Ex Parte Maughan et al

Patent Trial and Appeal Board

Dec 23, 2013

11116051 (P.T.A.B. Dec. 23, 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.
11/116,051 04/27/2005 Thomas J. Maughan 10139/02701 4403
76960 7590 12/24/2013
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
EXAMINER
YANG, ANDREW
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
12/24/2013 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 THOMAS J. MAUGHAN and JAMES P. HEARN
____________

Appeal 2012-001621
Application 11/116,051
Technology Center 3700
____________

Before JAMES T. MOORE, MICHAEL L. HOELTER, and
PATRICK R. SCANLON, Administrative Patent Judges.

JAMES T. MOORE, Administrative Patent Judge.

DECISION ON APPEAL

The Appellant filed a notice of appeal on March 22, 2011, seeking relief
from the final rejection of claims 1-9, 11, 12, and 14-16 on December 22, 2010.
Claims 33-52 have been canceled; claims 10, 13, 21, 22, 25, and 28 have been
withdrawn from consideration; and claims 17-20, 23, 24, 26, 27, and 29-32 have
been allowed.

We have jurisdiction pursuant to 35 U.S.C. § 134(a).
Appeal 2012-001621
Application 11/116,051

2

We AFFIRM the rejection of claims 1-9, 11, 12, and 14-16.

BACKGROUND
The presently claimed subject matter relates to a bone fixation frame for use
in supporting bones on opposite sides of a fracture. (Specification, Paragraphs 1
and 2). Depending on the configuration required, the frame may require different
angles. Thus, some clamps are articulated to provide a range of angles as may be
determined necessary by a surgeon. (Id.). The claims of the instant invention
relate to such a clamp.
Claim 1 is the only independent claim on appeal and is reproduced below.
1. An apparatus for engaging first and second bone fixation elements
in a bone fixation frame, comprising:
a first clamp structure, having at least two bores for engaging at
least two first bone fixation elements, having a first spherically
contoured bearing surface;
a second clamp structure, having at least one bore for engaging
at least one second bone fixation element, having a second
spherically contoured bearing surface seated in sliding contact
with the first bearing surface; and
a spring-loaded mechanism operative to apply a spring force
moving the bearing surfaces toward one another to resist pivotal
movement of the clamp structure relative to each other.

Appeal
Applica

Figure 1

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2012-0016
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.S.C. §102
he Examin
echanism
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21
6,051
ative of th
Figure 13
ns being r
7, 8, 11, 1
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, 6, and 9 s
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iew of Hu
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ard (U.S. P
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Appeal 2012-001621
Application 11/116,051

4

Examiner found that the spring loaded mechanism is operative either in a first
condition where the locking ring 16 is loose so the mechanism applies only the
spring force or in a second condition where the locking ring 16 is tight so the
mechanism applies an additional force. (Id.)
Figure 1 of Howard is reproduced below for ease of reference.

Figure 1 of Howard describes a cross-sectional view of
an embodiment of the fixator.
In response, the Appellants urge that Howard “does not show or suggest a
spring mechanism moving the socket and spherical head toward one another to
resist pivotal movement” as recited in claim 1. (Appeal Brief, pages 4-6).
According to the Appellants’ counsel, the spring 24 of Howard is not comparable
to the spring loaded mechanism as claimed because the spring 24 does not operate
to move the socket 10 and the spherical head 12 toward one another. (Appeal
Brief, pages 5-6).
Appeal 2012-001621
Application 11/116,051

5

Specifically, counsel for the Appellants argues that “[t]he locking ring 16 is
threadedly movable . . . to lock push the head 12 against the socket 10 to lock the
arm 14 and the insert 8 relative to one another” and that “insert 8, against which
the spring 24 abuts, is immovable such that the spring 24 cannot move the socket
10 of the insert 8 against the head 12 of the arm 14.” (Appeal Brief, page 5).
Undoubtedly, there is a spring 24 pressing against insert 8 containing a
spherical recess. Moreover, the insert 8 is immovably pressed against an internal
lip of member 4, which is the gravamen of the Appellants’ argument. The ring 16
screws down on the ball 12 and holds the mating surfaces against insert 8 and
insert 8 against the lip of member 4. It does not appear that lateral movement in
the fixed condition is possible or desired.
To that end, any pressure applied by the spring against insert 8 in the fixed
condition does not act to resist pivotal movement when the fixation device is
finally configured. As argued by the Appellants, insert 8 acts only to support
spring 24 which serves to make possible an axial compression/distraction cycle
automatically controlled by the patient’s own walking rhythm (Howard, 1:59-61),
which will cause the spring 24 to bear against said first member 8 of said universal
joint and against the guide means 48.(Howard, 2:8-12).
Indeed, this interpretation is furthered by an embodiment where “[s]ocket 10
can be an integral part of member 4.” (Howard, 2:61).
However, in the final rejection of December 22, 2010, the Examiner points
out that there are two conditions under which the Howard device functions. The
first condition is where the locking ring 16 is loose. In that first condition, the
spring mechanism does apply a force to urge the spherical surfaces together.
(Final Rejection, page 2, see also Answer page 5).
Appeal 2012-001621
Application 11/116,051

6

The Appellants do not address the first condition, wherein the locking ring is
loose. Rather, the Appellants focus on the second condition, where the ring is in
the locked position. As the claims are broad and do not limit the function of the
apparatus to the locked condition, we find no error in the Examiner’s conclusion
that the Howard reference is anticipatory of the claimed subject matter.
Accordingly, we affirm the rejection of claim 1.
Claims 2-4, 7, 8, 11, 12, and 14-16
These claims depend from claim 1 and were rejected using the same
rationale, and no separate argument has been provided for them. Accordingly, we
likewise affirm the rejection of these claims.
II. The Rejection of Claims 1, 5, 6, and 9 under 35 U.S.C. §103(a) as
being unpatentable over Ferrante et al (U.S. Publication No.
2003/0149429) in view of Huebner (U.S. Patent No. 5,624,440)
In summary, the Examiner has found that Ferrante describes an apparatus
having first and second clamp structures, first and second spherically contoured
bearing surfaces, and a spring to urge the surfaces together. (Final Rejection, page
3, last paragraph). Huebner is said to describe bone pins for external fixation. (Id.,
page 4, second paragraph). The Examiner concluded it would have been obvious
to substitute the pin of Huebner into the Ferrante device as bone fixing pins are
now commonplace for external fixators. (Id.)
In a manner similar to the anticipation rejection discussed earlier, the
Appellants assert that Ferrante does not show or suggest that the spring of Ferrante
applies a force which moves the bearing surfaces towards one another to resist
pivotal movement relative to one another. (Appeal Brief, page 7).
Ferrante Figures 2, 4, and 5 are reproduced below.
Appeal
Applica

2012-0016
tion 11/11
21
6,051
Ferran
an emb
Ferrante
an emb
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odiment o
Figure 4 is
odiment o
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is an expl
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ew of
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2012-0016
tion 11/11
he Examin
surface 11
res 2,4, an
2, 4, and
together.
lly contou
ed bearing
ism 80 is o
and the th
he Appell
lock a bon
king of the
d, drawing
21
6,051
Ferrante
another em
er has fou
0 (Figure
d 5). (An
5) is opera
(Id). The
red bearin
surface 88
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ird and fo
ants urge t
e pin ther
members
the spher
Figure 5 is
bodimen
nd that Fe
2) and a se
swer, page
tive to app
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g surface
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o apply a f
urth surfac
hat Ferran
ein (presu
relative to
ical head 8
8

a cross-se
t of the Fe

rrante desc
cond sphe
6). A sp
ly a sprin
has also f
in engagem
e Examin
orce to urg
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mably in g
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8 into pla
ctional vi
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ribes a fir
rically con
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ound that
ent with
er has fou
e the first
r (Figures
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and secon
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(Id).
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ef, page 8)
fastener 10
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.
0 is
ly,
Appeal 2012-001621
Application 11/116,051

9

it is urged that the spring 80 does not apply a force which moves the surfaces 94,
110 toward one another to resist pivotal movement. (Id.).
We agree with half of the Appellants’ argument. We do not see how spring
80 can force surfaces 94 and 110 together; that force appears to be applied solely
by fastener 100.
However, the error is harmless. The Appellants have not addressed the
Examiner’s finding of the spring 80 forcing the spherically contoured bearing
surface 88 against the inner spherically contoured bearing surface of planetary
member 94. It appears to us that the spring does force these surfaces together. As
the Examiner found, this will cause friction to resist movement (Examiner’s
Answer, page 8). Consequently, we disagree with the Appellants’ argument that
Ferrante does not describe a spring loaded mechanism operative to apply a spring
force urging the bearing surfaces to resist pivotal movement of the clamp
structures relative to each other.
We, therefore, affirm this rejection as well.

DECISION
The Appellants have not shown material error in the rejection of claims 1-4,
7, 8, 11, 12, and 14-16. Accordingly, the final rejection is—
AFFIRMED