Ex Parte Fell et al

Patent Trial and Appeal Board

Jun 17, 2016

12599123 (P.T.A.B. Jun. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/599, 123 11/06/2009
22045 7590 06/21/2016
BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
FIRST NAMED INVENTOR
Barry M. Fell
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.
FELL0143PUSA 7185
EXAMINER
DUKERT, BRIAN AINSLEY
ART UNIT PAPER NUMBER
3738
NOTIFICATION DATE DELIVERY MODE
06/21/2016 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BARRY M. FELL and RICHARD H. HALLOCK
Appeal2014-007637
Application 12/599,123 1
Technology Center 3700
Before ANTON W. PETTING, MICHAEL C. ASTORINO, and
TARA L. HUTCHINGS, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1, 2, 5-7, 13, 14, 23, and 27-37. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real parties in interest are the inventors
Barry M. Fell and Richard H. Hallock. Appeal Br. 1.
Appeal2014-007637
Application 12/599, 123
Claimed Subject Matter
Claims 1, 32, and 33 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A unicompartmental knee prosthesis for
implantation in a knee joint between a femoral
condyle and a corresponding tibial plateau, the
prosthesis comprising:
a generally elliptical body having opposed
femoral and tibial faces, the body having an anterior
end and a posterior end; and
a keel provided on the tibial face in an
anterior-posterior orientation extending along an
axis from the anterior end to the posterior end, the
keel having an anterior end and a posterior end,
wherein the keel posterior end includes a proximal
posterior portion contacting the tibial face along the
axis and a distal posterior portion spaced from the
tibial face, the distal posterior portion extending
along the axis farther toward the body posterior end
compared with the proximal posterior portion of the
keel posterior end.
Rejections
Claims 1, 2, 5-7, 13, 14, 23, 27-30, and 32-36 are rejected under
35 U.S.C. § 103(a) as unpatentable over Rhodes (US 2007/0299532 Al,
pub. Dec. 27, 2007) and Hozack (US 2005/0125068 Al, pub. June 9, 2005).
Claims 28-31, 36, and 37 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Rhodes, Hozack, and Santini (US 2007/0016163 Al,
pub. Jan. 18, 2007).
2
Appeal2014-007637
Application 12/599, 123
ANALYSIS
The Appellants argue claims 1, 2, 5-7, 13, 14, 23, 27-30, and 32-36
as a group. Appeal Br. 4-7. We select claim 1 as the representative claim
from the group, and claims 2, 5-7, 13, 14, 23, 27-30, and 32-36 stand or fall
with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv)(2015).
The Examiner finds that Rhodes discloses a generally elliptical body
(platform) 12 and a keel 16 on the tibial face in an anterior-posterior
orientation extending along an axis 15 from the anterior end to the posterior
end. See Final Act. 4-5 (annotating Rhodes, Fig. 8; citing Rhodes, para. 55).
The Examiner explains that Rhodes is relied on to teach "the anterior-
posterior orientation of the keel." Ans. 2. The Examiner turns to Hozack to
teach the remaining subject matter of claim 1, i.e., "a distal posterior portion
extending farther toward the body posterior end [of the generally elliptical
body] compared with the proximal posterior portion of the keel posterior
end." See Ans. 2; see also Final Act. 4, 5 (annotating Hozack, Fig. 2). In
other words, the Examiner relies only on the shape of Hozack's keel. See
Ans. 2. The Examiner concludes that:
It would have been obvious to one having ordinary skill in
the art at the time the invention was made to modify the keel of
Rhodes with the sloping fashion[, i.e., the shape,] of Hozack's
keel/pegs in order to create a tibial implant with a keel aligned
along the anterior-posterior axis which utilizes an angled
structure at its posterior end in order to increase stabilization.
Such an increase would provide both resistance to rotation and
translation and allow the keel to essentially lock itself under the
non-resected bone. As both devices are used to replace one or
more articulating tibial surface, they face similar kinematic and
surgical requisites. As such, the application of one's teachings
to the other would be well within one of ordinary skill.
3
Appeal2014-007637
Application 12/599, 123
Final Act. 5-6 (emphasis added). Based on the foregoing, we determine that
the Examiner articulates adequate reasoning with rational underpinning as to
why one of ordinary skill in the art would modify Rhodes' s teaching of a
keel with the shape of Hozack's keel. See In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) ("[R]ejections on obviousness grounds [require] some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.") (cited with approval in KSR Int'! Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007)).
The Appellants contend that the Examiner's proffered combination of
