Ex Parte Goodfellow et al

Patent Trial and Appeal Board

Dec 31, 2018

13821453 (P.T.A.B. Dec. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/821,453 06/18/2013
104326 7590 01/03/2019
Schwegman Lundberg & Woessner/ Zimmer
P.O. Box 2938
Minneapolis, MN 55402
FIRST NAMED INVENTOR
John William Goodfellow
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.B32US 1 3014
EXAMINER
SNOW, BRUCE EDWARD
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
01/03/2019 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 JOHN WILLIAM GOODFELLOW (DECEASED),
JOHN O'CONNOR, CHRIS ALEXANDER DODD,
and DAVID WYCLIFFE MURRAY
Appeal 2018-00183 7
Application 13/821,45 3
Technology Center 3700
Before BRETT C. MARTIN, LISA M. GUIJT, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection2 of claims 22-24. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellants identify the real party in interest Biomet UK Limited. Appeal
Br. 2.
2 Appeal is taken from the Final Office Action dated February 14, 2017, as
supplemented by the Advisory Action dated April 27, 2017.
Appeal 2018-001837
Application 13/821,45 3
STATEMENT OF THE CASE
Claim 22, the sole independent on appeal, reproduced below, is
exemplary of the subject matter on appeal.
22. A system of parts for use in unicondylar meniscal bearing
knee replacement, the system comprising:
a plurality of meniscal bearings ranging in size including
an extra small bearing having an anterior-posterior length of
29 .2±0.5mm, a small bearing, a medium bearing, a large bearing,
and an extra large bearing having an anterior-posterior length of
39.5±0.5mm, each meniscal bearing comprising a body defining
a dished first bearing surface on one side thereof and a second
surface on an opposing side thereof,
wherein each meniscal bearing has an entrapment defined
as the difference in thickness between the smaller of the
maximum thicknesses between the first and second surfaces at
an anterior and posterior end and the minimum thickness
between the first and second surfaces, the entrapment of each
meniscal bearing being between 3 .2mm at least for the extra
small bearing and 3. 8mm at most for the extra large bearing.
THE REJECTIONS
I. Claims 22-24 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Appellants' Admitted Prior Art ("AAP A").
II. Claims 22-24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the AAP A.
ANALYSIS
Rejection I
Independent claim 22
Regarding independent claim 22, the Examiner finds, inter alia, that
Appellants' Specification, as Appellants' admitted prior art ("AAP A"),
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Application 13/821,45 3
discloses an entrapment for each meniscal bearing, in a plurality of bearings
ranging in size and including an extra small bearing, a small bearing, a
medium bearing, a large bearing, and an extra-large bearing, wherein each
bearing has an entrapment in a range of between 3.2 mm at least for the
extra small bearing and 3.8 mm at most for the extra-large bearing, as
claimed. Final Act. 4--5. In particular, the Examiner relies on paragraph 13
of the Specification for disclosing, as known in the prior art, that "[ t ]he
entrapment varies from about 3mm in the extra-small to about 4mm in the
extra-large." Id. at 5 (quoting Spec. ,r 13) (emphasis omitted). The
Examiner determines that "about 3mm to about 4mm includes and
anticipates the claimed range of 'the entrapment of each meniscal bearing
being between 3.2mm at least for the extra small bearing and 3.8mm at most
for the extra large bearing."' Id. ( emphasis omitted).
Appellants submit that anticipation requires the claimed invention to
be shown in "complete detail" and argue that "the differences in sizes are
much too large at such small dimensions to be considered anticipatory."
Appeal Br. 9; see also Spec. ,r 24 ( describing "the entrapment of all of these
bearings will be in the range 3.2mm to 3.8mm, which is a considerable
narrowing of the range of entrapments compared with prior art bearings,"
wherein "[ c ]ompared to the prior art, the smaller bearings have an increased
entrapment and the larger bearings have a decreased entrapment").
We determine that the Examiner has failed to provide support for the
finding that one skilled in the art would interpret "about 3mm" and "about
4mm," as disclosed in the AAPA, as anticipating "3.2mm" and "3.8mm" as
claimed.
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Application 13/821,45 3
Accordingly, we cannot sustain the Examiner's rejection of
independent claim 22 as anticipated by the AAP A, and claims 23 and 24
depending therefrom.
Re} ection II
Independent claim 22
The Examiner finds that the claimed range for the entrapment of each
of the plurality of bearings overlaps, or lies inside of, the range disclosed in
the APAA. Final Act. 5---6 (citing MPEP § 2144.05, In re Wertheim, 541
F.2d 257 (CCPA 1976); In re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990)).
The Examiner concludes that "[ t ]herefore, it would have been obvious to
have tried bearing ranging in the size from extra small to extra large with an
entrapment of 3.2 to 3.8 mm with a reasonable expectation of success." Id.
at 6.
It is undisputed that the AP AA discloses a range of entrapments for a
plurality of bearings (i.e., extra small, small, medium, large, extra large) of
between about 3.0 mm and about 4.0 mm. See, e.g., Spec. ,r 13 ("In one
version of the prior art, there are five sizes of bearings, from extra small to
extra large .... The entrapment varies from about 3mm in the extra-small
to about 4mm in the extra-large."). The claimed narrower range of "between
3 .2mm at least for the extra small bearing and 3. 8mm at most for the extra
large bearing" is also undisputedly encompassed within the disclosed range.
Thus, the Examiner has established a prima facie case of obviousness. The
Examiner's establishment of a prima facie case shifts the burden to
Appellants to show that their claimed range was critical for obtaining an
unexpected result. See In re Woodruff, 919 F.2d at 1578.
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Application 13/821,45 3
Appellants contend that "even if a prima facie case exists," the prima
facie case is rebutted because "the AAP A teaches away from the claimed
range." Appeal Br. 11; Reply Br. 3. In support, Appellants submit that "the
thinking in the prior art at the time of the invention is described as:
'Previously, it has been thought necessary to vary the entrapment dependent
strongly upon the size of the patient and so the size of the medial bearing
used,"' such that "[i]f the prior art thinking ... was to vary based on size of
patient then it would be counter-intuitive to narrow the range, as the present
inventors have done." Appeal Br. 12 (quoting Spec. ,r 18). Appellants
further submit that there would be no reasonable expectation of success to
modify the range disclosed in the prior art (i.e., from about 3 mm for an
extra small bearing entrapment to about 4 mm for an extra large bearing
entrapment) to the claimed range (i.e., from 3.2 mm for an extra small
bearing entrapment to 4 mm for an extra large bearing entrapment), because
"using the conventional thinking in the art at the time 'thought' it was
'necessary to vary the entrapment dependent strongly upon the size of the
patient."' Id. ( emphasis added) ( quoting Spec. ,r 18).
Appellants present evidence that, in comparison to the AP AA, the
claimed invention "provides 'advantages in having the entrapment
proportionally larger in smaller patients and proportionally smaller in larger
patients."' Appeal Br. 12 (citing Spec. ,r 70). In particular, Appellants point
to paragraph 18 of the Specification, which describes "prior art entrapments,
which were generally smaller than the ranged discussed, did not sufficiently
prevent dislocation of the knee joint." Id. Appellants also refer to paragraph
24, which explains that the larger entrapment of the smaller bearings
"result[ s] in slacker ligaments and less postoperative pain but without
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Application 13/821,45 3
significantly increasing the risk of dislocation" and that the smaller
entrapment of the larger bearings enables a bearing of the correct minimum
thickness to be implanted more easily compared to the prior art. Id.
We determine that, on the record before us, the Examiner has failed to
weigh Appellants' evidence of criticality and unexpected results with respect
to the claimed range, which is narrower than the range disclosed in the prior
art, such that the extra small bearing has a larger entrapment than the prior
art and the extra large bearing has a smaller entrapment.
Regarding the Examiner's alternative rationale, namely, that
it would have been obvious ... to have increased the entrapment
in an extra small meniscal bearing as claimed to reduce the
likeliness of dislocation of the joint ... and to have decreased the
entrapment in an extra large meniscal bearing as claimed wherein
dislocation of the joint was not a problem but to allow said
bearing to be inserted easier
(Final Act. 6), the Examiner has impermissibly relied on hindsight. In other
words, we determine that the Examiner's reasoning is gleaned from the
Specification. See Spec. ,r 18 ("[ Appellants have] appreciated that, for
smaller patients and bearings, prior art entrapments, which were generally
smaller than the range discussed, did not sufficiently prevent dislocation of
the knee joint."), ,r 16 ("There is a need for a bearing design with ... less
entrapment for the larger bearings which may prevent overstuffing of the
joint.").
The Examiner also determines that it would have been obvious to
optimize the range of entrapment sizes for the bearings because entrapment
size is a known result-effective variable. Ans. 8-9. The Examiner,
however, has not provided support for entrapment size being a known
result-effective variable. Moreover, as Appellants point out, "[ t ]he AP AA
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Application 13/821,45 3
only discloses that one can parametrically vary the entrapment of a bearing
according to [the] size of the bearing," and "[t]he APAA does not make any
reference to optimizing the geometry of bearings in the manner [claimed]."
Appeal Br. 12; see also Reply Br. 4 (arguing that the prior art does not
disclose "optimizing the geometry of the bearings, as claimed").
Accordingly, we do not sustain the Examiner's rejection of
independent claim 22, and claims 23 and 24 depending therefrom, under 35
U.S.C. § 103(a) as unpatentable over the APAA.
DECISION
The Examiner's decision rejecting claims 22-24 under 35 U.S.C.
§ 102(b) is REVERSED.
The Examiner's decision rejecting claim 22-24 under 35 U.S.C.
§ 103(a) is REVERSED.
REVERSED
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