Ex Parte Chudik

Patent Trial and Appeal BoardJul 28, 2016

13068309 (P.T.A.B. Jul. 28, 2016)

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. 13/068,309 05/09/2011 Steven C. Chudik 5181-1000GP(II)(A) 7527 7590 07/28/2016 Gregory B. Beggs Law offices of Gregory B. Beggs 928 Warren Avenue Downers Grove, IL 60515 EXAMINER PELLEGRINO, BRIAN E ART UNIT PAPER NUMBER 3738 MAIL DATE DELIVERY MODE 07/28/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte STEVEN C. CHUDIK ____________ Appeal 2014-003518 Application 13/068,309 Technology Center 3700 ____________ Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and KENNETH G. SCHOPFER, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON APPEAL The Appellant (Steven C. Chudik) appeals under 35 U.S.C. § 134 from the Examiner’s rejections of claims 5–15. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2014-003518 Application 13/068,309 2 STATEMENT OF THE CASE The Appellant’s invention relates to “implants for orthopedic surgery and, more specifically, to rotator cuff sparing procedures and associated devices for shoulder replacement surgery.” (Spec. ¶ 2.) Illustrative Claim1 5. A humeral implant comprising a humeral surface component having a non-articular surface configured for long-lasting fixation of the implant on a humeral head and no stem. References Arcand US 6,368,353 B1 Apr. 9, 2002 Wiley US 2004/0122519 A1 June 24, 2004 Maroney US 2004/0193276 A1 Sept. 30, 2004 Cyprien US 2004/0230311 A1 Nov. 18, 2004 Winslow US 7,585,327 B2 Sept. 8, 2009 Leonard FR 2825263 Dec. 6, 2002 Rejections I. The Examiner rejects claims 5–15 under 35 U.S.C. § 112, second paragraph, as indefinite. (Final Action 3.) II. The Examiner rejects claim 5 under 35 U.S.C. § 102(b) as anticipated by Leonard. (Id. at 5.) III. The Examiner rejects claims 6–9 under 35 U.S.C. § 103(a) as unpatentable over Leonard in view of Cyprien. (Id.) IV. The Examiner rejects claim 10 under 35 U.S.C. § 103(a) as unpatentable over Leonard in view of Arcand. (Id. at 6.) 1 This illustrative claim is quoted from the Claims Appendix (“Claims App.”) set forth on pages 24–25 of the Appeal Brief. Appeal 2014-003518 Application 13/068,309 3 V. The Examiner rejects claim 11 under 35 U.S.C. § 103(a) as unpatentable over Leonard in view of Winslow. (Id.) VI. The Examiner rejects claims 12, 13, and 15 under 35 U.S.C. § 103(a) as unpatentable over Leonard in view of Wiley. (Id. at 7.) VII. The Examiner rejects claim 14 under 35 U.S.C. § 103(a) as unpatentable over Leonard in view of Maroney. (Id.) ANALYSIS Claim 5 is the sole independent claim on appeal, with the rest of the claims on appeal (i.e., claims 2–15) depending therefrom. (See Claims App.) Independent claim 5 is directed to “[a] humeral implant” comprising “a humeral surface component.” (Id.) Rejection I Independent claim 5 recites that the humeral surface component, and thus, the implant, has “a non-articular surface.” (Claims App.) However, independent claim 5 does not recite an “articular surface.” (Id.) According to the Examiner, “to recite that the implant is a ‘humeral implant’ and have no structure to define such an articulating surface is indefinite and contrary to the choice of terminology.” (Final Action 4.) The Appellant argues that the Examiner has failed “to point to any statement in the [S]pecification saying that ‘the articular surface and its structure’ are essential elements of the invention recited in claim 5.” (Appeal Br. 17.) We agree with the Appellant’s position that the Examiner has not established that a structure must comprise an articular surface in order to be considered a “humeral implant.” Independent claim 5 is indeed broad enough to cover a structure without an articular surface, for example, Appeal 2014-003518 Application 13/068,309 4 a structure used in conjunction with another humeral implant (or other separate element) having an articular surface. However, this is a matter of breadth, not indefiniteness.2 Independent claim 5 also recites that the non-articular surface is “configured for long-lasting fixation of the implant on a humeral head.” (Claims App.) According to the Examiner, “[t]he phrase ‘long-lasting’ in claim 5 is relative terminology which renders the claim indefinite.” (Final Action 4.) The Examiner implicates that one of ordinary skill in the art would not understand whether “long-lasting” is measured in “weeks, months, years, etc.” (Id.) The Appellant argues that one of ordinary skill in the art “would not find the term indefinite.” (Appeal Br. 18.) We are persuaded by the Appellant’s position because one of ordinary skill in the art would understand the bounds of the term “long lasting” in light of the Specification.3 One of ordinary skill in the art would understand that, in the context of shoulder-replacement implants, “long lasting” would be measured in years after completion of the surgery as opposed to, for example, trial implants inserted during the surgery. (See e.g., Spec. ¶ 132.) The Examiner also maintains that independent claim 5 “fails to define how some vague structural surface render[s] the implant long-lasting.” (Final Action 4.) However, as pointed out by the Appellant, independent 2 See In re Johnson, 558 F.2d. 1008, 1016 n. 17 (CCPA 1977) (Even “undue breadth is not indefiniteness”). 