Ex Parte Gotzen

Board of Patent Appeals and Interferences

Jan 11, 2012

10499399 (B.P.A.I. Jan. 11, 2012)

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.
10/499,399 06/16/2004 Leo Gotzen MFA-18202/04 7231
25006 7590 01/12/2012
GIFFORD, KRASS, SPRINKLE,ANDERSON & CITKOWSKI, P.C
PO BOX 7021
TROY, MI 48007-7021
EXAMINER
WOODALL, NICHOLAS W
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
01/12/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LEO GOTZEN
____________

Appeal 2009-013293
Application 10/499,399
Technology Center 3700
____________

Before, STEFAN STAICOVICI, MICHAEL C. ASTORINO, and
MICHAEL L. HOELTER, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Leo Gotzen (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision to reject claims 1-10 under 35 U.S.C. § 103(a) as
unpatentable over Donnelly (US 6,773,436 B2, issued Aug. 10, 2004),
Steiner (US 2002/0161401 A1, published Oct. 31, 2002), Westwood (US
5,207,171, issued May 4, 1993) and Fallin (US 6,645,227 B2, issued Nov.
11, 2003). We have jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates a bone anchor including an elongate,
circularly cylindrical body 10 having at least two passage bores 14,16,
wherein each of the at least two passage bores 14,16 has two opposing
openings 18,20 and 22,24, respectively. Spec. 5, ll. 2-3 and 7-8 and fig. 1.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A bone anchor for the refixing of soft tissue to bone with the
help of a suture, comprising an elongate and substantially cylindrical
body having an edge, a front end, an opposing end face, a periphery,
and a longitudinal axis made in one piece from human or animal
cortical bone whose front end tapers conically and which has at least
two passage bores, each of the at least two passage bores having two
opposing openings, wherein:
the at least two passage bores lie in one plane and extend
toward one another at an angle;
a first opening having a first width in one of the at least two
passage bores is arranged adjacent to a second opening having a
second width of another of the at least two passage bores;
an opening opposing the first opening and having an opposing
first opening width in one bore is arranged spaced apart from an
opening opposing the second opening and having an opposing second
opening width of another bore; and
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the first opening and the second opening are arranged proximal
to the front end.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

OPINION
Claims 1-7, 9 and 10
Appellant argues that (1) Westwood is non-analogous art (Br. 4-9);
(2) the combination of Donnelly and Fallin fails to disclose a substantially
cylindrical body (Br.18-19); and (3) the combination of Donnelly and
Westwood fails to disclose at least two bores adjacent to a first opening and
a second opening (Br. 15-17).

Appellant’s First Argument
Appellant argues that Westwood is non-analogous art. Br. 4-9.
According to Appellant, Westwood is neither in the same field of endeavor
nor pertinent to the problem addressed in the instant invention, namely,
maintaining structural integrity of a bone anchor. Br. 4. Specifically,
Appellant argues that (1) Westwood is concerned with providing an anchor
for a rope used in marine applications such as hanging a fender or adjustably
connecting two lines (Br. 5); and (2) the problem of arranging bores within a
marine cleat so as to bring lines together to create a frictional force locking
the length of the lines in position as disclosed in Westwood is non-analogous
to the problem of the instant invention of arranging bores so as to minimize
weakening of the bone anchor body (Br. 8.).
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We disagree with Appellant’s description. Appellant’s field of
endeavor is that of a bone anchor. We note that the Examiner’s primary
reference to Donnelly is from the Appellant’s field of endeavor (i.e., bone
anchors) and thus is analogous art to Appellant’s invention. Further, to
determine what is analogous prior art for the purpose of analyzing the
obviousness of the subject matter at issue, “any need or problem known in
the field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed.” KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). Thus, a reference in a
field different from that of applicant's endeavor may be reasonably pertinent
if it is one that, because of the matter with which it deals, would have
logically commended itself to an inventor's attention in considering his or
her invention as a whole. In re ICON Health & Fitness, Inc., 496 F.3d 1374,
1379-80 (Fed. Cir. 2007). In this case, Appellant’s Specification describes
the use of “a suture F [that] is guided through the bores 14 and 16 such that
the two free ends F1 and F2 each exit through the two adjacent openings 18
and 22.” Spec. 6, ll. 21-23 and figs. 4 and 5 of Appellant’s Drawings.
Similarly, with respect to Donnelly, the Examiner found that Donnelly
discloses:
[A] device that is used with a suture, wherein the
suture includes a first free end guided through the
at least two passage bores and a second free end,
wherein the first free end exits the first opening
and the second free end exits the second opening at
the periphery of the body.
Ans. 4.
The Examiner further found that Donnelly fails to disclose that the two
passage bores 224’ extend toward one another at an angle. Ans. 4, 7 and 9.
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See also, Donnelly, fig. 7B. The Examiner then turned to Westwood merely
for the teaching of at least two passage bores extending toward one another
at an angle in order to frictionally lock a thread (rope), extending through the
bores until the thread (rope) is released. Ans. 4-5, 7 and 10. Hence, an
inventor seeking to improve frictional engagement of a line, i.e. a suture,
would look to modify the orientation of Donnelly’s passage bores to extend
toward one another as taught by Westwood. As such, we find that the
combination of Donnelly and Westwood addresses a problem addressed by
Appellant, namely, the ability to frictionally lock a thread extending through
the passage bores until the thread is released through a toggling action and,
thus, would have commended itself to an inventor’s attention in considering
this problem. For these reasons, both Donnelly and Westwood are
analogous art to Appellant’s invention and provide a reason with rational
underpinning for the combination proposed by the Examiner.