teachings from Rhodes and Hozack does not result in "the distal posterior
portion extending along the axis farther toward the body posterior end
compared with the proximal posterior portion of the keel posterior end," as
recited in claim 1. Appeal Br. 4. In the Answer, at page 2, line 18 - page 3,
line 5, and page 3, line 21-page4, line 2, the Examiner explains why the
Appellants' contention is not persuasive. We agree with and adopt the
Examiner's response as our own.
The Appellants contend that "there is no teaching, suggestion, or any
other reason to combine Rhodes and Hozack to attempt to achieve
Appellant's claimed invention" and "that the Examiner is impermissibly
using hindsight ... to achieve the claimed invention." Appeal Br. 7. The
Appellants' contention is not persuasive. As discussed above, the
Examiner's rejection articulates adequate reasoning with rational
underpinning. And, the Appellants fail to provide a persuasive explanation
why modifying Rhodes's tibial implant with the teaching concerning the
shape ofHozack's keel would not increase stabilization of Rhodes's tibial
implant.
4
Appeal2014-007637
Application 12/599, 123
The Appellants also contend that "Hozack teaches away from an
anterior-posterior orientation of the pegs, and thus from a combination with
Rhodes." Appeal Br. 6-7 (citing Hozack, paras. 8, 12); Reply Br. 2-3. The
Appellants' contention is not persuasive.
A prior art reference does not teach away from claimed subject matter
merely by disclosing a different solution to a similar problem unless the
prior art also criticizes, discredits or otherwise discourages the solution
claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); see also In
re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (A teaching away occurs when
a reference discourages one skilled in the art from following the claimed
path, or when the reference would lead one skilled in the art in a direction
divergent from the path that was taken by the applicant).
As explained by the Examiner, although Hozack describes in
paragraph 26 that "in the preferred embodiment, [angle] a varies between 5°
to 90° with respect to the anterior-posterior plane," Hozack "doesn't warn
against the use of a strict anterior-posterior orientation (a= 0°)." Ans. 4. In
other words, the Appellants fail to explain persuasively how Hozack
criticizes, discredits, or otherwise discourages providing a keel as claimed.
In response, the Appellants assert that "Hozack doesn't warn against
a= 0 because this angle is not mentioned at all by Hozack" and that "[t]he
Examiner is attempting to separate out the slope of Hozack' s pegs from the
orientation ofHozack's pegs." Reply Br. 2 (citing Hozack, paras. 8, 12).
The Appellants cite to Hozack's paragraphs 8 and 12, which explain that the
object of the invention is to have angled pegs/keels with respect to the
anterior-posterior axis "so that one of the at least two pegs extends into an
area of the resected medial condyle and the other peg extends into the area
5
Appeal2014-007637
Application 12/599, 123
of the resected lateral condyle." Reply Br. 2. As such, the Appellants'
assertion appears to be based on an assumption that Hozack's teaching
concerning the shape of its keel cannot be separated from Hozack's teaching
concerning the angle of the keel relative to the anterior-posterior axis. See
Appeal Br. 5-7; Reply Br. 2-3. However, the Examiner's obviousness
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, and can take account of the inferences and
creative steps that a person of ordinary skill in the art would employee. See
KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d at 988). Here, the
Appellants have not persuaded us that the Examiner erred in determining
that a person of ordinary skill in the art would understand that Hozack's
sloping-shaped keel would increase stabilization of Rhodes' tibial implant
when oriented along the anterior-posterior axis. See also Final Act. 5-6.
Thus, the Examiner's rejection of claims 1, 2, 5-7, 13, 14, 23, 27-30,
and 32-36 as unpatentable over Rhodes and Hozack is sustained.
Turning to the Examiner's rejection of claims 28-31, 36, and 37 as
unpatentable over Rhodes, Hozack, and Santini, the Appellants rely on the
arguments discussed above for this ground of rejection and assert that
"Santini does not cure the deficiencies in the combination of Rhodes and
Hozack." Appeal Br. 8. However, as discussed above, the combination of
Rhodes and Hozack does not suffer from any deficiencies. Therefore, for
the same reasons discussed above, we likewise sustain the Examiner's
rejection of claims 28-31, 36, and 37 as unpatentable over Rhodes, Hozack,
and Santini.
6
Appeal2014-007637
Application 12/599, 123
DECISION
We AFFIRM the Examiner's decision rejecting claims 1, 2, 5-7, 13,
14, 23, and 27-37.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
7