Ex Parte Ray

Board of Patent Appeals and Interferences

Jun 21, 2012

11618953 (B.P.A.I. Jun. 21, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/618,953 01/02/2007 Charles D. Ray R293.112.101 6692
25281 7590 06/22/2012
DICKE, BILLIG & CZAJA
FIFTH STREET TOWERS
100 SOUTH FIFTH STREET, SUITE 2250
MINNEAPOLIS, MN 55402
EXAMINER
WILLSE, DAVID H
ART UNIT PAPER NUMBER
3738
MAIL DATE DELIVERY MODE
06/22/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CHARLES D. RAY
____________________

Appeal 2010-004443
Application 11/618,953
Technology Center 3700
____________________

Before: STEVEN D.A. McCARTHY, PHILLIP J. KAUFFMAN, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-004443
Application 11/618,953

2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 9-
16 and 18-20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

THE INVENTION
Appellant’s claimed invention “relates to prosthetic bearing surfaces
for rotating or sliding joints of the human body and to the means of
attachment of such prostheses to the underlying bone of the joints.” Spec.
1:5-7. Claim 9 is the sole independent claim on appeal, and is reproduced
below (emphasis added):
9. A method of replacing a portion of a joint located between
opposing bony surfaces of a body, the method comprising:
providing a joint prosthesis including a polymeric
membrane defining opposing longitudinal ends and first and
second mesh backing portions, the first and second mesh
backing portions each disposed on a respective one of the
opposing longitudinal ends on a graft surface of the membrane;
attaching the first mesh backing portion to a first bony
surface of the joint;
attaching the second mesh backing portion to a second
bony surface of the joint opposite the first bony surface; and
folding an unbacked portion of the membrane between
the opposing bony surfaces to define a contacting articulation
surface.

Appeal 2010-004443
Application 11/618,953

3
REJECTIONS AND EVIDENCE RELIED UPON1
Appellant seeks review of the following rejections:
1. Claims 9, 10, 12, 13, and 18-20 under 35 U.S.C. § 102(b) as anticipated
by McLeod.
2. Claims 11 and 14-16 under 35 U.S.C. § 103(a) as unpatentable over
McLeod.
3. Claims 9, 11, 18, and 20 under 35 U.S.C. § 102(b) as anticipated by Goh.
4. Claim 19 under 35 U.S.C. § 103(a) as unpatentable over Goh.

McLeod
Goh
US 6,093,205
WO 01/34065 A1
Jul. 25, 2000
May 17, 2001

ISSUES
Does McLeod disclose folding an unbacked portion of the membrane
to define a contacting articulation surface as called for in claim 9?
Does Goh disclose folding an unbacked portion of the membrane to
define a contacting articulation surface as called for in claim 9?

ANALYSIS
Independent Claim 9
Independent claim 9 is directed to a method of replacing a portion of a
joint located between opposing bony surfaces of a body, and includes the
step of folding an unbacked portion of a membrane between opposing bony
surfaces to define a contacting articulation surface. The Specification states
that ordinary joints have two opposing surfaces that articulate or slide
against each other, and states that in the claimed method, the center portion

1 Appellant groups and orders the rejections differently. See App. Br. 4.
Appeal 2010-004443
Application 11/618,953

4
of the membrane is folded onto itself forming articulating surfaces that
freely slide against each other. Spec. 1:16-17; 3:19-21; 4:10-11; figs. 3A-C.
Therefore, claim 9 calls for folding an unbacked portion of the membrane to
define a contacting articulation surface (that is, in the context of the present
application, surfaces that freely slide against each other) between opposing
bony surfaces of a joint.

McLeod
McLeod discloses a surgical implant for replacing the intervertebral
disc of the spine, or replacement of other joints (e.g., finger or toe joints),
that is comprised of a core provided in a retaining fabric. McLeod, col. 1, ll.
3-6, 48-53. Prosthesis 210 is comprised of a core 212 contained in a pocket
within encapsulating fabric 56 formed by junction 79 and stitches along
edges 77. McLeod, col. 8, ll. 48-61; col. 9, ll. 54-63; figs. 8, 10-142. In this
configuration, faces 70 and 72 of encapsulating fabric 56 are joined at
junction 79, stitched along the remaining edges, and separated by core 212,
so that faces 70 and 72 are not free to slide against each other. Contra Ans.
3. Thus, we agree with Appellant that McLeod does not disclose folding an
unbacked portion of a membrane to define a contacting articulation surface
as called for in claim 9. App. Br. 6; Reply Br. 2-3;
Accordingly, we cannot sustain the rejection of independent claim 9
and its dependent claims 10, 12, 13, and 18-20 as anticipated by McLeod.
Further, the rejection of claims 11 and 14-163 as obvious over McLeod relies

2 The embodiment shown in Figures 10-13 is a modified version of the
embodiment of Figure 8. Figure 14 depicts the prosthesis of Figures 12 and
13 in situ in a spine. McLeod, col. 5, ll. 46-65; col. 9, ll. 33-35, 43.
3 These claims depend, directly or indirectly, from independent claim 9.
Appeal 2010-004443
Application 11/618,953

5
upon the same erroneous finding, and consequently, also cannot be
sustained. See Ans. 3-4.
Goh
Goh discloses a tissue-engineered ligament suitable for reconstruction
of a torn ligament. Goh, pp. 1, 7. Goh discloses an embodiment of a tissue-
engineered ligament 10 formed by seeding a sheet 15 of biocompatible
material with fibrocyte forming cells, placing the sheet 15 in a cultured
medium, and incubating until there has been sufficient cell increase. Goh,
pp. 8, 9. The sheet 15 is then folded back and forth in an accordion style
fold 40 to produce a slender structure 35. Goh, p. 11; figs. 5, 7, 8. During
incubation, slender structure 35 may be subjected to cyclical longitudinal
tension to promote fluid circulation that brings fresh nutrients to the cells.
Goh, pp. 13-14, 19-20; fig. 19. After incubation, tissue-engineered ligament
10 is implanted as a ligament with each longitudinal end fixed in a bone
tunnel in the joint of a patient to carry load across the joint. Goh, p. 15; fig.
13.
In light of this, slender structure 35 is formed from a single folded
sheet so that the layers are joined along alternating longitudinal edges and
each longitudinal end is secured in a bone tunnel. In such configuration, the
layers are not able to freely slide against each other. Further, slender
structure 35 is utilized as a ligament to carry tension across a joint, and not
as an articulating surface between opposing bony surfaces. Therefore, we
agree with Appellant that Goh does not disclose folding a portion of a
membrane (sheet 15) to define a contacting articulation surface as called for
in independent claim 9. App. Br. 8; contra. Ans. 4.
Appeal 2010-004443
Application 11/618,953

6
Accordingly, we cannot sustain the rejection of independent claim 9
and its dependent claims 11, 18, and 20 as anticipated by Goh. The rejection
of claim 19 as obvious over Goh relies upon the same erroneous finding, and
consequently, also cannot be sustained. See Ans. 4.

CONCLUSIONS
McLeod does not disclose folding an unbacked portion of the
membrane to define a contacting articulation surface as called for in claim 9.
Goh does not disclose folding an unbacked portion of the membrane
to define a contacting articulation surface as called for in claim 9.

DECISION
We reverse the Examiner’s decision to reject claims 9-16 and 18-20.

REVERSED

MP