Ex Parte Desa

Patent Trial and Appeal Board

Mar 21, 2017

13606758 (P.T.A.B. Mar. 21, 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.
13/606,758 09/07/2012 Jonathan Desa 10132.0001USU1 4922
44305 7590
WITHERS & KEYS, LLC
P. O. BOX 2049
MCDONOUGH, GA 30253
EXAMINER
WATKINS, MARCIA LYNN
ART UNIT PAPER NUMBER
3774
MAIL DATE DELIVERY MODE
03/21/2017 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 JONATHAN DESA
Appeal 2015-0053021
Application 13/606,75 82
Technology Center 3700
Before MURRIEL E. CRAWFORD, KENNETH G. SCHOPFER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1—
13 and 22—25. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision considers Appellant’s Appeal Brief (“Appeal Br.,” filed Nov.
5, 2014) and Reply Brief (“Reply Br.,” filed Apr. 13, 2015), as well as the
Examiner’s Non-Final Office Action (“Non-Final Act.,” mailed Aug. 1,
2014) and Answer (“Ans.,” mailed Feb. 13, 2015).
2 Appellant identifies Jonathan Desa as the real party in interest. Appeal
Br. 3.
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CLAIMED SUBJECT MATTER
The claimed invention “relates to implants and methods of making
and using implants.” Spec. I.3 Claims 1, 22, and 23 are the independent
claims on appeal. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. An interphalangeal joint replacement implant comprising:
a proximal component comprising:
a cylindrically-shaped base shell member having a
cylindrically-shaped shell inner surface, a shell outer surface
opposite said cylindrically-shaped shell inner surface, a base
shell member thickness separating said cylindrically-shaped
shell inner surface from said shell outer surface, a shell member
leading end extending between said cylindrically-shaped shell
inner surface and said shell outer surface, a shell member trailing
end extending between said cylindrically-shaped shell inner
surface and said shell outer surface and being opposite said shell
member leading end, and a shell arch of curvature extending
along said cylindrically-shaped shell inner surface, said shell
arch of curvature having a shell arch angle of greater than 180°;
and
a proximal component stem integrally connected to
and extending outwardly from said shell outer surface of said
cylindrically-shaped base shell member;
a distal component comprising:
a cylindrical base head member having a cylindrical
head outer surface, two opposite head side surfaces separated
from one another by said cylindrical head outer surface, and a
head arch of curvature extending along said cylindrical head
outer surface, said head arch of curvature having a head arch
angle of 360°, said cylindrical base head member being sized and
operatively adapted to be positioned within said cylindrically-
shaped base shell member; and
tion does not provide line or paragraph numbering.
Accordingly, we refer to the Specification by page number only.
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a single distal component stem integrally connected
to and extending outwardly and directly from said cylindrical
head outer surface of said cylindrical base head member; and
a cup component sized and operatively adapted to be
positioned between (i) said cylindrically-shaped shell inner
surface of said proximal component and (ii) said cylindrical head
outer surface of said distal component, said cup component
having a cylindrically-shaped cup inner surface, a cylindrically-
shaped cup outer surface opposite said cylindrically-shaped cup
inner surface, a cup thickness separating said cylindrically-
shaped cup inner surface from said cylindrically-shaped cup
outer surface, a cup leading end extending between said
cylindrically-shaped cup inner surface and said cylindrically-
shaped cup outer surface, a cup trailing end extending between
said cylindrically-shaped cup inner surface and said
cylindrically-shaped cup outer surface and being opposite said
cup leading end, and a cup arch of curvature extending along said
cylindrically-shaped cup inner surface, said cup arch of curvature
having a cup arch angle of greater than 180°,
said interphalangeal joint replacement implant being sized
so as to (i) be implantable within a finger or toe of a patient, and
(ii) replace a joint between phalanges of the finger or toe.
REJECTIONS
Claims 1, 2, 5—7, 13, 22, 24, and 25 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Devas (US 3,651,521, iss. Mar. 28,
1972) and Schlein (US 3,816,854, iss. June 18, 1974).
Claims 3, 4, 8, 9, and 23 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Devas, Schlein, and Steffee (US 4,011,603, iss.
Mar. 15, 1977).
Claims 10-12 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Devas, Schlein, and Justin (US 2011/0208304 Al, pub.
Aug. 25,2011).