Appellant’s Second Argument
Appellant argues that the combination of Donnelly and Fallin fails to
disclose a substantially cylindrical body. Br. 18-19. According to
Appellant, neither Donnelly nor Fallin discloses a substantially cylindrical
body. Br. 18. Specifically, Appellant argues that the device of Fallin “has
two flattened sidewalls (67, 68) and a flattened edge to form the flat front
face (91) and sharpened edge (94) on the barb (90).” Br. 19. As such,
according to Appellant, the flat edges of the bone anchor device of Fallin are
indicative of a device that is not cylindrical. Id.
At the outset, we agree with the Examiner that the phrase
“substantially cylindrical” does not require that the bone anchor body be a
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perfect cylinder, but merely requires that the bone anchor body be somewhat
cylindrical in shape. Ans. 10. When a word of degree, such as the term
“substantially,” is used in a claim, we look to the specification to determine
whether the specification provides some standard for measuring that degree.
See Seattle Box Co.. v. Industrial Crating & Packing, Inc., 731 F.2d 818,
826 (Fed. Cir. 1984). In this case, Appellant’s Specification and Drawings
describe the anchor body 10 as elongate and circularly “cylindrical,” but do
not provide any express definition of the phrase “substantially1 cylindrical.”
Spec. 5, ll. 2-3 and fig. 1. We construe the phrase “substantially cylindrical”
to mean “mostly largely, but not wholly, having the form or properties of a
cylinder” which is consistent with how this phrase is used in the
Specification.
In this case, the Examiner found that Donnelly discloses all the
limitations of independent claim 1 except a substantially cylindrical body.
Ans. 4. As such, the Examiner turned to Fallin for disclosing a bone anchor
12 having a substantially cylindrical elongate body 50. Ans. 5 and 10. See
also Fallin, figs. 4-5. In addition, Fallin specifically discloses that elongate
body 50 “has a substantially circular transverse cross sectional area.” See
Fallin, col. 3, ll. 40-41 and figs. 4-5. As such, because elongate body 50 of
bone anchor 12 of Fallin mostly (largely, but not wholly) has the form or
properties of a cylinder, we agree with the Examiner that the elongate body
of Fallin has a “substantially cylindrical” configuration, as required by claim
1. Ans. 10.

