EXAMINER’S NEW MOTIVATION TO COMBINE REFERENCES MAY CONSTITUTE “NEW GROUND OF REJECTION,” PREVENTING FINALITY OF THE REJECTION

Rob Raheja | December 18, 2013

in re Lutz Biedermann – CAFC Opinion

Decided October 18, 2013

Panel:  Linn (Opinion author), Moore and O’Malley

Summary

While the Examiner’s motivation to combine prior art references in his rejection was the efficiency of a square thread, the principal reason the Board affirmed the combination of these references was the use of square threads to avoid splaying. The Federal Circuit held that these are different grounds of rejection, and form the bases or underpinnings of different rejections. Therefore, the Federal Circuit found that because the Board made new findings and adopted different reasons to support a new ground of rejection, it had improperly deprived the applicant of both notice and an opportunity to respond.

Details

This is an appeal from 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, and denying the applicant’s request for rehearing based on a new ground of rejection.

Representative Claim 32 of the ’057 Application recites:

32. A holding device comprising:

a shank portion (1, figure below);

a holding portion (2) connected to the shank portion (1) for holding a rod (100); and

a locking element (9) to lock the rod (100) in the holding portion (2);

wherein the holding portion (2) comprises a recess on one end having a U-shaped cross-section and two open legs (4, 5) for receiving the rod (100), and an inner thread (7) on the open legs (4, 5);

wherein the locking element (9) comprises an outer thread (8) having two flanks, the outer thread (8) cooperating with the inner thread (9), one of the two flanks of the outer thread (8) facing the one end of the holding portion (2) and the other of the two flanks of the outer thread (8) facing away from the one end of the holding portion (2); and

wherein the inner thread (7) comprises two flanks, one of the two flanks of the inner thread (7) facing the one end of the holding portion (2) and the other of the two flanks of the inner thread (7) facing away from the one end of the holding portion (2), each of the two flanks of the inner thread (7) enclosing an angle of 90° with a central axis (M) of the holding portion;

wherein a crest of the outer thread (8) of the locking element (9) is spaced from a root of the inner thread (7) when the locking element (9) is tightened such that an axial force acts on the holding device (2) to prevent the legs from splaying.

 

 The issue on appeal was whether the Board properly relied on the same articulated reasoning and factual underpinnings as the Examiner in rejecting Biedermann’s claims, or whether the Board improperly made new findings and adopted different reasons to support a new ground of rejection, thereby depriving Biedermann of both notice and an opportunity to respond.

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).

The Examiner found that Cotrel discloses all elements of the claimed invention 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. Also, the Examiner noted that spacing between the crest of the outer thread and the root of the inner thread as recited in the claim would be inherent in a device combining Cotrel and Steinbock. In the alternative, the Examiner relied on the Ortloff reference to teach the feature: a crest of the outer thread (8) of the locking element (9) is spaced from a root of the inner thread (7).

As shown in figure below, Cotrel discloses a bone screw with a shank (1), a holding portion with internally threaded legs, and a locking element or screw (8) to hold a rod (3).

 

As for the additional limitation of each of the two flanks of the inner thread (7) enclosing an angle of 90° with a central axis (M) of the holding portion, the Examiner relied on Steinbock, stating:

It is noted that there are a limited number of thread profile choices available to a person of ordinary skill in the art for providing a threaded connection. In this regard it is noted that Steinbock teaches different types of threads with a  square thread being the most efficient for load transfer (col. 1, lines 14-44).

Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have provided threads with a square profile on the Cotrel legs, as taught by Steinbock, for efficient load transfer.

That is, the principal reason the Examiner combined the square thread of Steinbock with the device of Cotrel was that there were a limited number of threads that could be used and that the use of a square thread would be the most efficient.

In analyzing the propriety of the Examiner’s rejection, the Board discussed the threads shown in Cotrel and  Steinbock and also made reference, for the first time, to Erik Oberg et al., Machinery’s Handbook (Christopher J. McCauley et al. eds., 26th ed. 2000) (“Machinery’s Handbook”). The Board did not reach Ortloff and instead relied on the Examiner’s alternative inherency rationale with respect to the spacing.

The Federal Circuit found that the Board did not rely on the Examiner’s efficient load transfer rationale to combine Cotrel and Steinbock, and instead issued a new ground of rejection by adopting a rationale based on newly found facts relating to the avoidance of splaying. In particular, the Board found the threadform of Cotrel combinable with the square threadform of Steinbock based on the new facts that: (a) Steinbock grouped square and buttress threads; (b) the Machinery’s Handbook associated saw-tooth and buttress threads; (c) Cotrel’s threads were saw-tooth threads that avoid splaying; and (d) square threads would similarly avoid splaying.

Also, the Federal Circuit found that the Board’s use of the Machinery’s Handbook to associate buttress and saw-tooth threads was unwarranted, as there was no clear gap in the Examiner’s reasoning that would need to be filled by making this association between saw-tooth and buttress threads, particularly since Cotrel’s threads appear irrelevant to the Examiner’s reasoning.  Rather, the association between saw-tooth and buttress threads played an important role, not a minor role, in the Board’s new reasoning by providing the link to associate Cotrel’s threads with one of the threadforms grouped in Steinbock. The Machinery’s Handbook, thus, was used by the Board as part of a new ground of rejection. The Federal Circuit found the Board’s use of machinability of square threads as another reason to combine the references similarly created another new ground of rejection.

The Federal Circuit found that the Board made new findings and adopted different motivation to support a new ground of rejection, thus depriving Biedermann of both notice and an opportunity to respond. As such, the Federal Circuit vacated the Board’s decision and remanded for further proceeding.

Prosecution Tips

As a general rule, a rejection in a second or later Office Action may not be final if it contains a new ground unless the new ground of rejection resulted from the claims being amended or information submitted in an information disclosure statement. As such, the Examiner’s reasoning given under the response to arguments section of a Final Office Action and in the continuation sheet of an Advisory Action should be carefully reviewed for a new ground of rejection to ensure that the applicant’s due process rights (notice and opportunity to respond) are not violated.

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