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ANALYSIS
Obviousness based on Devas and Schlein
Independent claim 1 and dependent claims 2, 5—7, and 13
The Examiner finds that Devas’ female and male components teach
the claimed proximal and distal components, respectively, and that Schlein’s
bearing 18 teaches the claimed cup component. Non-Final Act. 2—A.
According to the Examiner, it would have been obvious to combine the
teachings of Devas and Schlein “to provide a replacement cup component
that allows for reduced debris during wear of the component in accordance
with well-known principles in the bone prosthetic art.” Id. at 4.
Appellant makes several arguments challenging the reason for
combining the teachings of Devas of Schlein. Appeal Br. 15—18; Reply
Br. 1—6. Appellant’s arguments do not apprise us of error in the Examiner’s
combination. Put simply, the Examiner’s reason for combining the
teachings of Devas and Schlein is found in Schlein, and Schlein explicitly
teaches that a low-friction bearing between the components of a prosthetic
joint improves conventional prostheses by substantially eliminating the
possibility of foreign particles being dispersed into the surrounding tissue.
Schlein 2:38—42. A person of ordinary skill in the art would appreciate that
Schlein’s teaching regarding the use of a bearing to reduce wear and debris
in a joint prosthesis would similarly benefit the prosthesis disclosed in
Devas. SeeKSRInt’l Co. v. Teleflex Inc., 550 IJ.S. 398, 417 (2007) (“if a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
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beyond Ids or her skill”). Nonetheless, we address Appellant’s specific
arguments for emphasis only.
Appellant argues that the Examiner’s reason for combining the
teachings of Devas and Schlein, i.e., “to provide a replacement cup
component that allows for reduced debris during wear of the component”
(Non-Final Act. 4), is lacking because Devas does not suggest that the
disclosed male and female components of the joint prosthesis produce any
debris during wear. Appeal Br. 15; Reply Br. 2—3. Appellant further
contends that Devas’ prosthesis is different from the conventional prostheses
discussed in Schlein, which are known to create metallic debris during wear.
Appeal Br. 15 (citing Schlein 1:54—68). Although we agree with Appellant
that cited references do not explicitly teach that the components of Devas’
device suffer from wear, the Examiner found, and we agree, that joint
prostheses are generally known, over the course of the lifespan of a patient,
to be subject to wear. Ans. 3; see also In re Jacoby, 309 F.2d 513,516
(CCPA 1962) (explaining that persons skilled in the art “must be presumed
to know something” about the art “apart from what the references
disclose.”).
Appellant also contends that if one skilled in the art were concerned
about wear of either component of Devas’ device, one skilled in the art
would consider replacing either or both components. Reply Br. 3. This
argument is not persuasive because it is attorney argument and not supported
by evidence. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(“Attorney’s argument in a brief cannot take the place of evidence.”)
(citation omitted).
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Appellant further argues that Devas teaches away from the claimed
three-component joint implant because Devas discloses a simple, two-
component joint. Appeal Br. 15 (citing Devas 1:34—50, Figs. 1, 2); Reply
Br. 4. Although Devas does disclose that conventional prostheses “have
been unduly complex” (Devas 1:7—8) and that “[a]n object of the present
invention is to provide a simplified prosthesis” {id. at 1:14—15), Appellant
does not point to any disclosure in Devas that “criticize[s], discredits], or
otherwise discourage[s]” the use of a bearing. In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). Furthermore, the fact that the motivating benefit
comes at the expense of another benefit should not nullify its use as a basis
to modify the disclosure of one reference with the teachings of another, but
rather, the benefits both lost and gained, should be weighed against one and
another. WinnerInt’lRoyalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8
(Fed. Cir. 2000). One of ordinary skill in the art would appreciate the
relative advantages and disadvantages to adding Schlein’s bearing to Devas’
prosthesis, and the Examiner did not err in finding that one of ordinary skill
would have elected the benefit of reduced wear and debris over simplicity.
Appellant additionally argues that the Examiner’s reasoning for
combining the teachings of Devas and Schlein does not explain how the
combination would result in “a single distal component stem integrally
connected to and extending outwardly and directly from said cylindrical
head outer surface of said cylindrical base head member,” as recited in
claim 1. Appeal Br. 16; Reply Br. 3. According to Appellant, the teachings
of Schlein would have guided one of ordinary skill in the art to use Schlein’s
U-shaped stem 12, which has U-shaped member 20 and pin 22, not a stem
integrally connected to and extending from a cylindrical head portion.
