11339499 (P.T.A.B. Oct. 31, 2016)

Ex Parte Paradis et al

Patent Trial and Appeal BoardOct 31, 2016

11339499 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111339,499 01/26/2006 Francois Paradis 93758 7590 11/01/2016 NORTON ROSE FULBRIGHT CANADA LLP (Zimmer Cas) 1 Place Ville Marie Suite 2500 Montreal, QC H3B IRI CANADA 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. 15228-41US PTN/df 7756 EXAMINER BRUTUS, JOEL F ART UNIT PAPER NUMBER 3777 MAILDATE DELIVERY MODE 11/01/2016 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 TR~ADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte FRANCOIS PARADIS, HERBERT ANDRE JANSEN, BRUNO FALARDEAU, and LOUIS-PHILIPPE AMIOT 1 Appeal2014-008049 Application 11/339,499 Technology Center 3700 Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and JACQUELINE T. HARLOW, Administrative Patent Judges. PERCURIAM DECISION ON REQUEST FOR REHEARING Appellants request rehearing of the decision entered July 26, 2016 ("Decision"). The Decision affirmed the Examiner's rejection of claims 1- 15 as obvious. We deny the requested relief. 1 According to Appellants, the Real Party in Interest is Orthosoft Inc. (App. Br. 3). Appeal2014-008049 Application 11/339,499 DISCUSSION Appellants argue that "the first portion of the Decision on Appeal that is misapprehended regards the limitation of 'cylindrical head-resurfacing reamer"' (Req. Reh'g 2). Appellants contend that "DiGioia does not disclose a reamer" (id.). As set forth in the Decision, we agree with the Examiner that Long and Ronningen render obvious the required cylindrical head-resurfacing reamer (Dec. 8, FF 10-11). In particular, as explained in the Decision, "Long teaches a reamer that is capable of shaping the femoral head into a cylindrical form," and "Ronningen teaches reaming the femoral head into a cylinder" (Dec. 8, FF 10-11). "Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references []. [The reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole." In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellants argue that the person of ordinary skills in the art would understand that no medical professional would even attempt to define a cylindrical surface with the hemispherical reamer shown in Figure 9 of Long. With the hemispherical surface of the reamer 685 of Long, it would be practically impossible to define a cylinder. (Req. Reh'g 2.) As we point out, we agree with the Examiner that it is well known to an ordinary artisan that the femoral head can be rasped into any shape such as a cylinder by non-cylindrical reamer -- i.e., the reamer does not have to be cylindrical in 2 Appeal2014-008049 Application 11/339,499 order to shape the femoral head into a cylinder just as the cylindrical torso of classical statues do not have to be shaped by cylindrical chisels. (Dec. 7-8.) See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) ("[A ]ttomey argument [is] not the kind of factual evidence that is required to rebut a prima facie case of obviousness"). Appellants argue that "the broadest reasonable interpretation includes any reamer that is capable of resurfacing an object into a cylindrical form. Hence, Ronningen does not meet this broadest reasonable interpretation as FF 11 confirms that Ronningen teaches a disk guided by a Steinmann pin" (Req. Reh'g 3). We are not persuaded. As set forth in the Decision, "Ronningen discloses that ' [ t ]he femoral head was reamed to a cylindrical shape"' (Dec. 6 (FF 11 (emphasis added))). Furthermore, Appellants position attacks Ronningen in isolation, despite our determination, discussed above, that Long and Ronningen disclose cylindrical head-resurfacing reamers. See In re Merck & Co., 800 F.2d at 1097. Appellants argue that claim 9 has limitations pertaining to selecting an orientation of the drill, followed by creating a guide channel based on the selected orientation, followed by the resurfacing using this guide channel. The person skilled in the art would therefore understand that claim 9 recites the evaluation or prediction of the bone resurfacing evaluation before resurfacing occurs, based on the sequence of steps of claim 9. (Req. Reh'g 3.) This argument is unpersuasive. Claim 9 does not require that the steps be in a particular sequence and as Appellants recognize, "the exact 3 Appeal2014-008049 Application 11/339,499 wording 'at least prior to reswfacing being performed' is absent from claim 9" (id.). Appellants argue that "the Decision on Appeal has failed to provide Finding of Facts explaining how the prior art is capable of performing the functions prior to the resurfacing being performed (referred to as pre- resurfacing alteration evaluation for simplicity)" (Req. Reh'g 4). Appellants also argue that "the preoperative geometric planner of Di Gioia is described in column 5 line 57 to column 6 line 23 and in no way recites pre- resurfacing alteration evaluations. The pre-operative geometric planner 12, is strictly limited to determining implant positions, and simulating joint movement" and that "the DiGioia tool tracking occurs 'During the intra- operative stages of the method, the computer system [] is used to display the relative locations of the objects being tracked with a tracking device []. .. "' (id.). As we explained in the Decision, DiGioia, teaches "[t]he apparatus includes a pre-operative geometric planner" (FF 1 (emphasis added); see also Ans. 12- 13), and Sati teaches "[a] system[] is used to assist the surgeon in performing an operation by acquiring and displaying an image of the pat[i]ent. Subsequent movement of the patient and instruments is tracked and displayed on the image" (FF 4; see also Ans. 11-12). (Dec. 8-9.) See In re Merck & Co., 800 F.2d at 1097. See also In re Geisler, 116 F.3d at 1470. Appellants argue that "[ c ]laims 14 and 15, as justified above, relate to detecting the potential notch as an evaluation made prior to resurfacing. The excerpt of Sati is one that is performed during the act of altering the bone" (Req. Reh' g 5). 4 Appeal2014-008049 Application 11/339,499 As we observe in the Decision, and as recognized by Appellants, "Sati teaches ' [ t ]he system [] can help guide the femoral reamer" (Dec. 10 (emphasis added); FF 8). See also In re Merck & Co., 800 F.2d at 1097. SUMMARY We grant the Request to the extent that we have reconsidered the record. The Request for Rehearing is denied. 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. Â§ 1.136(a). REHEARING DENIED 5