Ex Parte Michel et al

Patent Trial and Appeal Board

Feb 22, 2019

14453722 (P.T.A.B. Feb. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/453,722 08/07/2014
26096 7590 02/26/2019
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Gerlinde Michel
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.
67145-515PUS1 4708
EXAMINER
DUKERT, BRIAN AINSLEY
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
02/26/2019 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):
ptodocket@cgolaw.com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERLINDE MICHEL and SAMUEL BACHMAIER
Appeal2018-004166
Application 14/453,722 1
Technology Center 3700
Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's rejection of claims 1-14. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 Appellants identify Arthrex, Inc. as the real party in interest. Appeal
Br. 3.
Appeal2018-004166
Application 14/453,722
According to Appellants, the "invention relates to a talus implant
system and a method for surgical reconstitution of the ankle." Spec. ,r 2.
Claims 1 and 9 are the independent claims on appeal. Below, we reproduce
claim 1 as illustrative of the appealed claims.
1. A talus surface implant having an arc shaped body
with a top side configured for interfacing to the tibia, a bottom
side, a front section and a rear section, the bottom side having at
least one post configured for interfacing with holes in a talus and
a plurality of spikes configured for interfacing with the surface
of the talus, wherein the height of the at least one post does not
exceed the thickness of the talus, the at least one post is arranged
in the front section of the arc shaped body, the front section
having less than half of the length of the arc shaped body, the
front section being oriented anterior, the plurality of spikes is
arranged in the rear section of the arc shaped body, the rear
section having less than half of the length of the arc shaped body,
the rear section being oriented posterior.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. Claims 1---6 and 8-14 under 35 U.S.C. § I03(a) as unpatentable
based on Gannoe et al. (US 2010/0057216 Al, pub. Mar. 4,
2010) (hereinafter "Gannoe") and Perice et al.
(US 6,409,767 Bl, pub. June 25, 2002) (hereinafter "Perice");
and
II. Claim 7 under 35 U.S.C. § I03(a) as unpatentable based on
Gannoe, Perice, and Perler (US 2012/0109326 Al, pub. May 3,
2012).
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Appeal2018-004166
Application 14/453,722
ANALYSIS
Reiection I
As set forth above, independent claim 1 recites the following:
1. A talus surface implant having an arc shaped body
with a top side configured for interfacing to the tibia, a bottom
side, a front section and a rear section, the bottom side having at
least one post configured for interfacing with holes in a talus and
a plurality of spikes configured for interfacing with the swface
of the talus, wherein the height of the at least one post does not
exceed the thickness of the talus, the at least one post is arranged
in the front section of the arc shaped body, the front section
having less than half of the length of the arc shaped body, the
front section being oriented anterior, the plurality of spikes is
arranged in the rear section of the arc shaped body, the rear
section having less than half of the length of the arc shaped body,
the rear section being oriented posterior.
Appeal Br., Claims App. (Claim 1) (emphases added). Restated, claim 1
recites a talus implant with both i) a post that does not exceed a thickness of
the talus on the talus implant's front section and ii) spikes on the talus
implant' s rear section.
The Examiner's rejection of the claim is based on a combination of
Gannoe and Perice. See, e.g., Final Action 4--5. Gannoe describes talus
implant 110 with spikes 600, 605, and 610 on (using the claim's
nomenclature) the implant's "front section," as well as threaded hole 615
receiving fixing device 120 that extends through the talus, the threaded hole
disposed between (using the claim's nomenclature) the implant's "front
section" and "rear section." Gannoe, Figs. 1, 2, 5, 6, ,r 40. Perice describes
talus implant 1 with (using the claim's nomenclature) "spikes" on both the
implant's "front section" and "rear section," although the "spikes" are
unnumbered in Perice's figures and undescribed in Perice's written
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Appeal2018-004166
Application 14/453,722
narrative. In the rejection, the Examiner finds that it would have been
obvious to use Perice's spikes on the rear section of Gannoe's talus
implant 110, such that the combination discloses the claimed spikes on the
rear section, while Gannoe's spikes 600, 605, and 610 on the front section
disclose the claimed post.
Appellants argue that the Examiner's rejection is in error because
Gannoe does not disclose the post, as claimed. Appeal Br. 8-9. More
specifically, according to Appellants, one of ordinary skill would not
understand that Gannoe's spikes disclose the claimed post; rather, one of
ordinary skill would interpret Gannoe's fixing device 120 that extends
through the talus as the claimed post. Id. Thus, according to Appellants, the
Examiner's proposed combination fails to disclose a post that does not
exceed a thickness of the talus on the talus implant's front section, as
claimed.
Based on our review, the Examiner does not support adequately that
Gannoe's spikes 600, 605, and 610 disclose the claimed post. We note, for
example, that Appellants' claims and Specification differentiate between
spikes and post. See, e.g., Spec. ,r,r 7, 18, 20, 25. The spikes shown in
Appellants' figures appear to be similar to the structure that, as set forth
above, Gannoe expressly describes as spikes. See Figs. 2, 4---6; see Gannoe,
Figs. 2, 5, 6, ,r 18. Conversely, the post shown in Appellants' figures appear
to be similar to Gannoe's fixing device 120, except that fixing device 120
extends through the talus. See Figs. 1, 2, 4--6, 8, 9; see Gannoe, Figs. 1, 2,
9D. This is because, for example, in both Appellants' and Gannoe's figures,
discussed supra, spikes are shown as relatively shorter protrusions, with
relatively smaller thickness, and tapered ends; while Appellants' post and
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Appeal2018-004166
Application 14/453,722
Gannoe' s fixing device are shown as relatively longer protrusions, with
cylindrical shapes having diameters that are greater than the spikes'
thicknesses, without tapered ends. Further, each of Appellants'
Specification and Gannoe describes drilling a corresponding cylindrical hole
in the talus for insertion of the post and fixing device respectively, but each
does not describe drilling a hole for receiving the spikes. See Spec. ,r,r 13,
14, 23; see Gannoe ,r,r 45, 46.
Thus, based on the foregoing, we do not sustain the Examiner's
obviousness rejection of claim 1. Further, we do not sustain the Examiner's
rejection of independent claim 9, which the Examiner rejects for similar
reasons as claim 1. Still further, we do not sustain the Examiner's rejection
of claims 2-6, 8, and 10-14 that depend from, and which the Examiner
rejects with, claims 1 and 9.
Rei ection II
Claim 7 depends from claim 1. Inasmuch as the Examiner does not
rely on Perler to remedy the above-discussed deficiency in claim 1 's
rejection, we do not sustain the Examiner's obviousness rejection of claim 7.
DECISION
We REVERSE the Examiner's obviousness rejections of claims 1-14.
REVERSED
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