Ex Parte Hearn

Patent Trial and Appeal Board

Mar 28, 2018

12665201 (P.T.A.B. Mar. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/665,201 12/17/2009 James P. Hearn
76960 7590 03/28/2018
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
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.
10139/15912 9312
EXAMINER
SIPP,AMYR.
ART UNIT PAPER NUMBER
3775
MAILDATE DELIVERY MODE
03/28/2018 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
Exparte JAMES P. HEARN 1
Appeal2017-003532
Application 12/665,201
Technology Center 3700
Before ERIC B. GRIMES, JOHN G. NEW, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellant states that the real party-in-interest is DePuy Synthes Products,
Inc., a subsidiary of Johnson & Johnson, Inc. App. Br. 2.
Appeal2017-003532
Application 12/665,201
SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1, 3-20, 24, and 25. Specifically,
claims 1, 3, 4, 9, 10, and 15-18 stand rejected as unpatentable under 35
U.S.C. § 103(a) over the combination of Casutt (US 2008/0188856 Al,
August 7, 2008) ("Casutt") and Teague et al. (US 2007/0043371 Al,
February 22, 2007) ("Teague").
Claims 5-8 and 11-14 stand rejected as unpatentable under 35
U.S.C. § 103(a) over the combination of Casutt, Teague, and Luhr et al. (US
5,372,598, December 13, 1994) ("Luhr").
Claims 19 and 20 stand rejected as unpatentable under 35
U.S.C. § 103(a) over the combination ofCasutt, Teague, and Stevens et al.
(US 2004/0111089 Al, June 10, 2004) ("Stevens").
Claims 24 and 25 stand rejected as unpatentable under 35
U.S.C. § 103(a) over the combination of Casutt, Teague, and Fried et al. (US
2004/0019353 Al, January 29, 2004) ("Fried").
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellant's invention is directed to a ratcheting epiphysiodesis plate.
Abstract.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A ratcheting epiphysiodesis plate comprising:
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Application 12/665,201
a female base half having a ratchet arm;
a male sliding half having a series of ratchet teeth, the male
sliding half being slidably connected to the female base half with
the ratchet arm engaging the ratchet teeth, one of the female and
male sliding halves including a first fixation element receiving
hole for receiving therethrough a fixation element for binding the
plate to a bone; and
a slider band slidably connected to the female base half for
movement relative thereto along a longitudinal axis of the ratchet
arm, the slider band being disposed over the ratchet arm, the
slider band controlling a deflection of the ratchet arm of the
female base half to control a preset load at which the male sliding
half will disengage from the ratchet arm to permit relative
movement between female and male base halves.
App. Br. 12.
ISSUE AND ANALYSIS
We adopt the Examiner's findings of fact and conclusions that the
appealed claims are obvious over the cited prior art. We address the
arguments raised by Appellant below.
Issue
Appellant argues the Examiner erred because the combined cited prior
art neither teaches nor suggests the limitation of claim 1 reciting: "a slider
band controlling a deflection of the ratchet arm of the female base half to
control a preset load at which the male sliding half will disengage from the
ratchet arm to permit relative movement between female and male base
halves." App. Br. 5.
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Appeal2017-003532
Application 12/665,201
Analysis
The Examiner finds, in relevant part that Teague teaches using ratchet
teeth to preclude relative movement between the male/female halves in the
extension direction or in both directions when secured by the slider bar 60,
which comprises a set screw 62 that can be tightened to prevent movement
of the male/female halves. Final Act. 2 (citing Teague i-f 24). The Examiner
explains that Teague teaches the relative movement is prevented if and when
the set screw is fully tightened and maintains a fully tightened position and
is therefore capable of providing the claimed preset load. Id. The Examiner
finds Teague teaches that locking mechanisms have a preset load above
which they allow disengagement of held components and below which they
maintain engagement of components. Id. The Examiner notes that this is
the case for most physical structures, and is commonly referred to as yield
strength. Id.
Appellant argues that the locking means of Teague, which the
Examiner equates to the slider bar of claim 1, serves only to completely
preclude relative movement between the arm members and the central body
member, thereby preventing disengagement of the ratchet portions between
them. App. Br. 5---6. According to Appellant, Teague teaches a sternal
closure clamp device including a central body member 10 that receives and
retains four adjustable engagement members 20. Id. (citing Teague i-f 24).
Appellant argues the device also includes engagement arm adjustment
means 40 which include ratchets 41 disposed on the engagement arm
members 21, and that similar structures 11 on the central body member 10
prevent movement between the arm members 21 and the central body
member 10 when secured by the engagement member locking means 60.
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Application 12/665,201
Id .. Appellant points out that Teague teaches that the engagement member
locking means comprises a flange member 61 containing a set screw 62 that
can be tightened to prevent movement of the engagement members 20. Id.
at 6.
Appellant contends that Teague fails to disclose any deflection of the
female ratchet arm or a slider band controlling deflection of the female
ratchet arm. App. Br. 6. Instead, Appellant argues, as can be seen in Fig. 2,
the ridges of the central body member 10 simply fit within the corresponding
ridges of the arm members 21 such that movement between the central body
member 10 and arm members 21 is through a simple sliding ratchet system.
Id. Appellant asserts that a person of ordinary skill in the art would
understand that this ratchet system does not cause deflection of the female
ratchet arm in any way; that is, the locking means 60 does not control a
deflection of any portion of the arm member 21 or central body member 10
but simply holds the two components against one another. Id. Thus,
Appellant argues, the locking means 60 does not control a deflection of the
female ratchet arm since no deflection of the arm occurs. Id.
Appellant argues further that Teague neither teaches nor suggests any
preset load at which the arm members 21 and central body member 10 may
disengage from one another to permit relative movement between them.
App. Br. 6-7. Appellant notes that claim 1 recites that, at the preset load,
the male sliding half will disengage from the ratchet arm to permit relative
movement between the female and male base halves. Id. However,
