Ex Parte Wright et al

Patent Trial and Appeal Board

Jun 16, 2017

14078808 (P.T.A.B. Jun. 16, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/078,808 11/13/2013 Sara R. Wright 1671-0389DIV1 1790
28078 7590 06/16/2017
MAGINOT, MOORE & BECK, LLP
One Indiana Square, Suite 2200
INDIANAPOLIS, IN 46204
EXAMINER
LAWSON, MATTHEW JAMES
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
06/16/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SARA R. WRIGHT, DAREN L. DEFFENBAUGH, and
EDMUND W. FRAZEE1
Appeal 2016-004029
Application 14/078,808
Technology Center 3700
Before ERIC B. GRIMES, FRANCISCO C. PRATS, and
ERICA A. FRANKLIN, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
impactor device, which have been rejected as anticipated or obvious. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
The invention “relates to the field of impacting devices, such as those
used to provide impact force to a prosthetic component in order to secure the
1 Appellants identify the Real Party in Interest as DePuy Synthes Products,
Inc. (Br. 2.)
Appeal 2016-004029
Application 14/078,808
prosthetic component to another device or to tissue.” (Spec. 11.) For
example, a humeral implant comprises a humeral head and a humeral stem,
which can be secured to each other via “a Morse taper arrangement... in
which a tapered male component... is received into a tapered female
component.” (Id. 16.) “To apply sufficient force to lock the Morse taper
arrangement between the humeral head 12 and the plug 23, it is known to
impact the humeral head 12 such that the impact force directs the humeral
head 12 toward the plug 23 and humeral stem 14.” (Id. 1 8.) However,
“[t]he use of excess force is undesirable because of the potential for damage
to the bone tissue or the implant device.” (Id. 19.) The Specification
discloses a “force dissipating impactor device . . . configured to reduce the
forces transmitted through the impactor device to an implant.” (Id. 111.)
Claims 1—16 are on appeal. Claims 1 and 10 are the independent
claims and read as follows:
Claim 1. An impactor device configured to impact an implant member,
the impactor device comprising:
a bar member including a hollow shaft with an outer shaft surface, an
inner shaft surface, a first end, and a second end, the first end including an
impaction surface configured to receive a blow from a striking device and
the second end including an implant engagement surface configured to
engage the implant member; and
a plurality of holes provided in the shaft and extending from the outer
shaft surface to the inner shaft surface, wherein the plurality of holes are
arranged such that when the hollow shaft is viewed in an unwrapped view,
any straight line passing axially along the outer shaft surface intersects at
least one of the plurality of holes.
Claim 10. An impactor device configured to deliver an impact force, the
impactor device comprising:
2
Appeal 2016-004029
Application 14/078,808
a hollow shaft including a plurality of perforations extending from an
outer surface of the hollow shaft to an inner surface of the hollow shaft,
wherein the plurality of perforations are arranged such that when the hollow
shaft is viewed in an unwrapped view, any straight line passing axially along
the outer shaft surface intersects at least one of the plurality of perforations;
an impaction surface located on one end of the hollow shaft and
configured to receive a blow from a striking device; and
a force distributing surface on the opposite end of the hollow shaft.
DISCUSSION
The Examiner has rejected claims 1—4, 7, 8, and 10-15 under 35
U.S.C. § 102(b) as anticipated by Hoffstrom.2 (Final Action3 5.) The
Examiner has rejected claims 5, 6, 9, and 16 under 35 U.S.C. § 103(a) as
obvious based on Hoffstrom. (Final Action 8.) The same issue is
dispositive for both rejections.
The Examiner finds that “Hoffstrom discloses a device . . . capable of
use during impaction of an implant member (i.e. placeable between an
orthopedic hammer and a prosthesis to absorb some amount of the force
applied by the hammer to the prosthesis but to deliver what was not
absorbed)” that meets all of the limitations of claims 1 and 10. {Id. at 6.)
The Examiner provided an annotated version of Hoffstrom’s Figure 1, which
is reproduced below:
2 Hoffstrom, US 2,888,258, May 26, 1959.
3 Office Action mailed Jan. 26, 2015.
3
Appeal 2016-004029
Application 14/078,808
Hoffstrom’s Figure 1 shows “a typical blank from which one form of
the spring of [Hoffstrom’s] invention is made.” (Hoffstrom 2:34—36.) The
Examiner has annotated the figure to indicate that the top corresponds to the
“impaction surface” and the bottom corresponds to the “implant engagement
surface” recited in claim 1. (Final Action 5.)
The Examiner finds that the upper surface of Hoffstrom’s device is
“capable of receiving a blow from a striking device (by mere contact
thereon)” and the bottom or the device is “capable of engaging the implant
member (by mere contact thereon).” {Id. at 6.) The Examiner also finds that
Hoffstrom’s device meets the limitations of independent claim 10. {Id. at 7.)
Appellants argue that “[t]he device in Hoffstrom is a spring, and the
spring is designed and constructed to be attached to two different objects.”
(Br. 8.) That is,
an “impactor device” is a device which provides sufficient force
to “lock” a Morse taper when struck. ... In contrast, the device
of Hoffstrom is a spring configured to support an object above a
support surface in such a manner that the spring absorbs
vibrations and other forces, thereby precluding impact-like
forces from passing to the underlying support surface.
(Id. at 11.)
4
Appeal 2016-004029
Application 14/078,808
Appellants also argue that “the Examiner has eviscerated any real
meaning from the phrase ‘impaction surface’ since any surface is necessarily
capable of being struck.” {Id. at 9.) Similarly, Appellants argue that the
Examiner has “eviscerated] any meaning from the limitation of an ‘implant
engagement surface’” because “the lower end of Hoffstrom is not configured
as an implant engagement surface simply because the Hoffstrom device has
a surface.” {Id. at 10.)
We agree with Appellants that, when the claims are read in light of the
Specification, they do not encompass the spring disclosed by Hoffstrom.
Appellants’ Specification states that “[ijncreasingly, prosthetic devices are
provided as subcomponents that are assembled during surgery,” so that the
appropriate subcomponents can be matched to different patients and
different conditions. (Spec. 13.) To lock the subcomponents together and
form the completed prosthesis, a “hammer or mallet is typically struck
directly on the head, or through an impactor device.” {Id. 1 8.) However, in
order to be sure the subcomponents are locked together, “the surgeon or
assistant may use excessive force. The use of excess force is undesirable
because of the potential for damage to the bone tissue or the implant
device.” {Id. 19.) The Specification states that the disclosed “impactor
device is configured to reduce the forces transmitted through the impactor
device to an implant” {id. 111), in order to “limit the application of
excessive force and any associated damage” {id. 110).
Both of the independent claims are directed to an “impactor device.”
Read in light of the Specification, an impactor device is a device that can be
hit by a hammer or mallet, and which will transfer the force of the impact in
5
Appeal 2016-004029
Application 14/078,808
such a way as to lock together subcomponents of a prosthesis. (See Spec.
18.) Hoffstrom, by contrast, discloses “springs which provide improved
performance in environments in which the springs are subjected to loads in
tension or in compression.” (Hoffstrom 1:16—18.) The spring can be
formed from a tubular blank having cylindrical inner and outer surfaces, and
relatively thickened attaching portions at the ends. (Id. at 2:65—69; Figs. 1,
3.) Slots are then formed in the wall of the blank, resulting in “a series of
spring beams or bars which extend around the periphery of the spring.” (Id.
at 3:8—10, 36—38.) “After proper heat treatment, if such is necessary, the
spring is ready for installation in any environment which requires resistance
to compressive or tensile loads.” (Id. at 3:53—56.)
We agree with Appellants that “the device of Hoffstrom is a spring
configured to support an object above a support surface in such a manner
that the spring absorbs vibrations and other forces” and therefore “prevents
sudden load changes from being transmitted to an underlying support in any
significant manner” (Br. 11), rather than transferring the force of an impact
from a hammer or mallet to a subcomponent of a prosthesis, as an impactor
device is described in the Specification.
We therefore conclude that the Examiner has not shown, by a
preponderance of the evidence, that Hoffstrom’s spring would meet the
broadest reasonable interpretation of an impactor device, when that phrase is
read in light of the Specification. The rejection of claims 1—4, 7, 8, and 10-
15 as anticipated by Hoffstrom is reversed.
The Examiner rejected claims 5, 6, 9, and 16 as obvious based on
Hoffstrom. (Final Action 8.) The Examiner concludes that the lengths
6
Appeal 2016-004029
Application 14/078,808
recited in claims 5 and 6, and the patterns of perforations recited in claims 9
and 16, would have been obvious because the general conditions of the
claimed device are taught in the prior art. (Id. at 8—9.) However, the
Examiner has not provided any persuasive reasoning to show that it would
have been obvious to modify Hoffstrom’s spring in such a way that it would
fall within the broadest reasonable interpretation of an impactor device,
when that phrase is read in light of the prior art. We therefore reverse the
rejection of claims 5, 6, 9, and 16 as obvious based on Hoffstrom.
SUMMARY
We reverse both of the rejections on appeal.
REVERSED
7