Ex Parte ChudikDownload PDFPatent Trial and Appeal BoardFeb 9, 201611525629 (P.T.A.B. Feb. 9, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111525,629 0912512006 7590 02/10/2016 Gregory B. Beggs Law Offices of Gregory B. Beggs 928 Warren A venue Downers Grove, IL 60515 FIRST NAMED INVENTOR Steven C. Chudik 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. 5181-lOOOGP(II) 1655 EXAMINER PELLEGRINO, BRIAN E ART UNIT PAPER NUMBER 3738 MAILDATE DELIVERY MODE 02/10/2016 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 STEVEN C. CHUDIK Appeal2013-000789 1 Application 11/525,629 Technology Center 3700 Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and KENNETH G. SCHOPPER, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON APPEAL The Appellant (Steven C. Chudik) appeals under 35 U.S.C. § 134 from the Examiner's rejections of claims 2, 3, 9, 11-13, 19, 20, and 33-35. We have jurisdiction over this appeal under 3 5 U.S. C. § 6(b ). We AFFIRM. 1 In this opinion, we refer to the original Specification filed on September 25, 2006 ("Spec."), the Final Action mailed on October 5, 2011 ("Final Action"), the Appeal Brief filed on May 3, 2012 ("Appeal Br."), the Claims Appendix accompanying the Appeal Brief ("Claims App."), the Examiner's Answer mailed on July 27, 2012 ("Answer"), and the Reply Brief filed on October 1, 2012 ("Reply Br."). Appeal2013-000789 Application 11/525,629 STATEMENT OF THE CASE The Appellant's invention relates "to rotator cuff sparing procedures and associated devices for shoulder replacement surgery." (Spec. i-f 2.) Independent Claims 2. A humeral implant comprising a first component removably attached to a second component wherein said first component is a humeral surface component configured for cooperative engagement with and mounted on the bone surface of the articular portion of a proximal humeral head and said second component is a removably attached stem. 33. A humeral implant comprising a humeral surface component and a stem component, said humeral surface component being configured for cooperative engagement with the articular side of a proximal humerus adjacent a transhumeral portal situated along a central axis of a neck of the proximal humerus, and said stem component being configured to occupy said portal and engage the humeral surface component. Tomier Zucherman Stone Maroney References us 5,358,626 us 6,045,552 US 6,783,549 Bl US 2004/0193278 Al Rejections2 Oct. 25, 1994 Apr. 4, 2000 Aug. 31, 2004 Sept. 30, 2004 I. The Examiner rejects claims 2, 3, 9, and 13 under 35 U.S.C. § 102(b) as anticipated by Tomier. (Final Action 5.) II. The Examiner rejects claims 2, 3, 9, 13, 20, and 33-35 under 35 U.S.C. § 102(e) as anticipated by Stone. (Id. at 6.) 2 The Examiner withdraws the rejection under 35 U.S.C. § 112, sixth paragraph. (See Final Action 2-3; Answer 3.) 2 Appeal2013-000789 Application 11/525,629 Ill. The Examiner rejects claims 2, 3, 9, 12, 13, 19, 20, and 33-35 under 35 U.S.C. § 102(e) as anticipated by Maroney. (Id. at 7.) IV. The Examiner rejects claim 11under35 U.S.C. § 103(a) as unpatentable over Maroney and Zucherman. (Id. at 8.) ANALYSIS Independent claims 2 and 33 are each directed to a humeral implant comprising a "humeral surface component" configured "for cooperative engagement" with a specified region of a humerus bone. (Claims App.) Rejection I Independent claim 2 requires the component to be configured "for cooperative engagement" with an "articular portion of a proximal humeral head." (Claims App.) The Examiner finds that Tomier discloses a humeral implant comprising a component 3 configured for such cooperative engagement. (See Final Action 4; see also Tomier Fig. 6.) The Appellant argues that, in Tomier, the humeral head is resected and component 3 is "mounted on the face of the resection," not an articular portion of the humeral head. (See Appeal Br. 19-20; see also Reply Br. 3- 4.) We are persuaded by this argument because Tomier's component 3 has a flat base 31 shown engaging a planar resected section 6a that appears to be the remains of a sliced off humeral head. (See Tomier Fig. 6; see also id. col. 4, 11. 19-22.) The Examiner explains why this section 6a can be considered an "articulation location" (see Answer 3)3 and Tomier's 3 The Examiner explains that "[the] location where the humeral component of the prosthesis is mounted on the humeral bone, is the articulation location as it must be designed to permit articulation." (Answer 3.) 3 Appeal2013-000789 Application 11/525,629 component 3 is indeed shown cooperatively engaging this articulation location (see Tomier Fig. 6). However, the Examiner does not adequately address why Tomier's flat-based component 3 configured for cooperative engagement with a planar articulating location would also be configured for cooperative engagement with a "portion" of a "humeral head" as required by independent claim 2.4 In view of the foregoing, we are persuaded by the Appellant's position that the Examiner does not adequately establish that Tomier discloses an implant having a humeral surface component as required by independent claim 2. The Examiner's further findings with respect to dependent claims 3, 9, and 13 (see Final Action 5---6) do not compensate for this shortcoming. Thus, we do not sustain the Examiner's rejection of claims 2, 3, 9, and 13 under 35 U.S.C. § 102(b) as anticipated by Tomier. Rejection II As indicated above, independent claim 2 requires the component to be configured for cooperative engagement with "the articular portion of a proximal humeral head." (Claims App.) Independent claim 33 requires the component to be configured for cooperative engagement with "the articular side of a proximal humerus." (Id.) The Examiner finds Stone discloses a humeral implant comprising a component 30 configured for such cooperative engagement. (See Final Action 6-7; see also Stone Fig. 15.) 4 A clairn directed to an apparatus (i.e., "[a] humeral implant") must be distinguished from the prior mi in terms of stn1cture rather than function. See, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). However, in order to satis{y the functional limitations in an apparatus claim (i.e., "cooperative engagement with")5 the prior art apparatus must be capable of perfonning the clairned function. Id. at 1478. 4 Appeal2013-000789 Application 11/525,629 The Appellant advances arguments, similar to those advanced above, premised upon Stone's component 30 engaging, via a flat base 59, a planar resected section 36 of the humerus bone. (See Appeal Br. 21; see also Reply Br. 4--5.) With respect to independent claim 2, we are persuaded by these arguments because the Examiner does not adequately address why Stone's component 30 having a flat base configured to engage a planar resected section would also be configured to cooperatively engage a "portion" of a "humeral head" as required by independent claim 2. With respect to independent claim 33, however, we are not persuaded by the Appellant's arguments. We are not persuaded because independent claim 33 only requires the component to be configured to cooperatively engage something on the articular side of a proximal region of the humerus bone. In this regard, we note that, although the term "articular side" does not appear in the Specification, the term "non-articular side" is used to refer to a side of something (e.g., a glenoid implant, a humeral implant, a stem) facing away from the glenoid cavity. (See e.g., Spec. i-fi-f 123, 125, 151, 155- 157.) We therefore construe the claim term "articular side" to mean a side facing towards the glenoid cavity. 5 In Stone, resected section 36 faces the glenoid cavity and is thus on the articular side of the proximal humerus. (See Stone Fig. 15.) Stone's component 30 is configured to cooperatively engage this articular side as required by independent claim 33. In view of the foregoing, we are persuaded by the Appellant's position that Stone does not disclose an implant having a humeral surface component 5 We must give the claims on appeal "their broadest reasonable interpretation consistent with the Specification." See In re Am. of Sci. Tech. Ctr., 367 F.3d. 1359, 1364 (Fed. Cir. 2004). 