Ex Parte Wright et alDownload PDFPatent Trial and Appeal BoardJun 16, 201714078808 (P.T.A.B. Jun. 16, 2017) Copy Citation 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 Copy with citationCopy as parenthetical citation