Ex Parte De Wilde et al

Patent Trial and Appeal Board

Mar 26, 2018

14027907 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/027,907 09/16/2013
28078 7590 03/26/2018
MAGINOT, MOORE & BECK, LLP
One Indiana Square, Suite 2200
INDIANAPOLIS, IN 46204
FIRST NAMED INVENTOR
Lieven De Wilde
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.
1671-0482DIV1 1972
EXAMINER
WATKINS, MARCIAL YNN
ART UNIT PAPER NUMBER
3774
MAILDATE DELIVERY MODE
03/26/2018 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 LIEVEN DE WILDE and KYLE LAPPIN 1
Appeal2017-003374
Application 14/027,907
Technology Center 3700
Before ERIC B. GRIMES, JOHN G. NEW, and TIMOTHY G. MAJORS,
Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of replacing a component of a shoulder prosthesis, which have been rejected
as obvious. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse and enter a new ground of rejection.
STATEMENT OF THE CASE
"[A] typical shoulder or glenohumeral joint is formed in a human
body where the humerus ... movably contacts the scapula. . . . The scapula
... includes a glenoid fossa ... that forms a socket against which the head
1 Appellants identify the Real Party in Interest as DePuy Synthes Products,
Inc. (Appeal Br. 2.)
Appeal2017-003374
Application 14/027 ,907
of the humerus ... articulates." (Specification. i-f 2.) "Shoulder arthroplasty
often involves replacement of the glenoid fossa of the scapula with a
prosthetic glenoid component." (Id. i-f 3.) "Arthroplasty is the surgical
replacement of one or more bone structures of a joint with one or more
prostheses." (Id. i-f 2.)
"Over time, implanted glenoid components can become loosened."
(Id. i-f 6.) The Specification discloses "a method of implanting a revision
glenoid component." (Id. i-f 9.)
Claims 1-20 are on appeal. Claims 1 and 12 are the independent
claims and read as follows (emphasis added):
1. A method of implanting a revision glenoid component comprising:
accessing a previously implanted glenoid component in a scapula;
removing the previously implanted glenoid component;
identifj;ing an inferior glenoid circle center of the scapula by
identifying an inferior point of a glenoid rim, identifj;ing an anterior point of
the glenoid rim, identifj;ing a posterior point of the glenoid rim, and
establishing a best fit circle based upon the identified inferior point, the
identified anterior point, and the identified posterior point;
preparing a glenoid fossa of the scapula to receive a revision glenoid
component;
selecting a revision glenoid component; and
implanting the selected revision glenoid component based upon the
identified inferior glenoid circle center in the prepared glenoid fossa.
12. A method of implanting a revision glenoid component comprising:
obtaining an image of a scapula;
identifj;ing an inferior glenoid circle center of the scapula based upon
the image by identifying an inferior point of a glenoid rim, identifying an
anterior point of the glenoid rim, identifj;ing a posterior point of the glenoid
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Application 14/027 ,907
rim, and establishing a best fit circle based upon the identified inferior
point, the identified anterior point, and the identified posterior point;
selecting a revision glenoid component;
removing a previously implanted glenoid component from the
scapula;
preparing a glenoid fossa of the scapula to receive a prosthesis; and
implanting the selected revision glenoid component in the prepared
glenoid fossa based upon the identified inferior glenoid circle center.
App. Br. 26, 28-29 (Claims Appendix).
The claims stand rejected as follows:
Claims 1, 2, 9-13, and 18-20 under 35 U.S.C. § 103(a) as obvious
based on Middemacht2 and Piasecki3 (Non-Final Action 4);
Claims 3, 4, 7, 8, 14, and 15 under 35 U.S.C. § 103(a) as obvious
based on Middemacht, Piasecki, and Shah4 (Non-Final Action 9); and
Claims 5, 6, 16, and 17 under 35 U.S.C. § 103(a) as obvious based on
Middemacht, Piasecki, Shah, and Maisonneuve5 (Non-Final Action 4).
2 Middemacht et al., Consequences of Scapular Anatomy for Reversed Total
Shoulder Arthroplasty, 466 CLIN. 0RTHOP. RELAT. RES. 1410-1418 (2008).
3 Piasecki et al., Glenoid Bone Deficiency in Recurrent Anterior Shoulder
Instability: Diagnosis and Management, 17 J. AM. AcAD. ORTHOP. SURG.
482--493 (2009).
4 Shah, US 6,010,535, issued Jan. 4, 2000.
5 Maisonneuve et al., US 2009/0270993 Al, published Oct. 29, 2009.
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Application 14/027 ,907
DISCUSSION
The Examiner has rejected all of the claims on appeal as obvious
based on Middemacht and Piasecki, combined with respect to some of the
claims with Shah or Shah and Maisonneuve. We reverse these rejections on
procedural grounds because we conclude the claim language is indefinite,
for the reasons discussed in the new ground of rejection below. See In re
Steele, 305 F.2d 859, 862 (CCPA 1962). It should be understood, however,
that the reversal is not based on the merits of the§ 103(a) rejections. Should
the indefiniteness issue be resolved, the cited references are available as
prior art if the Examiner decides later in prosecution that they support a
rejection of the claims.
NEW GROUND OF REJECTION
Under the provisions of 37 C.F.R. § 41.50(b ), we enter the following
new ground of rejection:
Claims 1-20 are rejected under 35 U.S.C. § 112, second paragraph, as
indefinite. All of the claims depend from either claim 1 or claim 12, both of
which recite "identifying an inferior glenoid circle center of the scapula by
identifying an inferior point of a glenoid rim, identifying an anterior point of
the glenoid rim, identifying a posterior point of the glenoid rim, and
establishing a best fit circle based upon the identified inferior point, the
identified anterior point, and the identified posterior point."
The Specification states that "[i]n known systems, the glenoid
component is positioned in the geometric center of the glenoid fossa."
Spec. i-f 5 (emphasis added). The Specification's Figure 2 is reproduced
below:
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Application 14/027 ,907
"FIG. 2 depicts a sagittal view of the scapula 12." Id. The
Specification states that,
[i]n FIG. 2, Saller's line 30 extends between the most superior
point 32 of the glenoid rim 24 and the most inferior point 34 of
the glenoid rim 24. A second line 36 extends from the most
posterior point 3 8 of the glenoid rim 24 and the most anterior
point 40 of the glenoid rim. The geometric center 42 of the
glenoid fossa 14 is located at the intersection of the line 3 6 and
Saller' s line 30.
Id. (emphasis added).
Regarding identifying an inferior glenoid circle center, as recited in
the claims, the Specification states: "the center of an inferior glenoid circle,
further described in co-pending U.S. Patent Application No. 13/051,011, is
identified for the scapula." Spec. i-f 41. The '011 application issued as U.S.
Patent 8,764,836 B2 on July 1, 2014.
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Application 14/027 ,907
The '836 patent states that "the center of an inferior glenoid circle,
further described below, is identified for the scapula." '836 patent 4:21-22.
The '83 6 patent also states that "[ o ]nee a sagittal view of the scapula 12 is
obtained ... , the inferior point 34, the posterior point 38, and the anterior
point 40 may be identified (see FIG. 2)." Id. at 4:20-52. Figure 2 of the
'83 6 patent is identical to Figure 2 of the Specification, reproduced above.
The '836 patent states that "[t]hen, a best fit circle defined by the
inferior point 34, the posterior point 38, and the anterior point 40 is
identified. The best fit circle is the inferior glenoid circle, such as inferior
glenoid circle 156 depicted in FIG. 7." Id. at 4:53-56. Figure 7 of the '836
patent is reproduced below:
"FIG. 7 depicts the sagittal view of the shoulder joint of FIG. 2 with
different coordinate systems defined thereon." Id. at 3:21-22. The '836
patent states that "[ o ]nee the best fit inferior glenoid circle 156 is identified,
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Application 14/027 ,907
the center 158 of the inferior glenoid circle 156 is defined. As shown in
FIG. 7, the center 158 of the inferior glenoid circle 156 is located inferiorly
and posteriorly to the geometric center 42." Id. at 4:55---60.
Figure 7 of the '836 patent does show point 158, which is located
inferiorly and posteriorly to point 42. And point 158 does appear to be the
center of circle 156, which passes through inferior point 34, posterior point
38, and anterior point 40 (which is labeled 42 but that appears to be a
typographical error, given the previous descriptions of "anterior point 40"
and "geometric center 42"; id. at 2:25, 4:54).
However, points 38 and 40 ("42") do not correspond to the points 38
and 40 that are used in "known systems" because they are not on glenoid rim
24; they are shown as being outside the glenoid rim. Compare Figures 2 and
7, above. See also the '836 patent at 2:23-27 ("A second line 36 extends
from the most posterior point 38 of the glenoid rim 24 and the most anterior
point 40 of the glenoid rim. The geometric center 42 of the glenoid fossa 14
is located at the intersection of the line 36 and Saller's line 30.").
Thus, it is unclear from the description provided by the '83 6 patent
whether the inferior glenoid circle center is determined based on the three
points on the glenoid rim that are used in known systems, as points 34, 38,
and 40 are described with reference to Figure 2, or whether only one of those
points (34) is used, along with two points (38 and 40) that are not on the
glenoid rim. If the latter method is used to determine the inferior glenoid
circle center, the '836 patent provides no guidance on what criteria are used
to determine the locations of points 38 and 40.
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Because the instant application provides no additional guidance
beyond what is provided in the '83 6 patent, and the '83 6 patent is unclear on
which points, at which locations, are used to identify the inferior glenoid
circle center, it is unclear what is required by the claimed step of
"identifying an inferior glenoid circle center of the scapula by identifying an
inferior point of a glenoid rim, identifying an anterior point of the glenoid
rim, identifying a posterior point of the glenoid rim, and establishing a best
fit circle based upon the identified inferior point, the identified anterior
point, and the identified posterior point." Therefore, the scope of the claims
is unclear, and the claims are indefinite under 35 U.S.C. § 112, second
paragraph.
SUMMARY
We enter a new ground of rejection of claims 1-20 on the basis of
indefiniteness.
We reverse the Examiner's obviousness rejections of claims 1-20 on
procedural grounds because we conclude the claim language is indefinite,
for the reasons discussed in the new ground of rejection. As noted above,
should the indefiniteness issue be resolved, the references cited in the
§ 103(a) rejections are available as prior art ifthe Examiner decides later in
prosecution that they support a rejection of the claims.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of
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rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
REVERSED; 37 C.F.R. § 41.50(b)
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