Appeal 2007-1707
Application 10/335,597
aperture extending through the first and second opposed surfaces and
configured to expand and contract cannot be considered to be a ‘bone plate’”
(Reply Br. 5).
Although we recognize that Nelson’s sock retaining device is for a
different purpose than the claimed bone plate, it has the same structural
features as the claimed bone plate: a plate and a resilient aperture configured
to expand and contract. Based on the correspondence of structures between
Nelson’s device and the claimed invention, the Examiner put the burden on
Appellants1 to show that their bone plate is the same as Nelson’s sock
retaining device.
In our opinion, the Examiner has sound basis for asserting that the
claimed invention and Nelson’s sock retainer are the same, properly shifting
the burden to Appellants to show they are not.
The claim does not require the bone plate to have a particular size,
shape, or configuration. According to the Specification, a bone plate is
“[t]ypically . . . a rigid metal or polymeric plate positioned to span bones or
bone segments” (Specification 1: 27-28). Nelson’s sock retainer also can be
comprised of a polymeric material, polyethylene (Nelson, col. 2, ll.
38-49). Appellants argue that a “bone plate” is “well known to persons
skilled in the art,” but offer no explanation why Nelson’s sock retainer could
1 “[W]hen the PTO shows sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the burden of
showing that they are not. In re King, 801 F.2d 1324, 1327, 231 USPQ 136,
138 (Fed. Cir. 1986); In re Ludtke, 441 F.2d 660, 664, 169 USPQ 563, 566
(CCPA 1971).” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658
(Fed. Cir. 1990).
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