Ex Parte Morris et al

Patent Trials and Appeals Board

Feb 27, 2019

12228560 - (D) (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/228,560 08/13/2008 Stephen Morris
23531 7590 03/01/2019
SUITER SW ANTZ PC LLO
14301 FNB PARKWAY
SUITE 220
OMAHA, NE 68154
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.
MASI 12-2-1 6467
EXAMINER
PRONE, CHRISTOPHER D
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
03/01/2019 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):
file@SUITER.COM
srs@suiter.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN MORRIS, THOMAS WEISEL,
and ROGER PISARNWONGS
Appeal 2017-011118
Application 12/228,560 1
Technology Center 3700
Before RICHARD M. LEBOVITZ, FRANCISCO C. PRATS, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
shoulder implant device, which have been rejected as being obvious. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
"Much effort is placed into repositioning [ soft or hard] tissue
[displacement] and keeping it in the correct location." (Spec. ,r 3.) There
are a variety of different devices used, including casts, screws and plates,
1 Appellants identify the real party in interest as MicroAire Surgical
Instruments, LLC. (Appeal Br. 3.)
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Application 12/228,560
and spacers (in the spine), that "work fine for their indicated uses, but may
be inadequate for a heavily articulatable joint such as the shoulder." (Id.
,r 4.) Appellants' claimed invention is directed at a bladder that is capable of
insertion into a space adjacent a particular tissue that can be filled after
insertion that "acts to maintain the tissue in a desired position when at least
partially expanded by the delivery of filler material." (Id. ,r,r 10-12.)
Claims 8, 9, 12, 18-20, 22, 30, 32-35, and 43-54 are on appeal. 2
Claim 8 is representative and reads as follows:
8. A shoulder implant device, comprising:
a biocompatible member having a size and shape suitable
for placement within a space at least partially defined by an
acromion and a corresponding humerus; and
an attachment means disposed on the biocompatible
member disposed and configured for attachment to surrounding
anatomical architecture:
wherein said member comprises:
an expandable bladder having a recess in an
inferior surface when at least partially inflated,
substantially conforming to a humeral head of the
humerus and allowing articulation of the humeral head,
wherein said bladder comprises:
a substantially ovoid cross section in a first
plane;
a substantially ovoid cross section in a
second plane perpendicular to the first plane,
except for a portion defined by the recess; and
a substantially ovoid cross section in a third
plane perpendicular to the first plane and the
2 Claims 2-7, 14--17, 21, 23-29, 31, and 36-40 are pending but stand
withdrawn from consideration.
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Application 12/228,560
second plane, except for a portion defined by the
recess;
wherein:
a portion of the bladder conforms to an
inferior surface of an acromion; and
a valve by which a filler material can be
delivered into said bladder, wherein said filler
material is selected from a group consisting of a
liquid, or a gas;
such that said bladder is capable of insertion into said
space when in a deflated state and acts to maintain said
humerus and said acromion in a desired relative position when
at least partially expanded by the delivery of said filler material
via said valve.
(Appeal Br. 17-18.)
The following ground of rejection by the Examiner is before us on
review:
Claims 8, 9, 12, 18-20, 22, 30, 32-35, and 43-54 under 35 U.S.C.
§ 103 as unpatentable over Cachia3 and Kim. 4,5
3 Cachia, US 2005/0229433 Al, published Oct. 20, 2005.
4 Kim US 2006/0084983 Al, published Apr. 20, 2006.
5 The Examiner required restriction between claims 1--40 as being directed
to multiple inventions and species. Appellants appeal the species aspect of
the restriction requirement. However, the propriety of the restriction is not
an appealable matter. In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971)
("[A] requirement for restriction under § 121 ... is now [ as a result of the
1952 Patent Act] one of those discretionary matters no longer tantamount to
a rejection of the claims. . . . It follows that such a 'requirement' by itself is
not the kind of 'adverse decision,' if it be such a 'decision' at all within the
meaning of the statute, which Congress intended the board to review.")
(emphasis in original); see also 37 CPR§ 1.144 (review of restriction
requirement is by petition to the Director, not appeal to the Board); MPEP §
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Application 12/228,560
DISCUSSION
Obviousness
The Examiner finds that Cachia teaches a medical implant that is a
bladder that is capable of being filled with liquid or gas filler material
through a valve and that the bladder has the claimed three substantially
ovoid cross-sections. (Final Action 3-5.) The Examiner finds that "[ o ]nee
implanted and at least partially filled[,] the expandable bladder of Cachia
will begin to conform to the shape of the implantation site." (Id. at 5.) The
Examiner recognizes that the implant of Cachia is intended to be positioned
in the ankle and not the shoulder as required by claim 8; however, the
Examiner finds that "it is fully capable of being placed adjacent soft or hard
tissue between the acromium, deltoid muscle, and humerus." (Id.)
Accordingly, the Examiner finds that "the bladder of Cachia will conform to
the natural structures of the shoulder" and it would "act[] to maintain the
head of said humerus within the cup of the glenoid" "[ o ]nee implanted and
at least partially filled." (Id.)
The Examiner finds that "Cachia does not disclose an attachment
means configured for attachment to the surrounding anatomical structures."
(Id. at 4.) The Examiner finds, however, that "Kim teaches that it is old and
well known in the a[ r ]t of inflatable joint implants to used tabs (Figures 4A-
1201 ("The line of demarcation between appealable matters for the Board ..
. and petitionable matters for the Director ... should be carefully observed.
The Board will not ordinarily hear a question that should be decided by the
Director on petition .... ") (emphasis added).
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B) along with pins or fasteners [0045] for the purpose of preventing the
implants from dislocated from the implant site." (Id.) The Examiner finds
that, in light of this teaching, it would have been obvious to one of ordinary
skill in the art at the time the invention was made to include attachment tabs,
such as those described by Kim, to the bladder of Cachia, "to help maintain
the desired position of the device within the implant site," meeting the
requirement of claim 8 of "an attachment means." (Id.)
We agree with the Examiner's findings and conclusion that the
invention defined by claim 86 would have been obvious.
Appellants' argument that Cachia "teaches away from the principles
of operation of the present invention" (Appeal Br. 14) is not found
persuasive. Appellants provide some discussion of movement in a subtalar
joint (shrinks or expands the sinus tarsi) and a metatarsophalangeal joint
(having a limited range of motion) of the foot and state that "the articulation
of a ball joint [present in the shoulder] is incompatible with the articulation
of' both a subtalar and a metatarsophalangealjoint. (Appeal Br. 14.)
However, "apparatus claims cover what a device is, not what a device
does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468
(Fed. Cir. 1990); see also Catalina Mktg. Int'!, Inc. v. Coolsavings.com, Inc.,
289 F.3d 801, 809 (Fed. Cir. 2002) ("[T]he patentability of apparatus or
composition claims depends on the claimed structure, not on the use or
purpose of that structure."). It is not clear from Appellants' argument why
6 Appellants purport to argue the patentability of both claim 8 and claim 18.
However, Appellants' argument does not differentiate limitations between
the two claims, and thus we treat claim 8 as representative.
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the difference in articulation matters with respect to the claimed elements of
the implant.
Of course, we do not ignore the functional language that requires that
the "bladder is capable of insertion into said space [at least partially defined
by an acromion and a corresponding humerus] when in a deflated state and
acts to maintain said humerus and said acromion in a desired relative
position when at least partially expanded by the delivery of said filler
material via said valve." But, functional language does not confer
patentability, if a prior art structure has the capability of functioning in the
claimed manner. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997).
The Examiner finds, and Appellants do not dispute, that "the implant of
Cachia[, although described in Cachia as intended to be implanted in the
ankle,] is capable of being implanted [adjacent soft or hard tissue between
the acromium, deltoid muscle, and humerus] such that the humeral head is
free to articulate." (Ans. 6.)7 As the Examiner explained, both the implant
of Cachia and the claimed implant are "expandable sacks which are designed
to be placed between bones of a joint." (Id.) Moreover, as the Examiner
finds, and Appellants do not dispute, "the rounded concave/convex nature of
the implant of Cachia would enable the adjacent bones to maintain their
normal orientation and range of motion." (Id.)
7 Appellants argue in the Appeal Brief that "A person skilled in the art
would understand that the articulation of a ball joint is incompatible with the
articulation of the subtalar joint and that no implant operable for one would
translate to the other." (Appeal Br. at 14.) However, Appellants do not
respond to the Examiner's reasoning set forth in the Answer as to why that
argument, unsupported by evidence, is not persuasive.
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"The use of patents as references is not limited to what the patentees
describe as their own inventions or to the problems with which they are
concerned. They are part of the literature of the art, relevant for all they
contain." In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968). The
Examiner explains why the structure described in Cachia meets the
limitations of the claimed invention other than the attachment means. And,
we agree with the Examiner that Cachia does not teach away from an
alternative use of its described bladder, nor does it teach structures that
would prevent it from functioning as required by the claim. "A reference
may be said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant." In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009)
(quoting In re Gurley, 27 F.3d 551,553 (Fed. Cir. 1994)).
