Ex Parte De Wilde et alDownload PDFPatent Trial and Appeal BoardMar 26, 201814027907 (P.T.A.B. Mar. 26, 2018) Copy Citation 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 2 Appeal2017-003374 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. 3 Appeal2017-003374 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: 4 Appeal2017-003374 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. 5 Appeal2017-003374 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, 6 Appeal2017-003374 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. 7 Appeal2017-003374 Application 14/027 ,907 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 8 Appeal2017-003374 Application 14/027 ,907 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) 9 Copy with citationCopy as parenthetical citation