Ex Parte Long

Patent Trial and Appeal Board

Jul 27, 2016

12688356 (P.T.A.B. Jul. 27, 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.
12/688,356 01/15/2010 Jack F. Long 1671-0469 3410
28078 7590 07/27/2016
MAGINOT, MOORE & BECK, LLP
One Indiana Square, Suite 2200
INDIANAPOLIS, IN 46204
EXAMINER
WATKINS, MARCIA LYNN
ART UNIT PAPER NUMBER
3774
MAIL DATE DELIVERY MODE
07/27/2016 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 JACK F. LONG
____________

Appeal 2014-004412
Application 12/688,356
Technology Center 3700
____________

Before NEAL E. ABRAMS, LINDA E. HORNER, and LISA M. GUIJT,
Administrative Patent Judges.

HORNER, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Jack F. Long (Appellant)1 seeks our review under 35 U.S.C. § 134 of
the Examiner’s decision rejecting claims 1, 4, 5, 7‒11, 15, and 16.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Appellant identifies the real party in interest as DePuy Synthes Products,
LLC. Appeal Br. 2.
2 Appeal is taken from the Examiner’s adverse decision as set forth in Non-
Final Action, dated April 23, 2013 (“Non-Final Act.”). Claims 2, 3, 6, 12‒
14, and 17‒19 are withdrawn from consideration. Non-Final Act. 1.
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Application 12/688,356

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CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to “shoulder prostheses
configured for use in shoulders having rotator cuff defects.” Spec. para. 1.
Claims 1 and 9 are the independent claims on appeal. Claim 1 is reproduced
below.
1. A prosthesis assembly for use with a scapula,
comprising:
an acromion spacer unit configured such that when
mounted on a scapula, the acromion spacer unit is separate from
any component implanted at a midpoint of a glenoid fossa of the
scapula such that a force against the mounted acromion spacer
unit is not transferred to the component implanted at the
midpoint;
a first articulation surface on an inferior surface of the
acromion spacer unit;
a bone contacting surface on a superior surface of the
acromion spacer unit; and
a bone mounting member extending sideways from the
acromion spacer unit and oriented such that when the acromion
spacer unit is mounted on a scapula, the bone mounting member
extends medially from the acromion spacer unit through an upper
portion of the glenoid fossa and the acromion spacer unit is
positioned at a height above a height of the midpoint of the
glenoid fossa of the scapula.
EVIDENCE
The Examiner relied upon the following evidence:
Kinnett US 4,550,450 Nov. 5, 1985
Shultz US 2006/0020344 A1 Jan. 26, 2006
Rogalski US 6,712,854 B2 Mar. 30, 2004
Grammont FR 2 418 644 Sept. 28, 1979
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REJECTIONS
The Non-Final Action from which this appeal was taken contains the
following rejections3:
1. Claims 1, 7, and 8 under 35 U.S.C. § 102(b) as anticipated by
Grammont.
2. Claims 1, 7, and 8 under 35 U.S.C. § 102(b) as anticipated by
Kinnett.
3. Claim 4 under 35 U.S.C. § 103(a) as unpatentable over Kinnett.
4. Claims 9‒11 and 15 under 35 U.S.C. § 103(a) as unpatentable over
Kinnett and Shultz.
5. Claims 5 and 16 under 35 U.S.C. § 103(a) as unpatentable over
Kinnett and Rogalski.
ANALYSIS
Anticipation by Grammont
Appellant contends that the Examiner erred in finding that Grammont
anticipates claim 1 because Grammont does not disclose “a bone mounting
member configured such that, when the unit is implanted, the bone mounting
member extends medially from the unit into the glenoid fossa.” Appeal
Br. 7; id. at 11 (arguing that “[t]he pegs 13 of Grammont are . . . bone

3 The Non-Final Action also included a rejection of claims 1, 4, 5, 7‒11, 15,
and 16 under 35 U.S.C. § 101 and Section 33(a) of the America Invents Act
as being directed to or encompassing a human organism. Non-Final Act. 2.
The Examiner withdrew this rejection in the Examiner’s Answer. Ans. 2.
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mounting members” and “the pegs 13 are not configured in the manner
required by claim 1”).4
Claim 1 recites an acromion spacer unit having a bone mounting
member extending sideways from the acromion spacer unit and oriented
such that “when the acromion spacer unit is mounted on a scapula, the bone
mounting member extends medially from the acromion spacer unit through
an upper portion of the glenoid fossa.” Appeal Br. 24 (Claims App.). As
visible in Figures 2, 5, and 6 of Grammont, when element 11 is mounted on
a scapula, the pegs 13 extend from the superior surface of the spacer 11 into
the acromion and do not extend medially through an upper portion of the
glenoid fossa. Appeal Br. 9; Reply Br. 4.
The Examiner found that “element 11 of Grammont is configured and
arranged in such a way that it is capable of being oriented an[d] implanted so
as to meet all of the structural and functional/intended use recitations
contained within the claims.” Non-Final Act. 9 (explaining that “elements
13 may be implanted in an upper portion of the glenoid fossa and element 11
may extend over an anterior portion of the humerus”). We agree with
Appellant that this finding by the Examiner is not supported adequately by
the proffered evidence. Appeal Br. 12; Reply Br. 4–5. In other words, we
have insufficient evidence in the record to support a determination that one

4 Appellant further argues that the left portion of unit 11 is not the claimed
bone mounting member. Appeal Br. 10–11. The Examiner clarifies in the
Answer that element 13 of Grammont is being relied on as the claimed
“bone mounting member.” Ans. 3.
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having ordinary skill in the art, upon reviewing Grammont, would
understand Grammont to disclose an acromion spacer structurally
configured so as to be capable of being mounted to the scapula in such a
manner that the elements 13 would extend through an upper portion of the
glenoid fossa, as called for in claim 1. See, e.g., Reply Br. 5 (“Given the
arrangement proposed by the Examiner, the pin 12, rather than being aligned
with the coracoid process[,] as apparently taught by Grammont, would be
fully exposed to soft tissue in the shoulder joint”). For these reasons, we do
not sustain the rejection of claim 1, or its dependent claims 7 and 8, under
35 U.S.C. § 102(b) as anticipated by Grammont.
Anticipation by Kinnett
Appellant contends that the Examiner erred in finding that Kinnett
anticipates claim 1 because Kinnett’s extension 32d, which was relied upon
by the Examiner as the claimed bone mounting member (Non-Final Act. 5),
is not mounted in the glenoid fossa when the acromial component 14 is
mounted to the acromion. Appeal Br. 17.
As noted supra, claim 1 recites an acromion spacer unit having a bone
mounting member extending sideways from the acromion spacer unit and
oriented such that “when the acromion spacer unit is mounted on a scapula,
the bone mounting member extends medially from the acromion spacer unit
through an upper portion of the glenoid fossa.” Appeal Br. 24 (Claims
App.). As visible in Figure 1 of Kinnett, when acromial component 14 is
mounted on a scapula, fixation pegs 32p extend from the superior surface of
component 14 into the acromion and flange-like extension 32d extends
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medially from component 14 and alongside the surface of the acromion.
Kinnett, col. 5, ll. 2‒15 (disclosing that flange 32d is used to “facilitate
location and stabilization of acromial component 14,” but not disclosing that
flange 32d extends into the acromion); Fig. 1 (showing fixation pegs 32p
projecting into the acromion and depicting flange 32d positioned adjacent
the acromion). As such, we agree with Appellant’s reading of Kinnett that
flange 32d is not mounted in the scapula bone. Appeal Br. 17. Accordingly,
Kinnett does not disclose that extension 32d extends “through an upper
portion of the glenoid fossa” when the acromial component is mounted on a
scapula, as called for in claim 1. Appeal Br. 17; Reply Br. 8–9.
The Examiner found that “mounting element 32d is arranged so as to
extend medially and may be implanted through an upper portion of a glenoid
fossa with elements 32p extending in a superior extending portion of the
scapula.” Non-Final Act. 10; Ans. 5 (finding that “element 32d of Kinnett is
fully capable of extending medially into a glenoid fossa of a patient meeting
all of the structural and functional recitations substantially as claimed”).
We further agree with Appellant that “extension 32d is not a bone
mounting member as required by claim 1.” Appeal Br. 18. The Examiner’s
finding that Kinnett’s acromial component 14 is capable of being mounted to
the scapula such that flange 32d extends through the upper portion of the
glenoid fossa is not supported adequately by the proffered evidence. Appeal
Br. 18‒19 (arguing that Kinnett teaches using fixation pegs 32b, not flange
32d, to implant acromial component 14 into the acromion). In other words,
we have insufficient evidence in the record to support a determination that
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one having ordinary skill in the art, upon reviewing Kinnett, would
understand Kinnett to disclose an acromion spacer structurally configured so
as to be capable of being mounted to the scapula in such a manner that the
element 32d would extend through an upper portion of the glenoid fossa, as
called for in claim 1. For these reasons, we do not sustain the rejection of
claim 1, or its dependent claims 7 and 8, under 35 U.S.C. § 102(b) as
anticipated by Grammont.
Remaining Grounds of Rejection
The remaining grounds of rejection of claims 4, 5, 9‒11, 15, and 16
rely on the same findings as to Kinnett that we found unsupported by
adequate evidence in the rejection of claim 1.5 Non-Final Act. 5‒8. For the
same reasons provided above in the discussion of Kinnett as to claim 1, we
likewise do not sustain the remaining grounds of rejection of claims 4, 5, 9‒
11, 15, and 16 under 35 U.S.C. § 103.

5 Claims 4 and 5 depend from claim 1. Appeal Br. 24 (Claims App.).
Independent claim 9 is directed to a prosthesis kit including a plurality of
acromion spacer unit components providing “a bone mounting member
configured to extend sideways from the acromion spacer unit through an
upper portion of the glenoid fossa when the acromion spacer unit is
positioned above the midpoint of the glenoid fossa of the scapula.” Id. at 25.
Claims 10, 11, 15, and 16 depend from claim 9. Id. at 25‒26.
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DECISION
The decision of the Examiner to reject claims 1, 4, 5, 7‒11, 15, and 16
is REVERSED.

REVERSED