Ex Parte Figueroa et al

Patent Trial and Appeal Board

Jun 16, 2016

12284280 (P.T.A.B. Jun. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/284,280 09/19/2008
138988 7590 06/20/2016
Driver McAfee Peek & Hawthorne, P.L.
One Independent Dr.
Suite 1200
Jacksonville, FL 32202
FIRST NAMED INVENTOR
Alvaro A. Figueroa
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.
T0217.24U 1757
EXAMINER
COLEY, ZADE JAMES
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
06/20/2016 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):
tsaitta@dmphlaw.com
dboswell@dmphlaw.com
ipdocket@dmphlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALVARO A. FIGUEROA, JOHN POLLEY, and
THOMAS JOHNSTON
Appeal 2014-005496 1,2
Application 12/284,280
Technology Center 3700
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 2---6, 14, 16-18, and 20-30. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART and ENTER A NEW GROUND OF
REJECTION PURSUANT 37 C.F.R. § 41.50(b).
1 Our decision references Appellants' Specification ("Spec.," filed Sept. 19,
2008) and Appeal Brief ("Br.," filed Dec. 4, 2013), as well as the Final
Office Action ("Final Action," mailed June 5, 2013) and the Examiner's
Answer ("Answer," mailed Jan. 15, 2014).
2 The real parties in interest are Alvaro A. Figueroa, John Polley, Thomas
Johnston, and KLS-Martin, L.P. Br. 3.
Appeal2014-005496
Application 12/284,280
According to Appellants, their invention is directed to "an angularly
adjustable maxillary distractor assembly and [a] method of distraction to
correct maxillary deficiencies, cleft palates[,] and similar conditions." Spec.
p. 3, 11. 3--4. Claims 14, 18, 24, and 29 are the only independent claims
under appeal. Claim 14, which we reproduce below, is representative of the
appealed claims.
14. A maxillary distractor assembly compnsmg means for
attachment of the assembly to the malar buttress of a patient,
means for attachment of the assembly to the maxilla of the
patient, means for distraction of the maxilla relative to the malar
buttress, and means for connecting the malar buttress attachment
means to the maxilla attachment means in a releasable manner;
said means for connecting the malar buttress attachment
means to the maxilla attachment means comprising a releasable,
adjustable joint assembly;
said malar buttress attachment means comprising a malar
buttress plate member detachably connected to a vertical arm
member, said vertical arm member connected to said joint
assembly;
said means for distraction of the maxilla relative to the
malar buttress comprising a horizontal distractor assembly
connected to said joint assembly, said horizontal distractor
assembly comprising a threaded rod member coaxially retained
within a sleeve housing, and a drive member connected to said
rod member at the free end of said horizontal distractor assembly,
said drive member receiving an activation arm member for
activating said drive member, whereby activation of said
activation member causes said drive member to activate axial
rotation of said rod member relative to said sleeve member,
thereby resulting in movement of said maxillary fixation plate
member;
said maxilla attachment means comprising a maxillary
fixation plate member connected to said horizontal distractor
assembly;
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Application 12/284,280
wherein said joint assembly comprises a pivot flange
member connected to said vertical arm, a pivot flange member
connected to said horizontal distractor assembly, and a
removable screw connecting said vertical arm pivot flange
member to said horizontal distractor assembly pivot flange
member such that the angle between the malar buttress
attachment means and the maxilla attachment means is
adjustable in a plane parallel to that of the pivot flange members;
and
whereby said joint assembly is releasable with said malar
buttress plate member attached to the malar buttress and with
said maxillary fixation plate member attached to the maxilla,
such that upon release of said joint assembly said vertical arm
member is disconnected from said horizontal distractor
assembly.
Br., Claims App.
REJECTIONS AND PRIOR ART3
The Examiner rejects the claims as follows:
claims 2, 14, 16-18, 20-24, and 26-30 under 35 U.S.C. § 103(a) as
unpatentable over Sellers (US 2002/0156485 Al, pub. Oct. 24, 2002),
McCarthy (US 5,846,245, iss. Dec. 8, 1998), and Watkins
(US 6,315,180 Bl, iss. Nov. 13, 2001); and
claims 3---6 and 25 under 35 U.S.C. § 103(a) as unpatentable over
Sellers, McCarthy, Watkins, and Landsberger (US 6,113,599, iss. Sept. 5,
2000).
See Final Action 3-13.
3 In the Answer, the Examiner withdraws the rejection of claims 24--28
under 35 U.S.C. § 112, second paragraph, previously made in the Final
Action. See Answer 2, Final Action 2-3.
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Application 12/284,280
ANALYSIS
Obviousness rejection of claims 2, 14, 16-18, 20-24, and 26-30 based
on Sellers, McCarthy, and Watkins
Independent claim 14 contains the limitation "said malar buttress
attachment means comprising a malar buttress plate member detachably
connected to a vertical arm member, said vertical arm member connected to
saidjoint assembly." Br., Claims App. (emphasis added). Independent
claims 18, 24, and 29 each recite a similar limitation. See id.
