Mayo Foundation for Medical Education and Research

Patent Trials and Appeals Board

Jul 30, 2021

2021001153 (P.T.A.B. Jul. 30, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
16/154,016 10/08/2018 John W. Sperling 630666.00901 3407
26710 7590 07/30/2021
QUARLES & BRADY LLP
ATTN: IP DOCKET
411 E. WISCONSIN AVENUE
SUITE 2400
MILWAUKEE, WI 53202-4428
EXAMINER
SNOW, BRUCE EDWARD
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
07/30/2021 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):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN W. SPERLING
____________

Appeal 2021-001153
Application 16/154,016
Technology Center 3700
____________

Before STEFAN STAICOVICI, CARL M. DEFRANCO, and
LISA M. GUIJT, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the rejection
of claims 1–3 and 5 under 35 U.S.C. § 103 as being unpatentable over
Brunnarius.2,3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Mayo Foundation for Medical Education
and Research as the real party in interest. Appeal Br. 1.
2 Brunnarius et al. (US 2010/0274359 A1; published Oct. 28, 2010).
3 Claims 7 and 9–29 have been allowed, and claims 4, 6, and 30 are
withdrawn. Final Act. 1.
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THE INVENTION
Appellant’s invention relates to “methods for the optimization of joint
arthroplasty component design and shoulder arthroplasty components such
as stemless components and fracture stems for joint arthroplasty.” Spec. ¶ 3.
Claim 1, reproduced below as the sole independent claim on appeal, is
illustrative of the subject matter on appeal.
1. A prosthesis comprising:
a central body having a longitudinal axis normal to a
reference plane that extends through the central body;
a plurality of fins extending laterally from an outer
surface of the central body, the plurality of fins being spaced
apart around the outer surface of the central body,
wherein spacing of the plurality of fins is asymmetric in
the reference plane, and
wherein all of the plurality of fins do not create bilateral
symmetry of all of the plurality of fins with respect to a
longitudinal plane containing the longitudinal axis due to the
spacing in the reference plane of the plurality of fins.

OPINION
Claim Construction
The Examiner construes the claim language, “wherein all of the
plurality of fins do not create bilateral symmetry of all of the plurality of the
fins with respect to a longitudinal plane containing the longitudinal axis due
to the spacing in the reference plane of the plurality of fins,” to require only
that there exists one such longitudinal plane. See Final Act. 6 (“the
longitudinal plane containing the longitudinal axis can be arbitrarily chosen”
and thus, “[i]nherently, numerous planes maybe chosen to fulfill this
limitation”); Ans. 6–7. Appellant submits that “[a]s long as ‘a plane’ may be
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oriented to create symmetry, then symmetry inherently exists,” which
violates the negative limitation of claim 1. Reply Br. 8.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
The Specification discloses that “the plurality of fins [are] spaced
apart around the outer surface of the central body, wherein spacing of the
plurality of fins is asymmetric in the reference plane.” Spec. ¶ 8; see also id.
¶¶ 17, 19, 104; cf. id. ¶ 82 (with reference to Figures 3A–3C, “[t]he spacing
of the fins 108, 110, 151, 152, 153, 154 is asymmetric with respect to the
reference plane 104); id. ¶ 85 (with reference to Figures 4A, 5A, and 6A,
“[t]he fins may be asymmetrically spaced around a central body of the
prosthetic component 100A,” wherein “[t]he spacing of the fins around the
central body may vary depending upon the desired position of the prosthetic
component 100A within the patient”); see also id. ¶¶ 86–94, 107–116
(similarly disclosing that fins may be asymmetrically spaced around a
central body of the prosthetic components 100B–100J, 200A–200J); ¶ 184
(“[t]he methodology enables the ability to design patient specific asymmetric
implants”).
Appellant provides a definition for the term “symmetrical”: “capable
of division by a longitudinal plane into similar halves.” Appeal Br. 12
(citing Merriam-Webster; https://www.merriam-webster.com/dictionary/
symmetric). Thus, we understand that Appellant defines “asymmetrical” (or
“asymmetric,” as claimed) to mean incapable of division by a longitudinal
plane into similar (or identical) halves. We further understand the claim
term “bilateral symmetry . . . with respect to a longitudinal plane” to mean
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having two similar (or identical) halves when divided by a longitudinal
plane.
We agree with the Examiner’s claim construction that all that is
required by the claim limitation, “wherein all of the plurality of fins do not
create bilateral symmetry of all of the plurality of fins with respect to a
longitudinal plane containing the longitudinal axis due to the spacing in the
reference plane of the plurality of fins,” is that there exists “a” or “one” or
“at least one” longitudinal plane (which contains the longitudinal axis of the
central body), such that all of the fins do not create bilateral symmetry (or
two identical halves) with respect to all of the fins due to the spacing of the
fins in the reference plane (which is normal to the longitudinal axis of the
central body and in which the fins are asymmetrically spaced), regardless of
whether bilateral symmetry of all of the fins exists with respect to different
ones of such longitudinal planes.
In comparison, we construe the claim limitation, “wherein spacing of
the plurality of fins is asymmetric in the reference plane,” to mean that the
spaces between the fins are such that it is not possible to divide the
prosthesis by a longitudinal plane containing the longitudinal axis into
similar (or identical) halves with respect to the placement of the fins in the
reference plane.
Independent claim 1
Regarding independent claim 1, the Examiner finds that Brunnarius
teaches a prosthesis comprising a central body 4 having a longitudinal axis
normal to a reference plane and a plurality of laterally extending fins 6, 16,
as claimed. Final Act. 4–5 (citing Brunnarius ¶ 52). The Examiner also
finds that Brunnarius teaches that “‘in some embodiments, the arms 6 are
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distributed unevenly about the body 4 to better suit the non-circular interior
profile of the glenoid vault V.’” Id. at 5 (quoting Brunnarious ¶ 32)
(emphasis added); see also Brunnarious ¶ 29. The Examiner determines that
Brunnarius fails to “specifically state” that the spacing of the fins is
asymmetric in the reference plane, as required by claim 1, however, the
Examiner’s reasons that it would have been obvious to a skilled artisan to
have spaced Brunnarius’ fins to be asymmetric in the reference plane “to
better suit or customize to the non-circular interior profile of the glenoid
vault of a particular patient.” Id. The Examiner concludes that “[i]t would
have been obvious that uneven spacing includes asymmetric spacing,”
noting that “[n]owhere does Brunnarius . . . teach the arms are symmetric.”
Id. The Examiner further reasons that it would have been obvious to have
spaced Brunnarius’ fins so as not to create the bilateral symmetry that is
excluded by claim 1, reasoning, again, that to do so would “better suit or
customize to the non-circular interior profile of the glenoid vault of a
particular patient.” Id. at 6.
Appellant argues that “Brunnarius discloses a symmetrical joint
prosthesis,” and that the depiction of prostheses in Burnnarius’ figures do
not support interpreting Brunnarius’ disclosure of “unevenly” spaced arms
(or fins) as asymmetric. Appeal Br. 6–10; see id. at 8 (“the figures and
description of Brunnarius all depict and describe symmetrical prostheses”).
Appellant submits that “Brunnarius does not teach or suggest an asymmetric
implant that would lack bilateral symmetry,” and because “no motivation is
provided for how one skilled in the art may create an asymmetric implant
based upon the teachings of Brunnarius,” the Examiner improperly relied on
hindsight. Id. at 12. Appellant also submits that because “Brunnarius
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teaches an unevenly spaced symmetrical implant,” and “the Examiner
provides no evidence that asymmetrical implant configurations are ‘better
suited to the non-circular interior profile of the glenoid vault of a particular
patient’ . . . [,] [the Examiner’s] reasoning “lacks substantial evidence
supporting the conclusion [of obviousness].” Id. at 13. In further support,
Appellant refers to the declaration of the inventor, John W. Sperling (id. at
15), wherein Mr. Sperling attests that “implant failure is a significant
problem” and “asymmetric fin spacing provides an advantage to addressing
this problem by providing superior pull-out strength than that provided by
conventional, symmetric implants.” Decl. ¶ 4. Mr. Sperling also attests to
“the unexpected results” of this comparison. Decl. ¶ 6.
We are not persuaded by Appellant’s arguments.
Brunnarius discloses, with reference to Figures 1, 2, and 5, that “the
four arms 6 are distributed about the body 4, unevenly here, so as to define,
between two successive arms 6 around the body 4, an empty passage 63 . . .”
(Brunnarius ¶ 29) and that “[i]n some embodiments, the arms 6 are
distributed unevenly about the body 4 to better suit the non-circular interior
profile of the glenoid vault V” (id. ¶ 32) (emphasis added). We find that at
least Figure 2 does not clearly depict whether arms 6 are bilaterally
asymmetric or not. Notwithstanding, we agree with the Examiner that
Brunnarius certainly does not teach that it is important for arms 6 to
maintain a symmetry with respect to a bifurcating plane. Rather, a
preponderance of the evidence supports the Examiner’s finding that it would
be within the knowledge of a person of ordinary skill in the art to glean from
Brunnarius’ teaching of uneven spacing between the arms 6 that an
asymmetry with respect to a longitudinal plane may result, as required by
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claim 1, because the purpose of the design of the arms of Brunnarius is
specifically to better suit the non-circular interior profile of the glenoid
value V. In this way, Brunnarius itself provides the support for the
Examiner’s proposed modification, to the extent Brunnarius only depicts
unevenly spaced, but not asymmetrically spaced, arms. “A reference must
be considered for everything that it teaches, not simply the described
invention or a preferred embodiment.” In re Applied Materials, Inc., 692
F.3d 1289, 1298 (Fed. Cir. 2012).
Regarding the Declaration, Appellant can rebut a prima facie case of
obviousness by showing the criticality of the variable (i.e., asymmetric
spaces between the fins or location of the fins about the central body in the
reference plane).
The law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other
variable within the claims. . . . [I]n such a situation, the applicant
must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results
relative to the prior art range.
In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). See also In re Scherl,
156 F.2d 72, 74–75 (CCPA 1946) (“Where the issue of criticality is
involved, the applicant has the burden of establishing his position by a
proper showing of the facts upon which he relies.”).
Here, the inventor, John W. Sperling, provides test data showing the
biomechanical pull-out strength test results of a “Symmetric” implant as
compared to an “Asymmetric” implant. See Decl., Graph 1. Mr. Sperling
declares that “asymmetric fin spacing, which is not disclosed in the cited
reference of Brunnarius, provides for significant resistance to implant failure
by being able to withstand twice as much torque at failure as compared to a
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symmetrical implant.” Id. ¶ 4. What is unclear from the Declaration,
however, is whether the “Symmetric” implants subject to testing included
implants with at least uneven spacing, as in Brunnarius, and whether the
“Asymmetric” implants had the fins spaced asymmetrically with respect to
all reference planes, as required by claim 1. See id. ¶ 2 (“I . . . conducted a
biomechanical pull-out strength test comparing commercially-available,
symmetrical stemless implants with asymmetrical stemless implants”); see
also id. ¶ 4 (“asymmetric fin spacing provides . . . superior pull-out strength
than that provided by conventional, symmetric implants”).
More importantly, Mr. Sperling merely concludes that “my analysis in
Items 4 and 5 above details the unexpected results that is exhibited in the
data of Tables 1 and Graph 1 of this study,” without providing sufficient
support or explanation as to why such a result was unexpected. Decl. ¶ 6
(emphasis added). In other words, the Declaration fails to show why it
would be unexpected to achieve such results, for example, especially in view
of the teachings of the prior art:
One of the causes of failure or complication with shoulder
arthroplasty is connected with poor attachment of the glenoid
prosthetic body to the glenoid cavity. When the glenoid cavity
of a patient undergoing surgery is worn and/or has an impaired
bony makeup, the surgeon has difficulty . . . in firmly attaching
the prosthetic body to the glenoid cavity, to ensure that the
attachment is sufficiently strong.
Brunnarius ¶ 2; see also id. ¶ 32 (“the arms 6 are distributed unevenly about
the body 4 to better suit the non-circular interior profile of the glenoid vault
V”).
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For these reasons, we find that Appellant has not overcome the
Examiner’s rejection by rebutting the Examiner’s prima facie case
obviousness by presenting sufficient evidence of unexpected results.
Accordingly, we sustain the Examiner’s rejection of claim 1.
Dependent claim 2
Claim 2 depends from independent claim 1 and recites, in relevant
part, “wherein: a first fin . . . has a first fin length, . . . [and] a second fin . . .
has a second fin length . . . less than the first fin length.” Appeal Br. A-1
(Claims App.).
The Examiner finds that Figures 1 and 3 of Brunnarius depict the
subject matter recited in claim 2. Final Act. 6; Ans. 9.
Appellant argues that “claim 2 is patentable over the Brunnarius
reference in its own regard,” and in support, Appellant recites claim 2.
Appeal Br. 16. Appellant also submits that “Brunnarius discloses a
symmetrical joint prosthesis,” as argued with respect to claim 1. Id. 4
Appellant’s recitation of claim 2 is insufficient to apprise us of error
in the Examiner’s finding, and Appellant’s argument regarding symmetry is
unpersuasive for the reasons stated supra. See also In re Lovin, 652 F.3d

4 Appellant argues for the first time in the Reply Brief that “[t]he fins being
of different lengths in Brunnarius is . . . shown in a plane parallel to the
longitudinal axis rather than normal to the longitudinal axis, as recited by the
‘reference plane’ in the current claims.” Reply Br. 8–9. We decline to
consider this argument, as Appellant has not shown good cause as to why
the argument was not presented in the Appeal Brief. See 37 C.F.R.
§ 41.41(b)(2) (2012) (“Any argument raised in the reply brief which was not
raised in the appeal brief, or is not responsive to an argument raised in the
examiner’s answer, . . . will not be considered by the Board for purposes of
the present appeal, unless good cause is shown.”); Ex parte Borden, 93
USPQ2d 1473 (BPAI 2010) (informative).
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1349, 1357 (Fed. Cir. 2011) (stating “the Board reasonably interpreted Rule
41.37 to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art”).
Accordingly, we sustain the Examiner’s rejection of claim 2.
Dependent claim 3
Claim 3, which depends from claim 1, recites, in relevant part,
“wherein the central body has a first opening and a second opening, the first
opening corresponding to a proximal side of the central body and the second
opening corresponding to a distal side of the central body.” Appeal Br. A-2
(Claims App.).
The Examiner finds that Figure 3 of Brunnarius depicts the first and
second openings, as claimed. Final Act. 6.
Appellant argues that “There is no teaching or suggestion in
Brunnarius that device 3 would be anything but symmetrical.” Appeal
Br. 16–17.
Appellant’s argument regarding symmetry does not apprise us of error
in the Examiner’s finding with respect to the subject matter of claim 3.
Accordingly, we sustain the Examiner’s rejection of claim 3.
Dependent claim 5
Claim 5, which depends from claim 1, recites, in relevant part,
“wherein the central body and the plurality of fins are dimensioned for
implantation into a humerus of a subject.” Appeal Br. A-2 (Claims App.).
The Examiner finds that Brunnarius’ joint prosthesis attachment
system is capable of being dimensioned for implantation into a humerus of a
subject.” Final Act. 6.
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Appellant argues that “Brunnarius does not teach or suggest any
application for implantation into a humerus of a subject” and that “the
figures and description of Brunnarius are all directed to a glenoid implant.”
Appeal Br. 18–19 (citing Brunnarius ¶¶ 23–24). Appellant submits that “the
‘uneven’ spacing disclosed in Brunnarius and relied upon by the Examiner is
directly related to the glenoid.” Id. (citing Brunnarius ¶ 32). Appellant
concludes that the Examiner has not stated a prima facie case of obviousness
for claim 5. Id. 19.
Where the Examiner believes the prior art to be capable of performing
a recited function, the Examiner must provide sufficient evidence or
scientific reasoning to establish the reasonableness of the Examiner's belief
that the functional limitation is an inherent characteristic of the prior art. See
In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Here, Brunnarius
discloses generally that “[p]rosthetic systems, devices, and methods for
attaching prosthetic joint components to a vault-shaped portion of the
anatomy” and does not preclude Brunnarius prosthesis from being
dimensioned for implantation into a humerus of a subject, as claimed.
Brunnarius, Abstract. We find this is sufficient disclosure to shift the burden
to Appellant to distinguish the structure of Appellant’s invention from the
structure of Brunnarius’ invention and to explain why it would be beyond
the knowledge of a person of ordinary skill in the art to dimension the fins
for implantation into a humerus of a subject. Appellant does not undertake
to do so.
Accordingly, we sustain the Examiner’s rejection of claim 5.
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CONCLUSION
The Examiner’s rejection of claims 1–3 and 5 is affirmed.

DECISISON SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5 103 Brunnarius 1–3, 5
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED