Ex Parte Aram et al

Board of Patent Appeals and Interferences

Mar 13, 2012

11171180 (B.P.A.I. Mar. 13, 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.
11/171,180 06/30/2005 Luke Aram 1671-0337 6029
28078 7590 03/13/2012
MAGINOT, MOORE & BECK, LLP
CHASE TOWER
111 MONUMENT CIRCLE
SUITE 3250
INDIANAPOLIS, IN 46204
EXAMINER
SNOW, BRUCE EDWARD
ART UNIT PAPER NUMBER
3738
MAIL DATE DELIVERY MODE
03/13/2012 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 LUKE ARAM, DAN AUGER, ADAM HAYDEN,
and JORDAN LEE
__________

Appeal 2010-009896
Application 11/171,180
Technology Center 3700
__________

Before TONI R. SCHEINER, FRANCISCO C. PRATS, and
STEPHEN WALSH, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to methods of
configuring and implanting prostheses. The Examiner entered rejections for
new matter, anticipation, and obviousness. We have jurisdiction under 35
U.S.C. § 6(b).
We reverse the anticipation rejections.
We affirm the new matter rejection, however. We also affirm the
obviousness rejection, except as to one claim.
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STATEMENT OF THE CASE
Appellants invented a method of configuring a prosthesis for use in
total knee replacement procedures (see Spec. 1). In one embodiment, the
invention provides distinct, separate components for resurfacing the knee-
facing portion of the femur (see Figures 43 and 44).
The components may be deployed by attaching them to the femur, and
to each other, using connectors, such as screws (id.; see also Spec. 37). The
connectors may be made of resilient materials (Spec. 39; see also Figures
48A and 48B).
Claims 9-20 stand rejected and appealed (App. Br. 2). Claims 9 and
14, the independent claims, illustrate the appealed subject matter and read as
follows:
Claim 9. A method of configuring a prosthesis system comprising:
selecting one of a plurality of first components in a kit for
replacing a first surface portion of a bone, each of the plurality of first
components including a bone contacting side configured to be placed
against the bone;
selecting one of a plurality of second components in the kit for
replacing a second surface portion of the bone; and
connecting the selected first component to the selected second
component with a first resilient connector, the first resilient connector
formed from a material other than material used to form the second
component.

Claim 14. A method for implanting a prosthesis system comprising:
making an incision;
selecting a first component having a bone mounting surface, a
bone surface replacement surface, a first side adjacent to the bone
mounting surface and adjacent to the bone surface replacement
surface, and a second side adjacent to the bone mounting surface and
adjacent to the bone surface replacement surface;
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selecting a second component having a bone mounting surface,
a bone surface replacement surface, and a side adjacent to the bone
mounting surface and the bone surface replacement surface;
connecting the first component and the second component with
a resilient connector, the resilient connector of a material different
from material included in the second component, such that the first
side of the first component is in opposition to the side of the second
component;
inserting the connected first component and second component
through the incision; and
mounting the first and the second component on a bone such
that the bone mounting surface of the first component and the bone
mounting surface of the second component are in opposition to the
bone.

The following rejections are before us for review:
(1) Claims 9-20, under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement (Ans. 4);
(2) Claims 9, 10, 12, 14, and 18-20, under 35 U.S.C. § 102(e) as
anticipated by White1 (Ans. 4-6); and
(3) Claims 9-11 and 13-20, under 35 U.S.C. § 102(e) as anticipated by
or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Johnson2
(Ans. 6-7).
WRITTEN DESCRIPTION/NEW MATTER
The Examiner found that claims 9-20 recite “subject matter which was
not described in the specification in such a way as to reasonably convey to
one skilled in the relevant art that the inventor(s), at the time the application
was filed, had possession of the claimed invention” (Ans. 4). Specifically,

1 U.S. Patent App. Pub. No. 2006/0116770 A1 (published June 1, 2006).
2 U.S. Patent App. Pub. No. 2005/0278034 A1 (published December 15,
2005).
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the Examiner contended that Appellants added “the new limitation, ‘the first
resilient connector formed from a material other than material used to form
the second component’ to both independent claims (similar language for
claim 14)” (id.). However, the Examiner urged, Appellants “failed to
indicate where support could be found in the original disclosure,” and the
Examiner was unable to find support for the inserted language (id.).
Appellants contend that “[m]aterials used in forming condylar
components are well known. Specifically, the femoral components are made
of a hard material such as stainless steel or chromium cobalt alloy. (See, e.g.,
U.S. Patent No. 3,878,566 at column 3, line 56, et seq.)” (App. Br. 8).
In contrast to the Examiner’s position, Appellants argue, “the resilient
connectors, as disclosed at page 39, lines 8-15 of Appellants’ specification,
are made of suitable resilient materials which include nitinol, polyurethanes,
elastomers and liquid metals” (id.). Thus, Appellants reason, “the materials
specifically identified are different from, and more resilient than, the
materials known by those of ordinary skill in the art to be used in forming
femoral components” (id.).
Further, Appellants argue, the Specification “need not disclose what is
well-known to those skilled in the art and preferably omits that which is
well-known to those skilled and already available to the public” (id. (citing.
In re Buchner, 929 F.2d 660, 661 (Fed. Cir. 1991))).
We find that the Examiner has the better position.
While we agree with Appellants that a disclosure may be enabling
even if it does not describe what is already well known, Buchner, 929 F.2d
at 661, the Examiner’s written description rejection presents a different issue
than the enablement rejection discussed in Buchner. See Ariad
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Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1340 (Fed. Cir.
2010) (“We now reaffirm that § 112, first paragraph, contains a written
description requirement separate from enablement . . . .”) (emphasis added).
As stated in TurboCare Div. of Demag Delaval Turbomachinery
Corp. v. General Elec. Co., 264 F.3d 1111, 1118 (Fed. Cir. 2001):
The written description requirement and its corollary, the
new matter prohibition of 35 U.S.C. § 132, both serve to ensure
that the patent applicant was in full possession of the claimed
subject matter on the application filing date. When the applicant
adds a claim or otherwise amends his specification after the
original filing date . . ., the new claims or other added material
must find support in the original specification.

It is well settled, however, that “[i]n order to satisfy the written
description requirement, the disclosure as originally filed does not have to
provide in haec verba support for the claimed subject matter at issue.”
Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir.
2000).
Nonetheless, where the disclosure does not provide word-for-word
support for claimed subject matter, “a description that merely renders the
invention obvious does not satisfy the requirement.” Ariad v. Lilly, 598 F.3d
at 1352.
Thus, as the Federal Circuit has explained, “the written description
must include all of the limitations . . ., or the applicant must show that any
absent text is necessarily comprehended in the description provided and
would have been so understood at the time the patent application was filed.”
Hyatt v. Boone, 146 F.3d 1348, 1354-55 (Fed. Cir. 1998) (emphasis added).
Here, Appellants’ arguments do not persuade us that an ordinary
artisan would have understood that the Specification describes the second
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bone surface-replacing component of the inventive prosthesis as necessarily
being made of a different material than the resilient connector.
It is undisputed that the limitation at issue does not find literal textual
support in the disclosure. Moreover, page 39 of the Specification simply
does not state what materials are to be used to make the non-connector
components of the inventive prostheses, and Appellants point to no other
portion of the disclosure explaining what those components are to be made
of.
Thus, while it might be true that ordinary artisans would have
understood what materials would be useful to make knee prostheses,
Appellants have directed us to no portion of the Specification that would
have led an ordinary artisan to unequivocally conclude that the non-
connector components of the inventive prostheses were to be made of any
particular material. We are therefore not persuaded that the Specification
would have led an ordinary artisan to necessarily conclude that the
disclosure included an embodiment in which the non-connector components
were composed of materials different than the materials used to make the
connectors. While the Specification might have made it obvious to make the
prostheses using a combination of different materials as claimed, descriptive
support cannot be demonstrated merely by showing that the limitations at
issue would have been obvious from the alleged supporting disclosure. See
Ariad v. Lilly, 598 F.3d at 1352.
In sum, Appellants’ arguments do not persuade us that the Examiner
erred in rejecting claims 9-20 under 35 U.S.C. § 112, first paragraph. We
therefore affirm that rejection.
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ANTICIPATION – WHITE
The Examiner rejected claims 9, 10, 12, 14, and 18-20 as anticipated
by White (Ans. 4-6).
Among other reasons, Appellants traverse the Examiner’s finding of
anticipation because, “in order to anticipate claim 9, the formed prosthesis
must be configured for placement on a single bone, with both of the
components providing a replacement surface for the bone on which they are
positioned” (App. Br. 12).
The Examiner responds that White’s device is capable of fulfilling the
intended uses and functional limitations recited in the claims (Ans. 9-10). In
particular, the Examiner urges, White’s three-piece intra-vertebral prosthesis
provides a replacement surface for the vertebra it replaces, and the pieces of
the device that correspond to the first and second components of the claimed
device are “fully capable of contacting a remaining rear portion of the
replaced vertebrae bone 72 with a bone contacting side” (id. at 10 (citing
White, Figure 8)). Further, the Examiner notes, “entire bone 72 was not
removed. It would be advantageous to leave as much of the bone 72 as
possible to help fuse vertebrae 70 and 74” (id. at 11 (citing White, Figure
8)).
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . . After evidence or
argument is submitted by the applicant in response,
patentability is determined on the totality of the record, by a
preponderance of evidence with due consideration to
persuasiveness of argument.

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While we have carefully considered the Examiner’s position, we are
not persuaded that the Examiner has adequately explained why White
describes a method having all of the claimed features.
We agree that “‘[f]unctional’ terminology may render a claim quite
broad . . .[;] a claim employing such language covers any and all
embodiments which perform the recited function.” In re Swinehart, 439
F.2d 210, 213 (CCPA 1971). Thus, functional limitations directed to an
intended use of an apparatus claim do not serve to distinguish the claimed
apparatus from prior art apparatuses inherently capable of performing the
claimed function. See In re Schreiber, 128 F.3d 1473, 1478-79 (Fed. Cir.
1997) (holding prior art apparatus anticipatory because it was inherently
capable of performing the claimed function).
We also agree that claim 9 recites a relatively simple method in which
two components are a connected to each other using a resilient connector
made of a material different from that used to form one of the components.
Claim 9 does, however, state that the first component is “for replacing a first
surface portion of a bone” and also includes “a bone contacting side
configured to be placed against the bone” (App. 29 (emphasis added)).
Thus, we interpret claim 9 as reciting a method that uses a component
capable not only of replacing the surface of a bone, but also capable of
contacting the same bone whose surface is being replaced. As seen in the
embodiments discussed above, this may be accomplished by a component
that is shaped to conform to the bone, or cover it, so as to provide a
replacement surface, such as performed in a total knee replacement (see
Appellants’ Figures 43 and 44).
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In contrast, the Examiner’s anticipation rejection of claim 9 is based
on the finding that White’s device is configured such that one or the other
end portions of the device would contact a portion of removed vertebra 72, if
that vertebra was not fully removed (see Ans. 10-11).
However, White explicitly states that its “vertebral replacement
device 10 can be placed between vertebra 70 and vertebra 74 after removal
of vertebra 72” (White [0070] (emphasis added)). Thus, contrary to the
Examiner’s position, White describes total, rather than partial, removal of
the vertebra to be replaced.
We are therefore not persuaded that the Examiner has adequately
explained why White’s device is capable of providing both a replacement
surface for a bone, and also contact the bone whose surface is replaced.
While the Examiner urges that partial removal of the vertebra would be
advantageous, and would result in contact between an end component of the
device and the partially removed bone, the Examiner points to no portion of
White that explicitly or inherently discloses replacement of a partially
removed vertebra in that manner. Nor does the Examiner point to any
embodiment showing that one of the end portions of White’s device, when
connected to the other two portions, would necessarily be capable of
contacting a portion of a bone, while also providing a replacement surface
for that bone.
In sum, as we are not persuaded that the Examiner has adequately
explained why White describes a method that uses components capable of
performing as required by claim 9, we reverse the Examiner’s anticipation
rejection of that claim, and its dependents, over White. As claim 14 recites a
process requiring similarly configured components, we also reverse the
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Examiner’s anticipation rejection of that claim, and its dependents, over
White.
ANTICIPATION – JOHNSON
The Examiner rejected claims 9-11 and 13-20 as anticipated by or, in
the alternative, as obvious over Johnson (Ans. 6-7).
Appellants argue that the Examiner erred in finding that Johnson
anticipates the rejected claims, because the Examiner has not shown that the
connectors joining Johnson’s femoral surface replacing components are
necessarily formed of a material different than the material forming the
components themselves, as required by independent claims 9 and 14 (App.
Br. 22-24).
The Examiner responds that the claims do not recite “that the material
used to form the connector is a different type of material used to form
second component. Material can not be in two places at one time. It is
impossible that the material forming the connector is the same of the
material forming the second component” (Ans. 13-14).
Further, the Examiner urges, Johnson “teaches in claim 22, ‘at least
one of the components includes a CSTi coating’” (id. at 14). Therefore, the
Examiner reasons “one . . . component is formed with a coating and the
other is not. This also inherently fulfills the language, ‘the first resilient
connector formed from a material other than the material used to form the
second component’” (id.).
Claim 9 recites connecting first and second bone resurfacing
components with a “first resilient connector formed from a material other
than material used to form the second component” (App. Br. 29). Claim 14
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similarly requires the resilient connector to be formed “of a material
different from a material included in the second component” (id. at 30).
We are not persuaded that an ordinary artisan would have considered
it reasonable to interpret two components, such as two bricks, with identical
chemical compositions, to be composed of different materials simply
because the two bricks were separate from each other. Thus, we are also not
persuaded that Johnson’s connection mechanisms 54 were necessarily
formed of a different material than that forming mating components 12 and
14, merely because those pieces are not contiguous (see Johnson, Figure 5).
Moreover, the fact that one or the other of Johnson’s components can
have a particular coating (Johnson, p. 8 (claim 22)) does not persuade us that
the component having that coating is “formed from” the coating material as
recited in claim 9, or that the coating is “included in” the component
(emphasis added) as claim 14 requires. Thus, as we are not persuaded that
Johnson describes a process having all of the features of independent claims
9 and 14, we reverse the Examiner’s anticipation rejection of those claims,
and their dependents, over Johnson.
OBVIOUSNESS – JOHNSON
The Examiner alternatively concluded that claims 9-11 and 13-20
would have been obvious to an ordinary artisan (Ans. 7). Specifically, the
Examiner posited that an ordinary artisan would have considered it obvious
to “have tried a material such as a plastic for the third body such that it
would snap into a component[] made of, for example, an alloy material with
predictable results” (id.). The Examiner reasoned that, in view of the
snapping engagement mechanism Johnson described as being useful in its
connectors, an ordinary artisan would have reasoned that plastic would be a
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suitable material for achieving that functionality, and that the “resilient
material such as plastic would be a different material than the well known
metal/alloy materials used in the art for the articulating components” (id. at
14-15).
Appellants’ arguments do not persuade us that a preponderance of the
evidence fails to support the Examiner’s conclusion of obviousness.
Appellants initially argue that the Examiner “failed to provide a clear
articulation as to why one of ordinary skill in the art would find a resilient
connector to be obvious for use with the device of Johnson” (id. at App. Br.
24). We are not persuaded.
As seen in Figure 5 of Johnson, Johnson discloses a knee replacement
system that includes two bone resurfacing components 40 and 12, as
required by claim 9. As also required by claim 9, the two components are
joined using a “connection mechanism” 54 that matingly engages a
connector 28 (Johnson [0059]; see also id. at Fig. 5).
As the Examiner pointed out (Ans. 6), Johnson discloses that its
resurfacing components can be joined together by configuring the
connection mechanisms 54 such that they “snap[p]ingly engage” their
mating part (Johnson [0060]). While it may be true that Johnson does not
expressly state that resilient connectors would useful for providing the
snapping engagement, we agree with the Examiner that an ordinary artisan
would have reasonably inferred that resilient connectors would be suitable
for achieving the snapping connection functionality described by Johnson,
and that it would be suitable to form such resilient connectors of a different
material than that used to form the hard articulating surfaces of the
resurfacing components. Cf. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
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418 (2007) (The 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.”); see also id. at 421 (“A person of
ordinary skill is . . . a person of ordinary creativity, not an automaton.”).
Appellants argue that a resilient connector “would not guarantee the
fit required by the device of Johnson. Moreover, a resilient connector would
allow for movement between the adjacent components” (App. Br. 24).
Further, Appellants argue, if the components are placed closely together as
Johnson teaches, “the components joined with resilient connectors could rub
together, resulting in undesired generation of friction debris as discussed in
the Appellants’ specification at page 4, lines 2-9. One of ordinary skill in
the art would not attempt to use a connector that would generate friction
debris” (id.).
We do not find these arguments persuasive. While page 4 of the
Specification may discuss the problem of frictional debris caused by rubbing
components, given Johnson’s express disclosure of using a snapping
engagement mechanism, we are not persuaded that an ordinary artisan would
have failed to adopt that connection technique using resilient connectors.
Moreover, Appellants point to no specific evidence suggesting that an
ordinary artisan would have expected that using resilient connectors to
achieve Johnson’s snapping connection would provide an inadequate fit, or
would allow excessive component movement such that undesired friction
debris would result. It is well settled that argument of counsel is not an
adequate substitute for actual evidence. See In re Geisler, 116 F.3d 1465,
1471 (Fed. Cir. 1997).
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In sum, because Appellants’ arguments do not persuade us that a
preponderance of the evidence fails to support the Examiner’s prima facie
case of obviousness as to claim 9, we affirm the Examiner’s obviousness
rejection of that claim over Johnson. As Appellants based their arguments
regarding claims 10, 11, 13, 14-18, and 20 on the same arguments discussed
above as to claim 9 (see App. Br. 25-26), we affirm the Examiner’s
obviousness rejection of those claims over Johnson as well.
Appellants argue that the Examiner failed to make out a prima facie
case of obviousness as to claim 19 because the Examiner did not “identify
any structure or disclosure of Johnson which could be considered to be a
spacer as recited in claim 19” (App. Br. 27).
The Examiner responds that, “[r]egarding claim 19, ‘selecting a
resilient connector with an integrated spacer’ does not infer that the
components are spaced for each other. The spacing between components
can be none. The integrated spacer is the length of the resilient connector”
(Ans. 15).
Claim 19 recites “[t]he method of claim 18, wherein selecting the
resilient connector comprises selecting a resilient connector with an
integrated spacer.” We do not agree with the Examiner that a positive
recitation of a connector with a “spacer” is reasonably interpreted as
encompassing a device that provides no spacing between the components
joined by the connector.
Rather, in our view, an ordinary artisan would have interpreted claim
19 as requiring the practitioner to select a resilient connector having some
integrated structure, such as an integrated washer or similar element, that
provided spacing between the two components being joined by the resilient
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connector (see, e.g., integrated spacer 862 shown in Appellants’ Figure
49B). As the Examiner points to no connector having such a structure, we
reverse the Examiner’s obviousness rejection of claim 19 over Johnson.

SUMMARY
We affirm the Examiner’s rejection of claims 9-20, under 35 U.S.C. §
112, first paragraph, as failing to comply with the written description
requirement.
We reverse the Examiner’s rejection of claims 9, 10, 12, 14, and 18-
20, under 35 U.S.C. § 102(e) as anticipated by White.
We also reverse the Examiner’s anticipation rejection of claims 9-11
and 13-20 over Johnson.
However, we affirm the Examiner’s alternative obviousness rejection
of claims 9-11, 13-18, and 20 over Johnson.
We reverse the Examiner’s obviousness rejection of claim 19 over
Johnson.

TIME PERIOD
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

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