3 See Miles Labs, Inc. v. Shandon, Inc. 997 F.2d 870, 875 (Fed. Circ. 1993) (“The test for definiteness is whether one skilled in the art would understand the bounds of the claim when read in light of the specification”). Appeal 2014-003518 Application 13/068,309 5 claim 5 does not recite that the implant is “long-lasting” (see Appeal Br. 18); independent claim 5 only recites that the non-articular surface is “configured for long-lasting fixation of the implant on a humeral head.” (Claims App.) This claim is indeed broad enough to encompass a structure that requires additional fixation elements (e.g., screws and/or cement) for long-lasting fixation of the implant on a humeral head. However, again, this is a matter of breadth, not indefiniteness. Thus, we do not sustain the Examiner’s rejection of independent claim 5, and claims 2–15 depending therefrom, under 35 U.S.C. § 112, second paragraph. Rejection II As indicated above, independent claim 5 is directed to a humeral implant comprising “a humeral surface component” having “a non-articular surface configured for long-lasting fixation of the implant on a humeral head.” (Claims App.) The Examiner finds that Leonard shows, in Figure 4D (reproduced below), “a humeral implant having a humeral surface component 24.” (Final Action 5.) Appeal 2014-003518 Application 13/068,309 6 Leonard’s Figure 4D shows a platen 24 having a convex surface matching a concave profile in the head of a humerus 12. This figure and other drawings in Leonard show that platen 24 is connected to a separate base 20 having a stem 54, which is screwed to the glenoid cavity 14. (See e.g., Leonard, Figs. 1, 3A and 3B.) The Appellant argues all of Leonard’s drawings “show a glenoid implant,” and “there is no showing anywhere” that Leonard’s platen 24 is a humeral implant. (Appeal Br. 19.) According to the Appellant, if the Examiner’s use of the term “humeral surface component” is meant “to suggest that element 24 is implanted on the humerus,” this “is not accurate.” (Id. at 19–20.) The Appellant appears to be asserting that the recitation of a “humeral implant” requires the actual “implantation” of the claimed component on a humeral head. (See Reply Br. 5.) We are not persuaded by this argument because independent claim 5 does not require the actual implantation of the claimed component on a humeral head. Such an interpretation would not be not be consistent with the Specification, which conveys that a structure is considered an “implant” prior to its implantation in a patient’s body. For example, the Specification calls the device a “humeral implant” prior to its insertion into the patient’s shoulder. (See e.g., Spec. ¶¶ 113, 118, 120.) Accordingly, while the Appellant may be correct that Leonard does not disclose using platen 24 as a humeral implant, the absence of such disclosure does not defeat a finding of anticipation. To avoid anticipation, an apparatus claim (i.e., independent claim 5) must be distinguished from the prior art in terms of structure. “If the prior art structure is capable of Appeal 2014-003518 Application 13/068,309 7 performing the intended use [i.e., serving as a humeral implant], then it meets the claim.” (Answer 10.)4 The Appellant argues that the Examiner is saying “that the non- articulating side of [Leonard’s platen 24], the side with the ‘portion 40’ [i.e., the glenoid side] is capable of being affixed to the head of a humerus.” (Reply Br. 8.) However, the Examiner states that “it is common knowledge to surgeons, that if a diseased or deteriorating head needs to be resurfaced, it can be prepared as such as the humerus head shown for the humeral surface component (24) is able to replace that section of the head removed in the embodiment shown in Fig. 4D of Leonard.” (Answer 13.) Thus, we understand the Examiner to be saying that the humeral-side of Leonard’s platen 24 is configured for (i.e., capable of) long-lasting fixation on the removed section of humeral head 12.5 The Appellant argues that the concept of Leonard’s platen 24 having a side capable of fixation on humeral head “is speculative and has no record support in this application.” (Reply Br. 8.) However, the Examiner explains that Leonard shows that “[s]crews and cements are well known means” that 4 See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In Schreiber, the Appellant argued that its claim called for a dispensing top that could dispense popcorn from an open-ended popcorn container, and the prior art reference did not disclose that its