Ex Parte Hazebrouck et al

Board of Patent Appeals and Interferences

Jul 31, 2012

11860833 (B.P.A.I. Jul. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte STEPHEN A. HAZEBROUCK, DAREN L. DEFFENBAUGH,
and PAUL S. RANDALL
__________

Appeal 2011-001149
Application 11/860,833
Technology Center 3700
__________

Before DONALD E. ADAMS, ERICA A. FRANKLIN, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

BONILLA, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants have requested rehearing of the Decision entered April 30,
2012, affirming the rejection of claims 1-18 as anticipated. The request for
rehearing is granted. We vacate our Decision dated April 30, 2012, in its
entirety, in favor of the Decision below.

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DISCUSSION
Appellants request reconsideration of our affirmance of the rejection
of claims 1-18 under 35 U.S.C § 102(b) as anticipated by Ensign et al. (U.S.
Pat. No. 6,379,388 B1, issued Apr. 30, 2002). Appellants assert that the
Board‟s analysis in the Decision constitutes a new ground of rejection (Req.
Reh‟g. 2, 7). Specifically, Appellants argue that after submitting a Response
on July 7, 2009, the Examiner mailed a final Office Action on October 23,
2009, that “changed the basis of the rejection” (id. at 3), and “based the
rejection on forming the rail 46 as two separate pieces and not on the fact
‘that the rail (retaining rail; 46) may embody any suitable cross sectional
shape‟” (id. at 5). According to Appellants, “[i]n the Appeal Brief and the
Reply Brief, Appellants reasonably directed their arguments to countering
that basis for the rejection because Appellants believed it was understood
that the cross-sections of the rail shown in FIGS. 3A-3D provide no clue or
hint at the relationship between the posterior width and the length of the
retaining rail as recited in Appellants‟ claims” (id. at 6).
Appellants also assert in the request for rehearing that “if rail 46 were
merely formed to have „a shape with one of the cross section views
presented in Figures 3A, 3B, 3C, or 3D,‟ the rail 46 would still be T-
shaped,” as argued in the Response dated July 7, 2009, and as depicted in
four “Design” of 3A, 3B, 3C, and 3D generated by Appellants, which
expand upon, and add additional features to, Figures 3A – 3D in Ensign (id.
at 6 (emphasis in original)).
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DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to a
fixed-bearing knee prostheses. The Examiner has rejected the claims as
anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm both rejections, but on new grounds.
STATEMENT OF THE CASE
The claims at issue here are directed to a fixed-bearing knee
prostheses comprising a tibial tray having a platform with an elongated stem
extending downwardly, where the platform has a peripheral rail and a
retaining rail, both extending upwardly from the surface of the platform.
Claims 1-18 are on appeal.
Claims 1, 8, and 12 are independent. Claim 1 is representative and
reads as follows (emphasis added):
1. A fixed-bearing knee prosthesis, comprising:
a femoral component having a medial condyle surface and a
lateral condyle surface,
a bearing having (i) a medial bearing surface configured to
articulate with the medial condyle surface of the femoral component,
and (ii) a lateral bearing surface configured to articulate with the
lateral condyle surface of the femoral component, and
a tibial tray secured to the bearing, the tibial tray having a
platform with an elongated stem extending downwardly from a lower
surface thereof, the platform having (i) a peripheral rail extending
along at least an anterior section of a perimeter of the platform and
extending upwardly from an upper surface of the platform, and (ii) a
retaining rail extending upwardly from the upper surface of the
platform and posteriorly away from the peripheral rail,
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wherein (i) the retaining rail has a posterior width defined by
the distance between a lateral end and a medial end of a posterior-
most edge of the retaining rail, (ii) the retaining rail has a length
defined by the distance of an imaginary center line segment extending
from the anterior edge of the tibial tray to a midpoint located along the
posterior-most edge halfway between the lateral end and the medial
end, and (iii) the posterior width of the retaining rail is less than, or
equal to, the length of the retaining rail.
Claim 12 is similar to claim 1, except the last wherein clause reads instead
(emphasis added):
wherein the retaining rail has (i) a posterior-most edge having a
lateral end and a medial end, (ii) a lateral-most edge extending
linearly from a first point on the peripheral rail to the lateral end of
the posterior-most edge, and (iii) a medial-most edge extending
linearly from a second point on the peripheral rail to the medial end
of the posterior-most edge.
The claims stand rejected as follows:
• Claims 1-18 under 35 U.S.C § 102(b) as anticipated by Ensign et al.
(U.S. Pat. No. 6,379,388, issued Apr. 30, 2002).
• Claims 1-18 under 35 U.S.C § 103(a) as obvious over Ensign.
I.
Issue
Does Ensign disclose a retaining rail as recited in the last wherein
clauses of independent claims 1 and 12?

