not
disclose an insert that
3 Garamszegi, US 2007/0270813 Al, published Nov. 22, 2007.
4 Altarac et al., US 2008/0183215 Al, published July 31, 2008.
5 Nilsson, US 2008/0161859 Al, published July, 3, 2008.
6 In the Appeal Brief, Appellant also contends that the Examiner erred in
certain objections to the Specification and drawings. (Appeal Br. 6.) To the
extent the Examiner maintains these objections, we note that such objections
are petitionable matters under 3 7 C.F .R. § 1.181 to the Director of the
USPTO. See MPEP § 706.01. "The Board will not hear or decide issues
pertaining to objections and formal matters which are not properly before the
Board." Id. Accordingly, we decline to address any remaining objections of
record.
7 The Examiner has withdrawn the following rejections: the rejection of
claims 21 and 22 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first
paragraph, as failing to comply with the written description requirement; the
rejection of claims 1 and 11 under 35 U.S.C. §112(b) or 35 U.S.C. §112
(pre-AIA), second paragraph, as indefinite; and the rejection of claim 1
under 35 U.S.C. §I03(a) as obvious over Garamszegi and Altarac. (Ans.
15.) (Id.)
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Appeal2017-001006
Application 12/947,761
includes a pair of side walls corresponding to each of [the] resiliently
deflectable fingers, wherein each side wall ... extends from [the]
base, and is offset from and flanking ... a corresponding one of said
resiliently deflectable fingers, and wherein the deflectable fingers
deflect relative to each corresponding sidewall of said pair of side
walls as the insert is slidably inserted into the yoke.
(Ans. 4.) However, the Examiner finds that Altarac teaches a fixation
system comprising an insert having such side walls, which enable the insert
to "receive dual articulating rods as well as a single rod construction" and to
"movably retain a rod inserted therein." (Id. at 5.) The Examiner concludes
that it would have been obvious for a skilled artisan to modify the insert of
Garamszegi to include a pair of side walls as taught by Altarac, "so as to
enable the insert to receive dual articulating rods as well as a single rod ...
and ... to movably retain a rod inserted therein." (Id. at 6.)
Appellant contends, among other things, that the cited prior art
combination does not disclose resiliently deflectable fingers having tabs that
include an "inwardly projecting portion," as recited in independent claims 1
and 11. (Appeal Br. 8-9; Reply Br. 2.)
The issue with respect to this rejection is whether the cited prior art
combination suggests a fixation system comprising resiliently deflectable
fingers each having a tab that includes an inwardly projecting portion, as
recited in claims 1 and 11.
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Appeal2017-001006
Application 12/947,761
Analysis
We find Appellant to have the better argument. To facilitate our
analysis, we reproduce below annotated Figures 5 and 10 from the
Specification:
pair of opposite
arms 36
l
U-sl1aped slot 40
44
FIG. 5 I
cross bore 44
resiliently
deflectab!e finger 62
51~
F'!G.10
73
50
t
insert base 50
(Spec. Figs 5 and 10 ( annotations added).) Figure 5 is a perspective view of
the yoke component of an embodiment of the claimed fixation system. (Id.
,r 14.) Figure 10 is a side cross-sectional view of the insert component
according to an embodiment of the claimed fixation system. (Id. ,r 19.)
Both of the independent claims on appeal require (1) a yoke (see Fig. 5
above) comprising (a) opposite arms 36 defining a slot 40 for receiving an
elongated rod and (b) cross bores 44 passing through the arms transverse to
the slot; and (2) an insert ( see Fig. 10 above) configured for insertion into
the arms of the yoke, comprising a pair of resiliently deflectable fingers 62
extending from a base 50. (Appeal Br. 17-18, 19-20 (Claims App.).) The
claims further require that the resiliently deflectable fingers define a slot
configured to receive an elongated rod and include tabs 66 projecting toward
and configured to be received within the cross bores of the yoke when the
insert is placed in the yoke, wherein the tab includes "an inwardly projecting
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Appeal2017-001006
Application 12/947,761
portion [71] projecting into [the] slot of [the] insert and spaced less than the
diameter of [the] elongated rod." (Id.)
