Ex Parte Hazebrouck et al

Patent Trial and Appeal Board

Nov 6, 2012

11860833 (P.T.A.B. Nov. 6, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte STEPHEN A. HAZEBROUCK, DAREN L. DEFFENBAUGH,
and PAUL S. RANDALL
__________

Appeal 2011-001149
Application 11/860,833
Technology Center 3700
__________

Before DONALD E. ADAMS, ERICA A. FRANKLIN, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

Opinion by ADAMS, Administrative Patent Judge.
Dissenting opinion by BONILLA, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of the new ground of rejection entered
August 2, 2012 (Opinion) rejecting claims 1-18 under 35 U.S.C. § 102(b) as
being anticipated by Ensign
1
and under 35 U.S.C. § 103(a) as unpatentable
over Ensign. The request for rehearing is granted and both rejections of
record are reversed.

1
Ensign et al., U.S. Pat. No. 6,379,388 B1, issued Apr. 30, 2002.

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CLAIM INTERPRETATION
The fixed-bearing knee prosthesis of Appellants‘ independent claims
1 and 8 comprises, inter alia, a retaining rail extending upwardly from the
upper surface of a platform and posteriorly away from a peripheral rail. In
addition, Appellants‘ independent claims 1 and 8 require:
(i) The retaining rail has a posterior width defined by the distance
between a lateral end and a medial end of a posterior-most edge
of the retaining rail,
(ii) The retaining rail has a length defined by the distance of an
imaginary center line segment extending from the anterior edge
of the tibial tray to a midpoint located along the posterior-most
edge halfway between the lateral end and the medial end, and
(iii) The posterior width of the retaining rail is less than, or equal
to, the length of the retaining rail.
Like Appellants‘ independent claims 1 and 8, the fixed-bearing knee
prosthesis of Appellants‘ independent claim 12 comprises, inter alia, a
retaining rail extending upwardly from the upper surface of a platform and
posteriorly away from a peripheral rail. Appellants‘ independent claim 12
differs from independent claims 1 and 8 by expressly requiring:
(i) A posterior-most edge having a lateral end and a medial end,
(ii) A lateral-most edge extending linearly from a first point on the
peripheral rail to the lateral end of the posterior-most edge,
and
(iii) A medial-most edge extending linearly from a second point on
the peripheral rail to the medial end of the posterior-most edge.
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Appellants‘ remaining claims depend directly or indirectly from one
of independent claims 1, 8, or 12.
ISSUE
Does Ensign support the rejection of Appellants‘ claimed invention as
anticipated and/or obvious?
FACTUAL FINDINGS (FF)
FF 1. For clarity we reproduce Ensign‘s figure 8 below:

―FIG. 8 is a plan view of the tibial plate of‖ Ensign‘s tibial prosthesis
(Ensign, col. 3, ll. 32).
FF 2. Ensign‘s ―tibial plate 16 includes a perimeter sidewall 32, which is
preferably continuous and preferably extends around the entire perimeter.
The sidewall 32 includes a posterior side-wall portion 34 … [and] an
anterior sidewall portion 36‖ (Ensign, col. 4, ll. 20-24).
FF 3. Ensign teaches mail projections 46 and 48 are ―[f]ormed on interior
portions of the tibial plate 16‖, wherein
rail 46 preferably comprises a ‗T‘ shape as shown, and may be
described herein as a first rail 46a and second rail 46b, or
alternatively a rail 46 having a first portion 46a and a second
portion 46b.

(Ensign, col. 4, ll. 30-34.)

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FF 4. Ensign teaches that ―assuming the prosthesis 10 is implanted in the
right knee of a patient, [the prosthesis 10 will have] a medial sidewall
portion 38 and a lateral sidewall portion 40‖ (id. at col. 4, ll. 24-26), for
clarity of orientation, we direct attention to Ensign‘s figure 3 reproduced
below:

―FIG. 3 is a perspective view of a tibial plate of [Ensign‘s] … tibial
prosthesis‖ (Ensign, col. 3, ll. 9-10).
FF 5. The Opinion states that
Examiner presents an annotated version of Figure 8 in Ensign,
where the annotated Figure 8 separates first rail (46a) from
second rail (46b) via a dashed line…. The Examiner states that
the annotated figure ―indicates where the posterior-most edge
would necessarily be located if the rail was formed as two
separate pieces, as implied by Ensign.‖

(Opinion 9.)

FF 6. For clarity, Examiner‘s annotation of Ensign‘s figure 8 is reproduced
below:

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Examiner annotates Ensign‘s figure 8 to illustrate an instance wherein
Ensign‘s ―rail (46) is formed of two separate pieces, the first rail (46a)
inherently has a lateral-most edge that extends linearly from a first point on
the peripheral rail (32) and a medial-most edge that extends linearly from a
second point on the peripheral rail (32)‖ (Ans. 8-9; Cf. Opinion 9).

ANALYSIS
Appellants’ independent claims 1 and 8:
Appellants recognize that ―the Board has agreed that the Examiner‘s
annotated FIG. 8 ‗indicates where the posterior-most edge would necessarily
be located if the rail was formed as two separate pieces, as implied by
Ensign‖ (Req. Rh‘g. 6; FF 5-6). However, as Appellants explain, ―[g]iven
Ensign‘s silence regarding the features, dimensions, and relationship of ‗the
first rail 46a‘ and ‗the second rail 46b,‘‖ a person of ordinary skill in this art
could draw a line at any location along Ensign‘s rail 46a, ―either anterior or
posterior of the line[] drawn‖ by Examiner (id. at 7). Therefore, Appellants
contend that ―[w]ithout the extrinsic evidence or analysis that would
unmistakably show where the rail portion 46a ends and where the rail
portion 46b begins, Ensign cannot be said to necessarily disclose that the rail
46a has the claimed … ‗posterior width‘‖ required by Appellants‘
independent claims 1 and 8 (id.). To be clear, depending on the choice of
location to separate Ensign‘s rail 46a from rail 46b, the posterior end of
Ensign‘s rail 46a could be straight or flared to a variety of degrees (id. at 10
(―the medial and lateral edges of the rail 46a would flare outward before
reaching the rail 46b, as illustrated in … [Ensign‘] drawing[s]‖)). Therefore,
this record fails to establish that the posterior width of Ensign‘s retaining rail
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46a, if or when separated from rail 46b, is less than, or equal to, the length
of the retaining rail as required by Appellants‘ independent claims 1 and 8.
Accordingly, we agree with Appellants‘ contention that Ensign does not
support a conclusion based on inherent anticipation (id. at 6). See In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999).
Similarly, because the evidence on this record fails to suggest (1) the
posterior width of Ensign‘s retaining rail 46a or (2) where to separate
Ensign‘s rail 46a from rail 46b, the choice of the precise location to separate
the rails in order to meet the limitations of Appellants‘ claimed invention is
an exercise in hindsight reconstruction. We also agree with Appellants‘
contentions regarding the substitution of Ensign‘s rail 46 with Ensign‘ rail
48 (Req. Rh‘g. 12).

Appellants’ independent claim 12:
As Appellants explain the evidence of record fails to establish that the
lateral-most and medial-most edges of Ensign‘s rail 46a extend linearly
from a first and second point, respectively, on the peripheral rail to the
posterior-most edge of the rail as required by Appellants‘ independent claim
12 (Req. Rh‘g. 11; Cf. FF 6). Upon reconsideration, we agree with
Appellants‘ contention that the edges of Ensign‘s rail 46a ―follow an arced
path from [a first and second point on] the peripheral rail‖ (id.; Cf. FF 1 and
6). For the foregoing reasons, we agree with Appellants‘ intimation that
Ensign does not support a conclusion based on inherent anticipation (id. at 9-
11). See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999).
Similarly, we find that absent some evidence on this record directing a
person of ordinary skill to extend the lateral and medial most edges of
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Ensign‘s rail 46a in linear direction from a first and second position on the
peripheral rail, the arbitrary selection of a particular location on Ensign‘s
device that may, upon further modification of Ensign‘s device, potentially
meet the requirements of Appellants‘ claimed invention is an exercise in
hindsight reconstruction (see generally Req. Rh‘g 16-17).
CONCLUSION OF LAW
Ensign fails to support the rejection of Appellants‘ claimed invention
as anticipated and/or obvious.
The rejection of claims 1-18 under 35 U.S.C § 102(b) as anticipated
by Ensign is reversed
The rejection of claims 1-18 under 35 U.S.C § 103(a) as obvious over
Ensign is reversed.
SUMMARY
Appellants‘ request for rehearing is granted. The rejections of record
are reversed.
GRANTED; REVERSED

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BONILLA, Administrative Patent Judge, dissenting
Many arguments raised by Appellants are identical to those addressed
by this panel previously. For example, Appellants continue to assert that
―Ensign‘s disclosure is directed to a single, integral rail 46 and there is
simply no discussion of forming the rail as two separate pieces‖ (App. Br. 8;
Second Req. Rh‘g. 2 (stating that there ―is simply no discussion in Ensign of
any alternative structure of the rail 46‖); see also, id. at 2-4, 5, 14-15). As
already discussed, Ensign does not support this position (see, e.g., First
Decision on Req. Rh‘g. 9).
Appellants also present certain new arguments in response to ―the new
grounds of rejection‖ (Second Req. Rh‘g. 1).
2
Appellants argue for the first
time now that ―Ensign does not indicate where the rail portion 46a might end
and where the rail portion 46b might begin,‖ and therefore Ensign ―does not
expressly disclose that the rail 46a has the claimed ‗posterior-most edge‘ or
the claimed ‗posterior width‘‖ (Second Req. Rh‘g. 5). Appellants further
assert that the Board erroneously concluded that Ensign ―inherently
discloses‖ such features (see, e.g., id. at 6; see also above Opinion, 5-6).
I respectfully disagree that Appellants are correct in their ―contention
that Ensign does not support a conclusion based on inherent anticipation‖
(above Opinion 6). Ensign states that ―rail 46 preferably comprises a ‗T‘
shape as shown [in Figure 8, for example], and may be described herein as a
first rail 46a and second rail 46b, or alternatively a rail 46 having a first
portion 46a and a second portion 46b‖ (Ensign, col. 4, ll. 30-35; see FF 3
above) (emphasis added). Ensign also teaches that ―46a preferably extends

