Ex Parte Vargas et al

Patent Trial and Appeal Board

Feb 8, 2019

13787150 (P.T.A.B. Feb. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/787, 150 03/06/2013
104326 7590 02/12/2019
Schwegman Lundberg & Woessner/ Zimmer
P.O. Box 2938
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Joseph R. Vargas
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.
4394.666US 1 8353
EXAMINER
CALVETTI, FREDERICK F
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
02/12/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
SLW@blackhillsip.com
USPTO@slwip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH R. VARGAS, STEVEN SEELMAN,
CLARENCE M. PANCHISON, EMMANUEL L. UZUYEM,
and CARLOS HOLGUIN
Appeal2017-010397
Application 13/787, 150
Technology Center 3700
Before JENNIFERD. BAHR, JAMES P. CALVE, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Zimmer, Inc. ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 1, 4, 5, 7-13, 17, 18, 21, 22, and
24--26. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Zimmer, Inc. is the applicant and is identified as the real party in interest.
Appeal Br. 2.
Appeal2017-010397
Application 13/787,150
THE CLAIMED SUBJECT MATTER
Appellant's invention "relates to a method of manufacturing an
orthopedic prosthesis having a porous metal layer and an underlying metal
substrate." Spec. ,r 2. Claim 1, reproduced below, is representative of the
claimed subject matter.
1. A method of manufacturing an orthopedic prosthesis
comprising the steps of:
providing a metal substrate;
providing a porous metal layer having a thickness;
positioning the porous metal layer against the metal
substrate to form an interface between the porous metal layer and
the metal substrate;
directly contacting the porous metal layer with a textured
contacting surface integral with an electrode during welding,
wherein the textured contacting surface of the electrode
approximates surface features of the porous metal layer to be
directly contacted by the electrode during welding; and
directing an electrical current to the interface between the
porous metal layer and the metal substrate to resistance weld the
porous metal layer to the metal substrate while maintaining the
thickness of the porous metal layer, the current traveling from
the electrode, through the porous metal layer, and toward the
metal substrate.
REJECTIONS
1) Claims 1, 4, 21, 22, 25, and 26 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Gayer (US 6,214,049 Bl, issued
April 10, 2001), Wheeler (US 3,852,045, issued Dec. 3, 1974),
Farling (US 4,660,755, issued April 28, 1987), and Schuegraf (US
5,801,104, issued Sept. 1, 1998).
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Application 13/787,150
2) Claims 5 and 24 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Gayer, Wheeler, Farling, Schuegraf, and Medlin
(US 2003/0232124 Al, published Dec. 18, 2003).
3) Claims 7-13, 17, and 18 are rejected under35 U.S.C. § I03(a) as
unpatentable over Gayer, Wheeler, Hippensteel (US 2009/0098310
Al, issued April 16, 2009), and O'Neill (US 2004/0191106 Al,
published Sept. 30, 2004),
DISCUSSION
Rejection 1
In the rejection of claim 1, the Examiner finds that Gayer discloses a
metal substrate 104, a porous metal layer 200, and an electrode. Final Act.
2-3. The Examiner also finds that, in Gayer, the porous metal layer is
positioned against the metal substrate and, thus, discloses the claim
limitation "directly contacting the porous metal layer with a textured
contacting surface integral with an electrode during welding" and also the
limitation "wherein the textured contacting surface of the electrode
approximates surface features of the porous metal layer to be directly
contacted by the electrode during welding." Id. at 3 ( citing Gayer, 6:35-
8:20, Figs. 3-8). The Examiner further explains that "[t]he claim recites
textured. A mesh of fibrillary wire ofwooly structure ([Gayer] col 7 lines
20-21) is a porous metal layer with a textured contacting surface. The
claims do not recite when the surface becomes integral." Id. at 4.
Appellant contends that "Gayer does not disclose a textured
contacting surface integral with an electrode that directly contacts the
porous metal layer during welding as recited in ... claim 1." Appeal Br. 13.
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Application 13/787,150
In support of the contention, Appellant argues that the Examiner "asserts
that a 'mesh of fibrillary wire of wooly structure ... is a porous metal layer
with a textured contacting surface.' However, claim 1 specifies an electrode
with a textured contacting surface, not a porous metal layer with a textured
contacting surface." Id. Appellant also argues that the Examiner "appears
to allege that the textured contacting surface of the mesh of fibrillary wire
becomes integral with the electrode during the welding process." Id. Based
on its interpretation of claim 1, Appellant contends that "Gayer discloses
applying a conventional, non-textured electrode to a porous metal mesh to
resistance weld the mesh to a metal core prosthetic." Id. at 12 (citing Gayer,
8:2--4).
The Examiner responds that "Gayer teaches electrodes as being
conventional in the paragraph bridging col 7-8. There is referenced
electrodes and current passing through a core used as an electrode." Ans.
10. According to the Examiner, Figure 1 of Gayer "shows prongs 102 and
[F]igure 2 shows fibrillary wire formation. These are textured contacting
surfaces and are integral when contacted and/or melted." Id. The Examiner
also asserts that "[ c ]laim 1 does not specify where the electrode is disposed.
The present [S]pecification is generalized too in that regard particularly in
paragraph 46. In that paragraph the disposition is qualified by 'in some
embodiments.' The electrode may or may not be textured or initially
textured." Id. at 9-10. For the following reasons, we do not sustain the
rejection of claim 1.
Appellant's Specification describes "proximal femoral component 10
includes a metal substrate 20 and a porous metal layer 22 coupled to the
underlying substrate." Spec. ,r 34, Fig. 2. Appellant's Figures 3, 4A, and 4B
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Appeal2017-010397
Application 13/787,150
illustrate an apparatus 100 "for resistance welding porous layer 22 to
substrate 20 of proximal femoral component 10." Spec. ,r 41. Apparatus
100 includes electrodes 132a and 132b. Id. Electrodes 132a and 132b
"face[] a corresponding side of porous layer 22." Id. at ,r 45, Fig. 4A. The
Specification further provides that
In some embodiments, an electrode contact surface such as
contact surfaces 134a, 134b will be particularly textured, e.g.,
incorporate one or more surface features or elements or will otherwise
be configured so that structural and/or other characteristics ( e.g.,
surface texture, strut features, surface porosity, pore features, etc.) of a
porous metal structure contacted by an electrode during a welding step
will be preserved or substantially preserved, when such preservation is
desired, after the welding step has been completed. Illustratively, an
electrode surface can be equipped with a particular microarchitecture
that helps prevent or inhibit structural changes from occurring on or
within a porous metal structure during a welding step.
Id. at i146.
When electrodes 132a and 132b are in the closed position shown in Figure
4B, "weld current flows from one electrode (e.g., electrode 132a via wire
152a), through proximal femoral component 10, and out of the other
electrode (e.g., electrode 132b via wire 152b)." Id. at ,r 56.
Figures 1 and 3 of Gayer disclose prosthetic implant devices 100 and
300 each with an implant core 104 and 304 respectively. Gayer, 7:11-13,
40-42, Figs. 1, 3. The embodiment shown in Figure 3 comprises "a fibrillar
wire mesh 302 attached to" core 304. Id. at 7:41--42.
As noted above, the Examiner asserts that implant core 304, that the
Examiner finds corresponds to the recited "metal substrate," also
corresponds to the recited electrode used for resistance welding the core 304
in Gayer to the fibrillar wire mesh 302. The Examiner cites to the paragraph
bridging columns 7 and 8 of Gayer to support the assertion of "current
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Application 13/787,150
passing through a core used as an electrode." See Ans. 10. The only
reference to electrodes in the cited text is that "the mesh is formed into
desired dimensions via mechanical pressure provided by the electrodes."
Gayer, 8 :2--4 ( emphasis added). This paragraph of Gayer does not identify
the "electrodes" by the core reference numerals 104 or 304. See id. 7:66-
8: 16. This paragraph discloses that "[b ]onds are formed by application of
14,000 psi of mechanical pressure along with a current density equal to or
greater than 15,000 amperes per square inch for a duration of at least five
cycles." Id. at 8: 11-14. In order to apply mechanical pressure to form
bonds, the electrodes must be external to the core 304 and mesh 302 in
addition to providing current for resistance welding. Consequently,
irrespective of the Examiner's assertion that Gayer's wire mesh 302
becomes integral with core 304 during welding (Ans. 10), the Examiner's
finding that the core 104 or 304 corresponds to the recited electrode is not
supported by a preponderance of the evidence. However, even if Gayer's
core 304 also functioned as an electrode as the Examiner asserts, the
Examiner does not adequately explain how Gayer's device satisfies the
limitation in claim 1 of "the current traveling from the electrode, through the
porous metal layer, and toward the metal substrate." Claim 1 ( emphasis
added.) If the Examiner reads the electrode on Gayer's core 104 or 304,
then current applied to the core, if it acted as an electrode, would travel from
the core 304 toward the porous metal layer, i.e., wire mesh 302, but it is not
clear how the current would also travel toward the metal substrate (i.e., the
core). As the rejection is based on an erroneous factual finding, the
conclusion of obviousness cannot stand. See In re Warner, 379 F.2d 1011,
1017 (CCPA 1967) (holding that "[t]he legal conclusion of obviousness
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Application 13/787,150
must be supported by facts. Where the legal conclusion is not supported by
facts it cannot stand."). We, therefore, do not sustain the rejection of claim
1. Claims 4, 21, 22, 25, and 26 depend directly or indirectly from claim 1.
Appeal Br. 26-28 (Claims App.). We do not sustain the rejection of these
dependent claims for the same reasons.
Re} ections 2 and 3
Claims 5, 7-13, 17, 18, and 24 depend directly or indirectly from
claim 1. Appeal Br. 26-28 (Claims App.). In Rejections 2 and 3, the
Examiner does not rely on the additional disclosure of Wheeler, Farling,
Schuegraf, Medlin, Hippensteel, or O'Neill to cure the deficiencies in the
disclosure of Gayer discussed above in connection with the rejection of
claim 1. Final Act. 6-9. We, therefore, do not sustain the rejections of
claims 5, 7-13, 17, 18, and 24 for the same reasons discussed above.
DECISION
The Examiner's decision rejecting claims 1, 4, 5, 7-13, 17, 18, 21, 22,
and 24--26 is reversed.
REVERSED
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