Arlen D. Hanssen et al.

Patent Trials and Appeals Board

Jan 2, 2020

14278916 - (D) (P.T.A.B. Jan. 2, 2020)

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.
14/278,916 05/15/2014 Arlen D. Hanssen 4394.374U12 9706
104326 7590 01/02/2020
Schwegman Lundberg & Woessner / Zimmer
P.O. Box 2938
Minneapolis, MN 55402
EXAMINER
PREBILIC, PAUL B
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
01/02/2020 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):
SLW@blackhillsip.com
USPTO@slwip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARLEN D. HANSSEN and DAVID LEWALLEN
Appeal 2018-001527
Application 14/278,916
Technology Center 3700
Before ERIC B. GRIMES, FRANCISCO C. PRATS, and
JENNIFER MEYER CHAGNON, Administrative Patent Judges.
CHAGNON, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 2–29. We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.

1 In this Decision, we refer to the Specification filed May 15, 2014
(“Spec.”); Non-Final Office Action dated April 4, 2017 (“Non-Final Act.”);
Appeal Brief filed August 18, 2017 (“Appeal Br.”); Examiner’s Answer
dated October 3, 2017 (“Ans.”); and Appellant’s Reply Brief filed
November 28, 2017 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Zimmer, Inc.
Appeal Br. 2.
Appeal 2018-001527
Application 14/278,916

2
CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to “prosthetic devices for implantation
within a bone, and more particularly to support structures that are affixed to
a bone and that support prosthetic implants.” Spec. ¶ 3. Claim 2,
reproduced below, is illustrative of the claimed subject matter:
2. An acetabular system implantable in an acetabular
cavity in a patient, comprising:
an acetabular cup implant; and
a support component for occupying an area in the
acetabular cavity, the support component connected to the
acetabular cup implant for supporting the acetabular cup implant
in the acetabular cavity, the support component including an
outer surface for facing an inner surface of the acetabular cavity
and an interior into which only part of the acetabular cup implant
is received, the support component being formed separately from
the acetabular cup implant for subsequent connection to the
acetabular cup implant, the support component capable of being
impacted, by itself, into the acetabular cavity for obtaining a
press fit of the support component in the acetabular cavity, the
support component being formed with a porous metal material
that is a bone ingrowth-receptive material with a porous
structure for allowing bone of the patient to grow into and
throughout the support component for restoring lost bone stock
in the acetabular cavity in the area occupied by the support
component when the support component is implanted in the
acetabular cavity.
Appeal Br. 76 (emphasis added).
Appeal 2018-001527
Application 14/278,916

3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kampner U.S. Patent 4,840,632 June 20, 1989
Grimes U.S. Patent 5,176,711 Jan. 5, 1993
Christie U.S. Patent 5,192,329 Mar. 9, 1993
Tullos U.S. Patent 5,658,338 Aug. 19, 1997
Draenert U.S. Patent 5,958,314 Sept. 28, 1999
REJECTIONS
The Examiner maintains the following rejections on appeal:
1. Claims 2–29 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement. Non-Final Act. 2–4.
2. Claims 2, 8–12, 14–19, 21–24, 26, and 27 stand rejected
under 35 U.S.C. § 103(a) as having been obvious over Grimes
and Draenert. Id. at 4–5.
3. Claims 4, 5, 13, 20, and 25 stand rejected under 35 U.S.C.
§ 103(a) as having been obvious over Grimes, Draenert, and
Christie. Id. at 5–6.
4. Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as
having been obvious over Grimes, Draenert, and Tullos. Id.
at 6–7.
5. Claims 3, 28, and 29 stand rejected under 35 U.S.C. § 103(a)
as having been obvious over Grimes, Draenert, and Kampner.
Id. at 7.
OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to Appellant’s arguments. We are persuaded by
Appeal 2018-001527
Application 14/278,916

