Ex Parte PLECKO et al

Patent Trial and Appeal Board

Dec 28, 2015

12700225 (P.T.A.B. Dec. 28, 2015)

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.
12/700,225 02/04/2010 Michael PLECKO 10139/17403 (T01045US1) 7439
76960 7590 12/28/2015
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
EXAMINER
KU, SI MING
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
12/28/2015 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 MICHAEL PLECKO, MARTIN FELDER, and
ANDREAS SIGRIST
____________

Appeal 2013-007158
Application 12/700,225
Technology Center 3700
____________

Before EDWARD A. BROWN, BRANDON J. WARNER, and
RICHARD H. MARSCHALL, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Michael Plecko et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1–8. Appeal Br. 1.1, 2 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The invention relates to “a device for guiding a drill or a reamer co-
axially along a guidewire inserted into a bone such that an opening may be

1 The Appeal Brief identifies the real party in interest as Synthes USA,
LLC. Appeal Br. 2.
2 Claims 9–15 are withdrawn. Final Act. 1 (Office Action Summary).
Appeal 2013-007158
Application 12/700,225

2
formed in the bone at a desired angle and position to accommodate the
insertion of a fixation device therethrough.” Spec. para. 2. Claim 1 is
reproduced below
1. A device for guiding a drilling tool to form an opening in
a bone, comprising:
a body extending from a distal end to a proximal end, the
body including a lumen extending therethrough, the lumen
being sized and shaped to slidably accommodate a guidewire
therein; and
a plurality of arms extending therefrom about the lumen
with a gripping surface of each arm being spaced radially from
an axis of the guide wire lumen by a distance corresponding to
a thickness of a guidewire to be received therein, the gripping
surfaces gripping the guidewire to maintain a portion thereof
extending from the lumen along the axis of the lumen.
REJECTION
Claims 1–8 are rejected under 35 U.S.C. § 102(b) as anticipated by
Torrie (US 5,667,513, issued Sept. 16, 1997).
ANALYSIS
Claim 1 recites, inter alia, “a plurality of arms extending therefrom
about the lumen with a gripping surface of each arm being spaced radially
from an axis of the guide wire lumen by a distance corresponding to a
thickness of a guidewire to be received therein.” (Emphasis added.) The
Examiner finds Torrie discloses a device comprising a body 18 including a
lumen and plurality of arms (fingers 23–26), each having a gripping surface
27. Final Act. 2 (citing Torrie, Fig. 1). The Examiner finds Torrie’s device
is able to have a distance corresponding to a thickness of a
guidewire to be received therein, the gripping surfaces (27)
gripping the guidewire to maintain a portion thereof extending
from the lumen along the axis of the lumen because this is
considered functional language as the guidewire has not been
positively claimed.
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Application 12/700,225

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Id. at 2–3 (emphasis added). The Examiner also finds, “Torrie’s device is
capable of being sized and shaped to slidably accommodate a guide wire
therein because the guide wire has not been positively recited.” Ans. 3
(emphasis added). According to the Examiner, “Torrie’s device has a lumen
capable of receiving a guide wire because guide wires may come in a variety
of sizes (i.e. thicknesses, diameters, lengths, enlarged heads) for patient
specific cases.” Id. (emphasis added).
Appellants contend Torrie does not disclose the limitation of “a
gripping surface of each arm being spaced radially from an axis of the guide
wire lumen by a distance corresponding to a thickness of a guidewire to be
received therein,” as claimed. Appeal Br. 4. Appellants acknowledge Torrie
discloses a K-wire 76 or guide wire (id. (citing Torrie, col. 2, ll. 64–66, col.
6, l. 17)), but assert gripping fingers 23–26 are spaced a distance
corresponding to a thickness of anchor 63, not K-wire 76 (id. (citing Torrie,
col. 5, ll. 13–15)). In this regard, Appellants note Figure 23 of Torrie shows
the delivery apparatus in use, with soft tissue anchor 63 accommodating K-
wire 76. Id. According to Appellants, because the thickness of anchor 63 is
significantly greater than that of K-wire 76 or a guide wire, the spacing of
gripping fingers 23–26 must be significantly larger than the spacing required
to correspond to the thickness of K-wire 76 or a guide wire, and therefore,
gripping fingers 23–26 are not arranged with a spacing corresponding to the
thickness of a guide wire. Id. at 4–5. Appellants also contend that gripping
fingers 23–26 “are always dimensioned and spaced to correspond to the soft
tissue anchor 63.” Id. at 6 (citing Torrie, col. 5, ll. 13–15). Consequently,
the spacing of gripping fingers 23–26 must always be greater than the
thickness of K-wire 76 or a guidewire. Id.
Appeal 2013-007158
Application 12/700,225

4
Appellants’ contentions are persuasive. The Examiner does not make
a finding that Torrie discloses a guide wire that is received and gripped by
gripping fingers 23–26. Rather, Torrie discloses gripping fingers 23–26 grip
soft tissue anchor 63, as shown in Figure 3. As shown in Figure 18 of
Torrie, soft tissue anchor 63 includes a longitudinal bore 66 extending from
its top to its bottom. See also Torrie, col. 5, ll. 65–67. Figure 23 of Torrie
shows K-wire 76 extending through soft tissue anchor 63 and into tissue
layer 79. Figures 3, 18, and 23 show the thickness of anchor 63 is
significantly greater than that of K-wire 76.
As noted above, the Examiner finds Torrie’s device “is capable of
being sized and shaped to slidably accommodate a guide wire therein.” Ans.
3. To the extent the Examiner acknowledges Torrie’s device would require
structural modifications to be able to grip K-wire 76, the Examiner also
acknowledges Torrie’s device does not include all limitations of claim 1.
Although we agree with the Examiner’s position that gripping fingers 23–26
can accommodate K-wire 76 between them, we agree with Appellants that
Torrie does not disclose gripping fingers 23–26 “being spaced radially from
an axis of the guide wire lumen by a distance corresponding to a thickness
of a guidewire to be received therein, the gripping surfaces gripping the
guidewire,” as claimed. (Emphasis added.) Consequently, Torrie’s
disclosed device would be unable to grip K-wire 76.
As to the Examiner’s position that “Torrie’s device has a lumen
capable of receiving a guide wire because guide wires may come in a variety
of sizes (i.e. thicknesses, diameters, lengths, enlarged heads) for patient
specific cases” (Ans. 3 (emphasis added)), the Examiner does not identify
any disclosure in Torrie that supports this finding. Nor does the Examiner
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provide any other evidence to support this finding. Moreover, Torrie’s
gripping fingers 23–26 must not only be capable of receiving a guide wire,
they must also be capable of “being spaced radially from an axis of the guide
wire lumen by a distance corresponding to a thickness of a guidewire,” such
that gripping fingers 23–26 grip the guidewire, as claimed. The Examiner
provides no evidence to show any such guide wire is known. Thus, for this
additional reason, the Examiner does not show by a preponderance of the
evidence that Torrie discloses all limitations of claim 1.
For the foregoing reasons, we do not sustain the rejection of claim 1,
and claims 2–8 depending from claim 1, as anticipated by Torrie.
DECISION
The decision of the Examiner to reject claims 1–8 is REVERSED.

REVERSED

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