Ex Parte LANDON

Patent Trial and Appeal Board

Aug 30, 2016

13209997 (P.T.A.B. Aug. 30, 2016)

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.
13/209,997 08/15/2011 Ryan Lloyd LANDON PT-3806-US-NP 1261
26170 7590 08/30/2016
Smith & Nephew, Inc.
Sabrina Chambers
1450 Brooks Road
Memphis, TN 38116
EXAMINER
NELSON, CHRISTINE L
ART UNIT PAPER NUMBER
3774
MAIL DATE DELIVERY MODE
08/30/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RYAN LLOYD LANDON
____________________

Appeal 2014-004294
Application 13/209,997
Technology Center 3700
____________________

Before STEFAN STAICOVICI, LYNNE H. BROWNE, and
JAMES J. MAYBERRY, Administrative Patent Judges.

MAYBERRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Ryan Lloyd Landon (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s rejections of claims 1, 3, 6, 10, and 13. An oral
hearing was held on August 4, 2016. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The claims are directed to an orthopaedic implant. Spec. ¶ 2. Claim
1, the sole independent claim under appeal and reproduced below, is
representative of the claimed subject matter:
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1. A tibial component comprising:
a tibial tray with a superior side and an inferior side; and
a support member extending from the inferior side of the
tibial tray, the support member having a stem portion that slants
at an angle relative to the inferior side of the tibial tray in an
anterior-posterior direction, the support member further
including at least two arms that are angled relative to one
another, each of the arms defining an opening, the openings
being comprised of solid material and frangible,
wherein the tibial tray and the support member are
monolithic.
Appeal Br. 8, Claims App.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Williams US 5,824,103 Oct. 20, 1998
Hunter
Gross
Justin
Clark
Khan
US 2003/0028254 A1
US 2006/0142869 A1
US 2007/0129808 A1
US 2009/0228114 A1
US 2011/0270404 A1
Feb. 6, 2003
June 29, 2006
June 7, 2007
Sept. 10, 2009
Nov. 3, 2011

REJECTIONS1
I. Claims 1, 3, and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Williams, Gross, Clark, and Khan.
II. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Williams, Gross, Clark, Khan, and Hunter.

1 In an Advisory Action mailed on August 14, 2013, the Examiner withdrew
the rejection of claim 13 under 35 U.S.C. § 112, second paragraph, as being
indefinite. Adv. Act. 1.
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III. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Williams, Gross, Clark, Khan, and Justin.

