Ex Parte Roman et al

Board of Patent Appeals and Interferences

Aug 28, 2012

11402319 (B.P.A.I. Aug. 28, 2012)

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.
11/402,319 04/11/2006 Shawn D. Roman 5490-000450 6330
94507 7590 08/29/2012
Harness Dickey & Pierce (Biomet)
5445 Corporate Drive
Suite 200
Troy, MI 48098
EXAMINER
WAGGLE, JR, LARRY E
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
08/29/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHAWN D. ROMAN and DEREK S. LEWIS
____________

Appeal 2010-008559
Application 11/402,319
Technology Center 3700
____________

Before LINDA E. HORNER, WILLIAM V. SAINDON, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-008559
Application 11/402,319

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-4, 10-11, 14, 16, 19-24 and 33-45, which are all of the
claims pending in the application, claims 5 and 17-18 having been
previously withdrawn from consideration. We have jurisdiction under 35
U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
Appellants’ invention is a medical device used in pectus excavatum
repair procedures. Generally, the device is comprised of an elongated pectus
bar anchored on either end by a stabilizer plate that is affixed to the patient.
Appellants’ invention is directed to a pectus bar stabilizer assembly
comprised of a plurality of individual components that are assembled to
form the complete stabilizer. After assembly, the components are fixedly
attached by welding. Spec. 9, para. [0041]. At least some of the
components are separable from one another to facilitate adjustment and/or
removal of the device from the patient. Spec. 2, para. [0004].
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A pectus bar stabilizer assembly comprising:
a first base part separable from a second base part and
defining a channel therebetween;
a pectus bar received by said channel; and
a retainer assembly including a stopping member and a
first rib, said stopping member fixed to said pectus bar and said
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Application 11/402,319

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first rib extending across said channel and preventing
displacement of said stopping member past said first rib to
retain said pectus bar in said channel.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Palmer US 4,082,332 Apr. 4, 1978
Nuss US 6,024,759 Feb. 15, 2000
Baccelli US 6,306,136 B1 Oct. 23, 2001
Abramson US 2004/0117016 A1 Jun. 17, 2004
Carlson US 2004/0116931 A1 Jun. 17, 2004

The following rejections are before us for review:
1. Claims 1-4, 10-11, 14, 20-24, 33-39 and 42-45 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Abramson, Baccelli,
and Palmer.
2. Claims 16 and 40 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Abramson, Baccelli, Palmer, and Carlson.
3. Claims 19 and 41 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Abramson, Baccelli, Palmer, and Nuss.

THE ISSUES
Appellants contend that the Examiner’s rejections are improper
because they rely on non-analogous art, namely Baccelli and Palmer, which
Appellants assert are unrelated to pectus bar assemblies. App. Br. 12.
Appellants contend that someone of ordinary skill in the art would not
find it obvious to modify the unified plate of Abramson to be separable into
a plurality of individual components. App. Br. 13.
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Application 11/402,319

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Appellants contend that someone of ordinary skill in the art would not
find it obvious to modify the prior art by adding a second “rib” to prevent bi-
directional axial movement of the pectus bar vis-à-vis the stabilizer plate, as
called for in dependent claims 10, 34, and 39. App. Br. 13-14; Reply Br. 5.

ANALYSIS
We begin by addressing Appellants’ argument that the Examiner
relied on non-analogous art. A reference qualifies as prior art for an
obviousness determination when it is analogous to the claimed invention.
Innovention Toys, LLC. v. MGA Entertainment, Inc., 637 F.3d 1314, 1321
(Fed. Cir. 2011). “Two separate tests define the scope of analogous art: (1)
whether the art is from the same field of endeavor, regardless of the problem
addressed, and (2) if the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320,
1325 (Fed.Cir. 2004). The “field of endeavor” test asks if the structure and
function of the prior art is such that it would be considered by a person of
ordinary skill in the art because of similarity to the structure and function of
the claimed invention as disclosed in the application.” Id. at 1325-26. “A
reference is reasonably pertinent . . . if it is one which, because of the matter
with which it deals, logically would have commended itself to an inventor's
attention in considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed.
Cir. 1992). “If a reference disclosure has the same purpose as the claimed
invention, the reference relates to the same problem, and that fact supports
use of that reference in an obviousness rejection.” Id. Whether a prior art
reference is “analogous” is a question of fact. Id. at 658.
Appeal 2010-008559
Application 11/402,319

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Appellants argue that Baccelli is unrelated to pectus bar assemblies.
App. Br. 12. Baccelli is directed to a mechanical orthopedic implant device.
The Examiner correctly observed that Baccelli shares structure and function
with the instant invention, namely, that both involve “bone securement.”
Ans. 7. Appellants have not pointed to error in the Examiner’s field of
endeavor finding. Baccelli qualifies as analogous art.
Appellants next argue that Palmer is “wholly unrelated to any type of
medical apparatus.” App. Br. 10. Appellants argue that the door security
problem addressed by Palmer is not “similar” to the instant invention
because the typical pectus bar arrangement may require removal of screws
that are difficult to access and remove due to surrounding tissue or bone
growth. Reply Br. 4. Appellants’ argument is unpersuasive.
At the outset, we note that the issue here, properly defined, is whether
Palmer is reasonably pertinent to the particular problem with which the
inventor is involved, Bigio, supra, not whether it is related, in a strict sense,
to medical devices. The problem addressed by the stopping member
assembly 484 of the present invention, shown in figures 18 and 19, is to
prevent axial movement of the pectus bar 12 in the channel 420 defined by
the stabilizer base parts. Appellants address this problem by inserting a
stopping member 94 into an aperture 30 in the pectus bar 12 that has a
hexagonal head that protrudes above the planar surface of the bar.
Appellants then place physical obstructions, namely “ribs,” on either side of
the stopping member, which prevent the stopping member from sliding back
and forth in the channel in an axial direction.
Appellants attempt to redefine the problem to be solved in terms of
disassembling the stabilizer plate and pectus bar assembly within the limited
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Application 11/402,319

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confines of the human body. Reply Br. 4.1 However, nothing in the claims
limit the situs of disassembly of the stabilizer plate to the interior of the
human body. Accordingly, Appellants’ argument that the problem to be
solved is limited to the particular context of the human body is unpersuasive.
A reference that has the same purpose as the claimed invention relates
to the same problem. Clay, supra, at 659. The purpose of Palmer is to
restrain the movement of one physical component, a bar, by confining it
between physical obstructions. We agree with the Examiner that restraining
the stopping member by confining it between two physical obstructions is a
simple mechanical invention. Ans. 7. As such, the Examiner was correct in
exploring a broad spectrum of prior art. “We find it not unreasonable in
cases such as this, involving relatively simple everyday-type mechanical
concepts, to permit inquiry into other areas where one of even limited
technical skill would be aware that similar problems exist”. In re Heldt, 433
F.2d 808, 812 (CCPA 1970). We are not persuaded by Appellants’
argument that Palmer is non-analogous art.
Next, we address Appellants’ argument that the one-piece stabilizer
plate of Abramson is not “separable” into two or more parts. App. Br. 13. .
The Examiner cited Baccelli as teaching that an orthopedic implant plate
could be assembled from a plurality of otherwise separable components.

1 i.e., “Appellants respectfully submit that one skilled in the art would
not characterize a ‘similar problem [to] exist’ in the door security apparatus
disclosed in Palmer. As discussed in the background of the pending
application, the typical pectus bar arrangement may require removal of
screws that are difficult to access and remove due to surrounding tissue or
bone growth for adjustment and/or removal of the pectus bar. A door does
not have tissue or bone growth.” Reply Br. 4.
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Ans. 7. Appellants’ sole challenge to the Examiner’s reasoning is that
Baccelli is non-analogous art, an argument that we have already rejected.
Finally, we address Appellants’ contention that someone of ordinary
skill in the art would not find it obvious to modify the prior art by adding a
second “rib” to prevent bi-directional axial movement of the pectus bar vis-
à-vis the stabilizer plate. App. Br. 13-14; Reply Br. 5. Appellants challenge
the Examiner’s position that employment of a second rib is a “mere
duplication” of the first rib. Reply Br. 5. We agree with the Examiner.
The Examiner aptly discussed figure 4 of Palmer, annotating
one feature that is correctly identified and characterized as constituting a
“rib” that physically obstructed the bar 16 from movement perpendicularly
away from the door. Ans. 5. The Examiner identified one “rib” and then
correctly observed that merely duplicating the same element to perform the
same purpose on the other side of the stopping member did not exceed the
exercise of mere ordinary skill. To illustrate the point, the Examiner could
just as easily have selected and identified threaded members 33 immediately
above and below bar 16 as “ribs” that inhibit the bar from movement in both
the up and down direction. Similarly, the Examiner could just as easily have
identified the top and bottom sides of the channel structure illustrated in
figure 4 as constituting “ribs” that inhibit the bar from movement in both the
up and down direction. The mechanical principal at issue here is so
rudimentary that Appellants’ solution is merely “the product not of
innovation but of ordinary skill and common sense.” KSR at 421.
Appeal 2010-008559
Application 11/402,319

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DECISION
We AFFIRM the Examiner’s rejection of all of the claims 1-4, 10-11,
14, 16, 19-24 and 33-45, which are all of the claims that have been presented
in this appeal.

AFFIRMED

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