2
Under 37 C.F.R. 41.52(a)(3), ―[n]ew arguments responding to a new
ground of rejection made pursuant to § 41.50(b) are permitted.‖
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linearly in the medial-lateral direction 96‖ (id. at col. 6, ll. 49-55) and ―46b
extends in a transverse and preferably orthogonal direction relative to the rail
portion 46a and by the rail 48‖ (id. at col. 7, ll. 6-11). In other words, an
ordinary artisan reading this reference would have understood that Ensign
expressly disclosed the option of 46a and 46b as two separate rails, and that
rails 46a and 46b differed in terms of direction they extended.
Especially as to independent claims 1 and 8, Appellants‘ argument
regarding where one could separate 46a and 46b (i.e., place the dotted line in
Figure 8) is a red herring. Ensign discloses an embodiment where rail 46a is
separate from rail 46b—otherwise designations of ―first rail 46a‖ and
―second rail 46b‖ in Ensign have no meaning (see FF 3 above). Looking at
Figure 8 (see FF 6 above), no matter where one precisely places a dotted
line, as long as rail 46a (which extends linearly) is distinct from rail 46b
(which extends in a traverse direction relative to rail 46a), 46a rail
necessarily meets (i) – (iii) as recited in claims 1 and 8. This is true
regardless of whether rail 46b is also present—as we have discussed
previously, claims 1 and 8 do not exclude an additional retaining rail, such
as rail 46b (First Decision on Req. Rh‘g. 10).
Relevant case law explains that ―speculative modeling premised on
unstated assumptions in prior art patent drawings cannot be the basis for
challenging the validity of claims reciting specific dimensions not disclosed
directly in such prior art.‖ Nystrom v. TREX Co., Inc., et al., 424 F.3d 1136,
1149 (Fed. Cir. 2005). In other words, ―where precise measurement or
considerable and careful evaluation of an illustration in a prior art reference
or in a prior application are required in order to demonstrate that the
illustration meets a dimensional limitation of a claim, findings or
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conclusions based upon such evaluation will be disfavored or assigned little
weight when the prior art reference lacks explicit disclosure that the
drawings are to scale or that the particular elements at issue possess some
particular dimensional relationship.‖ Ex Parte Matsunaga et al., 2012 WL
260128, *3 (BPAI 2012)
On the other hand, it is not the case ―that things patent drawings show
clearly are to be disregarded.‖ In re Mraz, 455 F.2d 1069, 1072 (CCPA
1972) (quoting In re Wilson, 312 F.2d 449, 454 (CCPA 1963)). A drawing
teaches all that it reasonably discloses and suggests to a person of ordinary
skill in the art. Ex Parte Matsunaga et al., 2012 WL 260128 at *1 (citing In
re Aslanian, 590 F.2d 911, 914 (CCPA 1979)). Consequently, when
determining whether a prior art figure drawing discloses a recited element in
a claim for the purposes of a patentability determination, it matters if the
element can be readily determined by observing the drawing. Ex Parte
Karapasha et al., 2012 WL 1980532, *3-*4 (BPAI 2012).
Here, one can readily see in Figure 8 of Ensign that rail 46a
necessarily meets (i) – (iii) of claims 1 and 8. In relation to retaining rail
46a, it is not a close call as to whether the ―posterior width of the retaining
rail is less than, or equal to, the length of the retaining rail‖ as recited in
claims 1 and 8. One does not need to measure anything to see that the width
of rail 46a is unequivocally smaller than its length in Figure 8. The only
way to have it otherwise would be (1) to include the entire length rail 46b
(i.e., extending in a perpendicular direction) as part of rail 46a—which
corresponds to a different embodiment, i.e., the ―T‖ shape, also disclosed in
Ensign—or (2) to eliminate rail 46a, i.e., the rail that ―extends linearly in the
medial-laterial direction‖ (Ensign, col. 6, ll. 50-52), thereby removing the
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―significantly increased surface area for resisting movement in the anterior-
posterior direction‖ (id. at ll. 52-54), contrary to what Ensign teaches in
relation to 46a and shows in Figure 8.
Thus, Ensign anticipates claims 1 and 8. Even assuming anticipation,
and particularly the inherency of (i) – (iii), is questionable, however, it is
difficult to see how Ensign fails to render these claims obvious. Ensign
clearly teaches an embodiment where rail 46a is separate from rail 46b. In
light of advantages taught by Ensign in relation to rail 46a as distinct from
rail 46b (see, e.g., Ensign col. 6, ll. 48-55, 61-67; col. 7, ll. 5-14), not to
mention what is shown in Figure 8, one would have been motivated to
generate a relevant prosthesis having the retaining rail recited in claims 1
and 8, i.e., a rail 46a where the posterior width of the retaining rail is less
than, or equal to, the length of the retaining rail.
Independent claim 12 is arguably a closer call in relation to
anticipation by Ensign, especially regarding inherency of (ii) and (iii) in the
last clause of the claim. It is not a close call when it comes to obviousness,
however. Again, Ensign teaches that ―46a preferably extends linearly in the
medial-lateral direction 96‖ and that the extension ―significantly increased
surface area for resisting movement in the anterior-posterior direction‖ (col.
6, ll. 48-55). Nothing in Ensign suggests that the ―arced path[s]‖ located
only at the very ends of 46a in the ―T‖ shape rail shown in Figure 8 (Second
Req. Rh‘g. 11; see also 16-17) contribute any such benefit in relation to rail
46a, i.e., a rail separate from rail 46b. Appellants do not mention any
surprising results in relation to straight edges/corners at the ends, as
compared to the curved ends of 46a shown in Figure 8. Nor do Appellants
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point to any prior art teaching away from a rail 46a having linearly extended
straight edges, rather than curved ends as shown in Figure 8.
It is not ―an exercise in hindsight reconstruction‖ (above Opinion 7) to
engage in an obvious modification in relation to what is described in Ensign
and shown in Figure 8 when generating two different rails 46a and 46b
instead of the single ―T‖ shaped embodiment. Based on ease of
manufacturing a straight-edged version of 46a as compared to the curved-
end version shown in Figure 8, how similarly a straight-edged version of 46a
would have looked and functioned as compared to rail 46a shown in Figure
8, and in light of separate benefits described in Ensign for 46a versus 46b,
one would have had reason to make a straight-edged rail 46a separately from
46b, rather than make the ―T‖ shape shown in Figure 8 and thereafter cut it
into two pieces, or otherwise generate rail 46a only with curved ends exactly
as shown in Figure 8. Thus, an ordinary artisan would have had reasons to
generate a knee prosthetic comprising the retaining rail recited in claim 12.
Ensign expressly teaches that ―rails 46 and 48 may embody any
suitable cross sectional shape‖ (Ensign, col. 5, ll. 56-57), and that the ―T‖
shape shown in figures is preferred but not required (id. at col. 4, ll. 30-35).
Even assuming Ensign emphasizes using both rails 46a and 46b to provide
―ʻhighly effective‘ resistance to movement‖ (Second Req. Rh‘g. 17; see
also, id. at 15 (discussing ―at least four directions‖), nothing in Ensign
indicates that the ―arced path‖ at the ends of rail 46a in Figure 8 contributes
to that benefit, or that using a rail 46a having entirely linear lines (a prima
facie obvious variation) would detract from the benefit.
For the above mentioned reasons, I respectfully dissent.
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