Ex Parte FRAUENS

Patent Trial and Appeal Board

Jan 31, 2019

12273812 (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/273,812 11/19/2008 John T. FRAUENS
23448 7590 02/04/2019
Hultquist IP
P.O. Box 14329
RESEARCH TRIANGLE PARK, NC 27709
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
4594-101 9061
EXAMINER
WOLF, MEGAN YARNALL
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
02/04/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
hip@hultquistip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN T. FRAUENS
Appeal2018-002927 1
Application 12/273,812
Technology Center 3700
Before DANIEL S. SONG, BRETT C. MARTIN, and
GEORGE R. HOSKINS, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
1 The real party in interest is SoftJoint Corporation. App. Br. 1.
Appeal2018-002927
Application 12/273,812
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1 and 21. Claims 2-20 and 22 were canceled during
prosecution. See Claims App'x. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
THE INVENTION
Appellant's claims are directed "generally to an improved method for
the treatment of arthritis of joints and, more specifically, it concerns
restoring a joint with an artificial cartilage." Spec. 1, 11. 11-12. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An intra-articular device comprising:
a membrane shaped like a cap having a peripheral
geometry similar to that of a substantially unmodified head of a
bone for a joint to be restored, a cylindrical neck, and an open
end of the cylindrical neck sized to be applied over the bone
proximate the head, so that the open end can be stretched over
the head and neck of the bone and held in position on the bone
with the membrane interposed between the head and its
corresponding articular component of the joint, wherein said
membrane is made of a material selected to have a property of
absorbing the joint's own synovial fluid to thereby cause the
membrane to swell and have a viscoelastic property similar to the
body's own articular hyaline cartilage, wherein the membrane is
adapted for use on a femoral head of a femoral bone for a hip
joint, wherein said membrane has a balloon shape corresponding
to the geometry of the femoral head, and the diameter of its open
end of its cylindrical neck is smaller than the balloon shape of
the device, and wherein the membrane is made of a polyether-
urethane material.
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Application 12/273,812
REFERENCES
The references relied upon by the Examiner in rejecting the claims on
appeal are:
Black
Steinberg
Myung
us 3,053,251
US 2005/0085915 Al
US 2010/0010114 Al
REJECTIONS
The Examiner made the following rejections:
Sep. 11, 1962
Apr. 21, 2005
Jan. 14,2010
Claims 1 and 21 stand rejected under 35 U.S.C. § 102( e) as being
anticipated by Myung. Final Act. 3.
Claims 1 and 21 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Steinberg and Black. Final Act. 4.
ANALYSIS
Anticipation
Appellant asserts that Myung is not prior art because Appellant has
antedated it, pointing to Figure 4 of the present application's drawings,
which is the same cap disclosed in a letter and drawings dated February 26,
2007 that is an agreement to develop the invention, with Myung having an
earliest filing date in 2008. See, e.g., Reply Br. 3-5. The Examiner appears
to concede that Appellant's July 19, 2007 proposal, also submitted to the
USPTO with the February 26, 2007 letter, is sufficient evidence to prove
that "Appellant conceived of polyether urethane as a material for the
invention prior to Myung," but then asserts that the evidence does "not
establish conception of the whole invention, including the cylindrical neck."
Ans. 3-5. As Appellant points out, the Examiner appears to focus on
Figure 3 of Appellant's prior Application Number 09/421,397 (filed on
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Appeal2018-002927
Application 12/273,812
February 8, 2001, "the '397 Application) while not addressing Figure 5
thereof, which is also the same as in the development letter. The Examiner
does not appear to address this earlier drawing in determining whether the
cylindrical neck is shown.
We agree with Appellant that Figure 5 of the '397 Application
sufficiently discloses possession of the claimed cylindrical neck in situ on
the hip at least as of February 26, 2007, and that Figure 4 of the present
application merely depicts the same cap in a stand-alone drawing before it is
placed on the hip. Although there is no direct priority of the present
application to the '397 Application, given that the Examiner has accepted
the evidence as establishing prior conception sufficient to antedate Myung as
to the materials based on the July 19, 2007 proposal, we agree with
Appellant that the February 26, 2007 letter discloses the claimed cylindrical
neck at least as of 2007 and thus all aspects of claim 1 were shown to be in
Appellant's possession in the same time frame of early to mid-2007.
Accordingly, we do not sustain the anticipation rejection of claim 1.
Because claim 21 depends from claim 1, we likewise do not sustain the
anticipation rejection of claim 21.
Obviousness
The Examiner finds that Steinberg teaches all of the limitations of
claim 1, but fails to teach the inclusion of a cylindrical neck. Final Act. 4--5.
The Examiner finds that "Black teaches an intra-articular device, in the same
field of endeavor, wherein a cylindrical portion 14b is integral with and
extends from a semi-spherical portion of a femoral cap." Id. at 5. The
Examiner then concludes obviousness, stating that one of skill in the art
would have "modif-1ied] the shape of the semi-spherical cap of Steinberg to
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Application 12/273,812
additionally include a cylindrical neck as taught by Black in order to further
secure the cap to the bone." Id.
Appellant argues that this combination is improper because Black
does not utilize the neck for securement as it has inward facing prongs that
firmly clamp the rigid metal cup to the femur. We further note that the hip
cap of Black, while semi-spherical on the outside with a narrowed neck, is
actually a straight cylindrical chamber on the inside. This is mainly due to
the fact that, as shown in Figure 5, Black's hip cap is intended to be placed
over a femoral cap that has been reamed to fit inside the cylindrical
chamber. As Appellant notes, this is because Black's objective is "to
provide an improved cup prosthesis which can be used to rebuild the head of
the femur when it has been broken up or crushed." App. Br. 16 (citing
Black col. 1, 11. 54 - 57). Given that there is no longer a bulbous portion of
the hip bone, Black's hip cap actually performs no securement function and
requires the tabs in order to secure it in place.
This is unlike Appellant's invention, in which a flexible membrane is
stretched and placed over an existing, mostly intact hip bone, which has a
spherical end and a narrowed area adjacent to the ball joint. In Appellant's
invention as claimed, the narrowed neck works in conjunction with the
wider balloon portion so as to actually secure the cap in place. Accordingly,
we agree with Appellant that the Examiner's combination is deficient as the
suggested combination fails to result in the claimed device.
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DECISION
For the above reasons, we REVERSE the Examiner's decision to
reject claims 1 and 21.
REVERSED
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