Ex Parte Lappin

Patent Trial and Appeal Board

Nov 7, 2018

14560654 (P.T.A.B. Nov. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/560,654 12/04/2014 Kyle E. Lappin
23643 7590 11/09/2018
Barnes & Thornburg LLP (IN)
11 S. Meridian Street
Indianapolis, IN 46204
UNITED ST A TES OF AMERICA
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.
265280-232334 8138
EXAMINER
SNOW, BRUCE EDWARD
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
11/09/2018 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 KYLE E. LAPPIN
Appeal2017-009215
Application 14/560,654
Technology Center 3700
Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1,2 under 35 U.S.C. § 134 involving claims to a
reverse shoulder orthopaedic implant. The Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
Statement of the Case
Background
"During the lifetime of a patient, it may be necessary to perform a
total shoulder replacement procedure on the patient as a result of, for
1 Appellant identifies the Real Party in Interest as DePuy Synthes Products,
Inc., a Johnson & Johnson Company (see App. Br. 2).
2 We have considered and herein refer to the Specification of Dec. 4, 2014
("Spec."); Final Office Action of Aug. 30, 2016 ("Final Action"); Appeal
Brief of Jan. 30, 2017 ("App. Br."); Examiner's Answer of Apr. 18, 2017
("Ans."); and Reply Brief of June 16, 2017 ("Reply Br.").
Appeal2017-009215
Application 14/560,654
example, disease or trauma" (Spec. ,r 4). "[I]n some cases the patient's
natural shoulder, including its soft tissue, has degenerated to a severe degree
of joint instability and pain. In many such cases, it may be necessary to
change the mechanics of the shoulder." (Spec. ,r 5). "Reverse shoulder
implants are used to do so. As its name suggests, a reverse shoulder implant
reverses the anatomy, or structure, of the healthy shoulder" (id.).
The Claims
Claims 1-19 are on appeal. Claim 1 is representative and reads as
follows:
1. A reverse shoulder orthopaedic implant, comprising:
a humeral prosthesis including a humeral cup and an
elongated stem component configured to be implanted into an
intramedullary canal of a patient's humerus, and
a glenosphere component having (i) a curved lateral
bearing surface configured to articulate with the humeral cup of
the humeral prosthesis, and (ii) a medial surface having a
tapered bore formed therein,
wherein the glenosphere component has (i) an
anterior/posterior width defined by the distance between an
anterior-most point of the lateral bearing surface and a
posterior-most point of the lateral bearing surface, (ii) a
superior/inferior width defined by the distance between a
superior-most point of the lateral bearing surface and an
inferior-most point of the lateral bearing surface, and (iii) the
anterior/posterior width of the glenosphere component is
greater than the superior/inferior width of the glenosphere
component.
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Appeal2017-009215
Application 14/560,654
The Re} ections
A. The Examiner rejected claims 1-19 under 35 U.S.C. § I03(a) as
obvious over Winslow3 and Splieth4 (Final Act. 4--8).
B. The Examiner rejected claims 1-19 under 35 U.S.C. § I03(a) as
obvious over Winslow and Tomier5 (Final Act. 8-11).
Because both of the obviousness rejections tum on the same
issue and rely upon Winslow, we will consider them together.
The Examiner relies on Winslow for elements of the reverse
shoulder orthopaedic implant including the limitation in claim 1 that
"the anterior/posterior width of the glenosphere component is greater
than the superior/inferior width of the glenosphere component." The
Examiner acknowledges that "Winslow does not specifically describe
the metaglene attach[]ment component" (Final Act. 5, 9). The
Examiner relies upon either Splieth or Tomier to suggest metaglene
attachment components consistent with claim 1 (Final Act. 6, 10).
The Examiner finds, regarding the dimensions of the
glenosphere component, that "the combination implant would be fully
capable of being implanted such that the longitudinal axis of the lateral
bearing surface of the glenosphere component extends in an
anterior/posterior direction" (Final Act. 3 ( emphasis omitted)).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that Winslow and Splieth or
3 Winslow, US 7,241,314 B 1, issued July 10, 2007.
4 Splieth et al., US 2013/0150973 Al, published June 13, 2013.
5 Tomier et al., US 7,462,197 B2, issued Dec. 9, 2008.
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Appeal2017-009215
Application 14/560,654
Tomier suggest a glenosphere component where "the anterior/posterior
width of the glenosphere component is greater than the superior/inferior
width of the glenosphere component" as required by claim 1?
Findings of Fact
1. Winslow teaches
a reverse shoulder prosthesis. The reverse shoulder prosthesis
includes a humeral socket having a concave surface, and a
glenoid component having a major diameter and a convex
surface for articulating with the concave surface of the socket.
The convex surface has a height from the major diameter that is
less than a corresponding spherical surface height. The convex
surface can be, for example, ovoid.
(Winslow 1 :24--31 ).
2. Figures 2A and 2B of Winslow are reproduced below:
!Fig-2A
[ig-2B
105
