08017568 (B.P.A.I. Oct. 8, 1998)

Ex parte Richelsoph et al.

Board of Patent Appeals and InterferencesOct 8, 1998

08017568 (B.P.A.I. Oct. 8, 1998)

Application for patent filed February 16, 1993. 1 THIS OPINION WAS NOT WRITTEN FOR PUBLICATION The opinion in support of the decision being entered today (1) was not written for publication in a law journal and (2) is not binding precedent of the Board. Paper No. 29 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte MARC E. RICHELSOPH, KENNETH W. RUSSELL, ROY D. BLOEBAUM and RICHARD E. JONES ____________ Appeal No. 97-2606 Application No. 08/017,5681 ____________ ON BRIEF ____________ Before MEISTER, FRANKFORT, and NASE, Administrative Patent Judges. NASE, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal from the examiner's final rejection of claims 1 through 7 and 9. Claims 8 and 13 through 43 have been withdrawn from consideration under 37 CFR Appeal No. 97-2606 Application No. 08/017,568 Â§ 1.142(b) as being drawn to a nonelected invention. Claims 10 through 12 have been allowed. We REVERSE. Appeal No. 97-2606 Page 3 Application No. 08/017,568 The examiner and the appellants both referred to this2 patent by the name "Filer." However, a Certificate of Correction was issued on October 15, 1991 correcting the inventor's last name to "Feiler." Effective filing date of Nov. 3, 1988.3 BACKGROUND The appellants' invention relates to a long bone prosthesis. An understanding of the invention can be derived from a reading of exemplary claim 1, which appears in the appendix to the appellants' brief. The prior art references of record relied upon by the examiner in rejecting the appealed claims are: Feiler 4,997,448 March 5, 19912 Hack et al. (Hack) 5,133,772 July 28, 1992 Tornier 5,171,289 Dec. 15, 1992 Huiskes et al. (Huiskes) 5,314,494 May 24, 19943 Claim 1 stands rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Feiler. Appeal No. 97-2606 Page 4 Application No. 08/017,568 Claims 1, 2, 3 and 9 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over Hack in view of Huiskes. Claims 4, 5, 6 and 7 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over Hack in view of Huiskes and either Feiler or Tornier. Rather than reiterate the conflicting viewpoints advanced by the examiner and the appellants regarding the above-noted rejections, we make reference to the final rejection (Paper No. 15, mailed June 26, 1995), the examiner's answer (Paper No. 24, mailed June 25, 1996) and the examiner's answer to reply brief (Paper No. 26, mailed December 10, 1996) for the examiner's complete reasoning in support of the rejections, and to the appellants' brief (Paper No. 23, filed March 1, 1996) and reply brief (Paper No. 25, filed August 22, 1996) for the appellants' arguments thereagainst. OPINION In reaching our decision in this appeal, we have given careful consideration to the appellants' specification and Appeal No. 97-2606 Page 5 Application No. 08/017,568 claims, to the applied prior art references, and to the respective positions articulated by the appellants and the examiner. As a consequence of our review, we make the determinations which follow. The anticipation issue We will not sustain the examiner's rejection of claim 1 under 35 U.S.C. Â§ 102(b). Initially we note that anticipation by a prior art reference does not require either the inventive concept of the claimed subject matter or the recognition of inherent properties that may be possessed by the prior art reference. See Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir.), cert. denied, 484 U.S. 827 (1987). A prior art reference anticipates the subject of a claim when the reference discloses every feature of the claimed invention, either explicitly or inherently (see Hazani v. Int'l Trade Comm'n, 126 F.3d 1473, 1477, 44 USPQ2d 1358, 1361 (Fed. Cir. 1997) and RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Appeal No. 97-2606 Page 6 Application No. 08/017,568 Cir. 1984)); however, the law of anticipation does not require that the reference teach what the appellants are claiming, but only that the claims on appeal "read on" something disclosed in the reference (see Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984)). Claim 1 recites a long bone prosthesis comprising, inter alia, a neck portion, a stem portion including means for force fit engaging a long bone canal, an intermediate portion disposed between the neck portion and the stem portion, and seal means disposed between the intermediate portion and each of the neck and stem portions for containing cement under pressure adjacent the intermediate portion and preventing leaking of cement therefrom during implantation of the prosthesis. Claim 1 further recites that the seal means includes a circumferential flange (e.g., 24) "between the stem portion (16) and the intermediate portion (20) extending radially outwardly from the longitudinal axis (32) for press- fit engaging the long bone canal (36)" and that the Appeal No. 97-2606 Page 7 Application No. 08/017,568 circumferential flange is constructed as an integral, one- piece unit with the stem portion or the intermediate portion. Feiler discloses a proximal cement sealing plug for a hip prosthesis. The sealing plug 2 is shown in Figures 10 and 11. The hip prosthesis is shown in Figure 14. Figure 17 shows the hip prosthesis and sealing plug implanted in the proximal femur. The appellants argue (brief, pp. 6-8, and reply brief, pp. 1-3) that Feiler does not disclose the recited "seal means" since the structure of Feiler cannot prevent leaking of cement therefrom during implantation of the prosthesis. Specifically, the appellants point out that Feiler lacks any structure equivalent to their resilient rear seal member 55. We agree. The examiner's position (examiner's answer to reply brief, p. 2) that the seal member 55 is not part of the claimed subject matter because it is a separate piece used in combination with the prosthesis 10 is unpersuasive for the following reasons. Under 35 U.S.C. Â§ 112, paragraph 6, an element in a claim expressed as a means for performing a Appeal No. 97-2606 Page 8 Application No. 08/017,568 specified function is construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. Thus, as stated by the appellants, the corresponding structure of the claimed "seal means" is the first seal 24, resilient seal member 40, collar portion 54 and resilient rear seal member 55 which together act to contain cement under pressure and prevent leaking of cement therefrom during implantation of the prosthesis. Feiler's sealing plug 2 and the collar portion of his prosthesis do not act to contain cement under pressure or prevent leaking of cement for the reasons set forth by the appellants. Thus, Feiler does not anticipate claim 1. In addition, we wish to point out to the examiner that the claimed circumferential flange being constructed as an "integral, one-piece unit" with the stem portion or the intermediate portion does not "read on" Feiler's device. In that regard, Feiler's sealing plug and prosthesis are separate elements and even when implanted in the femoral stem could not be regarded as an "integral, one-piece unit." Appeal No. 97-2606 Page 9 Application No. 08/017,568 For the reasons set forth above, the decision of the examiner to reject claim 1 under 35 U.S.C. Â§ 102(b) is reversed. The obviousness issue We will not sustain the examiner's rejection of claims 1 through 7 and 9 under 35 U.S.C. Â§ 103. The test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). Claims 1 and 3, the only independent claims on appeal, each recite a long bone prosthesis comprising, inter alia, a neck portion, a stem portion including means for force fit engaging a long bone canal, an intermediate portion disposed between the neck portion and the stem portion, and seal means disposed between the intermediate portion and each of the neck and stem portions for containing cement under pressure Appeal No. 97-2606 Page 10 Application No. 08/017,568 adjacent the intermediate portion and preventing leaking of cement therefrom during implantation of the prosthesis. The appellants argue (brief, pp. 8-12, and reply brief, pp. 3-4) that the applied prior art does teach or suggest a stem portion including means for force fit engaging a long bone canal as recited in claims 1 and 3. We agree. The corresponding structure, under 35 U.S.C. Â§ 112, paragraph 6, of the claimed "means for force fit engaging a long bone canal" is disclosed (specification, p. 7) as being in the form of flutes, spines, or both, for better initial fixation and torsional stability. We have reviewed the applied prior art (i.e., Hack, Huiskes, Feiler and Tornier) and fail to find therein any teaching or suggestion of any structure that would be equivalent to the claimed "means for force fit engaging a long bone canal" (i.e., flutes, spines, or both (specification, p. 7) as shown in Figures 1-3, 4, 5, 11 and 12 by element numbers 18, 118, 218, 418 and 518, respectively). While the prosthesis of either Hack, Feiler or Tornier may firmly engage the long bone canal due to complimentary substantially oval cross-sections, it is our view that the Appeal No. 97-2606 Page 11 Application No. 08/017,568 On March 16, 1995, the appellants filed an affidavit4 under 37 CFR Â§ 1.131 (Paper No. 12) to swear back of the November 26, 1992 effective date of this reference. Our review of the record finds no indication that the examiner ever considered whether or not this affidavit was effective to remove this reference as prior art. claimed "means for force fit engaging a long bone canal" requires more (i.e., flutes, spines, or both as shown in Figures 1-3, 4, 5, 11 and 12). In addition, we note that the issue of whether it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Hack or other prior art (e.g., German 92 13 218.9 ) by prior4 art teaching "means for force fit engaging a long bone canal" (e.g., European Patent Application 0 393 608 or PCT WO 83/02555) is not an issue before us in this appeal. The applied prior art fails to suggest all the claimed limitations for the reasons set forth above. Accordingly, the decision of the examiner to reject claims 1 through 7 and 9 under 35 U.S.C. Â§ 103 is reversed. Appeal No. 97-2606 Page 12 Application No. 08/017,568 CONCLUSION To summarize, the decision of the examiner to reject claim 1 under 35 U.S.C. Â§ 102(b) is reversed and the decision of the examiner to reject claims 1 through 7 and 9 under 35 U.S.C. Â§ 103 is reversed. REVERSED JAMES M. MEISTER ) Administrative Patent Judge ) ) ) ) ) BOARD OF PATENT CHARLES E. FRANKFORT ) APPEALS Administrative Patent Judge ) AND ) INTERFERENCES ) ) ) JEFFREY V. NASE ) Administrative Patent Judge ) Appeal No. 97-2606 Page 13 Application No. 08/017,568 WALKER, MCKENZIE & WALKER, P.C. 6363 POPLAR AVE., SUITE 434 MEMPHIS, TN 38119-4896 APPEAL NO. 97-2606 - JUDGE NASE APPLICATION NO. 08/017,568 APJ NASE APJ MEISTER APJ FRANKFORT DECISION: REVERSED Prepared By: Gloria Henderson DRAFT TYPED: 02 Oct 98 FINAL TYPED: