Ex Parte Edwards et al

Patent Trial and Appeal Board

Feb 15, 2018

13629886 (P.T.A.B. Feb. 15, 2018)

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.
13/629,886 09/28/2012 Jon M. Edwards 265280-221945 5613
23643 7590 02/20/2018
Barnes & Thornburg LLP (IN)
11 S. Meridian Street
Indianapolis, IN 46204
EXAMINER
WEISS, JESSICA
ART UNIT PAPER NUMBER
3776
NOTIFICATION DATE DELIVERY MODE
02/20/2018 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):
INDocket@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JON M. EDWARDS and DANIEL D. AUGER
Appeal 2017-002680
Application 13/629,8861
Technology Center 3700
Before RICHARD M. LEBOVITZ, TAWEN CHANG, and
DAVID COTTA, Administrative Patent Judges.
COTTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to
surgical instrument for use in an orthopaedic arthroplasty procedure. The
Examiner rejected the claims on appeal under 35 U.S.C. § 102(b) as
anticipated and under 35 U.S.C. § 103(a) as obvious.
We REVERSE.
1 According to Appellants, the real party in interest is DePuy (Ireland), a
Johnson & Johnson Company. App. Br. 2.
Appeal 2017-002680
Application 13/629,886
STATEMENT OF THE CASE
The Specification states that “[t]he present disclosure relates to
surgical instruments and, more particularly, to methods and apparatuses for
stabilizing surgical instruments during use.” Spec. 11.
Figure 1 (reproduced below) depicts an embodiment of the claimed
surgical instrument.
Figure 1 depicts “a first embodiment of a tool 30 for driving an implant
component. . . into a tibial bone surface.” Id. 144. The tool “includes a
central shaft 40 having an attachment end 42 and a free end 44.” Id. 146.
In Figure 1, the attachment end attaches to “impactor head 50.” Id.
Figure 3 of the Specification is reproduced below.
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Application 13/629,886
Figure 3 “is a perspective view of a rear side of the impactor head of FIG[].
1 . . . showing an anti-rotation feature in the form of a spine.” Id. 132. As
shown in Figure 3, “[a] spine 104 extends outwardly from a rear surface 106
of the impactor head 50” and “[cjoncave surfaces 112 are formed within the
rear surface 106 of the impactor head 50.” Id. at 154.
Claims 1—12, 14, 16, 17, and 25—27 are on appeal. Claims 1 and 12
are illustrative and read as follows (emphasis added to highlight limitations
discussed herein):
1. A surgical instrument for use in an orthopaedic
arthroplasty procedure, the surgical instrument comprising:
a shaft having a first end, a second end, and a
longitudinal axis extending through a center of the shaft
between the first and second ends, and a rear surface extending
along the longitudinal axis between the first end and the second
end, the rear surface including a pair of curved surfaces
adapted to contact corresponding medial and lateral condyles
of a femoral component;
a spine extending outwardly from the rear surface of the
shaft between the pair of curved surfaces, the spine extending
from the first end of the shaft in a direction perpendicular to the
longitudinal axis having a longitudinal extent that is parallel to
the longitudinal axis;
wherein when the first end of the shaft of the surgical
instrument is in contact with a tibial implant component, the
spine is adapted to be positioned within an intercondylar notch
of the femoral component.
12. An impactor for use in securing a tibial orthopaedic implant
component within a bone surface, the impactor comprising:
a shaft having a first end adapted to be impacted by a tool and a
second end; and a head piece having
a first end and a second end, the first end of the head
piece being connected to the second end of the shaft and a
second end of the head piece including an impaction surface,
wherein the second end of the head piece further includes a pair
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Appeal 2017-002680
Application 13/629,886
of curved surfaces on a first surface of the head piece which is
adapted to contact corresponding medial and lateral condyles
of a femoral component,
a spine extending outwardly from the first surface of the
head piece between the pair of curved surfaces, the spine being
adapted for insertion within an intercondylar notch of the
femoral component, and
a cavity disposed in a second surface of the head piece
that is opposite the first surface, the cavity being adapted to
accommodate a tibial spine extending outwardly from the tibial
orthopaedic implant component,
wherein the spine and the cavity are adapted for
cooperation with the tibial orthopaedic implant component and
a femoral component such that at least one of the spine and the
cavity orients the head piece when the impaction surface is in
contact with the tibial orthopaedic implant component.
App Br. 37, 39.
The claims stand rejected as follows:
Claims 1, 8, 11, 12, 14, 16, 17, and 25—27 were rejected under 35
U.S.C. § 102(b) as anticipated by Beedall.2
Claims 2—7 and 19 were rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Beedall and Green II.3
Claim 10 was rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Beedall and Aboczky.4
2 Beedall et al., WO 2011/004140 A3, published Jan. 13, 2011 (“Beedall”).
3 Green II, US Patent Publication No. 2011/0301613 Al, published Dec. 8,
2011 (“Green II”).
4 Aboczky, US Patent No. 5,571,111, issued Nov. 5, 1996 (“Aboczky”).
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Appeal 2017-002680
Application 13/629,886
ANTICIPATION REJECTION
Beedall discloses a “multi-function impactor for use with an
orthopaedic implant.” Beedall Abstract. Figures 1—3 of Beedall are
reproduced below (shading added).
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Figures 1—3 illustrate Beedall’s impactor. Id. at 5. Figure 1 shows a
perspective view, Figure 2 shows a side view, and Figure 3 shows an end
view.
In finding claims 1, 8, 11, 12, 14, 16, 17, and 25—27 to be anticipated
by Beedall, the Examiner found, inter alia, that the curved concave recesses
120 and 122, as shown in Fig. 3, corresponded to the “curved surfaces” in
claims 1 and 12, that spine 140 corresponded to the “spine” recited in claims
1 and 12, and that the shaded areas in Figures 1—3 corresponded to the “rear
surface” recited in claim 1 and the “first surface” recited in claim 12. Ans.
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Appeal 2017-002680
Application 13/629,886
8. Appellants argue that Beedall’s impactor does not include a “spine” and
“curved surfaces” configured as claimed.
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.” Appellants have persuaded us that the Examiner has not
carried the burden of establishing that the claimed invention was anticipated
by Beedall.
Claim 1 requires a rear surface “including a pair of curved surfaces
adapted to contact corresponding medial and lateral condyles.” The rear
surface must also include “a spine extending outwardly from the rear surface
. . . between the pair of curved surfaces.” In other words, the spine must
extend outwardly from the same “rear surface” that the curved surfaces are
formed in. Claim 12 is similar, requiring a “pair of curved surfaces on a first
surface of the head piece” and a “spine extending outwardly from the first
surface of the head piece between the pair of curved surfaces.” Like claim
1, claim 12 requires that the spine extend outwardly from the same surface
that the curved surfaces are formed in. This is consistent with the
embodiment disclosed in Figure 3 (reproduced supra) of Appellants’
Specification.
The curved surfaces 120 and 122 of Beedall that the Examiner
identifies as corresponding to the claimed “curved surfaces adapted to
contact corresponding medial and lateral condyles” are not formed in the
same surface that the spine 140 extends outwardly from. Instead, the curved
surfaces 120 and 122 that are adapted to be in contact with the condyles, are
located on a surface that is perpendicular to the surface that the spine
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Appeal 2017-002680
Application 13/629,886
extends outwardly from. Appellants illustrate the location of the curved
surfaces 120 and 122 relative to the spine 140 in the below figure.
The above Figure is an annotated version of Figure 1 of Beedall taken from
Appellants’ Brief. App. Br. 7. As can be seen, the recesses 120 and 122 are
not formed in the same surface that the spine extends outwardly from.
Rather, the recesses are formed in a surface — denominated an “end face” by
Appellants — that is perpendicular to the surface that the spine 140 extends
outwardly from and located on the sides of the longitudinal axis, a
configuration necessary for it to operate. Beedall, 7—8. Accordingly, we
reverse the Examiner’s rejection of claims 1, 8, 11, 12, 14, 16, 17, and 25—27
as anticipated by Beedall.
OBVIOUSNESS
The Examiner’s obviousness rejections apply Beedall as discussed
above, adding Green II and Aboczky to address limitations added by
dependent claims 2—7, 9 and 10. The Examiner does not contend that Green
II and Aboczky address the above identified deficiency in Beedall.
Accordingly we reverse the Examiner’s rejection of claims 2—7, 9 and 10 as
obvious.
SUMMARY
For the reasons set forth herein, we reverse the Examiner’s rejection
of claims 1, 8, 11, 12, 14, 16, 17, and 25—27 under 35 U.S.C. § 102(b) as
anticipated by Beedall, the Examiner’s rejection of claims 2—7 and 9 under
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Appeal 2017-002680
Application 13/629,886
35 U.S.C. § 103(a) as obvious over the combination of Beedall and Green II,
and the Examiner’s rejection of claim 10 under 35 U.S.C. § 103(a) as
obvious over the combination of Beedall and Aboczky.
REVERSED
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