Ex Parte Courtney et al

Patent Trial and Appeal Board

Jun 23, 2016

12398750 (P.T.A.B. Jun. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/398,750 0310512009
20995 7590 06/27/2016
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
FIRST NAMED INVENTOR
Robert Courtney JR.
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.
TRNXSH.38A 1681
EXAMINER
BLANCO, JAVIER G
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
06/27/2016 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT COURTNEY, JR.,
AUSTIN W. MUTCHLER, and R. SEAN CHURCHILL
Appeal2014-006456
Application 12/398,750
Technology Center 3700
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert Courtney, Jr. et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner's decision rejecting claims 1, 2, 5-7, 9, 12, 16, 18, 21,
24, 28, 31, 34, and 361 under 35 U.S.C. § 102(b) as anticipated by, or in the
alternative under 35 U.S.C. § 103(a) as unpatentable over, McDevitt
(US 2003/0055507 Al, pub. Mar. 20, 2003). We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.
1 Claims 3, 4, 17, 20, 29, 30, and 40---46 have been canceled, and claims 8,
lo 11 13-----1 ~ 19 'l2 )'7 )<';\ ____ 2· 7 ·3ry ·31 ·~;;:; ''TICi 3·7 _____ 39 h'''ie' bP·e·11 ~'.'!--'.'!- _ ... J, ,,f...,,, ...... J, .......... 1, ... k.<, ...... ,, ... ,. ..... ,u,_ u.v ~·-
withdrawn from consideration. Br. 13-18, Clairns App.
Appeal2014-006456
Application 12/398,750
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter on appeal.
1. A glenoid prosthesis that is configured to mechanically couple
with both cancellous bone and cortical bone of a glenoid, the
glenoid prosthesis comprising:
a head portion comprising a convex rear surface
configured to engage a glenoid and an articular surface;
an anchor member comprising a distal end and a proximal
end connected to the rear surface of the head portion; and
a plurality of deformable fins extending radially outward
from the anchor member including at least a first proximal
cortical bone engaging fin which extends radially outward from
the proximal end of the anchor member and is located adjacent
to the rear surface of the head portion, wherein the first proximal
cortical bone engaging fin is adapted to deform and to directly
engage with cortical bone of a glenoid when the glenoid
prosthesis is implanted,
wherein the first proximal cortical bone engaging fin is
configured to abut cortical bone of a glenoid when the rear
surface of the head portion engages the glenoid,
wherein the plurality of deformable fins further includes at
least a first distal fin located proximate the distal end of the
anchor member, wherein the first distal fin is positioned to
engage with cancellous bone of a glenoid.
DISCUSSION
Independent claim 1 recites, in relevant part, a glenoid prosthesis
including
a first proximal cortical bone engaging fin ... adapted to deform
and to directly engage with cortical bone of a glenoid when the
glenoid prosthesis is implanted, wherein the first proximal
cortical bone engaging fin is configured to abut cortical bone of
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Appeal2014-006456
Application 12/398,750
a glenoid when the rear surface of the head portion engages the
glenoid.
Br. 13, Claims App. Independent claims 16 and 28 recite similar limitations.
Id. at 14, 15.
The Examiner found that McDevitt discloses a glenoid prosthesis
comprising "a plurality of deformable fins/flanges (stem 27 is disclosed as
'ribbed or threaded' on the outside surface 33) extending radially outward
from the anchor member including at least a first proximal cortical bone
engaging fin/flange (proximal-most fin/flange) adjacent to the rear surface of
the head portion." Final Act. 2-3; see McDevitt, para. 31. The Examiner
found that
the proximal cortical bone engaging fin/flange is adapted to
deform and to engage with cortical bone of a glenoid when the
glenoid prosthesis is implanted (compare Figure 5 to Figure 6 -
when pin 43 is introduced into hollow interior 31 of stem 27, it
is disclosed as expanding stem 27 against bone, and therefore
deformation of ribs ... ).
Final Act. 3 (citing McDevitt, paras. 6, 8, 13, 21, 33, 37).
Referring to the annotated reproduction of McDevitt' s Figure 6 on
page 6 of the Brief, Appellants argue that neither the feature labeled "( 1 )"
nor the feature labeled "(2)" represents a first proximal cortical bone
engaging fin as claimed. Br. 6-7. Specifically, Appellants assert that
"feature (1) is a proximal end that connects to the rear surface of McDevitt 's