Appellant argues, in the invention of Teague, the ratchet teeth of the
engagement member arm members 21 and of the central body member 10
are always engaged, but are simply moveable relative to one another when
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Application 12/665,201
the set screw 62 is loosened. Id. Appellant explains that the male sliding
half never disengages from the ratchet arm, but rather is permitted to move
relative to it without disengaging. Id.
Furthermore, argues Appellant, the claim reads that the "male sliding
half will disengage from the ratchet arm," and that even if the locking means
60 did have an unlocked state, the male sliding half would still be engaged
with the ratchet arm because the ratchet arm is the entirety of the
engagement members. Id. at 7. That is, both central body member 10 and
arm members 21 have ratchets along their entire engagement portions so that
they are incapable of being movable relative to one another without the
ratchets being engaged. Id.
Finally, Appellant points out that Teague teaches not only that the
flange member 61 and set screw 62 lock the male and female base halves to
preclude movement, but they hold the two components together, as can be
seen in Fig. 2. Id. at 7-8. Therefore, contends Appellant, disengagement of
the male arm members 21 from the central body member 10 would not result
in relative movement of the two, but would result in complete physical
disengagement such that the components would no longer be coupled
together. Id. at 8. Appellant also notes that Teague expressly teaches that
the locking means 60 precludes any movement between the engagement
members 20. Id. According to Appellant, Teague neither teaches nor
suggests that there is any preset load at which the engagement members 20
would disengage from one another to permit relative movement between the
pieces; rather, the only way to allow movement would be to loosen the set
screw 62 that is used to lock the locking means 60 in place. Id.
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Application 12/665,201
We are not persuaded by Appellant's arguments. Paragraph [0024] of
Teague teaches:
In the alternative embodiment shown in FIG. 2, the central
body member 10 is again a generally X-shaped body. The
projection members 22 of the engagement members 20 further
comprise posterior retainer members 23 that extend back toward
the middle of the device and are configured to be located behind
or posteriorly to the sternal halves when the device is in use. The
engagement arm adjustment means 40 in this embodiment
comprise interlocking ridges, grooves, ratchets or similar
mechanical fixation constructs 41 disposed on the engagement
member arm members 21 in combination with interlocking
ridges, grooves, ratchets or similar mechanical fixation
constructs 11 on the central body member 10, that preclude
relative movement between the arm members 21 and the central
body member 10 in the extension direction or in both directions
when secured by the engagement member locking means 60,
which as shown herein comprises a flange member 61 containing
a set screw 62 that can be tightened to prevent movement of the
engagement members 20.
(Emphasis added). Figure 2 of Teague is reproduced below:
Figure 2 of Teague depicts a perspective view of the sternal
closure clamp device, illustrating a ratchet and set screw
combination for the locking means
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Application 12/665,201
Figure 2 of Teague shows that the arms of the central body member
10 and the projection members 22 of the engagement members 20 both
possess ratchet teeth that engage with each other and are prevented from
moving relative to each other when the set screw 62 of flange member 61 is
sufficiently tightened, as related in paragraph [0024].
When set screw 62 is sufficiently loosened, the ratchet teeth of central
body member 10 and the projection members 22 of the engagement
members 20 are deflected and can disengage with each other, so that they
may move relative to each other, providing the requisite adjustability of the
closure clamp. See Teague i-f 6 (describing its "sternal closure clamp device
having the functionality of a contractible sternal clamp, such that the sternal
halves may be quickly and easily pressed or drawn together in a sliding or
telescoping manner and retained in position").
Figures 4 and 5 of Teague, though relating to a different embodiment
than Figure 2, are instructive upon this point. Figures 4 and 5 of Teague are
depicted below:
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Application 12/665,201
Figures 4 and 5 of Teague depict, respectively, perspective and
side views of an alternate embodiment of the sternal closure
clamp device, illustrating a central locking means.
Although Figures 4 and 5 of Teague illustrate a central locking means
64, rather than the flange member 61 located on each of the arms depicted in
Figure 2, the basic principle of operation is the same as in Figure 2. When
the set screw ( 62 in Figure 2 and 65 in Figure 5) is tightened, the ratchet
teeth of the arm and the central body engage and, with further tightening, are
prevented from moving relative to each other. When the set screw is
sufficiently loosened, the arms can be displaced and disengage and move
freely relative to each other.
Although we agree with Appellant that Teague does not expressly
teach a "preset load" at which the male sliding half will disengage from the
ratchet arm to permit relative movement between female and male base
halves, as recited in claim 1, we are not persuaded that a person of ordinary
skill would not understand that the design of the locking means 61 and 62 of
Figure 2 of Teague provides a mechanism by which the load in the arms can
be adjusted. We agree with the Examiner that, with the set screw maximally
tightened, the load required to move the arms relative to each other would be
at the maximum holding power of the device, whereas with the screw
loosened, the ratchets would slide more easily past each other, defining a
new load value by which the arms could be moved. Indeed, it is precisely
this property of the mechanism that renders the arms adjustable in their
length and in the force required to disengage and move the arms relative to
each other. See Teague i-f 6. We consequently affirm the Examiner's
rejection of claim 1.
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Application 12/665,201
Appellant relies upon the same arguments in support of the remaining
claims on appeal. App. Br. 8. For the same reasons we have set forth with
respect to claim 1, we similarly affirm the Examiner's rejection of those
claims.
DECISION
The Examiner's rejection of claims 1, 3-20, 24, and 25 as
unpatentable under 35 U.S.C. § 103(a) is affirmed.
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
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