Ex Parte Frenk et al

Board of Patent Appeals and Interferences

Jun 19, 2009

10861818 (B.P.A.I. Jun. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ANDRE FRENK, FLORIAN BEUTTER, and FRANCO CICOIRA
__________

Appeal 2009-005654
Application 10/861,818
Technology Center 3700
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Decided:1 June 19, 2009
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Before DONALD E. ADAMS, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-9. We have jurisdiction under
35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-005654
Application 10/861,818

STATEMENT OF THE CASE
Claim 1 is the only independent claim on appeal, and reads as follows:
1. A bone screw for connecting a plurality of bone fragments
comprising:
first and second ends and a longitudinal axis, the first end having a
first threaded portion with a first core diameter, a first external diameter and
a first pitch, the second end having a second threaded portion with a second
core diameter, a second external diameter and a second pitch, the second end
further having a tool engaging surface; wherein the first external diameter is
smaller than or equal to the second core diameter, and the first and second
pitches are substantially equal.

The Examiner relies on the following evidence:
Kim US 5,779,704 Jul. 14, 1998
We reverse.

ISSUE
The Examiner finds that claims 1-9 are anticipated by Kim.
Appellants contend that the pitches of the two threaded portions in
Figure 2 of Kim cannot be characterized as “substantially equal” because the
drawings are not described by the disclosure of Kim as being to scale.
Thus, the issue on appeal is: Have Appellants demonstrated that the
Examiner erred in finding that the pitches of the two threaded portions in
Figure 2 of Kim are “substantially equal” as required by independent claim
1?

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Appeal 2009-005654
Application 10/861,818

FINDINGS OF FACT
FF1 The Specification teaches a bone screw, wherein “the pitch of the
external thread at the front threaded segment and at the rear threaded
segment [are] the same.” (Spec. 2.)
FF2 The Examiner rejects claims 1-9 under 35 U.S.C. § 102(b) as being
anticipated by Kim (Ans. 3).
FF3 The Examiner finds that Kim teaches a bone screw that is
encompassed by the language of claim 1 (id. at 3-4).
FF4 Relying on Figure 2, the Examiner finds that Kim discloses a bone
screw having a first end with a first threaded portion (threaded portion near
ref. 40), and a second end having a second threaded portion (threaded
portion near ref. 42), wherein, as can be seen in Figure 2 of Kim, the pitches
of the first and second threaded portions are substantially equal (id. at 3).
FF5 The Examiner notes that “the term ‘substantially’ is a broad term,”
thus “the prior art need not disclose threads that are precisely equal.” (Ans.
5.)
FF6 Figure 2 of Kim is reproduced below:
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Appeal 2009-005654
Application 10/861,818

Figure 2 shows an embodiment of the rod fixation system of Kim (Kim, col.
3, ll. 18-20).
FF7 The Examiner does not rely on any other disclosure in Kim as to the
pitch of the two threaded areas.
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Appeal 2009-005654
Application 10/861,818

FF8 “Substantially2” may be defined as “[i]n a substantial manner; in
substance; essentially.”

PRINCIPLES OF LAW
We recognize that during prosecution before the Office, claims are to
be given their broadest reasonable interpretation consistent with the
Specification as it would be interpreted by one of ordinary skill in the art. In
re American Academy Of Science Tech Center, 367 F.3d 1359, 1364 (Fed.
Cir. 2004). Claim language, however, “should not [be] treated as
meaningless.” Bicon, Inc. v. Straumann Co., 441 F.3d 945, 951 (Fed. Cir.
2006).
To anticipate, every element and limitation of the claimed invention
must be found in a single prior art reference, arranged as in the claim.
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001).
“[I]t is well established that patent drawings do not define the precise
proportions of the elements and may not be relied on to show particular sizes
if the specification is completely silent on the issue.” Hockerson-
Halbertstadt, Inc. v. Avia Group Int’l Inc., 222 F.3d 951, 956 (Fed. Cir.
2000) (holding that the drawings could not be relied upon to construe
whether the term “central longitudinal groove” required that the width of the
groove be less than the combined width of the fins). “Ordinarily drawings

2 substantially. Dictionary.com. Webster's Revised Unabridged Dictionary.
MICRA, Inc. http://dictionary.classic.reference.com/browse/substantially
(accessed: June 08, 2009).
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Appeal 2009-005654
Application 10/861,818

which accompany an application for a patent are merely illustrative of the
principles embodied in the alleged invention claimed therein and do not
define the precise proportions of elements relied upon to endow the claims
with patentability.” In re Olson, 212 F.2d 590, 592 (CCPA 1954).

ANALYSIS
Appellants argue that the “threads 40 and 42 in Figure 2 of Kim
cannot be characterized as ‘substantially equal’ because the drawings are not
described [by the disclosure of Kim] as being to scale.” (App. Br. 3.)
Appellants contend that the Examiner is improperly interpreting
“substantially” as not requiring a precise proportion (id. at 3-4). According
to Appellants, the Specification “calls for the pitches to be ‘identical’ and
‘the same,’” thus the “qualifier ‘substantially’ read in this light thus means
that to infringe the claim an accused bone screw need not be held to an
impossibly high standard of metaphysical identity that does not allow for
discrepancies due to typical manufacturing tolerances.” (Id. at 4.)
Claim 1 requires that the screw have threaded portions on its first and
second ends, wherein the pitch of the first and second portions are
“substantially equal.” As noted by Appellants, the Specification teaches that
the pitches are “the same.” The Examiner interprets “substantially” very
broadly, without setting a limit on what would be considered substantially
equal, and what would not. Given the teachings of the Specification, as well
as the dictionary definition of “substantially” as “essentially,” we agree with
Appellants’ interpretation of “substantially the same” as being within
manufacturing tolerances.
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Appeal 2009-005654
Application 10/861,818

Therefore, as the Examiner relies solely on the drawings of Kim to
support the finding that the pitch of the first and second threaded portions
are “substantially equal,” and as drawings do not define the precise
proportions of the elements and may not be relied upon to show particular
sizes if the specification is completely silent on the issue, we agree with
Appellants that the Examiner has not established that Kim teaches a screw
wherein the pitches of the first and second threaded portions are
“substantially equal.”

CONCLUSION(S) OF LAW
We find that Appellants have demonstrated that the Examiner erred in
finding that the pitches of the two threaded portions in Figure 2 of Kim are
“substantially equal” as required by independent claim 1.
We thus reverse the rejection of claims 1-9 under 35 U.S.C. § 102(b)
as being anticipated by Kim.

REVERSED

cdc

Paul Brinda
4501 Chatelain Terrace
Golden Valley MN 55422

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