Ex Parte Nardini et al

Patent Trial and Appeal Board

Oct 3, 2016

13401520 (P.T.A.B. Oct. 3, 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.
13/401,520 02/21/2012 Reto NARDINI 10139/24803 (T01543US1) 5986
76960 7590 10/03/2016
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
EXAMINER
BLANCO, JAVIER G
ART UNIT PAPER NUMBER
3774
MAIL DATE DELIVERY MODE
10/03/2016 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 RETO NARDINI, ADRIAN GLAUSER,
and JEAN-PIERRE KASSI
____________

Appeal 2014-009693
Application 13/401,520
Technology Center 3700
____________

Before JOHN C. KERINS, JAMES P. CALVE, and SEAN P. O’HANLON,
Administrative Patent Judges.

O’HANLON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Reto Nardini et al. (Appellants)1 appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1–5.2 We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.

1 According to Appellants, the real parties in interest is DePuy Synthes
Products, LLC and its parent company Johnson & Johnson, Inc. App. Br. 2.
2 Claims 6 and 7 are withdrawn, and claims 8–20 are canceled. Id.
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Application 13/401,520

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SUMMARY OF INVENTION
Appellants’ disclosure “relates to a device for treating a bone and, in
particular, relates to an implant for treating a joint.” Spec. ¶ 2. Claim 1,
reproduced below from page 9 (Claims Appendix) of the Appeal Brief, is the
sole independent claim and is representative of the claimed subject matter:
1. A patient-specific implant, comprising:
a body having a convex exterior surface configured to
attach to a bone and a concave interior surface configured to
receive a head portion of another bone, the body including a
plurality of holes extending therethrough, the holes sized and
shaped to receive a bone fixation element; and
a gap filler formed on the convex exterior surface of the
body and having dimensions and a position corresponding to a
gap between the exterior surface of the body and the bone to
which the implant is to be attached.
REJECTION
Claims 1–5 are rejected under 35 U.S.C. § 102(b) as being anticipated
by Meridew (US 2007/0129809 A1, pub. June 7, 2007).
ANALYSIS
The Examiner finds that Meridew discloses all of the elements of
independent claim 1. Final Act. 2–3. More specifically, the Examiner finds
that Meridew discloses a body (acetabular cup 160/220/250 or augment 10)3,
having a convex exterior surface and a concave interior surface, and a gap
filler (augment 10, bone chips 180, or augment body portion 190) formed on
the convex exterior surface of the body. Id. (citing Meridew, Figs. 16–30).

3 Parentheticals refer to the terminology of Meridew.
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Application 13/401,520

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Appellants disagree, arguing that “Meridew does not show or suggest
that any of [its] augments is formed on an exterior of the acetabular cup.”
App. Br. 4; see also Reply Br. 2–4. Rather, Appellants continue, Meridew’s
augments are used to build up a sunken acetabular socket or to fill an
annular space around an acetabular cup. App. Br. 4. Appellants also argue
that Meridew’s augments “in no way constitute any part of the body 160
being implanted onto the bone 10.” Id. at 5; see also Reply Br. 4–5. Finally,
Appellants argue that the Meridew embodiments depicted in Figures 5 and 6
are for use with a femoral hip stem rather than an acetabular cup, and the
embodiment depicted in Figures 18–20 do not contain a piercing portion.
App. Br. 6–7; see also Reply Br. 3, 5.
We are not persuaded by Appellants’ arguments. The Examiner cites
several embodiments of the Meridew augments as being the recited body,
including augment 10k depicted in Figures 18–20. Final Act. 2. Meridew
describes this augment as having “concave surface 194.” Meridew ¶ 57. It
follows that the opposite (exterior) surface would necessarily be convex. As
noted by the Examiner, this convex surface has a gap filler (augment body
portion 190) formed thereon. Final Act. 3; see also Meridew Fig. 18. As
noted by Appellants, augment body portion 190 is useful for filling an
annular space—that is, a gap—around the acetabular cup. App. Br. 4 (citing
Meridew ¶ 57); see also Meridew ¶ 4 (setting forth that “implants may be
used as augments to fill in a gap between a host bone and an implant”). We
further note that augment 10k defines holes though which fasteners 198 are
received (id. ¶ 58; Figs. 19, 20), and because its surface 194 is concave, it is
therefore configured to receive a bone head portion—moreover, it is
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Application 13/401,520

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disclosed as receiving femoral ball 161 indirectly through acetabular cup
implant 160 (see id. at Figs. 20, 21), similarly to Appellants’ body 102
receiving prosthetic humeral head 20 through interfacing layer 30 (see Spec.
Fig. 1).
Thus, Meridew discloses—in Meridew’s augment 10k itself—the
patient-specific implant as recited in claim 1. Regarding this embodiment,
Appellants argue that “[t]he flange portion 192 is in no way configured to
receive a head portion of another bone and thus cannot constitute the ‘body’
of the recited claim.” App. Br. 7; see also Reply Br. 5. However,
Appellants do not address concave surface 194 portion of augment 10k,
which, as noted above, constitutes the recited body. We note that although
the Examiner refers to body as being “solid metal portion 192,” it is clear
that the Examiner considers concave surface 194 to be part of the solid metal
portion (that is, the recited body) by referring to “porous metal portion 190”
being “formed . . . on the convex exterior surface of said body.” Ans. 4; see
also Meridew Fig. 18. Appellants have failed to persuasively convince us of
error in the Examiner’s findings or reasoning.
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of independent claim 1 as being anticipated by Meridew.
Appellants do not make any other substantive argument regarding the
rejection of dependent claims 2–5. See App. Br. 3–7. Therefore, we
likewise sustain the anticipation rejection of dependent claims 2–5.
DECISION
The Examiner’s decision to reject claims 1–5 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED