11110405 (P.T.A.B. Mar. 12, 2013)

Ex Parte Jackson

Patent Trial and Appeal BoardMar 12, 2013

11110405 (P.T.A.B. Mar. 12, 2013)

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. 11/110,405 04/20/2005 Roger P. Jackson 10,513 2620 27456 7590 03/12/2013 LAW OFFICE OF JOHN C. MCMAHON P.O. BOX 860305 Shawnee, KS 66286 EXAMINER YANG, ANDREW ART UNIT PAPER NUMBER 3775 MAIL DATE DELIVERY MODE 03/12/2013 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 ROGER P. JACKSON __________ Appeal 2011-008856 Application 11/110,405 Technology Center 3700 __________ Before TONI R. SCHEINER, LORA M. GREEN, and MELANIE L. McCOLLUM, 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 rejection of claims 33-35. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2011-008856 Application 11/110,405 2 STATEMENT OF THE CASE The claims are drawn to a spinal medical implant closure, and may be found in the Claims Appendix to the Appeal Brief (App. Br. 16-17). Claims 33-35 stand rejected under 35 U.S.C. § 103(a) as being rendered obvious by the combination of Jackson, 1 Hills 2 and Morrison 3 (Ans. 3). We agree with the rejections and responses to Appellant’s arguments that are set out in the Examiner’s Answer, and therefore adopt the Examiner’s reasoning as our own. 4 We note further that Appellant argues that with the device disclosed in Appellant’s prior patent, the Jackson reference, “a problem was encountered wherein a surgeon could inadvertently or even deliberately extend the driving or installation tool over both the break-off head and the removal head during installation, which allowed overtorquing of the closure, so that the arms splayed and/or the threads stripped such that the implant, as a whole, failed” (App. Br. 9). A review of the Jackson reference, however, reveals that the reference did recognize and address the problem of preventing the installation tool of extending past the installation head. 1 Jackson, US 6,224,596 B1, issued May 1, 2001. 2 Hills, US 3,444,775, issued May 20, 1969. 3 Morrison et al., US 6,296,642 B1, issued Oct. 2, 2001. 4 We note that a Reply Brief was filed May 17, 2011. Appellants, however, reiterate the arguments made in the Appeal Brief that Jackson and Hills are nonanalogous art, which arguments have been addressed by the Examiner (see Ans. 6-7). Note that similar arguments made in a Reply Brief were acknowledged by the Examiner in related Appeal 2011-010740, decided concurrently herewith (see Paper entitled “Reply Brief Noted,” dated July 6, 2011, in USSN 11/187,417). Appeal 2011-008856 Application 11/110,405 3 Figures 12 and 9 of Jackson are reproduced below. Figure 12 is an embodiment of a set screw taught by Jackson (Jackson, col. 4, ll. 66-67). Figure 9 is a “fragmentary front elevational view of the set screw shown secured within a socket wrench with portions broken away to show detail” (id. at col. 4, ll. 56-58). As taught by Jackson: A drive slot 86 is located at the upper end 85 of the set screw head 71. The slot 86 is a rectangular notch extending downward from the upper end 85 with portions on diagonally opposite sides of the screw 70. The set screw 70 is preferably driven by a hexagonal socket type wrench 39 as described above and partially shown in FIG. 9 in use with the set screw 1 of the first embodiment. The slot 86 can receive mating parts of the wrench 39; however, the drive slot 86 is adapted to also receive a flat head screwdriver type tool for starting the set screw 70 into the threaded set screw bore 11 in some applications. (Id. at col. 8, ll. 12-22.) Appeal 2011-008856 Application 11/110,405 4 Thus, the ordinary artisan would recognize that the collar of Hills performs the same function as the drive slot 86, that is, each prevents the torque applying tool from extending from beyond the outermost head. The Examiner’s rejection is affirmed. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED cdc