Each of the independent claims are rejected as obvious based on a
combination of Sellers, McCarthy, and Watkins. See Final Action 3-12. In
particular, the Examiner relies on Sellers's bone plate 700 and
device-connecting portion 702 to teach the claimed malar buttress plate
member and vertical arm member, respectively. See, e.g., id. at 3. With
respect to the required detachable connection between the malar buttress
plate member and the vertical arm member, the Examiner states that
"although the [vertical] arm member and the [buttress] plate member are an
integral unit[,] a skilled artisan would understand that the two parts can be
detached from one another via a saw or scissors." Id. at 4. Thus, the
Examiner concludes, "the malar buttress plate member is detachably
connected to the vertical arm member by the mounting flange." Id. at 5.
Appellants argue that the rejection is error because the Examiner
relies on an unreasonably broad interpretation of the term "detachably
connected." See Br. 15-18. Based on our review, for the reasons set forth
below, we agree with Appellants.
It is well established that "the PTO must give claims their broadest
reasonable construction consistent with the specification." In re ICON
Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). In this case,
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Application 12/284,280
Appellants' Specification does not provide an explicit definition of
"detachable" or the phrase "detachably connected." Nonetheless, the
Specification discloses that the malar buttress plate member and the vertical
arm member are coupled with mechanical interlocking means, such as a
threaded aperture and a threaded post, which we understand permit the
members to be detached from each other without damaging or destroying
either member or the connection therebetween. See Spec. p. 7, 11. 13-16;
p. 11, 11. 7-9. Thus, we determine that one of ordinary skill would
understand that the phrase "detachably connected" means that the members
are able to be detached without destruction of the members or the connection
between the members. The Examiner does not point to anything in Sellers
teaching that the malar buttress plate member is able to be detached from the
vertical arm member without damaging or destroying the members or the
connection. Instead, as discussed above, the Examiner determines that
because Seller's bone plate 700 may be cut apart or sawn off from
device-connecting portion 702, these components are detachably connected.
See, e.g., Final Action 4--5. Moreover, the Examiner does not rely on either
of McCarthy or Watkins to teach a detachable connection.
Based on the foregoing, we do not sustain the rejection of independent
claims 14, 18, 24, and 29 as unpatentable over the combination of Sellers,
McCarthy, and Watkins. We similarly do not sustain the rejection of
claims 2, 16, 17, 20-23, 26-28, and 30, which depend from the independent
claims.
Obviousness rejection of claims 3-6 and 25 based on Sellers,
McCarthy, Watkins, and Landsberger
Claims 3---6 depend from independent claim 14, and claim 25 depends
from independent claim 24. Br., Claims App. Each of dependent claims 3-
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Application 12/284,280
6 and 25 contains limitations further defining the above-discussed
detachable connection between the malar buttress plate member and the
vertical arm member. See id. For example, claim 25 contains the limitation
of "said vertical arm member is detachably connected to said malar buttress
plate member using a threaded connector." Id.
The Examiner rejects claims 3---6 and 25 based on a combination of
Sellers, McCarthy, Watkins, and Landsberger. See Final Action 12-13.
Based on our review of the Examiner's findings and conclusions (see Final
Action 3-13) and Appellants' arguments (see Br. 15-23), we determine that
the Examiner's rejection of claims 3---6 and 25 is supported by a
preponderance of the evidence, and that the Examiner articulates reasons
why Landsberger cures the above-discussed deficiency in the rejection of
independent claims 14 and 24.
Appellants argue, for example, that the rejection of claims 3---6 and 25
is in error because "Sellers, McCarthy, and Landsberger fail to disclose,
teach, or suggest a joint assembly having a pivot flange mechanism," as
required by independent claims 14 and 24. Br. 22. However, the Examiner
relies on Sellers in combination with Watkins to teach the features of the
claimed joint assembly. In particular, the Examiner finds that Sellers
teaches a releasable, adjustable joint assembly. See Final Action 3 (citing
Sellers, Fig. 8c.); see also Answer 4. The Examiner also finds that "Watkins
teaches a joint assembly that comprises a pivot flange member, connected
between two elements, including a removable screw that connects the two
elements with the joint assembly ... , such that the angle between the first
element and the second element is adjustable." Final Action 5. The
Examiner concludes that it would have been obvious "to include an
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Application 12/284,280
angularly adjustable joint assembly that include[ s J the pivot flange, as taught
by Watkins, [with] the distractor assembly of Sellers, in order to allow for
angular adjustment between two members." Id. at 5---6. Appellants do not
persuasively explain why the Examiner's findings or reasoning for
combining the teachings of Sellers and Watkins are erroneous.