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Findings of Fact
1. The instant Specification presents the following figures:

Figure 1 depicts a perspective view of a fixed-bearing knee prosthesis.
Figure 6 depicts a cross sectional view of the assembled knee prosthesis of
Figure 1.
2. In Figure 1 of the Specification, (12) points to a femoral component,
(16) points to a bearing, (14) points to a tibial tray, (42) points to a
peripheral rail, (18) points to a platform, (20) points to an elongated tail, and
(50) points to a retaining rail. (Spec. 6, [0029], [0030]; 7, [0034]; 8, [0036].)

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3. As disclosed in paragraph [0040] of the Specification:
As shown in FIG. 6, in the illustrative embodiment
described herein, the retaining rail 50 is tapered along its length.
In particular, the width of the retaining rail 50 is smallest at its
posterior-most edge 60, but gradually increases in the direction
toward the anterior edge 52 of the tibial tray 14. It should be
appreciated, however, that numerous other designs of the
retaining rail 50 are contemplated. For example, as shown in
FIG. 7, a somewhat inverted design may be used. In the case of
FIG. 7, the posterior-most edge 60 of the retaining rail 50 is
wider than the edge of the retaining rail 50 along the anterior
edge 52 of the tibial tray 14.
4. Ensign discloses a tibial prosthesis locking system. (Ensign, col. 2, ll.
20-21.)
5. Ensign presents figures showing a tibial prosthesis, including Figures
3, 3A-3D, and 4 presented below.

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Figure 3 depicts a perspective view of a tibial plate of a tibial prosthesis.
Figures 3A-3D depicts different potential cross-sectional views of a male
projection formed in the tibial plate. Figure 4 depicts a side schematic view
of the tibial prosthesis.
6. As described in Ensign, “[f]ormed on interior portions of the tibial
plate 16 are male projections, or rails, 46 and 48. The rail 46 preferably
comprises a „T‟ shape as shown, and may be described herein as a first rail
46a and second rail 46b, or alternatively a rail 46 having a first portion 46a
and a second portion 46b.” (Id. at col. 4, ll. 30-35.)
7. Ensign discloses that “rail 46 is particularly advantageous for
providing resistance to movement of the tibial insert 20 in the anterior-
posterior direction 94.” Ensign also teaches that by providing portion 46a,
“significantly increased surface area for resisting movement in the anterior-
posterior direction is provided thereby.” (Id. at col. 6, ll. 48-55.)
8. Regarding portion 46b, Ensign also states that:
Much of the impact of that horizontal-anterior directed
component of force is resisted by the portion 46b of the rail 46
which, because of its orientation and its somewhat interior
location on the tibial plate 16, provides much more effective

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resistance to movement in the anterior-posterior direction than
simple reliance on the anterior sidewall 36 would provide.
(Id. at col. 6, ll. 61-67.)
9. Ensign further states that:
Resistance to movement of the tibial insert 20 in the rotational
direction 98 is enhanced by utilizing the combination of rails 46
and 48, and in particular by the fact that rail portion 46b
extends in a transverse and preferably orthogonal direction
relative to the rail portion 46a and the rail 48. Resistance to
movement of the tibial insert 20 in the medial-lateral direction
96 is enhanced by the rail portion 46a and by the rail 48, which
both face the medial-lateral direction.
(Id. at col. 7, ll. 5-14.)
Analysis
For the reasons set forth below, we conclude that evidence of record
supports the Examiner‟s conclusion that Ensign anticipates claims 1 and 12.
Because our reasoning differs in part from the reasoning stated by the
Examiner, however, we designate our affirmance of the anticipation
rejection a new ground of rejection.
With regard to claim 1, Appellants argue that Ensign does not disclose
a platform of a tibial tray having a retaining rail extending posteriorly away
from a peripheral rail, where the retaining rail has a posterior width less
than, or equal to, the length of the retaining rail. (App. Br. 7.) Specifically,
Appellants assert that rail 46, as shown in Figure 3, 6, and 8 of Ensign, is “a
single, integral component having a rail portion 46a and a rail portion 46b,”
and that “Ensign does not state, imply, or suggest that the rail 46 may be
formed as anything other than a single integral T-shaped component,” i.e.
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one having both rail portion 46a and rail portion 46b. (Id. at 9, 10; Reply Br.
3.)
Although Ensign describes the advantages of using a retaining rail
having a T-shape (FF 7-9), Ensign does not teach that a relevant retaining
rail must be T-shaped. We do not agree that Ensign fails to state or suggest
that rail 46 “may be formed as anything other than a single, integral
component having a rail portion 46a and a rail portion 46b,” as argued by
Appellants. (App. Br. 10.)
The Examiner “asserts that the first rail (46a) would inherently have a
posterior width defined by a distance between a lateral end and a medial end
of a posterior-most edge, as claimed by appellant,” and also states that it
“appears that the posterior width of the first rail (46a) would be less than, or
equal to, the length of the first rail (46a), as claimed by appellant.” (Ans. 5,
8; Final Office Action 3-4.) In this context, the Examiner presents an
annotated version of Figure 8 in Ensign, where the annotated Figure 8
separates first rail (46a) from second rail (46b) via a dashed line. (Id. at 5
and 8-9.) The Examiner states that the annotated figure “indicates where the
posterior-most edge would necessarily be located if the rail was formed as
two separate pieces, as implied by Ensign.” (Id. at 5.)
We agree with this analysis by Examiner, i.e., that Ensign teaches that
the T-shaped portion in Figure 8 can comprise two different rails, i.e., “a
first rail 46a and second rail 46b” (Ensign, col. 4, ll. 30-35). In other words,
Ensign teaches, in one embodiment, a relevant prosthesis comprising two
different retaining rails, i.e., rail 46a and rail 46b. The relevant phrase in
independent claim 1 recites a retaining rail where “the posterior width of the
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retaining rail is less than, or equal to, the length of the retaining rail.” Rail
46a described in Ensign meets this limitation. Moreover, claim 1 does not
exclude an additional retaining rail, such as rail 46b, which is also disclosed
in Ensign. As such, the Examiner has established by a preponderance of the
evidence that Ensign anticipates claim 1. Appellants have not persuaded us
otherwise.
In relation to claim 12, Appellants assert arguments similar to those
discussed above, i.e., that “Ensign only discloses T-shaped rail 46.” (Id. at
11.) When looking at the T-shape of rail 46 shown in certain figures in
Ensign, and more specifically at the line from a first (or second) point on the
rail to the lateral (or medial, respectively) end of the posterior-most edge,
Appellants state that “[s]uch a convoluted path is certainly not linear.” (Id.
at 12.)
We disagree with Appellants that Ensign only describes a T-shaped
rail, much less only the specific T-shaped rail 46 depicted in Figures 3, 6,
and 8. Ensign teaches an embodiment comprising two different retaining
rails, i.e., rail 46a and rail 46b, as discussed above. The retaining rail recited
