Ex Parte O et al

Board of Patent Appeals and Interferences

Jun 23, 2009

10731173 (B.P.A.I. Jun. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SHAWN W. O’DRISCOLL and DAVID G. JENSEN
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Appeal 2009-000743
Application 10/731,173
Technology Center 3700
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Decided:1June 23, 2009
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Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
MELANIE L. McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a bone
fixation set. The Examiner has rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-000743
Application 10/731,173

STATEMENT OF THE CASE
Claims 3, 9-14, and 31-35 are pending and on appeal (App. Br. 1).
The claims have not been argued separately and therefore stand or fall
together. 37 C.F.R. § 41.37(c)(1)(vii). We will focus on claim 34, which
reads as follows:
34. A set for bone fixation, comprising: at least three bone plates
having different shapes, at least a pair of the bone plates being configured to
be secured to the same left or right half of a skeleton and including the same
color and at least one other of the bone plates being configured to be secured
to the other half of a skeleton and including a distinct color, thereby
providing a two-color system for distinguishing left bone plates from right
bone plates.
Claims 3, 12-14, and 31-35 stand rejected under 35 U.S.C. § 103(a) as
obvious over Henniges (US 6,592,578 B2, Jul. 15, 2003) (Ans. 3).
Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as obvious
over Henniges in view of Streli (US 4,565,193, Jan. 21, 1986) (Ans. 5).
Claim 11 stands rejected under 35 U.S.C. § 103(a) as obvious over
Henniges in view of Weaver (US 6,623,486 B1, Sep. 23, 2003) (Ans. 5).
ISSUE
The Examiner relies on Henniges for teaching “a system and method
for installing plates for general bone repair” and for teaching “to color code
the plates . . . for easy identification during a surgical procedure” (Ans. 3).
The Examiner finds that Henniges teaches “the claimed invention except for
the distinct color indicating a left or right half of the skeleton” (id. at 4).
However, the Examiner concludes that the claimed set of bone plates would
have been obvious “in order to minimize confusion during a surgical
procedure” (id.).
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Appeal 2009-000743
Application 10/731,173

Appellants contend that Henniges does not teach or suggest the bone
plate set of claim 34 (App. Br. 3-9; Reply Br. 1-4).
The issue is: Have Appellants shown that the Examiner erred in
concluding that the bone plate set of claim 34 would have been obvious?
FINDINGS OF FACT
1. Henniges discloses bioabsorbable plates for general bone repair
(Henniges, Abstract).
2. In particular, Henniges discloses “various examples of the
plates 10 . . . in different shapes and sizes, which lend themselves to use in
specific regions of the head or face or body” (id. at col. 5, ll. 38-42).
3. Henniges also discloses that it is a “feature of the present
invention, to color code the plates 10 for easy identification during a surgical
procedure” (id. at col. 6, ll. 44-47).
4. Specifically, Henniges discloses:
By manufacturing the plates 10 with a unique color associated
with each unique shape and size, confusion will be minimized
and time will be saved. The color-coding will allow a doctor or
nurse to identify and request the specific plate 10 and to better
locate and implant screws and plates in vivo.
(Id. at col. 6, ll. 49-55.)
PRINCIPLES OF LAW
Under 35 U.S.C. § 103, “the scope and content of the prior art are to
be determined; differences between the prior art and the claims at issue are
to be ascertained; and the level of ordinary skill in the pertinent art resolved.
Against this background, the obviousness or nonobviousness of the subject
matter is determined.” Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
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Appeal 2009-000743
Application 10/731,173

Obviousness “analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim.” KSR Int’l v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Instead, it proper to “take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” Id. “A person of ordinary skill is also a person of ordinary
creativity, not an automaton.” Id. at 421. The “suggestion test is in actuality
quite flexible and not only permits, but requires, consideration of common
knowledge and common sense.” Dystar Textilfarben Gmbh & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006).
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. The degree of teaching away will of
course depend on the particular facts; in general, a reference
will teach away if it suggests that the line of development
flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
ANALYSIS
Henniges discloses plates for bone repair having different shapes
(Findings of Fact (FF) 1-2). Henniges also discloses color coding the plates
“for easy identification during a surgical procedure” (FF 3). Henniges does
not specifically disclose a two-color system for distinguishing left bone
plates from right bone plates. However, we agree with the Examiner that
such a system would have been obvious in order to aid in the identification
of plates during surgery.
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Appeal 2009-000743
Application 10/731,173

We recognize that Henniges specifically discloses a color-coding
system in which “a unique color [is] associated with each unique shape and
size” (FF 4). However, we do not agree with Appellants that Henniges
teaches away from the claimed two-color system. In particular, although
Henniges discloses a system that is different from the claimed system,
Henniges does not indicate that other color-coding systems are “unlikely to
be productive.” In re Gurley, 27 F.3d at 553.
CONCLUSION
Appellants have not shown that the Examiner erred in concluding that
the bone plate set of claim 34 would have been obvious. We therefore
affirm the obviousness rejection of claim 34. Claims 3, 12-14, 31-33, and 35
fall with claim 34.
For the same reasons, Appellants have not shown that the Examiner
erred in concluding that dependent claims 9-11 would have been obvious
over Henniges in view of Streli or Weaver. We therefore also affirm the
obviousness rejections of these claims for the reasons stated by the
Examiner.
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
Ssc:
KOLISCH HARTWELL, P.C.
200 PACIFIC BUILDING
520 SW YAMHILL STREET
PORTLAND, OR 97204
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