Figures 2A and 2B show the "glenoid component 106 has a convex
articulating surface 122 and a planar attachment surface 128. The convex
articulating surface 122 can be ovoid ( egg-shaped) and has an axis of
symmetry B, a major diameter 'D' along the axis of symmetry, and a minor
diameter 'd' orthogonal to the axis B" (Winslow 2:25-30).
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Appeal2017-009215
Application 14/560,654
3. Winslow teaches the "glenoid component 106 can be attached
to the scapula 60 such that the broad end 110 is inferior to the narrow end
110 or conversely" (Winslow 2:41--43).
3. Splieth teaches regarding reverse shoulder prosthesis that:
In some systems, the baseplate may be fastened to the glenoid
cavity of the scapula by a plurality of screws and a glenosphere
having a convex joint surface may be screwed into the baseplate
using an axial threaded feature and/ or taper locked to a
periphery of the baseplate. In other systems, the glenosphere
may engage the baseplate solely via a taper connection.
(Splieth ,r 2).
4. Tomier teaches regarding reverse shoulder prosthesis "to obtain
immobilization of the glenoidal head 22 on the base 21 in the manner of
a Morse cone" (Tomier 4:14--16).
Principles of Law
"[I]f it is established that an examiner has reason to believe that a
functional limitation is taught in the single prior art reference, the burden
shifts to the applicant to disprove the examiner's belief. An examiner's
belief, however, must be tethered to or grounded in some rationale so as to
establish a prima facie case of anticipation." In re Chudik, 674 Fed. Appx.
1011, 1015 (Fed. Cir. 2017).
Analysis
Appellant contends
there is no disclosure in Winslow that supports the Examiner's
assertions that the glenosphere component of Winslow is
capable of being implanted such that that the longitudinal axis
"D" can extend in the anterior/posterior direction. As such, the
Examiner fails to establish that Winslow expressly teaches
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Appeal2017-009215
Application 14/560,654
having a glenosphere component that has the anterior/inferior
width greater than the superior/inferior width.
(App. Br. 7). Appellant contends "the Examiner has not set forth any
extrinsic evidence that the glenosphere of Winslow is necessarily capable of
being implanted on the scapula such that 'the anterior/posterior width of the
glenosphere component is greater than the superior/inferior width of the
glenosphere component' as required by the claims" (App. Br. 8).
Appellant further contends that a "planar attachment surface 128 of
the glenoid component 106 of Winslow is configured to be 'attached to an
appropriately resected surface of the scapula 60' such that the maior
diameter 'D' is oriented along the superior/inferior axis B and the minor
diameter 'd' is orientated along the anterior/posterior axis" (App. Br. 8).
The Examiner responds that
the dimensions of the combination implant allow implantation
in claimed functional language orientation. Note that appellant
has not claimed any specific size or dimension or relative size
of the patient. It is the examiner's position that the combination
implant is sized configured to be fully capable of fulfilling the
functional language.
(Ans. 10).
While this is a very close case, on the existing record, we agree with
Appellant because the language regarding the anterior/posterior width
relative to the superior/inferior width of the glenosphere component is
reasonably understood as a structural limitation on the claimed orthopaedic
implant. The entire implant as claimed, including the humeral cup and
elongated stem that articulate with the glenosphere component, must be
structured to enable it to be implanted in the orientation required by claim 1.
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Appeal2017-009215
Application 14/560,654
As Appellant notes, the Examiner does not provide evidence or
specific reasoning that Winslow's glenosphere component, rotated ninety
degrees from the orientation required by claim 1, would have been capable
of being implanted in the orientation required by claim 1. To the extent that
Winslow discusses the implantation orientation, Winslow suggests "the
"glenoid component 106 can be attached to the scapula 60 such that the
broad end 110 is inferior to the narrow end 110 or conversely" (FF 3). Thus,
Winslow neither suggests nor provides any reason to implant the device in
the orientation required by claim 1. Nor is there evidence that Winslow's
device would have been capable, without some structural reconstruction of
the coupling components, of being implanted in the orientation required by
claim 1.
Conclusion of Law
The evidence of record does not support the Examiner's conclusion
that Winslow and Splieth or Tomier suggest a glenosphere component
where "the anterior/posterior width of the glenosphere component is greater
than the superior/inferior width of the glenosphere component" as required
by claim 1.
SUMMARY
In summary, we reverse the rejection of claims 1-19 under 35 U.S.C.
§ 103(a) as obvious over Winslow and Splieth.
We reverse the rejection of claims 1-19 under 35 U.S.C. § 103(a) as
obvious over Winslow and Tomier.
REVERSED
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