Ex Parte Ondrla

Board of Patent Appeals and Interferences

Apr 28, 2009

10610257 (B.P.A.I. Apr. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JEFFREY MICHAEL ONDRLA
__________

Appeal 2009-1427
Application 10/610,257
Technology Center 3700
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Decided:1April 28, 2009
__________

Before TONI R. SCHEINER, ERIC GRIMES, and RICHARD M.
LEBOVITZ, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims 1-14 and 17-
26, which are directed to a joint prosthesis. The Examiner has rejected

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-1427
Application 10/610,257

claims 8-14 as being indefinite and claims 1-14 and 17-26 as being
anticipated or obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm the rejection for indefiniteness, and we reverse the rejections for
anticipation and obviousness.
STATEMENT OF THE CASE
The Specification discloses a “joint prosthesis, as a replacement for a
ball and socket type joint, [that] has a head that allows for infinite dialability
and/or angular orientation with respect to an implanted stem” (Spec. 4: 25-
5:1). Figure 1 of the Specification is shown below:

Figure 1 shows “an exploded side perspective view of an exemplary
shoulder prosthesis” (Spec. 6: 23-24). The Specification states that the
“shoulder prosthesis 10 includes a humeral component or stem 12, a humeral
head or head component 14, and a conjoining member 30. … The conjoining
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Application 10/610,257

member 30 and the head 14 are angularly positionable relative to the stem
12” (Spec. 8: 19-9:26).
The Specification also discloses that the “conjoining member …
receives the head and allows for the positioning thereof. The conjoining
member is fixed in position through expansion of the conjoining member to
produce a friction fit (wedging) of the conjoining member within a receiving
socket of the stem” (Spec. 5: 7-13).
Claim 1 is representative and reads as follows:
Claim 1: A joint prosthesis comprising:
a joint stem implantable into a bone and having a concavity therein;
a conjoining member disposed in said concavity and free to swivel
within said concavity in an unexpanded state but fixed to be stationary
within said concavity in an expanded state,; and
a joint head having (i) a body defining an articulation surface, and (ii)
an expander extending from said body and received by said conjoining
member,
wherein in an uncompacted state of said expander relative to said
conjoining member said conjoining member is in the unexpanded state and
said joint head is therefore adjustably positionable in any one of a plurality
of medial-lateral and anterior-posterior orientations,
and in a compacted state of said expander relative to said conjoining
member said conjoining member is in the expanded state wherein said
conjoining member and said joint head are fixed in angular orientation.

The claims stand rejected as follows:
• claims 8-14 under 35 U.S.C. § 112, second paragraph, as indefinite;
• claims 1-3, 6-14, 17-19, and 22-242 under 35 U.S.C. § 102(b) as
anticipated by Walch;3 and

2 Which claims were rejected for anticipation is somewhat unclear from the
statement of the rejection in the Examiner’s Answer. As we understand it,
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Application 10/610,257

• claims 4, 5, 11, 12, 20, and 21 under 35 U.S.C. § 103(a) as obvious
in view of Walch and Stone.4
INDEFINITENESS
Issue
The Examiner has rejected claims 8-14 under 35 U.S.C. § 112, second
paragraph, as being indefinite. The claims have not been argued separately
and therefore stand or fall together. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner finds that the claims are indefinite because, “[i]n claim
8, lines 6, 7, the term ‘said concavity’ lacks prior antecedent basis” (Ans. 3).
Appellant agrees that claim 8 contains a typographical error and that
“[t]his error can be corrected upon remand” (App. Br. 5, Footnote 1).
Appellant has not disputed the merits of the Examiner’s rejection, and
thus we summarily affirm the rejection.
the rejection was applied to claims 1-3, 6-14, 17-19, and 22-24, because
claims 15 and 16 were cancelled (Amendment filed March 23, 2006); the
Final Rejection states that all of claims 1-14 and 17-24 were rejected (Office
action mailed June 7, 2006, page 1), and the Examiner did not apply any
other rejection to claims 17-19 or 22-24. Appellant understood the rejection
to apply to at least claims 1-3, 6-14, 17-19, and 22-24 (App. Br. 5: “Claims
1-19 and 22-24 stand rejected as being anticipated.”).
3 Walch et al., US 5,702,457, Dec. 30, 1997
4 Stone et al., US 6,783,549 B1, Aug. 31, 2004
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Application 10/610,257

ANTICIPATION
Issue
The Examiner has rejected claims 1-3, 6-14, 17-19, and 22-24 under
35 U.S.C. § 102(b) as anticipated by Walch. The Examiner finds that Walch
discloses a joint prosthesis having a
stem (10), socket (16), expandable conjoint member (2), and a
joint component (3) having a body (30) and expander (32) and
the expander can be frusto-conical. … In the uncompacted state
the conjoining member (2) is in the unexpanded state and the
joint head is adjustably positionable in any one of a plurality of
orientations … ; in the compacted state, the conjoining member
and the joint head are fixed in angular orientation.
(Ans. 3-4.)
Appellant contends that the Examiner erred in finding Walch to
disclose a conjoining member having an expanded state in which the
conjoining member and joint head are fixed in orientation (App. Br. 7).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Walch discloses a device
including a joint head and conjoining member in which, when the
“conjoining member is in the expanded state . . . , said conjoining member
and said joint head are fixed in angular orientation,” as recited in claim 1?
Findings of Fact
1. Walch discloses a humeral prosthesis that comprises “a humeral
shank which is provided … with a housing with [a] spherical bottom in
which is introduced a sphere provided to receive a hemispherical cap, while
screw means allow immobilization thereof in a determined angular position
with respect to the axis of the humeral shank” (Walch, col. 2, ll. 10-16).
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Application 10/610,257

2. Figure 1 of Walch is shown below:

Figure 1 shows “an exploded view in perspective illustrating the
humeral prosthesis” (id. at col. 2, ll. 22-23).
3. Walch discloses that the prosthesis comprises “a shank 1, a sphere
2 and a hemispherical cap 3” (id. at col. 2, ll. 39-42).
4. Walch discloses that the “center of sphere 2 is pierced with a bore
20 in which a radial slit 21 opens out, giving a certain elasticity to the
sphere” (id. at col. 2, l. 66 – col. 3, l. 1).
5. Walch discloses that the hemispherical cap 3 has a cylindrical pin
32 that “may have a conical outer profile whose smaller diameter lies
opposite base 31” (id. at col. 3, ll. 4-10).
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Application 10/610,257

6. Walsh discloses that sphere 2 “suffices to position the
hemispherical cap 3 so that pin 32 cooperates with bore 20 of the sphere”
(id. at col. 3, ll. 11-15).
7. Walsh discloses that pin 32 has a “height … sufficient to be able to
adjust the distance separating cap 3 with respect to rod 1 of the humeral
prosthesis” (id. at col. 3, ll. 15-17).
8. Walsh discloses that “sphere 2 allows an angular adjustment of cap
3 in all possible directions with respect to the axis of shank 1” (id. at col. 3,
ll. 17-19).
9. Walsh discloses that “[a]s soon as all the angular adjustments have
been made, the surgeon tightens screws 19 inside holes 17 and 18 so that
they press against sphere 2 to immobilize it inside housing 16 and deform it
radially due to its slit 21 in order to tighten pin 32 inside bore 20” (id. at col.
3, ll. 24-28).
Principles of Law
“To anticipate a claim, a reference must disclose every element of the
challenged claim and enable one skilled in the art to make the anticipating
subject matter.” PPG Indus. Inc. v. Guardian Indus. Corp, 75 F.3d 1558,
1566 (Fed. Cir. 1996).
Analysis
Claim 1 is directed to a joint prosthesis comprising, among other
elements, a conjoining member that is “free to swivel … in an unexpanded
state but fixed to be stationary … in an expanded state.”
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Appellant argues that Walch does not disclose a conjoining member
having an expanded state in which the conjoining member and joint head are
fixed in orientation (App. Br. 7).
The Examiner finds that the sphere 2 of Walch’s humeral prosthesis
meets the limitation of the claimed “conjoining member.” The Examiner
reasons that the radial slit in the sphere (i.e., the conjoining member) of
Walch’s prosthesis “would allow the sphere to compress and expand” and
that insertion of a “conical shaped pin into the bore of the sphere … would
force the bore to expand” (Ans. 5).
Appellant’s arguments are persuasive. Walch discloses that after the
angular adjustments have been made – that is, after the sphere and associated
joint head have been positioned – the surgeon tightens screws inside holes in
the shank so that they press against the sphere to immobilize it and “deform
it radially due to its slit 21 in order to tighten pin 32 inside bore 20” (Walch
at col. 3, ll. 24-28).
Thus, whether or not a conical pin would initially expand the sphere,
Walsh discloses that the sphere is radially deformed (i.e., compressed) to
tighten the sphere around the pin, and that the screws immobilize the sphere
by pressing against it. Therefore, the sphere of Walch does not appear to be
a conjoining member that is “fixed to be stationary … in an expanded state,”
as instantly claimed, because the Walch fixes the sphere using screws,
resulting in compression of the sphere. Thus, the Examiner has not
adequately explained how Walch discloses a conjoining member that is
fixed to be stationary in an expanded state. The rejection of claim 1 is
reversed.
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Claims 8 and 17 (the only other independent claims) also require an
expanded conjoining member with a fixed orientation. Thus, the rejection of
these claims is also reversed for the reasons discussed above.
Claims 2, 3, 6, 7, 9-14, 18, 19, and 22-24 depend directly or indirectly
from one of claims 1, 8, and 17. The rejection of these claims is reversed for
the reasons discussed above.
OBVIOUSNESS
The Examiner has also rejected claims 4, 5, 11, 12, 20, and 21 under
35 U.S.C. § 103(a) as obvious in view of Walch and Stone (Ans. 4).
Claims 4, 5, 11, 12, 20, and 21 depend directly or indirectly from one
of independent claims 1, 8, and 17. The Examiner relies on Walch, as
discussed above, and provides the Stone reference to supply dependent claim
limitations (Ans. 4). For the reasons discussed above, however, the
Examiner has not adequately explained how the cited references show a
conjoining member having an expanded state in which the conjoining
member and joint head are fixed in orientation.
Conclusions of Law
The evidence of record does not support the Examiner’s conclusion
that Walch discloses a device including a joint head and conjoining member
in which, when the “conjoining member is in the expanded state . . . , said
conjoining member and said joint head are fixed in angular orientation,” as
recited in claim 1. The Examiner has pointed to nothing in Stone to remedy
the deficiency of Walch.
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Application 10/610,257

SUMMARY
We affirm the rejection of claims 8-14 under 35 U.S.C. § 112, second
paragraph, as indefinite. However, we reverse the rejection of claims 1-3, 6-
14, 17-19, and 22-24 under 35 U.S.C. § 102(b) as anticipated by Walch, and
we reverse the rejection of claims 4, 5, 11, 12, 20, and 21 under 35 U.S.C.
§ 103(a) as obvious in view of Walch and Stone.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

Ssc:

MAGINOT, MOORE & BECK LLP
CHASE TOWER
111 MONUMENT CIRCLE, SUITE 3250
INDIANAPOLIS, IN 46204-5109
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