dispensing top could do so. Id. at 1477. The Federal Circuit held that “[a]lthough Schreiber is correct that [the prior art reference] did not address the use of the disclosed structure to dispense popcorn,” the absence of such disclosure “does not defeat” a finding of anticipation. Id. 5 That being said, it appears that a humeral head could instead be resurfaced into a shape complementary to that of the glenoid side of Leonard’s platen 24. (See e.g., Leonard Figs. 4A, 4B, and 4E.) Appeal 2014-003518 Application 13/068,309 8 can be used to “fix” a component on a surface of bone. (Answer 14.) The Appellant does not adequately address why Leonard’s platen 24 is not capable of being affixed (e.g., via cement) to a humeral head with complementary resurfacing. We agree with the Appellant that the recital of “configured for long-lasting fixation” may impose structural limitations (see Appeal Br. 22) but, due to the breadth of independent claim 5, Leonard meets such structural limitations. “[I]f someone such as a surgeon or orthopedic doctor desired to use bone cement and secure the implant to the bone, it is capable of being done and would establish the implant as ‘long- lasting.’” (Final Action 2.) The Appellant argues that Leonard’ platen 24 has “feet” which are “grasped by the rest of the glenoid mounting members to fix element 24 in the glenoid.” (Appeal Br. 19.) Again, while this may augment the Appellant’s position that Leonard does not disclose using platen 24 as a humeral implant, it does not distinguish the prior art in terms of structure. The Appellant does not, for example, assert that these feet somehow render Leonard’s platen 24 structurally incapable of performing as a humeral implant and/or humeral surface component. Independent claim 5 also recites that the humeral surface component has “no stem.” (Claims App.) The Appellant argues that, in all of Leonard’s drawings, “there is a stem.” (Appeal Br. 19.) As discussed above, Leonard does indeed show that platen 24 is connected to a base 20 having a stem 54. (See e.g., Leonard Fig. 1.) However, as explained by the Examiner, independent claim 5 only requires the humeral surface component (i.e., platen 24) to not have a stem. (See Answer 10–11.) Independent claim 5 does not preclude the humeral implant from having another component with Appeal 2014-003518 Application 13/068,309 9 a stem and/or preclude the humeral implant from being used in conjunction with another humeral implant (or other separate element) having a stem. More succinctly, as discussed above in our indefiniteness analysis, independent claim 5 is broad enough to cover a stem-less implant structure with a surface requiring fixation elements (e.g., screws and/or cement) for long-lasting fixation of the implant on a humeral head. The Examiner finds that Leonard’s platen 24 is a stem-less implant structure having such a surface (see Final Action 2–3, 5; Answer 10–14); and the Appellant’s arguments do not address why this finding by the Examiner is flawed (see Appeal Br. 19–22; Reply Br. 5–8). Thus, we sustain the Examiner’s rejection of independent claim 5 under 35 U.S.C. § 102(b) as anticipated by Leonard. Rejections III–VII Claims 6–15 depend from independent claim 5 and recite additional features of the humeral surface component, and particularly its non- articular surface. (See Claims App.) The Examiner determines that the humeral implants recited in the dependent claims would have been obvious over Leonard in combination with other prior art references. (See Final Action 5–7.) As discussed above, Leonard’s failure to teach using platen 24 as a humeral implant and/or as a humeral surface component does not defeat an anticipation rejection. But this non-teaching could factor into whether it would have been obvious to incorporate features of the humeral surface component shown in the secondary references into Leonard’s platen 24. Here, however, the Appellant argues only that Leonard’s component “has a stem to hold it in place, the Examiner has already held that such a Appeal 2014-003518 Application 13/068,309 10 construction is ‘patentably distinct.’” (Appeal Br. 22.) As discussed in our analysis above, Leonard’s component 24 does not have a stem, as the illustrated stem 54 is part of a separate base component 20. (See e.g., Leonard Fig. 1.) As such, we are not persuaded by the Appellant’s position that the Examiner errs in determining that humeral implant recited in dependent claims 6–15 would not have been obvious over the prior art. Thus, we sustain the Examiner’s rejections of claims 6–15 under 35 U.S.C. § 103(a) as unpatentable over Leonard in view of Cyprien, Arcand Winslow, Wiley, or Maroney. DECISION We REVERSE the Examiner’s rejection of claims 5–15 under 35 U.S.C. §112. We AFFIRM the Examiner’s rejections of claims 5–15 under 35 U.S.C. §102 and §103. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED