Ex Parte Tornier

Board of Patent Appeals and Interferences

Sep 29, 2010

10189630 (B.P.A.I. Sep. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ALAIN TORNIER
____________________

Appeal 2009-009239
Application 10/189,630
Technology Center 3700
____________________

Before: WILLIAM F. PATE III, JENNIFER D. BAHR, and FRED A.
SILVERBERG, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-009239
Application 10/189,630
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 (2002) from a rejection of
claims 22-41. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to a system for fitting a humeral component of
an elbow prosthesis. Claim 22, reproduced below, is illustrative of the
claimed subject matter:
22. A system for implanting a prosthesis in a distal humeral
trochlea of an elbow joint, the tool comprising:
a first guide tool comprising a boring guide aligned to
create a bore in the distal humeral trochlea along a geometric
axis of bend of the elbow joint when the first guide tool is
engaged with the distal humeral trochlea;
a first pin insertable into a bore formed by the first guide
tool in the distal humeral trochlea, the first pin providing a
physical reference corresponding to the geometric axis of bend;
a second pin insertable into a humeral medullary canal
generally along a diaphyseal axis of a humerus and generally
perpendicular to the first pin, the second pin providing a
physical reference corresponding to the diaphyseal axis;
at least one template adapted to measure an offset
between the geometric axis of bend and the diaphyseal axis; and
a first cutting template engaged with at least the first pin
and oriented to cut the distal humeral trochlea generally
perpendicular to the geometric axis of bend.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Treace US 4,131,956 Jan. 2, 1979
Saunders EU 0 132 284 A1 Jan. 30, 1985
Appeal 2009-009239
Application 10/189,630
3
REJECTIONS
Claims 22-41 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Ans. 3.
Claims 22, 25, 27-31 and 33-41 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Saunders. Ans. 3.
Claims 23, 24, 26 and 32 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Saunders and Treace. Ans. 4.

OPINION
The Examiner contends that the term “a bore formed by the first guide
tool” constitutes new matter because the written description indicates that it
is the drill, and not the guide tool, that forms the bore. Ans. 3, 5. The
Specification provides that the invention relates to a “guiding tool for boring
the humeral trochlea.” Spec. 1:17-19; see also Spec. 6:3-7:17. While the
cutting surface of the drill is ultimately responsible for removing the bone
material to form the bore, that structure cooperates with the guide tool to
achieve this end. Despite the fact that the first guide tool acts in concert
with other structures, such as the drill, for forming the bore, Appellant is
entitled to recite “a bore formed by the first guide tool”, since it is clear from
the Specification that the Appellant had possession of a guide tool
instrumental in the boring process. App. Br. 3-4. Accordingly, the
Examiner’s rejection under 35 U.S.C. § 112, first paragraph, is not sustained.
Claims 22 and 40 require a second pin insertable into a humeral
medullary canal. The Examiner contends that Saunders has a second pin and
identifies the pin as element 45. Ans. 3. While we agree that pin 45 is
inserted into a bore in the humerus, this bore corresponds to the bore drilled
to receive pin 2. Saunders 5:27-6:1. Consequently this bore is through the
Appeal 2009-009239
Application 10/189,630
4
trochlea of the humerus and is substantially normal to the medullary canal
and the diaphysial axis of that bone, and not generally perpendicular to the
first pin, as called for in claims 22 and 40.
The Examiner further argues that where the claimed pins are inserted
is entirely up to the user. Ans. 7. We agree that the claims merely require the
second pin to be insertable in the medullary humeral canal, but the Examiner
must at least show that the identified pin 45 has that capability. It is unclear
to us, that the pin 45, which is formed as a unitary projection on prosthesis
41, is capable of being inserted in the humeral canal due to the structure of
the C-shaped prosthetic member. The Examiner has not sustained his burden
of showing that the pin 45 is capable of being inserted as claimed. Therefore,
as argued by Appellant, Saunders lacks the claimed second pin, an element
of independent claims 22 and 40, and these claims do not lack novelty
thereover.
With respect to independent claim 41, Appellant argues that Saunders
does not disclose a notch in the second arm shaped to engage an epitrochlea
of the humerus. The Examiner argues that the pins 6, or rather the space
between the pins 6, is the claimed notch. Ans. 7. Be that as it may, there is
no evidence that the pins 6 form a U-shaped or V-shaped opening
therebetween or are shaped or positioned to engage an epitrochlea of a
humerus as Appellant argues in his brief. Saunders merely states that pins 6
are driven into the humerus to secure the frame 1 in place. 4:9-12. We must
conclude that the Examiner’s finding that the opening between the pins 6 is a
notch shaped to engage an epitrochlea is based on speculation and
conjecture. Therefore Saunders lacks an element of the system of claim 41.
The subject matter of independent claim 41 is novel thereover.
Appeal 2009-009239
Application 10/189,630
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The other cited prior art patent does not provide the claim elements
we have found lacking in the prior art of Saunders. Consequently, the
obviousness rejection is also reversed.
DECISION
For the above reasons, the Examiner’s rejections of claims 22-41 are
reversed.

REVERSED

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