11396554 (P.T.A.B. May. 10, 2013)

Ex Parte Holloway et al

Patent Trial and Appeal BoardMay 10, 2013

11396554 (P.T.A.B. May. 10, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/396,554 04/04/2006 Ashley Holloway A8130.0441/P441 6574 24998 7590 05/13/2013 DICKSTEIN SHAPIRO LLP 1825 EYE STREET NW Washington, DC 20006-5403 EXAMINER BOLES, SAMEH RAAFAT ART UNIT PAPER NUMBER 3775 MAIL DATE DELIVERY MODE 05/13/2013 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 ASHLEY HOLLOWAY and JOEL BALES ____________________ Appeal 2010-007291 Application 11/396,554 Technology Center 3700 ____________________ Before GAY ANN SPAHN, MICHELLE R. OSINSKI, and ADAM V. FLOYD, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007291 Application 11/396,554 2 STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1, 2, and 4-25 under 35 U.S.C. § 103(a) as unpatentable over Zeiler (US 2005/0021033 A1, pub. Jan. 27, 2005) and Burkhart (US 2006/0259076 A1, pub. Nov. 16, 2006) (Ans. 3-4). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The claimed subject matter relates to a “bone plate with suture loops that allow easy access for suturing and increased stabilization of the parts of the fracture.” Spec. 1, para. [0002]. Claims 1, 11, and 20 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the appealed subject matter. 1. A bone plate, comprising: a body having a first surface and a bone- contacting surface; and at least one flexible suture loop formed of a flexible material, the at least one flexible suture loop being pre-attached, non-slidably, to the first surface of the bone plate. ANALYSIS The Examiner found that Zeiler teaches all of the limitations of independent claims 1, 11, and 20 with the exception of the suture loop being formed of a flexible material. Ans. 3. Pointing to paragraph [0042] of 1 Appellants identify the real party in interest as Arthrex, Inc. App. Br. 2. Appeal 2010-007291 Application 11/396,554 3 Burkhart in particular, the Examiner found that Burkhart teaches a suture loop formed of a flexible material. Id. at 4. The Examiner concluded that it would have been obvious for a person of ordinary skill in the art “to modify the suture loops of Zeiler et al[. (rigid2 receiving members 6 having apertures 7)] with a flexible material of high strength suture material . . . for increasing the reliability of suture connections and for providing increased fixation strength of fractured bone to soft tissues.” Id. at 4-5. We find the Examiner’s rejection insufficient to explain what would have prompted a person having ordinary skill in the art to use Burkhart’s flexible, suture material in place of the rigid receiving members of Zeiler. The Examiner has not provided any findings that either Zeiler or Burkhart recognized a problem with the reliability or fixation strength of Zeiler’s rigid receiving members 6. The reason proffered by the Examiner to modify Zeiler, i.e., “increasing the reliability of suture connections and for providing increased fixation strength of fractured bone to soft tissues” (Ans. 4), is unpersuasive as lacking rational underpinning. In particular, Appellants have contended that the “metal receiving members of Zeiler provide the most fixation strength, as metal is stronger tha[n] a suture strand,” and the 2 Appellants state that “[t]he ‘suture loops’ identified in Figure A on page 4 of the Office Action . . . are in fact not loops . . . , but rather rigid ‘receiving members 6’ provided with apertures 7 for receiving suture.” App. Br. 5. Zeiler confirms that the receiving members 6 are “rigid” by describing that “[t]he receiving member (6) can be formed using process and plant technology from strip material (42), or using externally fabricated receiving members (6) that are welded, press-welded, soldered, screwed, or riveted onto the outer side of the implant plate (1).” Zeiler, Abstr. Zeiler also describes that the “metallic strip-material 42 . . . consists, for example, of implant steel, titanium, or titanium alloys.” Zeiler, p. 5, para. [0054]. Appeal 2010-007291 Application 11/396,554 4 Examiner has not provided persuasive evidence or reasoning in response to Appellants’ contention to explain how Burkhart’s suture material would indeed have more fixation strength of fractured bone to soft tissues than Zeiler’s rigid receiving members 6 with apertures 7 for receiving suture. Reply Br. 3. Without a persuasive articulated reason based on a rational underpinning for modifying the reference as proposed, the Examiner’s rejection cannot stand. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). For the foregoing reasons, we find that the Examiner erred in concluding that the limitations recited in independent claims 1, 11, and 20 would have been obvious from the combination of Zeiler and Burkhart, and we do not sustain the rejection of independent claims 1, 11, and 20 and their dependent claims 2, 4-10, 12-19, and 21-25 under § 103(a). DECISION The Examiner’s rejection of claims 1, 2, and 4-25 under 35 U.S.C. § 103(a) as unpatentable over Zeiler and Burkhart is REVERSED. REVERSED APJ INITIALS: APJ 1: MRO APJ 2: avf APJ 3: GAS rvb