Ex Parte Bigsby et al

Patent Trials and Appeals Board

Feb 27, 2019

14355972 - (D) (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/355,972 05/02/2014
104326 7590 03/01/2019
Schwegman Lundberg & Woessner/ Zimmer
P.O. Box 2938
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Robert John Andrew Bigsby
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5394.678US 1 4741
EXAMINER
BARIA, DINAH N
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
03/01/2019 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 ROBERT JOHN ANDREW BIGSBY and
MOHAMMED IMRAN KHAN
Appeal2018-003494
Application 14/355,972
Technology Center 3700
Before STEFAN STAICOVICI, EDWARD A. BROWN, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's rejection of claims 1-24, 26, and 27. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is the Applicant, Biomet UK Healthcare Limited, which the
Appeal Brief identifies as the real party in interest. Appeal Br. 2.
Appeal2018-003494
Application 14/355,972
THE CLAIMED SUBJECT MATTER
The claimed subject matter relates "to a prosthesis component, and
particularly to a prosthesis component having a shell and articulating liner."
Spec. 1 :3--4. Claims 1, 20, 26, and 27 are independent. Claim 1 is
reproduced below.
1. A prosthesis component comprising:
a shell formed from a fiber reinforced polymer material
and having a fiber reinforced polymer material inner bearing
surface; and
a liner having an outer bearing surface formed from a
ceramic material; wherein the liner is received in an articulating
manner within the shell, wherein the ceramic material is in
contact with the fiber reinforced polymer material.
Appeal Br. 13 (Claims App.).
THE REJECTIONS
Appellant challenges the following rejections on appeal:
1. Claims 1, 7, 8, 11-18, and 20-23 under 35 U.S.C. § I03(a) as
unpatentable over Crochet2 and Meridew. 3
2. Claims 2---6, 24, and 26 under 35 U.S.C. § I03(a) as unpatentable
over Crochet, Meridew, and Khan. 4
3. Claim 9 under 35 U.S.C. § I03(a) as unpatentable over Crochet,
Meridew, and Sun. 5
2 U.S. Patent Publication No. 2004/0225370 Al, published November 11,
2004 ("Crochet").
3 WO 2011/008752 Al, published January 20, 2011 ("Meridew").
4 WO 2010/023447 A8, published March 4, 2010 ("Khan").
5 Limin Sun et al., Material Fundamentals and Clinical Peiformance of
Plasma-Sprayed Hydroxyapatite Coatings: A Review, 58 J. Biomed Mater.
Res. 570 (2001, John Wiley & Sons, Inc.).
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Application 14/355,972
4. Claims 10 and 19 under 35 U.S.C. § 103(a) as unpatentable over
Crochet, Meridew, and Panchison. 6
5. Claim 27 under 35 U.S.C. § 103(a) as unpatentable over Crochet,
Meridew, and Ramos. 7
ANALYSIS
Claims 1-24 and 26
Claim 1 requires a liner "received in an articulating manner within the
shell, wherein the ceramic material is in contact with the fiber reinforced
polymer material." Appeal Br. 13 (Claims App.). The Examiner found that
Crochet discloses the claimed shell (shell/socket 5 in Crochet) and a liner
(liner/bipolar shell 3) "received in an articulating manner within" the shell.
Final Act. 3. The Examiner also found that Crochet discloses a liner made
of ceramic material, but does not disclose a shell "formed from a fiber
reinforced polymer material." Id. The Examiner further found that Meridew
discloses "an acetabular cup/shell (12)" "formed from a fiber reinforced
polymer material," that has benefits such as the ability to create a "thinner
and stronger device." Id. ( citing Meridew ,r 21 ). The Examiner determined
that it would have been obvious to a person of ordinary skill in the art "to
form the entire shell/socket of Crochet out of a fiber reinforced polymer
material ( such that in use the ceramic material of the liner/bipolar shell
would be in contact with the fiber reinforced polymer material of the
shell/socket), in order to create a thinner and stronger shell/socket." Id. at 3-
4. In the alternative, the Examiner also determined that it would have been
an obvious matter of design choice "to select a known material (i.e. a fiber
6 U.S. Patent No. 6,049,054, issued April 11, 2000 ("Panchison").
7 U.S. Patent No. 4,380,090, issued April 19, 1983 ("Ramos").
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Appeal2018-003494
Application 14/355,972
reinforced polymer material) on the basis of its suitability for the intended
use (i.e. in a prosthetic hip assembly)." Id. at 4.
Appellant argues that neither Crochet nor Meridew disclose a liner
"received in an articulating manner within the shell, wherein the ceramic
material is in contact with the fiber reinforced polymer material." Appeal
Br. 7-10. More specifically, Appellant argues that Crochet discloses
"ceramic on ceramic articulating contact between the shell 5 and the liner 3"
and Meridew's metallic or ceramic "liner 16 does not articulate with the
[fiber reinforced polymer] cup 12 in any way." Id. at 8; see also Reply Br.
2. According to Appellant, the result is a "combination [that] does not teach
or suggest a ceramic liner articulating on a fiber reinforced polymer material
shell." Appeal Br. 8. Appellant also argues that there was insufficient
reason to use Meridew's reinforced polymer material as an articulating
surface. Id. at 9-10; see also Reply Br. 3.
In response, the Examiner emphasized that the rejection relied on
Crochet as disclosing all of the limitations of claim 1 with the exception of
the fiber reinforced polymer material, where the Examiner relied on
Meridew. Ans. 12. The Examiner also reiterated that Meridew itself notes
advantages of using a fiber reinforced polymer that support the proposed
modification. Id. As to Appellant's allegation that there is no suggestion to
use Meridew's material as an articulating surface, the Examiner found that
Crochet discloses the articulating surface, and Meridew was used to show
the known use of the claimed material in the same art "to create a thinner
and stronger shell/socket, thereby enhancing the overall quality of the
prosthetic hip assembly of Crochet." Id. at 13.
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Application 14/355,972
Appellant's arguments do not apprise us of error in the Examiner's
rejection of claim 1. First, Appellant's arguments regarding the failure of
Crochet and Meridew to disclose all of the claim limitations when viewing
each in isolation does not apprise us of error when the rejection here is based
on a combination resulting from a proposed modification of Crochet based
on Meridew. Final Act. 3--4. "[O]ne cannot show non-obviousness by
attacking references individually where ... the rejections are based on
combinations of references." In re Keller, 642 F.2d 413,426 (CCPA 1981).
Second, despite the Examiner's repeated express reliance on
Meridew's stated benefits of the fiber reinforced material in a hip
prosthesis----enabling thinner and stronger parts-Appellant never directly
addresses this stated rationale for the proposed modification/combination.
See Final Act. 3--4; Ans. 12-13; Meridew ,r 21 ("The use of a fiber-
reinforced polymer for the acetabular cup 12 can enable the formation of a
thinner, stronger and stiffer acetabular cup 12."). The Examiner has
adequately supported the basis for the proposed modification of Crochet by
relying on Meridew's own stated benefits for the use of fiber reinforced
polymers in a hip prosthesis.
Finally, Appellant does not address the Examiner's alternative
obviousness rationale based on design choice. See Final Act. 4 ("[I]t has
been held to be within the general skill of a worker in the art to select a
known material (i.e. a fiber reinforced polymer material) on the basis of its
suitability for the intended use (i.e. in a prosthetic hip assembly) as a matter
of obvious design choice."). We have not been apprised of error in this
alternative rationale provided by the Examiner.
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Application 14/355,972
Based on the foregoing, we sustain the rejection of claim 1. Appellant
relies on the same arguments with respect to claims 2-24 and 26, and we
therefore sustain the rejection of those claims for the same reasons. See
Appeal Br. 10.
Claim 27
Claim 27 contains limitations similar to those discussed above in the
context of claim 1, and also requires "a retaining element, operable to
cooperate with the liner and the shell ... , wherein the retaining element is
formed from a carbon fiber reinforced polymer material." Appeal Br. 16
(Claims App.). The Examiner relied on Crochet as disclosing most of the
limitations of claim 1, relied on Ramos as disclosing the claimed retaining
element that includes a split, and relied on Meridew as disclosing the carbon
fiber reinforced polymer material. Final Act. 11-12. The Examiner found
that Meridew's stated advantages of the use of that material supported the
Examiner's determination that it would have been obvious to form Crochet's
shell, as well as the retaining element of Ramos, out of the carbon fiber
reinforced polymer of Meridew. Id. at 12. The Examiner also found that
use of the claimed material was an obvious matter of design choice. Final
Act. 12; Ans. 14.
Appellant relies on the same arguments made with respect to claim 1,
and also argues that Crochet and Meridew fail to disclose a retaining ring
formed of carbon fiber reinforced polymer material. Appeal Br. 11.
Appellant argues that none of the references disclose a retaining ring made
of the claimed material, and even if Meridew does disclose the claimed
material, that does not mean that any part can be made of that material. Id.;
see also Reply Br. 3.
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Application 14/355,972
We are not persuaded that the Examiner erred in the rejection of claim
2 7, for many of the same reasons discussed above with respect to claim 1.
Appellant's argument that none of the references, viewed in isolation,
disclose a retaining ring made of the claimed material again fails to address
the proposed combination. The Examiner again properly relied on the stated
advantages that Meridew discloses regarding the carbon fiber reinforced
polymer, in the same hip prosthesis context, and relied on those advantages
as the basis for the proposed modification. See Final Act. 11-12 ( citing
Meridew ,r 21 ); Ans. 13-14 ( citing Meridew ,r 21 ). Appellant fails to
address directly the Examiner's stated rationale for the modification, or the
alternative design choice findings. Based on the foregoing, we sustain the
rejection of claim 27.
DECISION
We affirm the decision of the Examiner to reject claims 1-24, 26, and
27.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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