1 An ordinary and customary meaning of the term “substantially” is “being
largely but not wholly that which is specified.” MERRIAM WEBSTER’S
COLLEGIATE DICTIONARY (11th ed. 2005).
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Appellant further argues that the shape of the bone anchor of the
subject invention is critical to its function. Br. 19. According to Appellant,
(1) a cylindrical shape is functionally critical to creating a press fit within a
bore in a bone; and (2) substantially altering the cylindrical shape or adding
flattened sides would detract from a press fit within a bore in a bone. Id.
At the outset, we are not persuaded by Appellant’s arguments because
Appellant has not provided any evidence to show that a cylindrical shape is
functionally critical to creating a press fit within a bore in a bone, or that
substantially altering the cylindrical shape or adding flattened sides would
detract from a press fit within a bore in a bone. An attorney’s arguments in a
brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974). Furthermore, we agree with the Examiner that Donnelly
discloses opposed surfaces 18 of elongate body 12 that may be shaped or
contoured, i.e., curved or rounded. Ans. 10. See also Donnelly, col. 3, ll.
59-61 and figs. 1A and 1C. As such, we further agree with the Examiner
that the shape of elongate body 12 of bone anchor 10 of Donnelly is not
critical and that modifying the shape of elongate body 12 of bone anchor 10
of Donnelly by the teachings of Fallin would not destroy the functionality of
bone anchor 10 of Donnelly. Ans. 10-11. Hence, modifying the bone
anchor 10 of Donnelly by replacing elongate body 12 of Donnelly with the
substantially cylindrical elongate body 50 of Fallin would not have been
uniquely challenging to a person of ordinary skill in the art, because it is “the
mere application of a known technique to a piece of prior art ready for
improvement.” See KSR, 550 U.S. at 417. The modification appears to be
the product not of innovation but of ordinary skill and common sense.
Therefore, we also agree with the Examiner that it would have been obvious
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to one having ordinary skill in the art at the time the invention was made to
modify the bone anchor of Donnelly by modifying the elongate body of
Donnelly with the substantially cylindrical elongate body of Fallin “in order
to achieve the predictable results of engaging the bone.” Ans. 5.

Appellant’s Third Argument
Appellant argues that the combination of Donnelly and Westwood
fails to disclose at least two bores adjacent to a first opening and a second
opening. Br. 15-17. According to Appellant, in contrast to claim 1, which
requires that the two independent bores “do not meet within the body,” in
Westwood, the first and second openings meet within the body of the
anchor, that is, “the two bores meet at the base of an elliptical opening (38).”
Br. 16. We are not persuaded by Appellant’s arguments for the following
reasons.
First, we note that claim 1 does not require that the two passages “do
not meet within the body,” as Appellant contends. Although the claims are
interpreted in light of the Specification, limitations from the Specification
are not read into the claims. We must be careful not to read a particular
embodiment appearing in the written description into the claim if the claim
language is broader than the embodiment. See Superguide Corp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Claim 1 merely
requires that the two bores “extend toward one another at an angle.” As
such, we agree with the Examiner that (1) Westwood discloses a device
wherein two bores 28, 30 extend towards one another at an angle; and (2)
Westwood is applied merely for the teaching of the two bores extending
towards one another at an angle. Ans. 4-5 and 9-10.
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Appellant further argues that because the bores meet in an elliptical
opening, the bores of Westwood form only three openings, rather than four
openings, as called for by claim 1 (first and second openings and opposing
openings to the first and second openings). Br. 16-17. At the outset, we
agree with the Examiner that Donnelly discloses a bone anchor 10 including
two passage bores 324 that lie in one plane, wherein each of the passage
bores 324 have two opposing openings 328 (hence four openings). Ans. 9.
See also, Donnelly, figs. 6A, 6C, 7A and 7B. In addition, Donnelly
specifically discloses that the suture channels of the elongate body of the
bone anchor are obliquely angled (misaligned) with respect to the
longitudinal axis of the bone anchor body. See Donnelly, col. 2, ll. 26-29
and 37-39. We further agree with the Examiner that Westwood discloses
two passage bores that lie in one plane and extend toward one another at an
angle. Ans. 4-5. See also, Westwood, fig. 2. We further note that claim 1
requires that the first and second openings are “adjacent” and that the
opposing openings to the first and second openings are “spaced apart.” Br.,
Claims Appendix.
When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). An ordinary and customary
meaning of the term “adjacent” that is most consistent with the Specification
and the understanding of those of ordinary skill in the art is “1 a: not distant:
NEARBY b: having a common endpoint or border 2 of two angles : having
the vertex and one side in common.” MERRIAM WEBSTER’S COLLEGIATE
DICTIONARY (11 ed. 2005). In this case, Figure 1 of Appellant’s Drawings
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shows “adjacent” openings 18, 22 and “spaced apart” openings 20, 24.
Hence, in order to differentiate the “spaced apart” openings, we construe the
term “adjacent” to mean that the first and second openings have a common
endpoint and border. We note that Appellant always has the opportunity to
amend the claims during prosecution, and broad interpretation by the
Examiner reduces the possibility that the claim, once issued, will be
interpreted more broadly than is justified. In re Prater, 415 F.2d 1393,
1404-05 (CCPA 1969). See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
2004) (“Absent claim language carrying a narrow meaning, the PTO should
only limit the claim based on the specification or prosecution history when
those sources expressly disclaim the broader definition.”).
As such, for the reasons set forth above, we find that openings 28, 30
of Westwood’s device constitute “adjacent” openings. Furthermore, since
both Donnelly and Westwood disclose angled passage bores (324 and 28,
30, respectively), we find that modifying passage bores 324 of Donnelly at
an angle as taught by Westwood would not have been uniquely challenging
to a person of ordinary skill in the art, because it is no more than “mere
application of a known technique to a piece of prior art ready for
improvement.” See KSR, 550 U.S. at 417. The modification appears to be
the product not of innovation but of ordinary skill and common sense. As
such, we find that Appellant’s invention is nothing more than Donnelly’s
bone anchor 10 in which passage bores 324 have been oriented at an angle
according to Westwood.
In conclusion, for the foregoing reasons, the rejection of independent
claim 1 under 35 U.S.C. § 103(a) as unpatentable over Donnelly, Steiner,
Westwood and Fallin is affirmed. Appellant does not present any additional
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arguments with respect to dependent claims 2-7, 9 and 10. Br. 21.
Accordingly, the rejection of claims 2-7, 9 and 10 is likewise sustained.

