In re Lutz Biederman and Jurgen Harms

Docket No. 2013-1080

October 18, 2013

Brief summary: Board decision affirming Examiner’s obviousness rejection vacated and remanded because “[t]he Board…found new facts as the basis for concluding that the combination [of references] would have been obvious”.

Summary: Biedermann appealed PTO Board decision affirming the rejection of claims of their U.S. 10/306,057 related to a bone screw for obviousness. The FC panel vacated and remanded the decision because the Board issued new grounds of rejection. The claims were originally rejected as obvious over US 5,005,562 (Cotrel), US 4,846,614 (Steinbock) and US 4,688,832 (Ortloff). The Examiner concluded that the first two references disclosed every limitation “except for the orientation of the two flanks of the inner thread enclosing an angle of 90° with respect to the central axis of the holding portion”, which was alleged to be disclosed by Ortloff (alleged to teach “different types of threads with a square thread being the most efficient for load transfer”) or to be “inherent in a device combining Cotrel and Steinbock”. The Board discussed the Cotrel and Steinbock references, but also referred to a new reference (Oberg), and “relied on the examiner’s alternative inherency rationale with respect to the gap” left by Cotrel and Steinbock (and, therefore, did not address Ortloff). Biedermann requested a new hearing for several reasons but the Board refused, stating “that it did not change the thrust of the rejection and instead ‘merely relied upon a reference akin to a technical dictionary to confirm the meaning of terms used in the references before us’” (“’[t]he only fact detrimental to [Biedermann] based upon this extrinsic evidence was confirming that the ‘saw- tooth’ and ‘buttress’ threading described by Cotrel and Steinbock, respectively, referred to essentially the same thing,’ of which Biedermann was ‘already aware.’”) The FC panel reviewed the obviousness standard and explained that “rejections on obviousness grounds cannot be sustained by mere conclusory statements” (citing KSR) (“The articulated reasoning and factual under-pinnings of an examiner’s rejection are, thus, essential elements of any stated ground of rejection to which applicants are entitled to notice and a fair opportunity to respond.”) It further explained that, “[w]hile ‘[t]he Board need not recite and agree with the examiner’s rejection in haec verba to avoid issuing a new ground of rejection, [m]ere reliance on the same statutory basis and the same prior art references, alone, is insufficient to avoid making a new ground of rejection when the Board relies on new facts and rationales not previously raised to the applicant by the examiner” (In re Leithem, FC 2011). Here, it was concluded that “[t]he Board…found new facts as the basis for concluding that the combination of Cotrel and Steinbock would have been obvious”. The Board decision was therefore vacated and remanded.

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