Ex Parte Wyss et al

Board of Patent Appeals and Interferences

Jul 31, 2012

11121408 (B.P.A.I. Jul. 31, 2012)

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.
11/121,408 05/04/2005 Joe Wyss 1671-0338 4133
7590 07/31/2012
Maginot, Moore & Beck LLP
Chase Tower, Suite 3250
111 Monument Circle
Indianapolis, IN 46204-5109
EXAMINER
MILLER, CHERYL L
ART UNIT PAPER NUMBER
3738
MAIL DATE DELIVERY MODE
07/31/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JOE WYSS, TERRY DIETZ, MARC C. VOSLER,
and DON RUNNING
__________

Appeal 2011-005375
Application 11/121,408
Technology Center 3700
__________

Before MELANIE L. McCOLLUM, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
1

This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a knee prosthesis. The Patent Examiner rejected the
claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse three rejections, affirm one rejection in part, and designate the
affirmance as a new ground of rejection.

1
This Decision cites to the Final Rejection of Aug. 12, 2009, the Appeal
Brief of Jan. 28, 2010, the Examiner‟s Answer of April 26, 2010, the Reply
Brief of June 28, 2010, the Examiner‟s Answer of Oct. 7, 2010, and the
Surreply Brief of Feb. 8, 2011.
Appeal 2011-005375
Application 11/121,408

2
STATEMENT OF THE CASE
“The present invention relates to a knee prosthesis and more
particularly to a mobile bearing knee providing posterior stabilization of the
anterior-posterior translation of the femoral component relative to the tibial
component.” (Spec. 1.)
“The present invention contemplates an improved knee prosthesis
comprising a femoral component configured to be attached, to the distal end
of a femur and having a medial and a lateral condyle surface spaced apart to
define a notch therebetween. The notch defines an elongated cam housing
having an anterior cam and a posterior cam at opposite ends of the cam
housing.” (Id. at 3.)
“The prosthesis further includes a tibial component including a
platform configured for attachment to the proximal end of a tibia and a
bearing supported on the platform. The bearing defines medial and lateral
bearing surfaces configured to articulate with the medial and lateral condyle
surfaces, and a spine projecting superiorly from the bearing within the cam
housing when the condyle surfaces are in articulating contact with the
bearing surfaces.” (Id.)
“It is one object of the present invention to provide a prosthetic knee
that accurately and efficiently emulates the kinematics and function of a
normal, health knee. A more specific object is to accomplish these functions
with a posterior stabilized knee that can create proper joint roll-back.” (Id.
at 6.)
“Another object is accomplished by features of the invention that
restrict varus-valgus movement or pivoting, as well as provide resistance to
subluxation.” (Id.)
Appeal 2011-005375
Application 11/121,408

3
Claims 1-26 are on appeal. Appellants request review (App. Br. 9) of
these rejections:
 claims 20, 21, and 23-26 under 35 U.S.C. § 103(a) as unpatentable
over Metzger
2
(Final Rej. 3-5);
 claims 1-14 and 20-26 under 35 U.S.C. § 103(a) as unpatentable over
Pottenger
3
(Final Rej. 5-8);
 claims 1-11, 13, 14, 20, and 22-25 under 35 U.S.C. § 103(a) as
unpatentable over Noiles
4
(Final Rej. 8-11); and
 claims 15-19 under 35 U.S.C. § 103(a) as unpatentable over Noiles
and Van Zile
5
(Final Rej. 11-12).

I.
The rejections on appeal are the rejections set out in the Final
Rejection, not those set out in the two Examiner‟s Answers, for the
following reasons.
After Appellants filed their Appeal Brief, the Examiner mailed an
Examiner‟s Answer on April 26, 2010 (“First Answer”). Appellants filed a
Reply Brief objecting that “[t]he Examiner has modified every rejection of
the claims either by addition of one or more new arguments or by
substituting a new rejection altogether.” (Reply Br. 2.) Appellants
characterized the rejections over Metzger and Noiles as having added new
analyses, and contended the rejection over Pottenger alone was changed to a

2
Robert Metzger et al., US 2003/0009232 A1, filed Jul. 1, 2002.
3
Lawrence A. Pottenger et al., US 6,039,764, issued Mar. 21, 2000.
4
Douglas G. Noiles, US 4,634,444, issued Jan. 6, 1987.
5
Richard Van Zile et al., US 5,147,405, issued Sep. 15, 1992.
Appeal 2011-005375
Application 11/121,408

4
rejection over “Pottenger in view of Metzger” without following the
required procedure for a new ground of rejection. (Id. at 4-5.)
“An examiner‟s answer may include a new ground of rejection.”
37 C.F.R. § 41.39(a)(2). However, the MANUAL OF PATENT EXAMINING
PROCEDURE provides:
Any new ground of rejection made by an examiner in an answer
must be:
(A) approved by a Technology Center (TC) Director or
designee; and
(B) prominently identified in the “Grounds of Rejection to be
Reviewed on Appeal” section and the “Grounds of Rejection” section
of the answer (see MPEP § 1207.02). The examiner may use form
paragraph 12.154.04.
The examiner‟s answer must provide appellant a two-month
time period for reply. The examiner may use form paragraph
12.179.01 to notify appellant of the period for reply and to include the
approval of the TC Director or designee.

MPEP § 1207.03 (I). The First Answer did not comply with (A) and (B) and
did not provide Appellants a two-month time period as the MPEP required.
The Examiner did not dispute Appellants‟ Reply Brief allegations that
the First Answer contained new grounds of rejection. Instead, in response to
the Reply Brief, the Examiner mailed another Examiner‟s Answer on Oct. 7,
2010 (“Second Answer”). The Second Answer stated: “This examiner‟s
answer replaces the examiners answer mailed on April 26, 2010.” (Second
Ans. 2.) The Second Answer ignored Appellants‟ allegations of revisions to
the Metzger and Noiles rejections, but designated the rejection over
Pottenger in view of Metzger as a new ground, and included a statement
indicating the new ground was approved by a Technology Center Director.
(See Second Ans. 23.)
Appeal 2011-005375
Application 11/121,408

5
In response to the Second Answer, Appellants filed a Surreply Brief
contending that the Second Answer “is not a legally cognizable submission”
because it contains a new ground of rejection in violation of 37 C.F.R.
§ 41.43(a)(2). (Surreply 2.) Appellants ask the Board to “strike the Paper
from the record.” (Id. at 4.)
Rule 41.43 is entitled “Examiner’s response to reply brief,” and it
provides that an “examiner may . . . furnish a supplemental examiner‟s
answer responding to any new issue raised in the reply brief.” 37 C.F.R.
§ 41.43(a). The MPEP indicates that a supplemental examiner‟s answer may
be furnished in response to a reply brief that raises new issues or a remand
by the Board. MPEP § 1207.05. “Every supplemental examiner‟s answer
must be approved by a Technology Center (TC) Director or designee.” Id.
In this case, a Technology Center Director approved the new ground of
rejection in the Second Answer, but there is no indication that a
Supplemental Answer was approved, or indication that Rule 41.43 was
suspended or waived. (Ans. 23.) For cases in which an Appellant disagrees
that a supplemental examiner‟s answer is permitted, the MANUAL OF PATENT
EXAMINING PROCEDURE indicates that an Appellant may request the
Director‟s supervision:
An Appellant who disagrees with an examiner‟s decision that a
supplemental examiner‟s answer is permitted may petition for review
of the decision under 37 CFR 1.181 within two months from the
mailing of the supplemental examiner‟s answer.

MPEP § 1207.05 (I). Appellants could have had review of this issue by
petition. “The Board will not ordinarily hear a question that should be
Appeal 2011-005375
Application 11/121,408

6
decided by the Director on petition.” MPEP § 1201. We therefore do not
strike the second Examiner‟s Answer from the record.
The MPEP stresses the rule against new grounds in a Supplemental
Answer: “The examiner may NOT include a new ground of rejection in the
supplemental examiner‟s answer responding to a reply brief,” § 1207.05, and
“After the filing of a reply brief, any new ground of rejection responding to a
reply brief must be by way of reopening of prosecution,” § 1208. Although
Appellants‟ Surreply identified an apparent violation of the regulation, the
Examiner forwarded the Surreply to the Board without response or
explanation. (See communication mailed Feb. 2, 2011.)
The statute provides that an Applicant “may appeal from the decision
of the primary examiner.” 35 U.S.C. § 134(a). Rule 41.39(a)(1)
permissively states: “The primary examiner may, within such time as may
be directed by the Director, furnish a written answer . . . .” As the Examiner
did not provide an Answer authorized under the pertinent regulations, we
conclude that the Examiner‟s decision appealed from is only the decision set
out in the Final Rejection.

II.
The rejection of claims 20, 21, and 23-26 over Metzger
Claim 20 reads (emphasis added):
20. A knee prosthesis comprising:
a femoral component configured to be attached to a distal end of a
femur and having medial and lateral condyle surfaces that are spaced apart
from each other to define a notch therebetween, said notch defining an
elongated cam housing having an anterior cam and a posterior cam at
opposite ends of said cam housing; and
Appeal 2011-005375
Application 11/121,408

7
a tibial component including (i) a platform configured for attachment
to a proximal end of a tibia, (ii) a bearing supported on and movable in
relation to said platform, said bearing defining medial and lateral bearing
surfaces configured for rotating contact with said medial and lateral condyle
surfaces, and (iii) a spine fixedly attached to the bearing and projecting
superiorly from said bearing within said cam housing when said condyle
surfaces are in articulating contact with said bearing surfaces, and said spine
defining an anterior face facing said anterior cam and a posterior face
adapted for articulating contact with said posterior cam,
wherein said cam housing is configured to define an anterior-posterior
distance between said anterior cam and said posterior face of said spine
when said femoral component and said tibial component are in a normally
extended position relative to each other, whereby said posterior face of said
spine is in articulating contact with said posterior cam only at a first
predetermined flexion rotation angle between said femoral component and
said tibial component, and wherein said cam housing defines a width
sufficient to provide a clearance ranging between about 0.12 mm to about
0.50 mm on each side of said spine when said spine projects into said cam
housing.

Metzger‟s patent application is titled “Floating Bearing Knee Joint
Prosthesis With A Fixed Tibial Post.” The Examiner cited Metzger‟s
Figures 4, 13, 29-32, and portions of Metzger‟s text as evidence that claims
20, 21, and 23-26 would have been obvious. (Final Rej. 3-5.) According to
the Examiner, the only difference between Metzger‟s prosthesis and claim
20‟s prosthesis concerns the clearance between the spine (called a “post” in
Metzger‟s patent) and the cam housing. While Metzger‟s “cam housing (42)
defines a width which provides a clearance (seen in fig.4) on each side of the
spine (426),” and “Metzger discloses and shows a clearance for the purpose
of allowing some rotation (P0107-P0110), Metzger is silent to mention any
specific numerical values for the clearance.” (Id. at 4.) The Examiner found
however that “[i]t would have been an obvious matter of design choice to
have a clearance of about 0.12-0.5mm, since when general conditions of a
Appeal 2011-005375
Application 11/121,408

8
claim are disclosed or shown in the prior art (clearance in figures that
produces the same type and amount of movement), it is not inventive to
discover the optimum or workable ranges by routine experimentation. In re
Aller, 220 F.2d 454,456 . . . (CCPA 1955).” (Id.)
Appellants contend that Metzger did not disclose a spine in a fixed
relationship as claimed. (App. Br. 10-12.) Appellants contend:
Claim 20 recites a specific structural relationship between a spine and
the component that defines surfaces for articulating with a femoral
component. The spine must be fixed with respect to that component.
The spine of Metzger moves with respect to the component of
Metzger that defines surfaces for articulating with a femoral
component. A structural configuration that allows movement is not a
fixed configuration.

(Id. at 11, citing Metzger‟s paragraph 115.)
The Examiner‟s view was that “[i]n the embodiment shown in figures
29-32, bearing is considered 402+404, thus the spine (426) is fixedly
attached to bearing, it is attached to bearing part 404.” (Final Rej. 3.)
However, Appellants‟ citation of Metzger‟s paragraph 115, rebuts that
position. Paragraph 115 states: “bearing component 402 only has one
degree of freedom, that being anteriorly and posteriorly, relative the tibial
bearing component 404.” (Metzger, ¶ 115.) Thus, because Metzger‟s
bearing components 402 and 404 can move relative to each other, they are
not fixedly attached. It follows that if Metzger‟s post or spine 426 is fixedly
attached to bearing component 404, it cannot be fixedly attached to bearing
component 402. It is Metzger‟s bearing component 402 that corresponds to
the claimed “bearing defining medial and lateral bearing surfaces configured
for rotating contact with said medial and lateral condyle surfaces” to which
the spine must be fixedly attached. As 402 has the ability to move anteriorly
Appeal 2011-005375
Application 11/121,408

9
and posteriorly with respect to 404, it necessarily so moves with respect to
the post or spine, and the post or spine affixed to 404 cannot reasonably be
viewed as fixedly attached to 402. The rejection over Metzger is therefore
reversed.

III.
The rejection of claims 1-14 and 20-26 over Pottenger
Claim 1 reads (emphasis added):
1. A knee prosthesis comprising:
a femoral component configured to be attached to a distal end of a
femur and having medial and lateral condyle surfaces spaced apart from
each other to define a notch therebetween, said notch defining an elongated
cam housing having a posterior cam at one end of said cam housing; and
a tibial component including (i) a platform configured for attachment
to a proximal end of a tibia, (ii) a bearing supported on and rotatable in
relation to said platform, said bearing defining medial and lateral bearing
surfaces configured to articulate with said medial and lateral condyle
surfaces, and (iii) a spine projecting superiorly from said bearing within said
cam housing when said medial and lateral condyle surfaces are in
articulating contact with said bearing surfaces,
wherein said spine defines an anterior face and an opposite posterior
face facing said posterior cam, said posterior face and said posterior cam
defining complementary curved surfaces configured for cooperative
engagement when said femoral component and said tibial component are
rotated relative to at least a predetermined flexion angle, and
wherein said cam housing defines a width sufficient to provide a
clearance ranging between about 0.12 mm to about 0.50 mm on each side of
said spine when said spine projects into said cam housing.

Pottenger‟s patent is titled “Prosthetic Knee With Adjusted Center Of
Internal/External Rotation.” The Examiner cited Pottenger‟s Figures 45-48
as evidence that claims 1-14 and 20-26 would have been obvious. (Final
Rej. 5-8.) According to the Examiner, the only difference between
Appeal 2011-005375
Application 11/121,408

10
Pottenger‟s prosthesis and claim 1‟s prosthesis concerns the clearance
between the spine (called a “stabilization member” in Pottenger‟s patent)
and the cam housing: “the cam housing defines a width that provides a
clearance on each side of the spine (spine 342 shown chamfered, thus some
clearance in cam 344; see fig. 45, 47). Although Pottenger discloses and
shows a clearance that would allow pivoting, Pottenger is silent to mention
any specific numerical values for the clearance or pivot.” (Id. at 6.) The
Examiner found however that “[i]t would have been an obvious matter of
design choice to have a clearance of about 0.12-0.5mm and pivot between
0.5 and 2.5 degrees, since when general conditions of a claim are disclosed
or shown in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation. In re Aller, 220 F.2d 454,456,
105 USPQ 233, 235 (CCPA 1955).” (Id.)
As an initial matter, Appellants contend that In re Aller “is not
analogous to the Pottenger invention and the invention of claim 1,” because
the Aller case concerned temperature and acid concentration conditions for a
chemical process, not “the conditions maintained in producing a prosthetic
device.” (App. Br. 15.) In Appellants‟ view, “[b]ecause the Examiner's
reasoning for a finding of obviousness is based upon a flawed application of
In re Aller, the Examiner has failed to provide a clear articulation of the
reason why claim 1 would have been obvious.” (Id. at 16.) Appellants are
mistaken. It is long-settled that the principle the Examiner relied upon is of
general applicability. While Aller’s invention was in the chemical field, the
Aller decision itself cited several “mechanical” cases as authorities for the
same principle. See Aller, 220 F.2d at 456, citing in addition to “chemical”
cases, In re Scherl, 156 F.2d 72 (CCPA 1946) (concerning the angle at
Appeal 2011-005375
Application 11/121,408