Appellants note that Cachia's implant has to absorb compressive
forces "along the normal axis of motion between the bones" in the sinus
tarsi, and "is therefore effectively stationary with respect to both the talus
and calcaneus." (Appeal Br. 14.) On the other hand, argue Appellants, the
claimed device "allows articulation of the humeral head." (Id.) Appellants
do not explain why the fact that the Cachia bladder implant is designed to
absorb compressive forces in sinus tarsi means that it is incapable of
allowing articulation of the humeral head if it were to be implanted in the
space between the acromium, deltoid muscle, and humerus. As the
Examiner explained, and Appellants do not dispute, "[t]he concave/convex
shape of the implant of Cachia is capable of being implanted such that the
humeral head is free to articulate." (Ans. 7 .) And Appellants do not point to
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any structures of the Cachia implant that would prevent it from functioning
in other articulatable joints such as the shoulder.
Appellants argue that the bladder of Cachia would not meet the
limitation of "a portion of the bladder conforms to an anterior surface of an
acromion." (Appeal Br. 15.) According to Appellants the Examiner
"appears to take the position that an expandable or inflatable implant will
conform to any shape if sufficiently expanded" and that "[ s ]uch position is
unsupported, specifically where Cachia describes a shape that is inconsistent
with the present invention" and because "the cited shapes of the Cachia
device from FIGS. 3 lA and 31 B" are "inconsistent with" the "shape of the
present invention as defined in the Claims." (Id.). This argument, however,
is not persuasive. As the Examiner explained (Ans. 7), the claim requires
only that "a portion" of the bladder conform to an inferior surface of an
acromium. The Examiner explains, that flexible expandable objects, such as
described by Cachia, will, when expanded in confined areas, conform at
least partially to the surfaces that confine it. (Id. at 8.) In other words,
"[t]he flexible nature of the expandable balloons or sacks allows portions of
their outer surfaces to adapt and conform to the surrounding structures."
(Id.) The Examiner finds, based on the foregoing, that on expansion after
placement in the claimed implant site, the expandable sack structure of
Cachia will expand in "the gap allowing the upper and lower surfaces [ of the
now inflated sack] to at least partially conform to their surroundings" which
in this case would include an inferior surface of the acromion. (Id.; see also
Final Action 3--4 ("Once implanted and at least partially filled the
expandable bladder of Cachia will begin to conform to the shape of the
implantation site. Therefore the bladder of Cachia will conform to the
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Application 12/228,560
natural structures of the shoulder.").) Appellants' assertion that Cachia
describes a shape that is inconsistent with the invention does not explain
why the shape of the sack described in Cachia would not expand in the
expected manner described by the Examiner. Indeed, Appellants do not
identify a difference between the shape of Cachia's sack and the claimed
bladder. We agree with the Examiner that Cachia's bladder would meet the
claim requirement that "a portion of the bladder conforms to an inferior
surface of an acromion" if it were positioned in the shoulder joint and then
partially inflated.
In its Reply Brief, Appellants newly argue that "a device that simply
expands to fill the space defined by natural anatomical boundaries does not
necessarily have a shape for forcing anatomical elements into desirable
locations." (Reply Br. 3 (emphasis added).) First, "the reply brief [is not]
an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner's rejections, but were not."
Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). As
stated in Ex parte Borden, consideration by the Board of new arguments
presented for the first time in the Reply Brief that could have been presented
earlier would "vitiate the force of the requirement in Board Rule
3 7 ( c )(1 )( vii) that ' [ a ]ny arguments or authorities not included in the brief ...
will be refused consideration by the Board, unless good cause is shown."'
Id. Appellants have not demonstrated any specific Examiner findings
presented for the first time in the Answer necessitating this specific new
argument in rebuttal in the Reply Brief. Nor do we find any substantial
differences in the Examiner's initial findings and the Examiner's findings
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stated in the Answer that would warrant the new arguments presented in the
Reply Brief for the first time.
And, in any event, we do not find this new argument persuasive. The
claim language does not require "forcing anatomical elements into desirable
locations." Rather, the claim states that the bladder "acts to maintain said
humerus and said acromion in a desired relative position." In the Final
Action, the Examiner explained that the "rounded concave/convex nature of
the implant of Cachia would enable the adjacent bones to maintain their
normal orientation and range of motion. (Final Action 6.) The Examiner
notes that Cachia is originally intended to be placed within an articulating
ankle joint and "is designed to stand up to compressive forces of a joint."
(Final Action 7; Ans. 7, 10.) We note that Appellants' Specification
identifies the shoulder joint as an articulating joint. (Spec. ,r 27.) We
conclude that the evidence of record supports the Examiner's finding that the
implant of Cachia, which is designed to withstand compressive forces and be
used in an articulating joint, would act to maintain the humerus and the
acromion in a desired relative position when inflated after insertion into the
articulating shoulder joint.
Regarding, the claimed attachment means, Appellants argue that "the
Examiner has not provided sufficient motivation to combine Cachia and
Kim" because ( 1) the fields of the devices are divergent between each other
and from the claimed device and (2) the fixation features in Kim are
designed to "retard mobility of the involved anatomy while the features of
the claimed invention ... facilitate mobility by fixing the implant to one
anatomical structure and allowing surrounding joint architecture to move
freely. (Appeal Br. 15.) We do not find these arguments persuasive.
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We do not find the art to be non-analogous. "In order to rely on a
reference as a basis for rejection of the applicant's invention, the reference
must either be in the field of the applicant's endeavor or, if not, then be
reasonably pertinent to the particular problem with which the inventor was
concerned." In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992).
Appellants' arguments would appear to suggest that we must define the field
of invention narrowly to shoulder implants or some type of orthopedic
surgery that only involves shoulders, or at least excludes foot and spinal
surgery. We, however, determine that the field is not so narrow.
Appellants' Specification defines the field of invention as relating "generally
to tissue positioning devices, and more particularly to devices for
repositioning tissues that have been displaced." (Spec. ,r 2.) The Summary
of the Invention explains that Appellants' invention is directed to a tissue
positioning device that allows performance of normal activities with reduced
pain and increased strength, while being of minimal inconvenience to the
patient. (Spec. ,r 8.) The Specification also mentions that the tissue of
concern "forms a portion of an articulatable joint." (Spec. ,r 9.)
Consequently, we determine that the field of invention is devices for
positioning or maintaining position of tissues in an articulatable joint. Kim
and Cachia are each within that field. Kim is concerned with enabling
"spinal motion, which effectively mimics that of a normally functioning
spine." (Kim ,r 1.) The inflatable device is positioned between spinous
processes of adjacent vertebrae. (Kim ,r,r 14, 16.) This positioning
encompasses articulatable joints, such as the facet joints of the spine. (Kim
,r 8 ("facet joints help to support axial, torsional, and shear loads that act on
the spinal column in addition to providing a sliding articulation and
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mechanism for load transmission").) We agree with the Examiner that the
high level of specialization of orthopedic surgeons would not inhibit a
person of ordinary skill in that art to "grasp the general concept of inserting
an expandable sack which is placed within one articulating joint and
understand that it could be placed in other articulating joints." (Ans. 9.)
We also disagree with Appellants that "the fixation features in Kim"
are for the purpose of "retard[ing] the mobility of the involved anatomy"
(Appeal Br. 15). As explained above, Kim is concerned with enabling
"spinal motion, which effectively mimics that of a normally functioning
spine." (Kim ,r 1.) Kim indicates "[ w ]ith the limitations of current spine
stabilization technologies, there is clearly a need for an improved means and
method for dynamic posterior stabilization of the spine." (Id. ,r 13.) Given
that Kim also states that it is concerned with enabling spinal motion, we do
not understand this statement as to "dynamic posterior stabilization" to mean
that the normal mobility of the facet joint is inhibited even while the position
of the tissues are being maintained. Kim explains regarding the expandable
member that "[i]n any embodiment, the compressibility and flexibility of
balloon 34 can be selected to address the indications being treated." (Id. ,r
40.) Kim also suggest that with respect to facet joint disorders, treatment
should not inhibit the natural spinal function which was a problem with
facetectomy. (Id. ,r,r 8, 9.) Kim explains that "the expandable member [of
the invention] in an expanded configuration has a size, volume and/or shape
configured for positioning between the spinous processes of adjacent
vertebrae in order to distract the vertebrae relative to each other." (Id. ,r 14.)
The tabs "ensure long term retention of [the] device ... within the implant
site." (Id. ,r 45.) Kim does not teach that the device or the tabs are
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purposely used to retard the mobility of the articulated joint and the involved
anatomy.
We find that the Examiner has provided evidence sufficient to
establish the requisite motivation to combine the tabs and pins or fasteners
taught by Kim with the inflatable device of Cachia, since Kim teaches it is
old and well known in the art of inflatable joint implants to use such features
to prevent the implant from dislocating from the implant site. (Ans. 8.)
Thus, for the reasons discussed, Appellants do not persuade us that the
Examiner erred in rejecting claim 8 as being obvious over Cachia and Kim.
Claims 9, 12, 18-20, 22, 30, 32-35, and 43-54 have not been argued
separately and therefore fall with claim 8. 37 C.F.R. § 4I.37(c)(l)(iv).
SUMMARY
We affirm the rejection of claims 8, 9, 12, 18-20, 22, 30, 32-35, and
43-54 under 35 U.S.C. § 103 as unpatentable over Cachia and Kim.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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