ANALYSIS
Rejection I – Claims 1 and 3
The Examiner finds that Williams discloses much of the subject
matter of independent claim 1. Final Act. 3. The Examiner also finds that
Williams fails to disclose that each of its arms 22, 24 “defin[e] an opening,
the openings being comprised of solid material and frangible,” as required
by claim 1. Id. The Examiner further finds that “Gross teaches that it is
known to use a tibial component having a supporting portion with at least
two arms that extend out from a stem (17) in either cemented or cementless
installation procedures.” Id. (citing Gross ¶ 63).
Significant to this appeal is that the Examiner interprets Gross’s
paragraph 63 to disclose that a single type of implant may be used for either
cemented or cementless application. See Analysis, infra. Specifically, this
paragraph discloses that Gross’s tibial component “is intended for use as part
of a cementless knee prosthesis. However, the tibial component can be used
as part of any type of knee prosthesis. In the situation where the keel is to be
cemented in place, the coating of osteoconductive material is typically
dispensed with.” Gross ¶63 (emphasis added). The Examiner interprets this
disclosure to mean that in cemented application, the typical, or usual,
implant will not have a coating of osteoconductive material, thus, making it
different than the implant used in a cementless application. See Answer 5.
The Examiner stresses, however, that the paragraph includes the word
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“typically,” which would indicate to an artisan of ordinary skill that in
certain situations, the same implant may be used for either cemented or
cementless application. See id. (stating that this disclosure “makes clear by
the use of the term ‘typically’ that omission of the coating . . . is an optional
choice”).
The Examiner further finds that Clark teaches that, for a knee
prosthesis with at least two arms, openings in the arms are advantageously
used for flowing cement to secure the prosthesis. Final Act. 3. The
Examiner also finds that Khan discloses that it was known in the joint
replacement arts that openings covered with a frangible material may be
used to enhance securing the prosthesis—that the frangible material can be
removed if necessary to provide an opening for securing the implant or the
frangible material may remain intact, to provide additional strength. Id. at
3–4.
The Examiner determines that:
it would have been obvious to one of ordinary skill in the art at
the time of the invention to modify the arms of the tibial
component of Williams, which is known to be useable in either
cemented or cementless installation procedures, as taught by
Gross, to include an opening that is comprised of solid,
frangible material so that the material can be selectively
removed, as taught by Khan, to provide an aperture to enable
the flow of cement therethrough for enhanced attachment when
the tibial component is to be used in a cemented procedure, as
taught by Clark, and the solid, frangible, material can be left
alone to provide maximum strength in the arms when the tibial
component is to be used in a cementless procedure.
Final Act. 4.
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Appellant first argues that “none of the references disclose or suggest
a tibial implant having a first configuration for cementless implantation that
can be altered by the surgeon to a second configuration for cemented
implantation, as proposed by the Examiner.” Appeal Br. 3. Appellant
contends that the Examiner misinterprets Gross—that Gross discloses two
alternative implants, one implant for cemented application and one implant
for cementless application. Id.; Reply Br. 1–2.
Appellant’s argument does not inform us of Examiner error. As
Appellant recognizes and the Examiner finds, Gross makes it clear that,
although atypical, a single implant design may be used for both cemented
and cementless applications. See Answer 5; see also Reply 1 (“Gross states
that an implant used for cemented implantation is typically different from an
implant used for non-cemented implantation.”) (emphasis added). As we
discussed above, the Examiner interprets the word “typically” in Gross’s
paragraph 63 to mean that using two separate types of implants—one for
cemented applications and one for cementless applications—is optional, not
a requirement. Appellant fails to identify any evidence to support its
position that the prior art, including Gross, does not disclose a single implant
applicable to both cemented and cementless applications.
Next, Appellant argues that Khan’s acetabular cup is designed for a
cementless application and that its openings with a frangible cover allow a
surgeon the option to additionally secure the cup during implementation
using screws or pins. Appeal Br. 4. As such, Khan fails to support the
Examiner’s assertion that an artisan of ordinary skill would apply Khan’s
teachings to provide optional openings to add cement. Id. Appellant
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contents that the Examiner has focused on a limited teaching of Kahn and
ignored what one of ordinary skill in the art would appreciate from the full
disclosure. Id.
Appellant’s argument does not inform us of Examiner error. We
agree that the Examiner relies on Kahn for the narrow teaching that openings
covered with frangible material provides a surgeon with optional openings
that can be used to further secure the implant. See Answer 5. As the
Examiner explains, this teaching is applicable to any implant, regardless of
whether the opening receives a solid securing implement or fluid. Id.
Appellant points to nothing in Khan’s disclosure that disparages using its
type of openings to receive cement or that would suggest to one of ordinary
skill in the art that its openings must be used for solid securing devices only.
Although we agree with Appellant that Kahn discloses using “screws, pins,
barbs, spikes or any other suitable attachment device,” (see Reply Br. 2), this
disclosure does not amount to teaching or suggesting to an artisan of
ordinary skill that cement may not be used. Similarly, Appellant provides
no other evidence to support his position that Kahn’s openings covered with
a frangible material could not be used for a cemented implant.
Next, Appellant argues that Clark’s openings are part of a femoral
prosthesis and Clark does not suggest that its openings would be applicable
to a tibial prosthesis. Appeal Br. 4–5. Appellant argues that an artisan of
ordinary skill would not have seen any advantage in employing Clark’s
openings without a cement introduction port or recessed portion as taught in
Clark for a specific femoral implant. Id.
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Appellant’s argument does not inform us of Examiner error. To the
extent Appellant’s argument requires the exact structure of Clark to be
bodily incorporated into Williams’s implant, such an argument is improper.
“[I]t is not necessary that the inventions of the references be physically
combinable to render obvious the invention under review.” In re Sneed, 710
F.2d 1544, 1550 (Fed. Cir. 1983); see also In re Nievelt, 482 F.2d 965, 968
(CCPA 1973) (“Combining the teachings of references does not involve an
ability to combine their specific structures.”).
Further, Appellant fails to adequately explain why a person having
ordinary skill in the art would not understand how to adapt the teachings
from a femoral implant to a tibial implant. As the Examiner finds, “[a]
teaching on an adaptation to make fixing the support member of a femoral
component with cement more secure would absolutely be relevant to
someone trying to figure out how to more securely fix the support member
of a tibial component with cement.” Answer 6; see also KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a
person of ordinary creativity, not an automaton.”); In re Sovish, 769 F.2d
738, 742–43 (Fed. Cir. 1985) (acknowledging that, in an obviousness
context, skill is presumed on the part of one of ordinary skill in the art).
Finally, Appellant argues that it would not have been obvious to
include an opening with frangible material. Appeal Br. 5. Appellant argues
that “contrary to the Examiner’s assertions, maximum strength would be
achieved for a cementless tibial implant when there are no openings—not
when frangible materials of an opening are ‘left alone.’” Id.
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Appellant’s argument does not inform us of Examiner error, as it is
not commensurate with the Examiner’s reasoning. As the Examiner
explains, the reason for including a frangible material over the openings is
that, in situations where the surgeon decides that enhanced fixation is not
needed, the material will remain intact, providing additional strength to the
implant as compared to an implant with openings but no frangible material.
Answer 6–7. That is, the Examiner does not reason that an implant with
openings and frangible material is stronger than an implant without
openings, but instead an implant with openings and frangible material is
stronger than an implant with openings and no frangible material. Here, the
Examiner weighs the advantages of having openings available to a surgeon
to be used for extra ports for cement against the reduction in overall strength
by having the openings and determines that one of ordinary skill in the art
would pursue the modification given the advantages, with the frangible
material mitigating to some extent the disadvantages. See Winner Int’l
Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact
that the motivating benefit comes at the expense of another benefit, however,
should not nullify its use as a basis to modify the disclosure of one reference
with the teachings of another. Instead, the benefits, both lost and gained,
should be weighed against one another.”).
For the reasons above, we sustain the Examiner’s rejection of
independent claim 1 under 35 U.S.C. § 103(a) as being unpatentable over
Williams, Gross, Clark, and Khan. Appellant does not make any additional
arguments for the separate patentability of claim 3. Appeal Br. 6.
Accordingly, we also sustain the Examiner’s rejection of claim 3 under
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35 U.S.C. § 103(a) as being unpatentable over Williams, Gross, Clark, and
Khan.

Rejection I – Claim 13
Claim 13 recites “[t]he tibial component according to claim 1,
wherein a portion of each of the openings is defined by the stem portion.”
Appeal Br. 8, Claims App. The Examiner finds that the subject matter of
claim 13 would have been a matter of obvious design choice “inasmuch as
this feature appears to have no effect on the function of the tibial
component.” Final Act. 4.
Appellant contends that the Examiner fails to provide a rational basis
for the rejection. Appeal Br. 6. Appellants argue that “[t]he [S]pecification
discloses various examples of ways in which the claimed openings may
contribute to the function of the tibial component.” Id. (citing Spec. ¶¶ 21,
24, 25, and 27). Specifically, Appellant quotes paragraph 21 of the
Specification, which enumerates certain benefits of openings, including 1)
reducing stiffness, 2) facilitating visualization, 3) facilitating loosening the
tray if a resection is needed, or 4) facilitating bone ingrowth. Reply Br. 3–4.
Appellant’s argument does not inform us of Examiner error, as it is
not commensurate with the rejection. Although Appellant characterizes
these benefits as associated with openings 112, which are formed, in part, by
stem portion 114 (see Reply Br. 3), the Specification is not that specific.
Paragraph 21 expressly states that “[i]n some, although not necessarily all,
embodiments, these openings may be sized, positioned, oriented and
otherwise constructed to” achieve the enumerated benefits. Spec. ¶ 21. The
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Specification fails to attribute these benefits to openings where a portion of
each of the openings is defined by the stem portion as required by claim 13,
but instead attributes the benefits to “some,” unspecified, types of openings.
Indeed, we cannot find, nor did Appellant point us to, any description in the
Specification that attributes any benefit to having a portion of the stem form
a part of the opening. See, e.g., Tr. 12–13 (identifying Spec. ¶¶ 21–25 as
providing the “best description”); Spec. ¶¶ 21-25 (describing alternative
configurations for the openings but failing to provide any benefits for having
the stem portion form part of the openings). We agree with the Examiner
that forming a portion of the openings with the stem is an obvious matter of
design choice, as the Specification provides not particular advantage or
problem solved by the claimed configuration. See In re Kuhle, 526 F.2d
553, 555 (CCPA 1975) (concluding that the use of claimed feature solves no
stated problem and presents no unexpected result and “would be an obvious
matter of design choice within the skill of the art”); see also Spec. ¶ 23
(“The arms 116 and stem portion 114 of the support member 110 shown in
Figures 2 and 3 define two openings 112 abutting the inferior surface 124 of
the tibial tray 118. In other embodiments, different numbers, configurations,
shapes, orientations, and positionings of the openings may be possible.”).
Accordingly, we sustain the Examiner’s decision rejecting claim 13
under 35 U.S.C. § 103(a) as being unpatentable over Williams, Gross, Clark,
and Khan.

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Rejections II and III
Appellant does not make any arguments for the separate patentability
of claims 6 (Rejection II) and 10 (Rejection III)—instead relying on their
dependency from claim 1. See Appeal Br. 6. As discussed above in
connection with our analysis of claim 1, Appellant’s arguments with respect
to claim 1 do not inform us of Examiner error.
Accordingly, we sustain the Examiner’s rejection of claim 6 under
35 U.S.C. § 103(a) as being unpatentable over Williams, Gross, Clark,
Khan, and Hunter sustain the Examiner’s rejection of claim 10 under
35 U.S.C. § 103(a) as being unpatentable over Williams, Gross, Clark,
Khan, and Justin.

DECISION
We affirm the Examiner’s rejection of claims 1, 3, and 13 under
35 U.S.C. § 103(a) as being unpatentable over Williams, Gross, Clark, and
Khan.
We affirm the Examiner’s rejection of claim 6 under 35 U.S.C.
§ 103(a) as being unpatentable over Williams, Gross, Clark, Khan, and
Hunter.
We affirm the Examiner’s rejection of claim 10 under 35 U.S.C.
§ 103(a) as being unpatentable over Williams, Gross, Clark, Khan, and
Justin.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

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AFFIRMED