Ex Parte Maroney et al

Patent Trial and Appeal Board

Jul 18, 2016

13361114 (P.T.A.B. Jul. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/361,114 01/30/2012
28078 7590 07118/2016
MAGINOT, MOORE & BECK, LLP
One Indiana Square, Suite 2200
INDIANAPOLIS, IN 46204
FIRST NAMED INVENTOR
Brian J. Maroney
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.
1671-0400CNT3 8648
EXAMINER
SNOW, BRUCE EDWARD
ART UNIT PAPER NUMBER
3738
MAILDATE DELIVERY MODE
07/18/2016 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 BRIAN J. MARONEY and IAN A. TRAIL
Appeal 2014-006540 1,2
Application 13/361,114
Technology Center 3700
Before MICHAEL A. ASTORINO, PHILIP J. HOFFMANN, and
MATTHEWS. MEYERS, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1---6. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
According to Appellants, the "invention relates generally to a
procedure for the treatment of cuff tear arthropathy." Spec. 1. Independent
1 Our decision references Appellants' Specification ("Spec.," filed Jan. 30,
2012) and Appeal Brief ("Br.," filed Dec. 30, 2013), as well as the
Examiner's Answer ("Answer," mailed Mar. 10, 2014).
2 According to Appellants, "DePuy Synthes Products, LLC is ... the real
party in interest." Br. 2.
Appeal2014-006540
Application 13/361,114
claim l is the only independent claim under appeal. See Br., Claims App.
We reproduce claim 1, below, as representative of the appealed claims.
1. A method, comprising:
securing a prosthetic head component having a glenoid-
bearing portion and an acromion-bearing portion to a humerus of
a patient so that said glenoid-bearing portion is positioned in
bearing contact with a glenoid surface of a scapula of said
patient; and
abducting said humerus so as to move said acromion-
bearing portion of said prosthetic head component into direct
contact with an acromion of said patient.
Id.
REJECTIONS AND PRIOR ART
The Examiner rejects claims 1, 2, and 5 under 35 U.S.C. § 102(b) as
anticipated by Kinnett (US 4,550,450, iss. Nov. 5, 1985).
The Examiner rejects claims 1---6 under 35 U.S.C. § 103(a) as
unpatentable over Trail (EP 0 845 250 A2, pub. June 3, 1998) and
Appellants' Background section of the Specification.
See Answer 3---6.
ANALYSIS
Anticipation rejection of claims 1, 2, and 5
Independent claim 1, from which claims 2 and 5 depend, recites the
limitation "abducting said humerus so as to move said acromion-bearing
portion of said prosthetic head component into direct contact with an
acromion of said patient." Br., Claims App. (emphasis added). The
Examiner finds that Kinnett's acromial component 14 (which is a prosthetic
device) teaches the claim's broad recitation of a patient's acromion, and
2
Appeal2014-006540
Application 13/361,114
thus, Kinnett teaches a prosthetic head in contact with an acromion as
claimed. See Answer 3, 6-7. We agree, however, consistent with the
Specification, the broadest reasonable interpretation of claim 1 's phrase
"acromion of said patient" is a bone, rather than a prosthesis. See Br. 6-9.
Appellants' Specification does not provide an express definition of acromion
which excludes a prosthetic device. However, as used throughout the
Specification and as illustrated in Appellants' drawings, the acromion is a
bone. Further, although the Specification does infrequently use the term
"natural acromion," the Specification does not describe any difference
between a "natural acromion" and an "acromion," and the terms appear to be
interchangeable. Still further, we find that the definition of "acromion in
[m]edicine" is "[t]he outer end of the scapula, extending over the shoulder
joint and forming the highest point of the shoulder, to which the collarbone
is attached," which appears to refer to a bone and to exclude a prosthesis. 3
Conversely, the Examiner does not provide evidence sufficient to persuade
us that a broad reasonable interpretation of acromion includes a prosthesis.
Inasmuch as the Examiner does not establish that Kinnett teaches a
prosthetic head in contact with an acromion as claimed, but at most
establishes that Kinnett teaches a prosthetic head in contact with another
prosthetic device, we do not sustain the anticipation rejection of independent
claim 1. Further, we do not sustain the anticipation rejection of claims 2
and 5 depending from claim 1 for the same reasons we do not sustain the
rejection of claim 1.
3 From http://www.dictionary.com/browse/acromion, last accessed July 11,
2016.
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Appeal2014-006540
Application 13/361,114
Obviousness rejection of claims 1---6
Independent claim 1, from which claims 2---6 depend, recites the
limitation "abducting said humerus so as to move said acromion-bearing
portion of said prosthetic head component into direct contact with an
acromion of said patient." Br., Claims App. (emphasis added). The
Examiner finds that although Trail teaches the claimed prosthetic head
component, "Trail fails to specifically teach contact between that [sic] the
acromion-bearing portion of the prosthetic head and the acromion of the
patient." Answer 4. However, the Examiner concludes that it would have
been obvious to contact Trail's prosthetic head component with a patient's
acromion for the reasons discussed in Appellants' Background section of the
Specification ("Appellants' Background"). See id. at 4--5, 8-9, citing
Spec. 2. Appellants contend, with reference to our prior Decision in
Appeal 2009-015441, that the Examiner fails to identify anything in
Appellants' Background that describes contact between a prosthetic head
portion and a patient's acromion. See Br. 17. We agree with Appellants that
the Examiner fails to establish that any portion of Appellants' Background
describes contacting a prosthetic head portion with a patient's acromion.
Further, as Appellants point out, it seems clear that Trail discusses, in
relevant part, at most the use of a prosthetic head portion in contact with a
patient's shoulder socket (natural or prosthetic) rather than a patient's
acromion. See id. at 19-21. Thus, based on the foregoing, we do not sustain
the obviousness rejection of claims 1---6.
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Appeal2014-006540
Application 13/361,114
DECISION
We REVERSE the Examiner's anticipation and obviousness
rejections of claims 1---6.
REVERSED
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