Ex Parte DEES et al

Patent Trial and Appeal Board

May 16, 2017

12944124 (P.T.A.B. May. 16, 2017)

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.
12/944,124 11/11/2010 ROGER RYAN DEES JR. 21329-0054002/PT2946USDIV 5127
26170 7590 05/18/2017
Smith & Nephew, Inc.
Sabrina Chambers
1450 Brooks Road
Memphis, TN 38116
EXAMINER
HOB AN, MELISSA A
ART UNIT PAPER NUMBER
3738
NOTIFICATION DATE DELIVERY MODE
05/18/2017 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):
Patents.Dept.US@smith-nephew.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROGER RYAN DEES, JR. and JASON JORDAN
Appeal 2014-002098
Application 12/944,1241
Technology Center 3700
Before HUBERT C. LORIN, BART A. GERSTENBLITH, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
GERSTENBLITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Roger Ryan Dees, Jr. and Jason Jordan (“Appellants”) appeal under
35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 59—62 and
64.2 We have jurisdiction under 35 U.S.C. § 6(b).
Claimed Subject Matter
Claim 59, the sole independent claim on appeal, is representative of
the claimed subject matter and reproduced below.
1 Appellants identify “Smith & Nephew, Inc.” as the real party in interest.
Appeal Br. 1.
2 Claims 59—64 are pending. Final Act. 1 (mailed Sept. 18, 2012).
Claim 63 was withdrawn. Id.
Appeal 2014-002098
Application 12/944,124
59. A method of preparing a distal femur for receipt of a
femoral member, the femoral member including an anterior
portion comprising an anterior medial articulating surface, an
anterior lateral articulating surface, and an anterior
patellofemoral portion, the anterior portion having a distal edge
and a lateral margin; a posterior medial condylar portion
comprising a posterior medial articulating surface; and a
transition edge extending laterally from the distal edge of the
anterior portion to the lateral margin of the anterior portion in
an anterior direction,
the method comprising:
placing a guide on the distal femur, the guide including a
transition guide surface corresponding to the transition edge of
the femoral member;
using the transition guide surface to locate on the femur
the position of the transition edge of the femoral member; and
cutting bone to receive the transition edge of the femoral
member.
Appeal Br. 11, Claims App.
Rejections
Appellants seek review of the following rejections:
I. Claims 59-62 and 64 are rejected under 35 U.S.C. § 102(b) as
anticipated by McGinley (US 2005/0149041 Al, pub. July 7, 2005) as
evidenced by Dennis (US 6,325,828 Bl, iss. Dec. 4, 2001);
II. Claims 59-62 and 64 are rejected under 35 U.S.C. § 103(a) as
unpatentable over McGinley and Wood (US 2005/0043807 Al, pub.
Feb. 24, 2005).
SUMMARY OF DECISION
We REVERSE.
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Appeal 2014-002098
Application 12/944,124
ANALYSIS
Rejection I
The Examiner finds McGinley discloses “placing a guide on the distal
femur and cutting bone to receive a femoral member.” Final Act. 6 (mailed
Sept. 18, 2012). The Examiner relies upon Dennis as evidence that the
femoral member of McGinley inherently includes a “transition edge
extending laterally from the distal edge of the anterior portion to the lateral
margin of the anterior portion in an anterior direction.” Id. at 7—8; see also
Ans. 2.
Appellants assert that the transition edge of Dennis “extends medially
from the distal edge of the anterior portion to the lateral margin of the
anterior portion in an anterior direction” (emphasis added) rather than
extending laterally as claimed. Appeal Br. 5. Appellants include annotated
versions of Figures 1 and 2 of Dennis to identify the alleged transition edge
and the directional components. Id. at 4—5.
In the Answer, the Examiner contends that “the femoral component
inherently includes a border along the lateral region that necessarily
constitutes a transition edge extending in a direction that includes a lateral
component.” Ans. 2—3 (further annotating Appellants’ annotated version of
Figure 1 of Dennis).
We have reviewed the annotated versions of Dennis’s figures and find
that the Examiner has not established by a preponderance of the evidence
that Dennis includes the claimed transition edge. See id. at 4—5 (including
Appellants’ annotated versions of Figures 1 and 2 of Dennis). In light of our