11
which parts to be welded should abut); In re Sola, 77 F.2d 627 (CCPA 1935)
(cross-sectional size of transformer casing parts); In re Irmscher, 150 F.2d
705 (CCPA 1945) (apparatus for package handling). See also, In re Kubin,
561 F.3d 1351, 1360 (Fed. Cir. 2009) (“This court cannot, in the face of
KSR, cling to formalistic rules for obviousness, customize its legal tests for
specific scientific fields in ways that deem entire classes of prior art
teachings irrelevant, or discount the significant abilities of artisans of
ordinary skill in an advanced area of art”); KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (“[an obviousness] analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ”).
Appellants argue that if the Aller rule applies, “the Examiner must
establish that there is no change in „kind,‟” but the Examiner failed to do so.
(App. Br. 16.) Appellants contend that the claimed invention provides a
specific range of varus-valgus pivoting, but Pottenger focused instead on
internal-external rotation, which is not the same kind of motion. (Id. at 16,
citing Pottenger‟s Abstract.) According to Appellants, “the „kind‟ of device
of claim 1 is a device which is constructed to provide a specific range of
varus-valgus pivoting,” which is not the same kind of motion as internal-
external rotation. (Id. at 17-18.)
In the decision appealed from, the Examiner was unpersuaded by
Appellants‟ earlier arguments because the clearance Pottenger showed
between spine and cam housing “is the „general condition‟” to be adjusted
per Aller. (Final Rej. 2.) According to the Examiner, Metzger evidenced
Appeal 2011-005375
Application 11/121,408

12
that it was known that the clearance of spines allows differing degrees of
rotation and distraction. (Id., citing Metzger at ¶¶ 108-110.)
Appellants‟ citation of Pottenger‟s Abstract does not give due weight
to Pottenger‟s disclosure as a whole. In addition to the internal/external
rotation mentioned in the Abstract, Pottenger also stated:
The natural human knee joint is a device having six degrees of
freedom. It provides flexion/extension capability, varus/valgus ability
and internal/external rotation ability relative to the longitudinal axes
of the femur and tibia. In addition, the natural human knee provides
anterior/posterior translation with the flexion/extension motion that is
described above. The inventors believe that providing at least the
same degrees of freedom as the natural knee in a knee prosthesis is
most likely to provide a satisfactorily performing prosthesis.

(Pottenger, col. 2, l. 63 – col. 3, l. 5, emphasis added.) Thus, Pottenger
stated: “Another object of the present invention is to provide a knee
prosthesis capable of movement among degrees of freedom comparable to
the natural human knee” (Pottenger, col. 6, ll. 36-39.) This evidence is
sufficient to support finding that Pottenger taught adjusting the spine/cam
housing clearance to achieve the same degrees of freedom as the natural
knee. Appellants addressed the same problem: “It is one object of the
present invention to provide a prosthetic knee that accurately and efficiently
emulates the kinematics and function of a normal, health knee.” (Spec. 6.)
The Examiner‟s rebuttal evidence, Metzger‟s ¶¶ 108-110, evidences that
limiting varus valgus distraction to between 0° and 5° by the shape of the
post was a known technique for making a prosthetic knee function as a
normal knee.
On this evidence, “the nature of the problem called for exactly the
solutions in the prior art.” Princeton Biochemicals, Inc. v. Beckman Coulter,
Appeal 2011-005375
Application 11/121,408

13
Inc., 411 F.3d 1332, 1338-1339 (Fed. Cir. 2005) (affirming obviousness
where motivation was found in the knowledge of those skilled in the art at
the time, and where the nature of the problem also supplied a motivation);
accord, DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick
Co., 464 F.3d 1356, 1366 (Fed. Cir. 2006) (“the „evidence‟ of motive will
likely consist of an explanation of the well-known principle or problem-
solving strategy to be applied”). We find Appellants‟ arguments
unpersuasive because they focus too narrowly on only one aspect of
Pottenger‟s disclosure, the internal/external rotation teachings, and do not
give due weight to Pottenger‟s whole disclosure, which specifically included
varus/valgus ability as a normal function to be provided by a prosthetic knee.
Further, Appellants‟ argument does not give due weight to the evidence
from Metzger that limiting varus/valgus by adjusting the prosthesis post was
part of the knowledge in the art.
In determining whether the subject matter of a patent claim is obvious,
neither the particular motivation nor the avowed purpose of the
patentee controls. What matters is the objective reach of the claim. If
the claim extends to what is obvious, it is invalid under § 103. One of
the ways in which a patent's subject matter can be proved obvious is
by noting that there existed at the time of invention a known problem
for which there was an obvious solution encompassed by the patent's
claims.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 419-20 (2007).

