Ex Parte Tornier et al

Board of Patent Appeals and Interferences

Jan 31, 2012

11147177 (B.P.A.I. Jan. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ALAIN TORNIER, FRANÇOIS SIRVEAUX,
GILLES WALCH, DANIEL MOLE, CHRISTOPHE LEVIGNE,
PASCAL BOILEAU, and LUC FAVARD
__________

Appeal 2010-008272
Application 11/147,177
Technology Center 3700
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and
FRANCISCO C. PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a set of
components that allow adjustment of shoulder prosthesis orientation. The
Examiner entered a rejection for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Appellants’ invention is directed, essentially, to a set of components
for a reverse shoulder prosthesis in which the concave articular surface, or
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Application 11/147,177

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cup, is affixed to the humeral stem, and the head, or ball, component of the
joint is affixed to the glenoid (see, e.g., Figure 1 of the Specification).
Because some patients may have relatively more extensive damage to the
glenoid, the prosthesis may require adjustment such that the axis of
symmetry of the glenoid portion of the prosthesis is appropriately configured
in relation to the axis defining the patient’s spine (compare Fig. 2 (angle
adjusted) to Fig. 1 (no angle adjustment)).
Thus, by providing a plurality, or set, of base components with
different angles to compensate for irregularities in glenoidal surface
orientation,
when a surgeon installs a shoulder prosthesis P, he may,
as a function of the relative orientation of the [glenoidal]
surface SG and of the [spinal] axis Z-Z', select a glenoidal
component of which the base comprises front and rear faces
oriented in such a manner as to allow the main part of the defect
of orientation of the surface SG to be compensated.

(Spec. 9; see also Figure 2.)
Claims 33-39, 41-43, 45, 47-51, and 53 stand rejected and appealed
(App. Br. 2).
1
Claim 33 illustrates the appealed subject matter and reads as
follows:
33. A plurality of glenoidal components for a shoulder
prosthesis adapted to compensate defects in parallelism between a
resected surface of a glenoid cavity and an axis of a patient’s spinal
column, the glenoidal components comprising:
a first base comprising a front surface and a rear surface
with an anchoring stem comprising a longitudinal axis, the

1
As the Appeal Brief does not have page numbering, we cite to it as if the
first page were page 1, and the remaining pages were numbered
consecutively.
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longitudinal axis of the anchoring stem arranged at a first non-
perpendicular angle with respect to the front surface and at a
substantially perpendicular angle with respect to the rear surface;
at least a second base comprising a front surface and a
rear surface with an anchoring stem comprising a longitudinal axis,
the longitudinal axis of the anchoring stem arranged at a second non-
perpendicular angle with respect to the front surface and at a
substantially perpendicular angle with respect to the rear surface,
wherein the first nonperpendicular angle is different from the second
non-perpendicular angle; and
a glenoid portion comprising a convex articular surface
centered on an axis of symmetry and a rear surface, wherein the rear
surface of the glenoid portion is non-perpendicular to the longitudinal
axis of the anchoring stem when engaged with one of the bases.

The sole rejection before us for review is the Examiner’s rejection of
claims 33-39, 41-43, 45, 47-51, and 53 are rejected under 35 U.S.C. § 103(a)
as obvious over Roy
2
and Stone
3
(Ans. 3-4).
4

DISCUSSION
The Examiner cited Roy as teaching a “traditional non-reversed
shoulder prosthesis comprising a plurality of different head portions
comprising a wedge segment monolithicly [sic] attached thereto. The
varying angled wedge segments varies the head articulating portion relative
to its rear surface (and thus the stem)” (Ans. 3). The Examiner cited Stone
as teaching both traditional and reversed shoulder prostheses that used the
same head portion (id.).

2
U.S. Patent No. 5,549,682 (issued August 27, 1996).
3
U.S. Patent No. 7,175,663 B1 (filed October 8, 2003).
4
The Examiner’s Answer inadvertently includes canceled claims 40 and 52
among the rejected claims (Ans. 3).
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In view of these teachings, the Examiner reasoned that an ordinary
artisan would have considered it obvious to use Roy’s varied angled head
portions with “the reversed shoulder prosthesis of Stone with predictable
results” (id.). The Examiner further reasoned:
It would have been an obvious reversal of parts to one
having ordinary skill in the art to have tried and added the
wedge portion to the base 112 of Stone in lieu of the head
portion (glenoid portion) producing a plurality of bases with
varying non-perpendicular stems relative to the front surface or
the back surface of the bases utilizing ordinary engineering skill
with predictable results allow the surgeon to select the best
fit/articulation for a patient. Adding the wedge portion to the
base portion would angle the front surface relative to the back
surface and produced a plurality of bases. It would have been
obvious to have a plurality of glenoid portions.

(Id. at 4; see also, id. at 6-8 (illustrating reversal of parts required to arrive at
claimed base component).)
Appellants argue, for a number of reasons, that the Examiner did not
make out a prima facie case of obviousness (see, e.g., App. Br. 10-12; Reply
Br. 3-5).
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.

In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007), while the
Supreme Court emphasized “an expansive and flexible approach” to the
obviousness question, the Court also reaffirmed the importance of
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determining “whether there was an apparent reason to combine the known
elements in the fashion claimed by the patent at issue.” Id. at 418.
Thus, as our reviewing court has explained, an examiner must “still
be careful not to allow hindsight reconstruction of references to reach the
claimed invention without any explanation as to how or why the references
would be combined to produce the claimed invention.” Innogenetics, N.V. v.
Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir. 2008) (emphasis added).
Ultimately, therefore, “[i]n determining whether obviousness is
established by combining the teachings of the prior art, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” In re GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir.
1995) (internal quotations omitted).
We find that this is a close case, and also that the Examiner has done a
thorough job in explaining his position (see Ans. 6-8). Nonetheless, we
agree with Appellants that a preponderance of the evidence does not support
the Examiner’s finding that the cited references would have suggested the
claimed combination of elements to an ordinary artisan.
Claim 33 recites a plurality of glenoidal components for a shoulder
prosthesis adapted to compensate defects in parallelism between a resected
surface of a glenoid cavity and an axis of a patient’s spinal column. The
claimed glenoidal components must include (a) a first base component, (b) a
second base component, and (c) a glenoid portion.
The first base component has front and rear surfaces and an anchoring
stem with a longitudinal axis. The longitudinal axis of the anchoring stem
must be arranged at a first non-perpendicular angle with respect to the base
component’s front surface and at a substantially perpendicular angle with
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respect to the base component’s rear surface. The second base component
has the same requirements as to the relative orientations of its anchoring
stem, front, and rear surfaces, except that the non-perpendicular angle
between the longitudinal axis of the stem and the front surface must be
different than the corresponding angle of the first base component.
Claim 33 requires the glenoid portion to have a convex articular
surface centered on an axis of symmetry and a rear surface, such that the rear
surface of the glenoid portion is non-perpendicular to the longitudinal axis of
the anchoring stem when engaged with one of the bases.
Accordingly, as seen in Appellants’ Figure 5, with components 21a,
21b, and 21c corresponding to the claimed base components, and component
22 corresponding to the claimed glenoid portion, the claims essentially recite
a plurality of components that include a generic ball articular surface and a
plurality of different-angled bases to which the ball can be affixed.
As Appellants point out (see, e.g., App. Br. 11), in contrast to using a
plurality of varied angled bases as claimed, Roy teaches compensating for
different patients’ physiognomy by using a shoulder prosthesis with a
generic base, in combination with a plurality of different-angled ball
components (see, e.g., Roy, Figs. 3-6). Thus, applying the express teachings
of Roy to the reverse shoulder prosthesis of Stone (see Stone, Fig. 2), an
ordinary artisan would have been prompted to use a plurality of different-
angled ball components in combination with Stone’s generic base 112 (see
id.), to accommodate irregularities in patient shapes.
We therefore agree with Appellants that applying Roy’s teachings to
Stone’s reverse shoulder prosthesis would not have led an ordinary artisan to
the combination of elements recited in Appellants’ claims. While the
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Examiner urges that an ordinary artisan would have considered it “an
obvious reversal of parts” (Ans. 7) to switch from Roy’s set of varied-angled
ball components, and their corresponding generic base, to the claimed set of
varied-angled bases, with a generic ball component, the Examiner has
identified no teaching in either reference suggesting that those parts would
have been considered equivalently interchangeable, nor has the Examiner
adequately explained why an ordinary artisan would have undertaken the
effort to make the significant modifications in the prior art parts that would
yield the claimed arrangement of elements.
To the contrary, given that both references suggest using a generic
base component, and given that one could accommodate different patients’
shapes using Roy’s varied-angled ball components with those generic bases,
we agree with Appellants that an ordinary artisan viewing these references
would not have been prompted to modify the base component. This would
have been particularly so, given Stone’s teachings regarding the advantages
of using modular components, including base components (see, e.g., Stone,
col. 1, ll. 39-44 (“It is, therefore, desirable to provide a selection of modular
components that can be combined for use in traditional as well as reverse
shoulder arthroplasty, with the goals of increasing flexibility and choice and
for providing interchangeable and easy to use components that are also cost
effective.”).
In sum, we agree with Appellants that a preponderance of the
evidence does not support the Examiner’s prima facie case of obviousness.
We therefore reverse the Examiner’s obviousness rejection of claims 33-39,
41-43, 45, and 47-53 over Roy and Stone.

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REVERSED

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