Ex Parte Voisard et al

Patent Trial and Appeal Board

Aug 29, 2017

13233702 (P.T.A.B. Aug. 29, 2017)

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.
13/233,702 09/15/2011 Cyril Voisard 10139/22902 (T01420US1) 7195
76960 7590
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
EXAMINER
MAHMUD, ATIYA S
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
08/30/2017 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 CYRIL VOISARD,
ROBERT FRIGG, and GOETZ THORWARTH
Appeal 2016-005610
Application 13/233,7021
Technology Center 3700
Before FRANCISCO C. PRATS, JOHN G. NEW, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims to a kit for
forming bone plates for stabilizing bone fractures. The Examiner rejected
the claims as anticipated and for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The following rejections are before us for review:
(1) Claims 19, 22-24, and 26, under 35 U.S.C. § 102(b), as
anticipated by Wang ’ 1812 (Ans. 2—3);
1 As to the real party in interest, Appellants state that “[tjhis application is
assigned to DePuy Synthes Products, Inc. Johnson & Johnson, Inc. is the
parent corporation of DePuy Synthes Products, Inc.” Appeal Br. 2.
Appeal 2016-005610
Application 13/233,702
(2) Claims 19, 20, 24, and 27—33, under 35 U.S.C. § 102(b), as
anticipated by Wang ’3432 3 (Ans. 3—6); and
(3) Claim 25, under 35 U.S.C. § 103(a), for obviousness over Wang
’181 and Sears4 (Ans. 6—7).
Claims 19, 24, and 32, the independent claims on appeal, illustrate the
appealed subject matter and read as follows (Appeal Br. 9—12)5:
19. A kit for forming a bone plate, comprising:
a first implant segment formed of a first material;
a second implant segment formed of a second material;
and
a plurality of layers of an intermetallic material disposed
between the first and second segments;
wherein the first and second implant segments are
configured to be metallurgically welded to one another.
24. A kit for bone fixation, comprising:
a first bone implant segment formed of a first material;
a second bone implant segment formed of a second
material; and
a plurality of layers of an intermetallic material disposed
between the first and second segments;
wherein the first and second implant segments are
configured to be metallurgically welded to one another to form
a hybrid bone plate.
32. A kit for forming a bone plate, comprising:
a first implant segment formed of a first material;
2 US 2008/0272181 A1 (published Nov. 6, 2008).
3 US 2005/0082343 A1 (published Apr. 21, 2005).
4 US 6,572,379 B1 (issued June 3, 2003).
5 Appeal Brief entered September 24, 2015.
2
Appeal 2016-005610
Application 13/233,702
a plurality of second implant segments, each being
formed of a material different than the first material, each of the
second implant segments being configured to provide one of a
different configuration and a different material property to a
hybrid bone plate formed when joined to the first implant
segment;
a plurality of layers of an intermetallic material disposed
between the first implant segment and a selected one of the
second implant segments at a joint at which the first implant
segment and the selected one of the second implant segments
are metallurgically welded to one another to form a hybrid bone
plate.
DISCUSSION
Because both of the Examiner’s rejections for anticipation involve
essentially the same issues, we discuss them together.
In rejecting independent claims 19 and 24 as anticipated by Wang
’181, the Examiner identified elements “20a” and “20b” of Wang ’181 as the
first and second implant segments required by those claims. Ans. 2—3.
In rejecting independent claims 19, 24, and 32 as anticipated by Wang
’343, the Examiner identified elements “20a” and “20b” of Wang ’343 as the
first and second implant segments required by those claims. Id. at 3—6.
The Examiner contends that “[bjroadly speaking, an ‘implant
segment’ need only be a ‘segment’ capable of implantation, and does not
possess any inherent structure.” Id. at 10.
We are not persuaded. Rather, we agree with Appellants that the
Examiner has not shown sufficiently that the elements in Wang ’181 and
’343 identified by the Examiner may reasonably be considered to be implant
segments encompassed by claims 19, 24, and 32.
3
Appeal 2016-005610
Application 13/233,702
During examination, the PTO must interpret terms in a claim using
“the broadest reasonable meaning of the words in their ordinary usage as
they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may
be afforded by the written description contained in the applicant’s
specification.” In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997).
In the present case, independent claims 19 and 32 each recite “[a] kit
for forming a bone plate.” Appeal Br. 9, 12. Independent claim 24 similarly
recites a “kit for bone fixation.” Id. at 10. Each of the claimed kits includes
first and second “implant segments].” Id. at 9-12.
As explained in the Specification, Appellants’ invention “generally
relates to a method for joining two or more segments of a surgical implant to
one another. In particular, the present invention relates to a multi-part
implant (e.g., an intramedullary nail, a screw or osteosynthesis plate) formed
of several components connected to one another by a metallurgical weld.”
Spec. 12. The Specification explains that such implants are useful “for the
stabilization of fractures.” Id. 13.
It may be true that the preambles of claims 19, 24, and 32 merely
provide an intended use for the claimed implant segments. The Examiner
does not persuade us, however, that because the term “‘implant segment’”
encompasses a broad variety of shapes and configurations, the term “does
not possess any inherent structure.” Ans. 10.
To the contrary, when giving claims 19, 24, and 32 their broadest
reasonable interpretation in light of the Specification, an ordinary artisan
would understand that the claimed implant segments must have a structure
that allows them to be used as part of a kit that forms a device which may be
4
Appeal 2016-005610
Application 13/233,702
implanted into a patient to stabilize a fracture. See In re Schreiber, 128 F.3d
1473, 1478—79 (Fed. Cir. 1997) (holding prior art apparatus anticipatory
because examiner had shown structure and size of device rendered it
inherently capable of performing the claimed intended use).
The Wang references do not describe components 20A and 20B,
identified by the Examiner as corresponding to the claimed implant
segments, as having any particular size or structure. Rather, the Wang
references refer to those elements as simply “components 20A and 20B”
(Wang ’1811 52), which are described only inasmuch as they may be made
of metal or ceramics joined together using the inventive reactive foil
technique described therein (id. ]Hf 52—54). See also Wang ’343 ]Hf 43—45
(similar disclosure). Indeed, the Examiner identifies no disclosure in the
Wang references relating to bone implants. Because the elements in the
Wang references identified by the Examiner as corresponding to the implant
segments of claims 19, 24, and 32 are not described as having any particular
size or structure, we are not persuaded that the Examiner has shown
sufficiently that those prior art elements are capable of the intended use
required by those claims.
The Examiner contends that “one could form a bone plate or implant
for bone fixation using the components and methods disclosed by Wang, if
so desired.” Ans. 8. The Examiner’s contention, however, ignores the fact
that, for a reference to anticipate a claim “[ejvery element of the claimed
invention must be literally present, arranged as in the claim.'1'’ Richardson v.
Suzuki Motor Co., Ltd., 868 F.2d 1226, 1236 (Fed. Cir. 1989) (emphasis
added). That one could modify the described components in the Wang
references to form an implant segment suitable for use in a kit for forming a
5
Appeal 2016-005610
Application 13/233,702
bone plate, as required by claims 19, 24, and 32, does not demonstrate that
the references describe such an implant segment for the purposes of
§ 102(b). See id.
In sum, for the reasons discussed, we agree with Appellants that the
Examiner has not shown sufficiently that the Wang references describe kits
having each of the elements required by independent claims 19, 24, and 32.
We, therefore, reverse the Examiner’s rejection of those claims, and their
dependents, as anticipated by Wang ’181 and ’343.
In rejecting claim 25, which depends from claim 24 discussed above,
as obvious over Wang ’181 and Sears, the Examiner relied on the teachings
discussed above in Wang ’181, and cited Sears as evidence of the
obviousness of including instructions, as recited in claim 25, in the kit
described by Wang ’181. Ans. 6—7. Because Sears does not remedy the
deficiencies, discussed above, of Wang ’181 as to claim 24, we reverse this
rejection as well.
SUMMARY
For the reasons discussed, we reverse each of the Examiner’s
rejections.
REVERSED
6