Ex Parte Reubelt et alDownload PDFPatent Trial and Appeal BoardJun 6, 201611689424 (P.T.A.B. Jun. 6, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 11/689,424 03/21/2007 20995 7590 06/08/2016 KNOBBE MARTENS OLSON & BEAR LLP 2040 MAIN STREET FOURTEENTH FLOOR IRVINE, CA 92614 FIRST NAMED INVENTOR Leo M. Reubelt 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. TRNXSH.032A 1873 EXAMINER HOBAN, MELISSA A ART UNIT PAPER NUMBER 3738 NOTIFICATION DATE DELIVERY MODE 06/08/2016 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): j ayna.cartee@knobbe.com efiling@knobbe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LEO M. REUB EL T and PETER L. VERRILLO Appeal2014-005957 Application 11/689,424 Technology Center 3700 Before EDWARD A. BROWN, WILLIAM A. CAPP, and LEE L. STEPINA, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Leo M. Reubelt and Peter L. Verrillo (Appellants) 1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject claims 34, 36-43, 47, 51-54, 69, and 74--78.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 The Appeal Brief identifies Tomier, Inc. as the real party in interest. Br. 2. 2 Claims 1-33, 44--46, 48, 49, and 55---68 have been cancelled, and claims 35, 50, and 70-73 withdrawn from consideration. Appeal2014-005957 Application 11/689,424 CLAIMED SUBJECT MATTER Appellants' disclosure relates "generally to orthopedic joint replacements, and more specifically, to a glenoid component." Spec. ,-r 2. Claims 34 and 69 are independent. Claim 34, which is illustrative of the claimed subject matter, reads as follows: 34. An orthopedic device for implantation in a supportive substrate of a scapula prepared with at least one hole, the orthopedic device comprising: a glenoid component including a front articulating surface adapted to articulate with a humeral head, and a back surface adapted to engage with the supportive substrate; and at least one peg extending from the back surface of the glenoid component, the peg comprising: a proximal portion extending from the back surface along a longitudinal axis of the peg, the proximal portion comprising a maximum cross-sectional diameter adapted to provide a proximal press fit with a proximal portion of the hole in the supportive substrate of the scapula; and a distal portion extending from the proximal portion, the distal portion comprising a maximum cross= sectional diameter with respect to the longitudinal axis of the peg that is less than the maximum cross-sectional diameter of the proximal portion such that the proximal portion is adapted to help ensure cement fills around the distal portion of the peg, wherein the distal portion tapers such that a cross-section of the distal portion increases distally. Br. 20, Claims App. REJECTIONS The claims stand rejected as follows: 1. Claims 34, 47, 51, and 74--78 under 35 U.S.C. § 102(b) as anticipated by Williamson (US 5,800,551, issued Sept. 1, 1998). 2 Appeal2014-005957 Application 11/689,424 2. Claims 36 and 37 under 35 U.S.C. § 103(a) as unpatentable over Williamson and Lipman (US 2004/0122520 Al, published June 24, 2004). 3. Claims 38--43 under 35 U.S.C. § 103(a) as unpatentable over Williamson and Burkinshaw (US 2004/0006393 Al, published Jan. 8, 2004) as evidenced by Felt (US 7,320,709 B2, issued Jan. 22, 2008). 4. Claims 52-54 and 69 under 35 U.S.C. § 103(a) as unpatentable over Williamson and Matsen (US 5,032,132, issued July 16, 1991). ANALYSIS Anticipation by Williamson Regarding claim 34, the Examiner found that Williamson discloses glenoid component 10 including medial textured surface 22; base members 14 extending from textured surface 22 and each having a sidewall 54; and pegs 16, each extending from a base member 14. Final Act. 5-6 (citing Williamson, col. 3, 11. 40-43; col. 4, 11. 43--49). In support, the Examiner provided an annotated version of Figure 3A of Williamson. Id. at 6. The Examiner found that the maximum cross-sectional diameter of the proximal portion of pegs 16 is at sidewall 54 of base members 14, and this maximum cross-sectional diameter "is at least fully capable of being adapted to comprise a proximal press fit with a proximal portion of the hole in the supportive substrate of the scapula." Id. at 7. Appellants contend that Williamson does not teach that sidewalls 54 of base members 14 are "adapted to provide a proximal press fit with a proximal portion of the hole in the supportive substrate of the scapula," as claimed. Br. 7. Referring to Figure 3 of Williamson, Appellants contend that if the "distal ends" of the pyramids of textured surface 22 (i.e., the left- 3 Appeal2014-005957 Application 11/689,424 most sides) are considered to correspond to the claimed "back surface" of the glenoid component, then the portions of pegs 16 that extend from the back surface (i.e., the portions of pegs 16 to the left of the back surface) would not include base members 14. Id. at 9. Thus, Appellants contend, pegs 16 would not meet the claim limitations of "the proximal portion comprising a maximum cross-sectional diameter ... and a distal portion extending from the proximal portion, the distal portion comprising a maximum cross-sectional diameter ... that is less than the maximum cross- sectional diameter of the proximal portion." Id. The Examiner responds that, regardless of whether Williamson suggests a different method of implantation, its glenoid component meets the structural limitations of claim 34. Ans. 3. Claim 34 recites, "the proximal portion comprising a maximum cross- sectional diameter adapted to provide a proximal press fit with a proximal portion of the hole in the supportive substrate of the scapula." (Emphasis added). The Patent and Trademark Office "determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction 'in light of the specification as it would be interpreted by one of ordinary skill in the art.'" Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) ("'claims ... are to be given their broadest reasonable interpretation consistent with the specification, and ... claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art."'). Regarding the meaning of "adapted to" in claim 34, "the phrase 'adapted to' generally means 'made to,' 'designed to,' or 'configured to,' 4 Appeal2014-005957 Application 11/689,424 though it can also be used more broadly to mean 'capable of' or 'suitable for.' In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014) (quoting Aspex Eyewear, Inc. v. Marchan Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012) (referencing dictionaries))." In re Man Machine Interface Technologies LLC, No. 2015-1562, 2016 WL 1567181 (Fed. Cir. April 19, 2016). Regarding the meaning of "proximal press fit," Appellants' Specification states As used herein, the term "proximal press fit" can refer to a tight fit where a diameter 90 of the proximal portion 82 of the peg 54 in a free state may be slightly larger than a diameter 92 of a hole 94 of the supportive substrate 80, the same as the diameter 92 of the hole 94, or slightly smaller than the diameter 92 of the hole 94. Spec. i-f 70. Figure 6 shows pegs 54, each comprising a proximal portion 82 including a maximum cross-sectional diameter 90 providing a "proximal press fit" in a proximal portion of a hole 94 of supportive substrate 80. See id. To provide this "proximal press fit," proximal portion 82 is received in the proximal portion of the hole 94. We agree with Appellants that if the "distal ends" of pyramids 48 of textured surface 22 of Williamson are considered to be the claimed "back surface" of the glenoid component, then the portions of pegs 16 that extend from the back surface would not include base members 14. Br. 9. Even assuming that Williamson's "back surface" corresponds to the surface from which pyramids 48 extend (see Final Act. 6, Williamson annotated Fig. 3A), Figures 3 and 3A of Williamson show that sidewall 54 of base member 14 and truncated pyramids 48 both extend from the "back surface" by about the same distance. Williamson discloses that " [ e] ach base member 14 also 5 Appeal2014-005957 Application 11/689,424 includes a sidewall 54 formed within and from the medial textured surface 22." Williamson, col. 4, 11. 44--46 (emphasis added). In view of the structure of Williamson's glenoid component that is shown in Figures 3 and 3A, it is not apparent to us how sidewall 54 of base 14 could be received in a hole of the supportive substrate of a scapula. The Examiner does not make sufficient factual findings in Williamson to show that base members 14 of pegs 16 are, in accordance with the general meaning of "adapted to," "made to," "designed to," or "configured to" be inserted into holes of a supportive substrate of a scapula such that sidewalls 54 would provide a "proximal press fit" in a proximal portion of the holes. See In re Man Machine Interface Technologies. Further, even if we were to accept the Examiner's broader construction of "adapted to" as meaning "capable of' (see Ans. 3), the Examiner still does not provide sufficient factual findings to show that the maximum cross-sectional diameter at sidewall 54 of base member 14 is capable of providing the claimed "proximal press fit with a proximal portion of the hole in the supportive substrate of the scapula." Accordingly, the Examiner has not established by a preponderance of the evidence that Williamson discloses all limitations of claim 34, and thus, we do not sustain the rejection of claim 34, and claims 47, 51, and 74--78 depending therefrom, as anticipated by Williamson. Obviousness over Williamson and Lipman Claims 36 and 37 depend from claim 34. Br. 20, Claims App. The Examiner's application of Lipman to the rejection of claims 36 and 37 fails to cure the deficiencies of the rejection of claim 34 discussed above. Final 6 Appeal2014-005957 Application 11/689,424 Act. 8-9. Accordingly, we do not sustain the rejection of claims 36 and 37 as unpatentable over Williamson and Lipman. Obviousness over Williamson and Burkinshaw as Evidenced by Felt Claims 38--43 depend from claim 34. Br. 21, Claims App. The Examiner's application of Burkinshaw and Felt to the rejection of claims 38--43 fails to cure the deficiencies of the rejection of claim 34. Final Act. 9-11. Accordingly, we do not sustain the rejection of claims 38--43 as unpatentable over Williamson and Burkinshaw as evidenced by Felt. Obviousness over Williamson and Matsen Claims 52-54 Claims 52-54 depend from claim 34. Br. 22, Claims App. The Examiner's application of Matsen to the rejection of claims 52-54 fails to cure the deficiencies of the rejection of claim 34. Final Act. 11-13. Accordingly, we do not sustain the rejection of claims 52-54 as unpatentable over Williamson and iviatsen. Claim 69 Claim 69 is directed to an orthopedic device comprising a glenoid component including, inter alia, a plurality of cement mantles for securing the glenoid component to the supportive substrate including a first, a second, and a third cement mantle each located substantially only along the distal portions of each of the first, second, and third pegs, respectively, and secured to the distal portions of each of the first, second, and third pegs, respectively. Br. 23, Claims App. (emphasis added) (hereafter "cement mantle limitation"). 7 Appeal2014-005957 Application 11/689,424 The Examiner found Williamson teaches that grooves 64 of pegs 16 provide a locking mechanism between the glenoid component and a glenoid cavity of the scapula via a cement mantle, and, therefore, Williamson teaches the claimed first, second, and third cement mantles. Ans. 6 (citing Williamson, col. 5, 11. 13-15). The Examiner notes that claim 69 recites the transitional term "comprising" (i.e., "the orthopedic device comprising"), which "is inclusive or open-ended and does not exclude additional unrecited elements or method steps." Id. (citing Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376 (Fed. Cir. 2004). The Examiner states, "[r]egardless of whether Williamson teaches other cement mantles, it is clear that the cement mantle formed around the grooves (64) of each of the pegs is located substantially only along the distal portions of each of the first, second, and third pegs, respectively, as claimed by applicant." Id. (emphasis added). The Examiner also states that "the term 'substantially' is broad." Id. Appellants contend that Williamson does not teach the cement mantle limitation of claim 69. Br. 1 7. Rather, Appellants contend, Williamson discloses a cement mantle located between medial surface 22 and the scapula, and which extends from medial surface 22 into holes 104, 122 in the scapula that receive pegs 16. Id. (citing Williamson, col. 4, 11. 24-25, col. 6, 11. 22-24 and 48--49, and col. 6, 1. 55---col. 7, 1. 2). Appellants are correct that the Examiner did not make a sufficiently supported factual finding that Williamson discloses placing a cement mantle "substantially only along the distal portions of each of the first, second, and third pegs [16]" where circumferential groove 64 is located. Although Williamson discloses a cement mantle between pegs 16 and the glenoid cavity of the scapula at circumferential grooves 64 (col. 5, 11. 13-15), the 8 Appeal2014-005957 Application 11/689,424 Examiner has not provided evidence that this cement mantle is applied "substantially only along the distal portion[]," as required by claim 69. As noted above, Williamson teaches forming a cement mantle extending from medial surface 22 into holes 104, 122 in the scapula that receive pegs 16. See Williamson, col. 6, 1. 55---col. 7, 1. 2. The Examiner has not shown with evidence that this cement mantle is applied "substantially only along the distal portion[]." Appellants do not define the phrase "substantially only along" recited in claim 69. Appellants' Specification describes, "as illustrated in FIG. 6, the cement mantle 84 is located distally substantially only along the distal portion 86 of the peg 54 .... " Spec. i-f 70 (emphasis added). Figure 6 does not appear to show any portion of cement mantle 84 located along proximal portion 82 of peg 54. A dictionary definition of "substantial" or "substantially" is "5: being largely but not wholly that which is specified." Merriam-Webster's Collegiate Dictionary 1245 (11th ed. 2003). Construing the phrase "substantially along only" consistent with this ordinary meaning of "substantially" (i.e., as an approximation), each of the first, second, and third cement mantles is "located [largely but not wholly] only along the distal portions of each of the first, second, and third pegs, respectively." Although the transitional term "comprising" is open-ended and does not exclude additional unrecited elements, "[t]he open-ended transition 'comprising' does not free the claim from its own limitations." See Kustom Signals, Inc. v. Applied Concepts, Inc., 264 F.3d 1326, 1332 (Fed. Cir. 2001); In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009) (The Federal Circuit determined that a claim reciting the transitional term "comprising" 9 Appeal2014-005957 Application 11/689,424 was incorrectly construed "in holding that some wire legs of the Skvorecz device, as claimed, need not have an offset, when the claims state that each wire leg has an offset."). Applying the above-noted ordinary meaning of "substantially" to "substantially only along" recited in the body of claim 69, Williamson, in contrast, teaches a cement mantle that extends from medial surface 22 into holes 104, 122 in the scapula that receive pegs 16. The Examiner has not explained adequately how this cement mantle is located "substantially only along the distal portion" of pegs 16, as required by claim 69. The Examiner's application of Matsen to the rejection of claim 69 does not cure the deficiencies of Williamson. Final Act. 12-13. Accordingly, we do not sustain the rejection of claim 69 as unpatentable over Williamson and Matsen. DECISION The Examiner's decision to reject claims 34, 36-43, 47, 51-54, 69, and 7 4--7 8 is reversed. REVERSED 10 Copy with citationCopy as parenthetical citation