Claim 4
Claim 4 recites “wherein said anterior cam defines a substantially flat
surface complementary to said anterior face of said spine.” The rejection
simply directed the reader to “see Pottenger‟s corresponding figures.” (Final
Appeal 2011-005375
Application 11/121,408

14
Rej. 6.) Appellants contend that in Pottenger‟s Figure 34, while spine 242 is
“arguably substantially flat,” the anterior surface of cam 244 is a curve.
(App. Br. 21-22.) We agree, and note a curved cam surface in Figures 45
and 47 which the Examiner earlier cited. As the rejection of claim 4 did not
account for the differently faced anterior cam, the rejection is reversed.

Claim 9
Claim 9 recites “wherein said spine terminates in a rounded posterior
peak.” Claim 9 depends from claim 8, which defines a spine with a concave
posterior face. Appellants contend that in Figure 38, Pottenger‟s spine 242
does not have both a concave posterior face and a rounded projection in the
posterior direction. (App. Br. 22-25.) We agree that when the limitation of
claim 9 is taken with claim 8, the spine shown in Pottenger‟s Figure 38 does
not have the shape required by claim 9. The Examiner cited Pottenger‟s
Figures 45-48, and we note that the spines shown in those figures likewise
do not have the required shape. The rejection of claim 9 is therefore
reversed.

Claims 20-26
Although Appellants set out claims 20-26 in separate groups,
Appellants rely solely on their arguments regarding claim 1. (App. Br. 25-
27.) As those arguments were unpersuasive, the rejections of claims 20-26
are affirmed.

Appeal 2011-005375
Application 11/121,408

15
Designation of Affirmance as a New Ground of Rejection:
This affirmance of the rejection over Pottenger relies on additional
portions of Pottenger‟s disclosure that were not cited in the Final Rejection.
It also relies on Metzger‟s teachings as evidence of knowledge in the art.
We therefore designate the affirmance as a new ground of rejection.
37 C.F.R. § 41.50(b).

IV and V.
The rejections over Noiles, and Noiles with Van Zile
The Examiner cited features shown in Noiles‟ Figures 6, 8, and 9 as
evidence that Noiles described a knee prosthesis having the features
Appellants claim except that “[a]lthough Noiles discloses and shows a
clearance for pivoting (see fig.6; co1.5, lines 12- 22), Noiles is silent to
mention any specific numerical values for the clearance and amount of
pivoting.” (Final Rej. 9.) The Examiner concluded: “It would have been an
obvious matter of design choice to have a clearance of about 0.12-0.5mm,
and 0.5-2.5 degrees pivot, since when general conditions of a claim are
disclosed or shown in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation. In re Aller,
220 F.2d 454,456,105 USPQ 233, 235 (CCPA 1955).” (Id.)
Appellants contend that Aller is non-analogous, and even if applied,
Aller does not support the Examiner‟s conclusion. (App. Br. 28.) As an
initial matter, we think the principle stated in Aller is applicable, for the
reasons discussed in section III above. We therefore turn directly to
Appellants‟ contentions that the kind of device Noiles described could not
have rendered the appealed claims obvious.
Appeal 2011-005375
Application 11/121,408