in the last wherein clause of claim 12 encompasses rail 46a. As with claim
1, claim 12 does not exclude the possibility of including an additional
retaining rail, such as rail 46b, also disclosed in Ensign.
Although Appellants argue claims 1-11 separately from claims 12-18,
Appellants do not argue claims 2-11 separately from claim 1, nor claims 13-
18 separately from claim 12. Thus, claims 2-11 and 13-18 fall together with
claims 1 and 12 respectively. 37 C.F.R. § 41.37(c)(1)(vii).
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Conclusion of Law
We conclude that Ensign discloses a retaining rail as recited in the last
wherein clauses of independent claims 1 and 12.
II.
Issue
Does evidence of record support the Examiner‟s conclusion that
claims 1-18 would have been obvious over Ensign?
Analysis
For the reasons set forth below, we conclude that a skilled artisan
would have found the product of claims 1-18 obvious over Ensign. Because
our reasoning differs in part from the reasoning stated by the Examiner,
however, we designate our affirmance of the obviousness rejection a new
ground of rejection.
The Examiner states that it would have been obvious to a skilled
artisan to remove the second rail/portion (46b) in the rail 46, resulting in first
rail/portion (46a). (Ans. 6.) The Examiner also states that it would have
been obvious to switch the two rail shapes, i.e., rail 46 and rail 48 in Figures
3 and 8 for example, because “the same advantages would result (col. 6,
lines 48-67) and since it has been held that a mere rearrangement of the
essential working parts of a device involves only routine skill in the art.”
(Id. at 6, 7.)
We agree with these findings by the Examiner. In addition, we
disagree with Appellants that “Ensign flatly rejects forming rail 46 without
the rail portion 46b” (App. Br. 13). Even assuming that Ensign discloses
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that “another object of the present invention” is to provide a tibial prosthesis
locking system “that provides enhanced resistance to movement of an
articular surface component of the prosthesis in at least four directions” (id.
(quoting Ensign, col. 2, ll. 26-30)), Ensign as a whole does not indicate that
a relevant rail must always include rail 46b or that it must be T-shaped, as
discussed in the section above.
Moreover, Ensign at least suggested to one skilled in the art to modify
rail 46 as presented in Figures 3 and 8 so that it looked similar to rail 48, as a
possible option. Ensign describes the advantages of using rail 46a, for
example, and therefore at least suggests that rail 46b is not required, even if
rail 46b provides additional advantages. (FF 7-9; see also Ans. 10 (citing
Ensign, col. 6, ll. 50-55).) Moreover, Ensign at least suggests that one use
rail 46a alone when it states that “rail 46 preferably comprises a „T‟ shape as
shown, and may be described herein as a first rail 46a and second rail 46b
….” (FF 6 (emphasis added).) Teachings regarding certain embodiments
having the T-shaped rail 46 shown in Figure 3, as cited by Appellants (App.
Br. 14-16), do not suffice to teach away from using rail 46a alone as an
additional possible embodiment.
In relation to the obviousness rejection of claim 12, Appellants
present the same teaching away arguments already addressed above, i.e., that
a relevant retaining wall in Ensign must be T-shaped and include portion
46b. (App. Br. 17-19.) As discussed above, Ensign teaches, or at least
suggests, an embodiment of a retaining rail, e.g., rail 46a alone, having
relevant edges “extending linearly” as recited in claim 12.
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Once again, although Appellants argue claims 1-11 separately from
claims 12-18, Appellants do not argue claims 2-11 separately from claim 1,
nor claims 13-18 separately from claim 12. Thus, claims 2-11 and 13-18 fall
together with claims 1 and 12 respectively. 37 C.F.R. § 41.37(c)(1)(vii).
Conclusion of Law
We conclude that evidence of record supports the Examiner‟s
conclusion that claims 1-18 would have been obvious over Ensign.
SUMMARY
We affirm the rejection of claims 1-18 under 35 U.S.C § 102(b) as
anticipated by Ensign, as well as the rejection of claims 1-18 under 35 U.S.C
§ 103(a) as obvious over Ensign.
TIME PERIOD FOR RESPONSE
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 C.F.R.
§ 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so rejected, or
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both, and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

GRANTED; 37 C.F.R. § 41.50(b)

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