The Examiner cites to Garamszegi for disclosure of the inwardly
projecting portion, as shown in the annotated version of Figure 4 of
Garamszegi included in the Answer and reproduced below:
u
' ' I
' ' ' ' ' '
INWARDLY F'~OJECTING
PORTION
I
340 \
320 :
115 i
'
327 / FIG. 4
·""-e 110 / ,
~'"
,_Â¥"'.,,/
' ~
(Ans. 4 (emphasis on arrows added for clarity).) The figure above shows a
cross-sectional view of an embodiment of Garamszegi' s bone fixation
assembly, with arrows added by the Examiner showing the structures the
Examiner finds to meet the limitation relating to "inwardly projecting
portion." (Id., Garamszegi ,r 19.)
The portion of Garamszegi cited to by the Examiner as showing the
"inwardly projecting portion" appears to be part of the bottom saddle 320 in
Garamszegi's bone fixation assembly. Garamszegi's Figures 6A and 6B,
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Appeal2017-001006
Application 12/947,761
which depict the bottom saddle, are reproduced below to facilitate our
analysis:
FIG,6A
FIG,6B
(Garamszegi Figs. 6A and 6B.) Figures 6A and 6B of Garamszegi depict,
respectively, a side view and a perspective view of the bottom saddle
depicted in Garamszegi's Figure 4. (Id. ,r,r 22-23.)
We are not persuaded that the portion of Garamszegi cited by the
Examiner suggests the limitation in the claims relating to "inwardly
projecting portion." In particular, the claims require that the inwardly
projecting portion be part of the tab of the resiliently deflectable fingers and
to project into the slot of the insert defined by said fingers and configured to
receive the elongated rod. (Appeal Br. 18, 20 (Claims App.).) The
Examiner points to component 321 as the resiliently deflectable fingers and
component 335 as the tab. The Examiner also appears to point to the portion
of the rod-receiving region 323 opposite from the tab and opening into the
shaft 328 as the "inwardly projecting portion." However, the Examiner has
not persuasively explained how this portion of the rod-receiving region
project into the slot defined by the resiliently deflectable fingers 335, as
required by the claims. Likewise, the Examiner has not persuasively
explained why a skilled artisan would consider this portion of the rod-
receiving region to be part of the tab 335.
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Appeal2017-001006
Application 12/947,761
In response to Appellant's argument that Garamszegi does not
disclose an "inwardly projecting portion," the Examiner cites to Figure 10 of
the Specification and states that the insert of the invention, like the insert of
Garamszegi's bone-fixation assembly, is "a monolithic structure[] in which
the 'inwardly project[ing] portions' (71) also forms part of the rod receiving
region." (Ans. 15-16.) The Examiner thus concludes that "[t]he contiguous
nature of each of the surfaces of appellant's insert is ... a common feature of
[ A Jppellant's insert and Garamszegi's insert and cannot be relied on to
distinguish the two" and that "Appellant has not claimed any structure
warranting a more narrow interpretation of the 'inwardly projecting portion'
feature." (Id. at 16.)
We are not persuaded. Regardless of whether the claimed insert
encompasses a structure wherein the inwardly projecting portion of the tab is
contiguous with and/or forms part of the rod receiving region, the claim
requires that the inwardly projecting portion be part of the tab and project
into the slot defined by the deflectable fingers. The Examiner has not
proposed any construction of the claim wherein the portion of Garamszegi' s
bone-fixation assembly cited to as meeting the "inwardly projection portion"
limitation would be considered part of the tab or to project into the slot
defined by the resiliently deflectable fingers of the insert.
Accordingly, we reverse the Examiner's rejection of independent
claims 1 and 11. We also reverse the Examiner's rejection of claims 2, 5-
10, 12, 15-20, and 22, which depend directly or indirectly from claims 1 and
11, for the same reasons. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
("[D]ependent claims are nonobvious if the independent claims from which
they depend are nonobvious.").
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Appeal2017-001006
Application 12/947,761
SUMMARY
For the reasons above, we reverse the Examiner's decision rejecting
claims 1, 2, 5-12, 15-20, and 22.
REVERSED
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