16
The Noiles patent is titled “Semi-Constrained Artificial Joint.”
Appellants contend that Noiles‟ device “prevents the bearing surfaces from
sliding past one another along their axis of rotation.” (App. Br. 30, quoting
Noiles‟ Abstract.) According to Appellants, Noiles addressed anterior-
posterior sliding that could result in anterior dislocation of the femur, a
problem distinct from varus/valgus movement. (Id.)
Appellants contend: “The argument of the Examiner is apparently that
even if the device of Noiles is a different „kind‟ of device, the device of
Noiles still provides the kind of result addressed by the Appellants' device.
This argument is contrary to the express teaching of Noiles.” (App. Br. 31,
emphasis added.) To support their point, Appellants quote from Noiles:
Specifically, at column 5, lines 3-11 Noiles states:
Although the interface between femur component 10 and
intermediate component 12 is designed to constrain the joint against
lateral and anterior dislocations, it is specifically designed not to
constrain the joint with regard to varus or valgus rotations of the tibia
with respect to the femur. As discussed above, this non-constraint
means that the collateral ligaments of the patient must function to
stabilize the joint with respect to varus-valgus articulation. (Emphasis
added).

(Id.) In the partially underlined sentence, the antecedent of “it” is “the
interface between femur component 10 and intermediate component 12.”
We find that sentence means only that the interface between components 10
and 12 is specifically not designed to constrain varus valgus rotations.
As noted above, the Examiner cited Noiles‟ column 5, lines 12-22.
These lines immediately follow the statement that the interface between
components 10 and 12 was not designed to constrain varus valgus rotations,
Appeal 2011-005375
Application 11/121,408

17
and further teach that adequate clearance between post 46 and walls 28 and
30 is provided to allow for lateral rotations.
These varus or valgus articulations are effectuated in the joint
of the present invention by bearing surface 34 pivoting about either
the left or the right hand outer edge of bearing surface 20 so as to
bring bearing surfaces 20 and 34 out of engagement. to allow this
motion to occur without binding of stop 46 against walls 28 or 30, the
upper portion of the stop is chamfered at 50. As can best be seen in
FIG. 6, this chamfering provides adequate clearance between stop 46
and walls 28 and 30 during lateral rotations of the patient's lower leg
with respect to his upper leg.

(Noiles, col. 5, ll. 12-22.) The referenced Figure 6 is reproduced here:

Figure 6 is a front view “of the joint of FIG. 1 at a flexion angle of
approximately 45°.” (Noiles, col. 3, ll. 26-28.) We find that Noiles
explicitly taught that chamfering at 50 on the top of post 46 provides
Appeal 2011-005375
Application 11/121,408

18
adequate clearance between walls 28 and 30 for varus valgus motion to
occur.
Appellants contend that “even if clearance is shown in FIG. 6 of
Noiles, such clearance is not directly or indirectly related to providing a
specific range of varus-valgus pivoting.” (App. Br. 31.) In the passages
quoted above, Noiles explicitly stated that the prosthesis would not be
designed to limit varus-valgus pivoting, and the prosthesis would rely
instead on the patient‟s ligaments for that function. The fair reading is that
clearance provided by chamfering at 50 on top of post 46 is to allow, not to
limit, varus-valgus motion. We find this evidence insufficient to support
finding that Noiles suggested limiting varus-valgus motion by adjusting the
spine/cam housing clearance to a range between about 0.12 mm to about
0.50 mm on each side of said spine when said spine projects into said cam
housing. As the rejection was based on that finding, and no other reason to
limit the clearance to the recited range was proposed, we are compelled to
reverse the rejection. As claim 15 includes the same clearance requirement,
and the rejection based on Noiles and Van Zile does not make up for this
deficiency, that rejection must also be reversed.

37 C.F.R. § 41.50(b)
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
Appeal 2011-005375
Application 11/121,408

19
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

SUMMARY
We reverse the rejection of claims 20, 21, and 23-26 under 35 U.S.C.
§ 103(a) as unpatentable over Metzger.
We affirm the rejection of claims 1-3, 5-8, 10-14, and 20-26 under
35 U.S.C. § 103(a) as unpatentable over Pottenger.
We reverse the rejection of claims 4 and 9 under 35 U.S.C. § 103(a)
as unpatentable over Pottenger.
We reverse the rejection of claims 1-11, 13, 14, 20, and 22-25 under
35 U.S.C. § 103(a) as unpatentable over Noiles.
We reverse the rejection of claims 15-19 under 35 U.S.C. § 103(a) as
unpatentable over Noiles and Van Zile.

Appeal 2011-005375
Application 11/121,408

20
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; 37 C.F.R. § 41.50(b)

alw