Claim 8
Dependent claim 8 requires a groove “having a width that is smaller
than the width of one of the first opposing opening and the second opposing
opening.” Br., Claims Appendix. The Examiner takes the position that
modifying the groove extending between the bores of the bone anchor of
Donnelly to have a width smaller than the width of one of the first and
second opposing openings, is an obvious matter of design choice, since such
a modification would involve a mere change in size of the component. Ans.
6. The Examiner further opines that the primary function of the groove of
Donnelly is to hold the suture against the elongate body of the device (see
Donnelly, col. 7, ll. 44-46) and that changing the size (width) of the groove
to be smaller would not change the primary function of the groove. Ans. 11.
At the outset, although we agree with the Examiner that the primary
function of the groove of Donnelly is to hold the suture against the elongate
body of the device, we disagree with the Examiner that changing the size
(width) of the groove would not change the primary function of the groove.
In this case, Donnelly specifically discloses that (1) trough (groove) 336
connects an opening 328 of one of the suture channels 324 with the other
opening 328 of the second suture channel 324; and (2) the combination of
the two suture channels 324 and trough (groove) 336 provides a smooth
passageway for suture strand 2 to pass therethrough, without excess friction.
See Donnelly, col. 7, ll. 41-44 and 49-51 and fig. 6A and 7B. As such,
changing the width of trough (groove) 336 of Donnelly to be smaller than
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the width of one of the first and second opposing openings 328, as the
Examiner proposes, may affect the level of friction applied to suture strand
2. A change in the level of friction, in turn, may affect the ability of passing
suture strand 2 through suture channels 324 and trough (groove) 336. For
example, an increase in friction could prevent suture strand 2 from easily
sliding through the passageway, which could result in suture strand 2 being
caught in trough (groove) 336, thus preventing suture strand 2 from being
seated against elongate body 312 of bone anchor 310. In other words, in
contrast to the Examiner’s position, because a decrease in the width of
trough (groove) 336 of Donnelly may affect the level of friction applied to
suture strand 2, we find that such a change in size may affect the primary
function of the groove. Hence, the Examiner’s finding that modifying the
width of the groove of Donnelly would involve a mere change in the size of
the groove is mere speculation and conjecture based on an unfounded
assumption that changing the size (i.e., decreasing the width) of the groove
of Donnelly would not change the primary function of the groove.
Accordingly, the rejection of dependent claim 8 cannot be sustained.

DECISION
The decision of the Examiner is affirmed as to claims 1-7, 9 and 10
and reversed as to claim 8.
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)(1)(iv).

AFFIRMED-IN-PART

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