[Copyrighted Material Omitted]
Luke Dauchot, Kirkland & Ellis, LLP, of Los Angeles, CA, argued for appellant. With him on the brief were Nimalka R. Wickramasekera and Benjamin A. Herbert. Of counsel on the brief was Mark Garscia, Christie, Parker & Hale, LLP, of Glendale, CA.
Monica B. Lateef, Associate Solicitor, United States Patent and Trademark Office, of Alexandria, VA, argued for appellee. With her on the brief were Nathan K. Kelley, Deputy Solicitor, and Amy J. Nelson, Associate Solicitor.
Before MOORE, LINN, and O'MALLEY, Circuit Judges.
LINN, Circuit Judge.
Lutz Biedermann and Jurgen Harms (collectively " Biedermann" ) appeal a decision of the Board of Patent Appeals and Interferences (" Board" ), now the Patent Trial and Appeal Board, affirming the rejection of claims 32, 33, 35-37 37, 39, and 48 of U.S. Patent Application No. 10/306,057 (" '057 Application" ) for obviousness, 35 U.S.C. § 103(a). Ex parte Biedermann, No. 2010-006113, Application No. 10/306,057, 2012 WL 3561836 (B.P.A.I. Aug. 16, 2012) (Decision on Request for Rehearing) (" Decision on Rehearing " ); Ex parte Biedermann, No. 2010-006113, Application No. 10/306,057, 2012 WL 1979400 (B.P.A.I. May 30, 2012) (Decision on Appeal) (" Decision on Appeal " ). Because the Board issued new grounds of rejection, this court vacates and remands for further proceedings.
A. The Patent Application
The invention in the '057 Application, shown in the below reproduced Figure 1, is generally directed to a bone screw with a shank (1) and a holding portion with a U-shaped cross-section (2) for a rod (100) that connects to other bone screws. The two legs of the holding portion (4 and 5) have an inner thread (7) that cooperates with the outer thread (8) of a locking element or screw (9) to hold the rod securely in place. The two flat flanks of the inner thread are at a 90° angle to the central axis of the holding portion. This results in the thread having a substantially rectangular cross-section. The flanks of the outer thread of the locking element are likewise at a 90° angle to the central axis of the locking element. These threads are sometimes referred to as square threads. The crest of the outer thread on the locking element is spaced from the root of the inner thread on the holding portion. The '057 Application describes these 90° -oriented flat threads as advantageously obviating the generation of outward radial forces. This avoids splaying of the holding portion's legs and eliminates the need for an additional element applied to the outside of the legs to avoid splaying. The application also describes these threads as advantageous because they are easy to produce.
Representative Claim 32 of the '057 Application recites:
32. A holding device comprising:
a shank portion;
a holding portion connected to the shank portion for holding a rod; and
a locking element to lock the rod in the holding portion;
wherein the holding portion comprises a recess on one end having a U-shaped cross-section and two open legs for receiving the rod, and an inner thread on the open legs;
wherein the locking element comprises an outer thread having two flanks, the outer thread cooperating with the inner thread, one of the two flanks of the outer thread facing the one end of the holding portion and the other of the two flanks of the outer thread facing away from the one end of the holding portion; and
wherein the inner thread comprises two flanks, one of the two flanks of the inner thread facing the one end of the holding portion and the other of the two flanks of the inner thread facing away from the one end of the holding portion, each of the two flanks of the inner thread enclosing an angle of 90° with a central axis (M) of the holding portion;
wherein a crest of the outer thread of the locking element is spaced from a root of the inner thread when the locking element is tightened such that an axial force acts on the holding device to prevent the legs from splaying.
Decision on Appeal, at *1.
B. The Examiner's Rejection
The examiner rejected claims 32, 33, 35-37, 39, and 48 of the '057 Application as being unpatentable over U.S. Patents No. 5,005,562 (" Cotrel" ) and No. 4,846,614 (" Steinbock" ) further in view of U.S. Patent No. 4,688,832 (" Ortloff" ) under 35 U.S.C. § 103(a).
Cotrel discloses a bone screw with a shank (1), a holding ...