4
Appellant’s arguments that the Examiner erred in rejecting the claims based
on the grounds of rejection set forth above.
Written Description
Claims 2–29 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Non-Final
Act. 2–4. In particular, the Examiner contends that the claim language “a
porous structure for allowing bone of the patient to grow into and throughout
the support component”, as recited in claim 2, with similar language in the
other independent claims, “lacks clear original support.” Id. at 3.
Appellant contends there is direct support in the Specification for
“(i) forming the support component from a porous metal material; and
(ii) having the entire structure of the support component be porous (and thus
capable of receiving bone ingrowth),” and there is, thus, “support for the
support component being formed with a porous metal material and for the
support component’s ability to allow bone of the patient to grow into and
throughout itself for restoring lost bone stock in the acetabular cavity, as
claimed.” Appeal Br. 9–10; see also id. at 8–18 (expanding upon this
contention). We agree.
The Specification describes that “[o]ne problem commonly
encountered by surgeons replacing joints is the loss of strong bone stock
near the joint being replaced.” Spec. ¶ 4. As such, “there is a need for a
prosthetic implant system . . . that encourages bone ingrowth and attachment
over as large a surface area as possible.” Id. ¶ 10. According to the
Specification, the present invention solves this problem. See id. ¶¶ 19, 97.
Appeal 2018-001527
Application 14/278,916

5
As described with respect one embodiment of the invention, “the
support structure comprises a hollow porous cylindrical sleeve.” Id. ¶ 13.
Figure 8 is reproduced below.

Figure 8, above, is a cross-sectional view of the prosthetic implant support
structure (i.e., cylindrical sleeve 50) of an embodiment being placed in a
femur. Id. ¶ 28. As described, cylindrical sleeve 50 may be formed from
“a porous metal alloy.” Id. ¶ 58. Appellant contends that a person of
ordinary skill in the art also would understand the Specification’s language
“into the porous structure of the sleeve” means the entire sleeve has a porous
structure. Appeal Br. 16 (citing Spec. ¶ 60, emphasis Appellant’s).
Although the previously discussed embodiment is directed to a
support component shaped as a sleeve, the Specification further describes
another embodiment, which is “particularly useful in the acetabulum and
hip,” in which “[a]ll surfaces against host bone . . . are available for bone
ingrowth into porous materials used for the components.” Spec. ¶ 14.
Appeal 2018-001527
Application 14/278,916

6
Appellant presents testimony that a porous structure that is receptive to bone
ingrowth has the ability to restore lost bone stock in an area occupied by the
porous structure. See Lewallen Decl.3 ¶ 6.
In the Answer, the Examiner contends that “restoring lost bone stock
does not necessarily means [sic] that the implant must be porous throughout
only that the implant must be capable [of] replacing the bone from a purely
structural standpoint. It does not require that the implant be porous
throughout.” Ans. 2. We agree with Appellant, however, that in
combination with the figures, e.g., Figure 8, the disclosures of at least
paragraphs 13, 55, 58, and 60 of the Specification support claims directed to
the support component being formed entirely with a porous metal material,
even if this is not required in all of the Specification’s embodiments. See
Reply Br. 12–14; see also Appeal Br. 22 (Appellant arguing that
“Appellant’s disclosure is not limited to embodiments where only the very
outer surface is porous and available for bone ingrowth. It also includes
embodiments where a support component is porous throughout.”).
Written description requires that the Specification demonstrates
Appellant had possession of the claimed invention at the time the application
was filed. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc). Based on at least the foregoing disclosures of the
Specification and the testimony presented in the Lewallen Declaration, we
are persuaded that Appellant had possession of the support component being
formed entirely with porous metal material. We further agree with
Appellant that, based on the disclosures above and those cited by Appellant,

3 Declaration of David G. Lewallen under 37 C.F.R. § 1.132, executed
March 16, 2017 (“Lewallen Decl.”).
Appeal 2018-001527
Application 14/278,916

7
a person of ordinary skill in the art would have understood that such a
porous support structure “allow[s] bone of the patient to grow into and
throughout the support component,” as claimed. We therefore reverse the
rejection under 35 U.S.C. § 112, first paragraph, for lack of adequate written
description.
Claims 3, 28, and 29 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Non-Final Act. 2–3. Claims 3 and 29 recite that the “support component . . .
is capable of being impacted and wedged, by itself, into the acetabular cavity
for obtaining a press fit . . . in the acetabular cavity.”4 Appeal Br. 77, 83–84.
In particular, the Examiner contends the claimed “‘wedged’ acetabular
support component lacks original support.” Non-Final Act. 3. According to
the Examiner, “the relevant prior art . . . refers to ‘wedged’ as relevant to
angled surfaces that can separate or push surfaces apart,” and does not apply
to acetabular cups. Id. at 8.
We agree with Appellant, however, that in the claim, the term
“wedged” is used as a verb, rather than as a noun or adjective as used by the
Examiner. Appeal Br. 29. The Specification notes that “[p]ress fit . . .
techniques can be employed in conjunction with the . . . prosthetic systems
according to the invention.” Spec. ¶ 47. In discussing embodiments of the
invention, the Specification describes support components being “impacted
into” the bone, so as to be “firmly wedged” therein. See id. ¶¶ 12, 49, 52,
57, 60, 64. The embodiments specifically directed to an acetabular cup
implant also discuss the support structure being “impacted into” the bone.

4 Claim 28, also subject to this rejection, depends from claim 3. Appeal
Br. 83.
Appeal 2018-001527
Application 14/278,916

8
See id. ¶¶ 70, 74, 77, 81, 84, 88, 91, 94. Based on at least the foregoing
disclosures of the Specification, we are persuaded that Appellant had
possession of the support component being “impacted and wedged, by itself,
into the acetabular cavity for obtaining a press fit.”
We therefore reverse the rejection under 35 U.S.C. § 112, first
paragraph, for lack of adequate written description.
Obviousness
Claims 2, 8–12, 14–19, 21–24, 26, and 27 stand rejected under
35 U.S.C. § 103(a) as having been obvious over Grimes and Draenert.
Non-Final Act. 4–5. Claims 4, 5, 13, 20, and 25 stand rejected under
35 U.S.C. § 103(a) as having been obvious over Grimes, Draenert, and
Christie. Id. at 5–6. Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a)
as having been obvious over Grimes, Draenert, and Tullos. Id. at 6–7.
Claims 3, 28, and 29 stand rejected under 35 U.S.C. § 103(a) as having been
obvious over Grimes, Draenert, and Kampner. Id. at 7. We address these
rejections together as the same issue is dispositive to all rejections.
The Examiner relies on acetabular shell 14 and augmentation piece 16
of Grimes as teaching the claimed acetabular cup and support structure,
respectively. See Non-Final Act. 4; Grimes 3:51–4:2, Figs. 2–5d, 7j. As
acknowledged by the Examiner, Grimes “does not disclose having the
porous material extending throughout the entire support structure.”
Non-Final Act. 4. For this feature of the claim, the Examiner points further
to Draenert. Id. According to the Examiner, Draenert “teaches that it was
known to make similar implants out of porous materials where the pores
extend throughout the entire piece.” Id. (citing Draenert 5:62–6:56). The
Examiner, thus, asserts that “it would have been considered clearly obvious
Appeal 2018-001527
Application 14/278,916

9
to an ordinary artisan to utilize porous material, as taught by Draenert in
making the piece (16) of Grimes for the same reasons that Draenert utilizes
the same or for the reason that it would have been a mere substitution of one
known material for another to yield a predictable result.” Id. at 5 (citing
MPEP 2143).
Appellant argues Draenert does not teach anything about acetabular
support components for connecting components in a patient’s body. Appeal
Br. 34. Appellant further contends that the “overwhelming majority of
component (16) in Grimes is completely non-porous and thus
overwhelmingly not receptive to bone ingrowth” and “Grimes fails to shed
any light on how having bone growth throughout component (16) would
affect the efficacy of that particular component and/or things connected to it
in the body . . . over time.” Id. at 35. According to Appellant, a person of
ordinary skill in the art would not have modified Grimes in view of
Draenert, as proposed by the Examiner. Id. at 34–36.
We agree that a preponderance of the evidence does not support the
Examiner’s findings that the skilled artisan would have been motivated to
combine Grimes and Draenert. A prima facie case for obviousness “requires
a suggestion of all limitations in a claim,” CFMT, Inc. v. Yieldup
International Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003), and “a reason
that would have prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention does,” KSR
International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
As acknowledged by the Examiner (Non-Final Act. 4), Grimes
discloses a porous coating on the surface of augmentation piece 16. Grimes
3:51–4:2. The Examiner has not identified any other teaching in Grimes
Appeal 2018-001527
Application 14/278,916

10
regarding the porous coating, such as a reason that the coating material
would not need to be a different substance from that of the remainder of the
augmentation piece, as Grimes discloses.
Draenert teaches a process
for producing a positive-material with a skeleton made of
shell-like structures and an interconnecting pore system
designed between the skeleton structures. Also disclosed is a
process for producing a negative-material made of shaped
bodies interconnected by bridges[,] a process for producing a
positive/negative-material, materials produced by this process
and their use as bone replacement materials, implants, filters
and drug delivery systems. According to this process
deformable shaped bodies in bulk are poured into a mold that
forms a negative model of the material.
Draenert Abstract. Along with the Abstract, the Examiner points to
Draenert’s Figures 1–10, which depict porous substances made by the
processes described above. See Non-Final Act. 4.
Upon review of the disclosures identified by the Examiner, we are not
persuaded that a person of ordinary skill in the art would have found it
obvious to use the porous materials taught by Draenert to make the
augmentation piece of Grimes, as reasoned by the Examiner. The Examiner
has not identified a teaching that would have prompted the artisan to
combine the elements in the way the claimed new invention does. KSR,
550 U.S. at 418.
The Examiner also contends that Grimes has porous structures
because it includes holes that “can function for ingrowth even though they
are disclosed as providing visualization of the bone or screw attachments.”
Non-Final Act. 10; Ans. 8. Appellant counters that “[s]uch large holes
would never be interpreted by a person of ordinary skill in the art as ‘pores’
Appeal 2018-001527
Application 14/278,916

11
for receiving bone ingrowth” because “they are much, much too large.”
Appeal Br. 37; see also id. at 38 (discussing that pores suitable for bone
growth are often in the range of about 100–600 µm, which is much smaller
than the large holes in Grimes that are provided for receiving screws).
Appellant argues that, in any case, “the overwhelming majority of
component (16) in Grimes remains completely solid/non-porous and thus
overwhelmingly not receptive to bone ingrowth.” Id. at 37–38. The
Examiner responds that it was known in the art “to have large holes for bone
ingrowth.” Ans. 8–9. Even if we were to agree with the Examiner that the
large screw holes would be understood by a person of ordinary skill in the
art to be receptive to bone ingrowth, we still are not persuaded that their
presence in Grimes is a suggestion to have porous material extend through
the entire augmentation piece of Grimes. Further, even if a wholly porous
support component were desired, the Examiner has not pointed us to
teachings in Draenert that suggest the artisan would have reasonably
believed that the proposed “substitution of one known material for another to
yield a predictable result” (Non-Final Act. 5) would be successful,
particularly as the materials disclosed by Draenert are not the same size or
shape as the augmentation piece 16 of Grimes.
Appellant also submits extensive evidence of secondary
considerations (see Appeal Br. 39–69; Reply Br. 2–7), which the Examiner
contends lacks probative weight (Non-Final Act. 11–13; Ans. 9–11).
However, given that we conclude the references do not suggest the claimed
subject matter, we find that a preponderance of the evidence does not
support the Examiner’s conclusion that the rejected claims are obvious.
Because all of the rejections are based on the Examiner’s finding that a
Appeal 2018-001527
Application 14/278,916

12
person of ordinary skill in the art would have found it obvious to use the
porous materials taught by Draenert such that the augmentation piece 16 of
Grimes is porous throughout, we reverse all of the rejection under 35 U.S.C.
§ 103.
CONCLUSION
The Examiner’s rejections are reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
2–29 112, first
paragraph
2–29
2, 8–12,
14–19, 21–24,
26, 27
103(a) Grimes, Draenert 2, 8–12,
14–19,
21–24, 26,
27
4, 5, 13, 20,
25
103(a) Grimes, Draenert,
Christie
4, 5, 13,
20, 25
6, 7 103(a) Grimes, Draenert,
Tullos
6, 7
3, 28, 29 103(a) Grimes, Draenert,
Kampner
3, 28, 29
Overall
Outcome
2–29

REVERSED