conclusion regarding Dennis, we similarly find that the Examiner has not
established by a preponderance of the evidence that McGinley inherently
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Appeal 2014-002098
Application 12/944,124
includes the claimed transition edge. Accordingly, we do not sustain
Rejection I.
Rejection II
The Examiner alternatively relies upon Wood to teach a femoral
component having “an anterior portion having a distal edge and lateral
margin, as well as a transition edge extending laterally from the distal edge
of the anterior portion to the lateral margin of the anterior portion in an
anterior direction.” Final Act. 8—9. The Examiner finds:
It would have been obvious to modify the femoral
component of McGinley, as evidenced by Dennis, to include
that the anterior portion has a distal edge and a lateral margin,
as well as a transition edge extending laterally from the distal
edge of the anterior portion to the lateral margin of the anterior
portion in an anterior direction, in order to ensure a smooth
transition between the retained femoral condyle and the
prosthesis, as taught by Wood.
Id. at 9. The Examiner also finds that one of ordinary skill in the art would
have “include[d] a transition guide surface on the guide of McGinley and
use[d] it to locate the position of the transition edge of the femoral
component of Wood.” Id.
Appellants raise several arguments in response to the Examiner’s
proposed combination of McGinley and Wood (Appeal Br. 6—10), including
that Wood does not support the Examiner’s reason to combine {id. at 8). In
particular, Appellants acknowledge Wood’s teaching that “[c]are must be
exercised to ensure a smooth transition between the retained femoral
condyle and the prosthesis,” but Appellants contend that Wood’s statement
“does not provide a reason to modify the femoral component of
McGinley ... in the manner proposed by the Examiner.” Id. Appellants
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Appeal 2014-002098
Application 12/944,124
explain that Wood “may reasonably be referring to any number of factors
that might affect transition smoothness, including, for example, implant size,
implant position, cementing technique, and so on.” Id.
In the Examiner’s Answer, the Examiner “takes the position that, in
order to achieve the proper preparation of surfaces, as taught by McGinley,
one of ordinary skill in the art would recognize that the surfaces of the
guiding component necessarily match the surfaces of the femoral
component.” Ans. 3^4.
Claim 59 recites that the guide surface “correspond[s] to the transition
edge of the femoral member.” Appeal Br. 11, Claims App. We agree with
the Examiner that the combination of McGinley and Wood meets this
limitation of claim 59.
The Examiner also takes the position that Wood discloses a femoral
component having a transition edge that satisfies the limitations of claim 59.
Ans. 4. The Examiner’s finding regarding Wood is supported by a
preponderance of the evidence. See id. (annotating Wood’s Figure 2 to
identify the transition edge).
Additionally, the Examiner reiterates the finding that one would have
been prompted to modify the femoral component of McGinley to include
Wood’s transition edge to ensure a smooth transition between the retained
femoral condyle and the prosthesis, “as taught by Wood.” Id.
Wood teaches that “[c]are must be exercised to ensure a smooth
transition between the retained femoral condyle and the prosthesis.” Wood
119. But, the Examiner does not identify where Wood attributes this
smooth transition to the specific transition edge employed, including a
transition edge that “extend[s] laterally from the distal edge of the anterior
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Application 12/944,124
portion to eh lateral margin of the anterior portion in an anterior direction,”
as recited in claim 59. Thus, Wood does not support explicitly the
Examiner’s finding regarding why one of ordinary skill in the art allegedly
would have been prompted to modify McGinley. As the Examiner relied
solely on Wood, the Examiner’s finding is not supported by a preponderance
of evidence on the record before us.
Accordingly, we do not sustain Rejection II.
DECISION
We reverse the Examiner’s decision rejecting claims 59—62 and 64.
REVERSED
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