5 Appeal2013-000789 Application 11/525,629 as required by independent claim 2; and the Examiner's further findings with respect to dependent claims 3, 9, and 13 (see Final Action 6) do not compensate for this shortcoming. However, we are not persuaded by the Appellant's position that Stone does not disclose an implant having a humeral surface component as required by independent claim 33; and the Appellant does not argue dependent claims 34 and 35 separately. Thus, we do not sustain the Examiner's rejection of claims 2, 3, 9, 13, and 20 under 35 U.S.C. § 102(e) as anticipated by Stone; but we do sustain the Examiner's rejection of claims 33-35 under 35 U.S.C. § 102(e) as anticipated by Stone. Rejection III As indicated above, independent claim 2 requires the component to be configured for cooperative engagement with "the articular portion of a proximal humeral head" and independent claim 33 requires the component to be configured for cooperative engagement with "the articular side of a proximal humerus." (Claims App.) The Examiner finds that Maroney discloses a component 120 having such a configuration. (See Final Action 7; see also Maroney Fig. 5.) The Appellant argues that in Maroney, as in Tomier and Stone, the humeral head is removed and this produces a planar resected surface 16 for component 120 to engage. (See Appeal Br. 21-22; see also Reply Br. 5---6.) We are not persuaded by these arguments because unlike the prior art components discussed above, Maroney's component 120 does not have a flat base. Instead, Maroney's component 120 has a hollow spherical shape (see Maroney i-fi-1 52, 60, Fig. 5) and thus is configured in much the same manner as the Appellant's component 96 (see Spec. i-f 150, Fig. 15a). The 6 Appeal2013-000789 Application 11/525,629 Appellant's arguments implicating that Maroney's component 120 is not disclosed as cooperatively engaging a portion of a humeral head are not dispositive as to whether it is configured to do so. 6 As for independent claim 33, Maroney's component is shown engaging, and thus is configured to cooperatively engage, an articular side of the humerus bone. (See Maroney Fig. 5.) In view of the foregoing, we are not persuaded by the Appellant's arguments that Maroney does not anticipate the humeral implant recited in independent claims 2 and 33. Claims 3, 9, 12, 13, 19, 20, 34, and 35 depend from either independent claim 2 or independent claim 33, and are not argued separately. Thus, we sustain the Examiner's rejection of claims 2, 3, 9, 12, 13, 19, 20, and 33-35 under 35 U.S.C. § 102(e) as anticipated by Maroney. Rejection IV The Appellant argues only that Maroney "does not have a proxima[l] head with an articular portion." (Appeal Br. 23.) As discussed above, we are not persuaded by this argument, thus we sustain the Examiner's rejection of dependent claim 11under35 U.S.C. § 103(a) as unpatentable over Maroney and Zucherman. 6 Where there is reason to believe that the prior art structure possesses all the claimed characteristics including the capability of performing the claimed function, the burden shifts to the applicant to show that the claimed function, in fact, structurally distinguishes the claimed apparatus from the prior art apparatus. Schreiber, 128 F.3d at 1478; In re Hallman, 655 F.2d 212, 215 (CCPA 1981); In re Ludtke, 441F.2d660, 664 (CCPA 1971). 7 Appeal2013-000789 Application 11/525,629 DECISION We REVERSE the Examiner's rejection of claims 2, 3, 9, and 13 under 35 U.S.C. § 102(b) as anticipated by Tomier. We REVERSE the Examiner's rejection of claims 2, 3, 9, 13, and 20 under 35 U.S.C. § 102(e) as anticipated by Stone. We AFFIRM the Examiner's rejection of claims 33-35 under 35 U.S.C. § 102(e) as anticipated by Stone. We AFFIRM the Examiner's rejection of claims 2, 3, 9, 12, 13, 19, 20, and 33-35 under 35 U.S.C. § 102(e) as anticipated by Maroney. We AFFIRM the Examiner's rejection of claim 11 under 35 U.S.C. § 103(a) as unpatentable over Maroney and Zucherman. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED cda 8 Copy with citationCopy as parenthetical citation