Appellants additionally argue that the rejection is in error because
Watkins, on which the Examiner relies for features of the releasable,
adjustable joint assembly, is non-analogous art. Br. 22. Specifically,
Appellants argue the following:
The Examiner offers no explanation of why the references
directed to camera mounts in moving vehicles deal with a
problem that would logically commend itself to an inventor in
the field of linear maxillary distraction. The Examiner has
simply isolated one alternate feature of Watkins merely because
it embodies incidental structural features found in Applicant's
invention. This approach was disallowed by the Federal Circuit
in In re Klein, 647 F.3d at 1348-52. It is therefore unreasonable
to conclude that Watkins; because of the camera mount and
moving vehicle subject matter with which it deals, would
logically commend itself to an inventor in the field of linear
distraction of maxillary bones who is considering Appellant's
invention as a whole. Consequently, any incidental structural
features present in Watkins do not serve as a proper basis for a
section 103 rejection of Appellant's claimed invention.
Id. at 20.
In response, the Examiner concludes that Watkins "is reasonably
pertinent to the particular problem with which the [Appellants were]
concerned" because Appellants were concerned with "mak[ ing] an
'angularly adjustable' maxillary distractor" and one skilled in the art "would
look to a wide array of angularly adjustable joints to solve the problem."
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Application 12/284,280
Answer 4--5. Appellants do not present persuasive arguments to the
contrary.
Here, we note that:
[t]he analogous-art test requires that the Board show that a
reference is either in the field of the applicant's endeavor or is
reasonably pertinent to the problem with which the inventor was
concerned in order to rely on that reference as a basis for
rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992).
References are selected as being reasonably pertinent to the
problem based on the judgment of a person having ordinary skill
in the art. Id. ("[I]t is necessary to consider 'the reality of the
circumstances, '-in other words, common sense-in deciding in
which fields a person of ordinary skill would reasonably be
expected to look for a solution to the problem facing the
inventor." (quoting In re Wood, 599 F.2d 1032, 1036
(C.C.P.A.1979))).
In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). In this case, although
Watkins discloses a pivot flange mechanism as an alternative feature of a
camera mount, Watkins nonetheless describes a mechanism for providing an
angular adjustment between two members. See Watkins, col. 9, 11. 52----67.
According to the Specification, Appellants' likewise sought to adjust the
angle between two members, namely the horizontal distractor assembly and
the vertical arm member. See Spec. p. 3, 11. 13-16; p. 4, 11. 3--4. Thus, we
agree with the Examiner that the subject matter of Watkins is reasonably
pertinent to Appellants' problem inasmuch as Watkins's adjustable joint
logically would have commended itself to an inventor's attention in seeking
to provide the desired angular adjustment between the horizontal distractor
assembly and the vertical arm member. See In re Clay, 966 F.2d 656, 659
(Fed. Cir. 1992).
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Application 12/284,280
Turning to the Examiner's further findings and conclusion regarding
claims 3---6 and 25, the Examiner finds that "Landsberger teaches a malar
buttress plate member that is detachably connected to the vertical arm
member using mechanical interlocking means ... compris[ing] a threaded
aperture and a threaded post." Final Action 12 (emphasis added). The
Examiner concludes that it would have been obvious "to include the
mechanical interlocking means, as taught by Landsberger, with the assembly
of Sellers in view of McCarthy and Watkins, in order to allow the buttress
plate member to be able to detach and reattach as necessary." Id. at 12-13.
We determine that the Examiner's reliance on Landsberger cures the
above-discussed deficiency in the combination of Sellers, McCarthy, and
Watkins in the rejection of independent claims 14 and 24.
Based on the foregoing, we sustain the rejection of dependent
claims 3---6 and 25 based on the combination Sellers, McCarthy, Watkins,
and Landsberger. Moreover, when a dependent claim is "found to have been
obvious, the broader claims ... must also have been obvious." Ormco Corp.
v. Align Tech., Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007). Therefore,
pursuant to our authority under 37 C.F.R. § 41.50(b), we also enter a new
ground of rejection for independent claims 14 and 24 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Sellers, McCarthy,
Watkins, and Landsberger.
As a Board of appeal, we are primarily a tribunal of review. Thus, we
do not necessarily reject every claim under our discretionary authority
under 37 C.F.R. § 41.50(b), and, therefore, we emphasize that our decision
to reject claims 14 and 24 only does not mean that the remaining claims are
patentable. As such, we have not considered the patentability of the
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Application 12/284,280
remammg claims in view of the combined teachings of Sellers, ivicCarthy,
Watkins, and Lands berger. Instead, we leave it to the discretion of the
Examiner to reconsider the patentability of the remaining claims.
DECISION
We REVERSE the Examiner's rejection of claims 2, 14, 16-18, 20-
24, and 26-30 under 35 U.S.C. § 103(a).
We AFFIRM the Examiner's rejection of claims 3---6 and 25 under 35
U.S.C. § 103(a).
We enter a NEW GROUND OF REJECTION of claims 14 and 24
under 35 U.S.C. § 103(a).
Section§ 41.50(b) provides that "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Thus,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION,
Appellants must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal as to the
newly-rejected claim:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the Examiner; or
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record.
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Application 12/284,280
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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