base (23)" and "feature (2) does not 'directly [engage] with cortical bone of
a glenoid when the glenoid prosthesis is implanted, wherein the first
proximal cortical bone engaging fin is configured to abut cortical bone of a
glenoid when the rear surface of the head portion engages the glenoid. "' Id.
at 6-7.
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Appeal2014-006456
Application 12/398,750
The Examiner responds, referring to Figure 3 of Appellants'
Specification, "that when the rear surface of the head portion ( 16) engages
the glenoid, the proximal-most fin/flange '42' is not shown as abutting
cortical bone, but as implanted within cancellous bone." Ans. 3. The
Examiner asserts that, "when the rear surface of [McDevitt's] head portion
( 41 + 23) engages the glenoid, the proximal-most fin/flange is positioned
just like [Appellants'] proximal-most fin/flange '42. "' Id. at 3--4; see
McDevitt, Fig. 6. According to the Examiner, these figures provide
"evidence that the same capability of [Appellants'] proximal-most fin/flange
'42' to abut cortical bone is shared with McDevitt['s] ... proximal-most
fin/flange." Ans. 4.
The Examiner's reliance on Figure 3 of Appellants' Specification is
unavailing. Although we agree with the Examiner that this figure does not
show first proximal fin 42 abutting cortical bone (see Ans. 3), the
embodiment shown in Appellants' Figure 3 is not encompassed by the scope
of claim 1, which calls for a first proximal cortical bone engaging fin that
directly engages and abuts cortical bone when the prosthesis is implanted
with the rear surface of the head portion engaging the glenoid. See Br. 13,
Claims App.; see also Spec. 9 (describing that, "[i]n one embodiment, the
first proximal fin 42a is positioned in the cortical bone 12a" (emphasis
added)). We understand claim 1 to require that the first proximal cortical
bone engaging fin of an implanted prosthesis be positioned relative to the
rear surface of the head portion so that it directly contacts cortical bone
when the prosthesis is implanted with the rear surface of the head portion
engaging the glenoid. Appellants' Figure 3, however, depicts an unclaimed
embodiment of an implanted glenoid prosthesis in which first proximal bone
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Appeal2014-006456
Application 12/398,750
engaging fin 42a is spaced from, and not directly engaging or abutting,
cortical bone. See Spec., Fig. 3. Figure 7B of Appellants' Specification
depicts an embodiment in which first proximal cortical bone engaging fin
516a of an implanted prosthesis directly contacts cortical bone. See Spec.
12.
Appellants argue, and we agree, that "McDevitt does not describe any
interaction between the modular prosthesis and cortical bone, much less
teach or suggest that the modular prosthesis includes a first proximal cortical
bone engaging fin as claimed." Br. 5---6. Notably, McDevitt's figures do not
identify or distinguish cortical bone and cancellous bone relative to the
prosthesis. As such, the Examiner's finding that the first proximal fin of
McDevitt's prosthesis abuts cortical bone (see Ans. 4) lacks adequate
evidentiary support and, instead, appears to be based upon a speculative
assumption regarding the position of McDevitt's first proximal fin relative to
cortical bone.
For these above reasons, the Examiner failed to establish by a
preponderance of the evidence that Mc Devitt discloses a glenoid prosthesis
having
a first proximal cortical bone engaging fin ... adapted to deform
and to directly engage with cortical bone of a glenoid when the
glenoid prosthesis is implanted, wherein the first proximal
cortical bone engaging fin is configured to abut cortical bone of
a glenoid when the rear surface of the head portion engages the
glenoid
as called for in independent claim 1, and as similarly recited by independent
claims 16 and 28. Moreover, the Examiner did not articulate an apparent
reason, with any rational underpinnings, as to why this subject matter would
have been obvious to a person having ordinary skill in the art at the time of
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Application 12/398,750
the invention. Accordingly, we do not sustain the rejection of independent
claims 1, 16, and 28 and of dependent claims 2, 5-7, 9, 12, 18, 21, 24, 31,
34, and 36 as anticipated by, or unpatentable over, McDevitt.
DECISION
The Examiner's decision rejecting claims 1, 2, 5-7, 9, 12, 16, 18, 21,
24, 28, 31, 34, and 36 is reversed.
REVERSED
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