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Appeal Br. 16; Reply Br. 3. Appellant’s arguments are misplaced and do
not address the Examiner’s rejection. The Examiner is not relying on
Schlein, but rather on Devas’ male component for teaching the claimed
distal component including the integral component stem. Non-Final Act. 3.
Moreover, the test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of a primary
reference, but rather the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art. In re
Keller, 642 F.3d at 413, 425 (CCPA 1981); see also KSR, 550 U.S. 398 at
421 (“[a] person of ordinary skill is also a person of ordinary creativity, not
an automaton”).
Appellant further contends:
the teaching of Devas, directed to a simple two-component
prosthetic joint, alone or in combination with the general state
of the art, fails to provide any reason that would have lead one
skilled in the art to (1) seek out the teaching of Schlein directed
to a three component elbow joint, (2) subsequently modify the
two-component prosthetic joint of Devas so as to incorporate a
third component between the male and female engaging
components of Devas’ prosthetic joint, and (3) somehow utilize
“a single distal component stem integrally connected to and
extending outwardly and directly from said cylindrical head
outer surface of said cylindrical base head member” instead of
Schlein’s disclosed U-shaped member 20.
Appeal Br. 17—18; Reply Br. 3^4.
Appellant’s arguments are misplaced because the Examiner is not
relying on Devas to provide a motivation for combining the teachings of
Devas and Schlein. Rather, the Examiner determines that one of ordinary
skill would have combined the teachings of Devas and Schlein “to provide a
replacement cup component that allows for reduced debris during wear of
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the component in accordance with well-known principles in the bone
prosthetic art,” as disclosed in Schlein. Non-Final Act. 4; Schlein 1:54—67,
2:38-47.
Appellant further argues that the only guidance to select and combine
the teachings of Devas and Schlein is from Appellant’s Specification, not the
art of record or the general state of the art. Appeal Br. 18; Reply Br. 6.
’s argument is misguided because the Examiner’s reason for
gs Devas and Schlein, i.e. to provide a replacement
cup component that allows for reduced debris during wear of the component
(Non-Final Act. 4), finds support in Schlein. Schlein 1:54—67, 2:38—47.
In view of the foregoing, Appellant’s arguments do not apprise us of
error in the Examiner’s finding that Schlein’s teaching of the use of a
bearing to reduce wear and debris would have motivated one of ordinary
skill in the art to combine the teachings of Devas and Schlein so as to result
in the claimed invention.4 We sustain the rejection of independent claim 1,
as well as the rejection of dependent claims 2, 5—7, and 13, which Appellant
does not separately argue (Appeal Br. 18).
Independent claims 22 and 25 dependent claim 24
Each of independent claims 22 and 25 recites “said cup component
being replaceable during a surgical procedure while said proximal
component and said distal component are attached to first and second
phalangeal bones of the finger or toe of the patient.” Appeal Br., Claims
4 Appellant also challenges (Reply Br. 4—5) the Examiner’s clarified reason
for combining the teachings of Devas and Schlein (Ans. 2—3). We need not
address these arguments because we see no error in the Examiner’s reason
set forth in the rejection (Non-Final Act. 4).
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App. Aside from relying on the same arguments as independent claim 1 (id.
at 19; Reply Br. 6—7), which are not persuasive for the reasons discussed
above, Appellant asserts that the prior art teaches away from a replaceable
cup component (Appeal Br. 19-20). According to Appellant, Schlein does
not teach that bearing 18 is removed and replaced during a surgical
procedure. Id. at 20. Appellant further contends that bearing 18 would not
be replaceable during surgery “given (i) the restrictive movement of bearing
member 18 within U-shaped member 20, (ii) the ‘snapped on’ connection to
bearing pin 22 of ulnar stem 12, and (iii) the presence of multiple
protuberances 16a along an inner surface of partial cylinder 16.” Id.', see
also Reply Br. 7—8.
We disagree with Appellant that Schlein “criticize[s], discredits], or
otherwise discourage[s]” a replaceable bearing so as to teach away from that
feature. Fulton, 391 F.3d at 1201. Schlein teaches that bearing 18 is press
fit into cylinder 16 of humeral stem 10, and bearing pin 22 of ulnar stem 12
is snapped into slot 18c of bearing 18 with relatively little force. Schlein
3:46—51, 4:2—5, 5:9-13. Given that the bearing is not permanently secured
to the humeral and ulnar stems, one of ordinary skill in the art would
understand that the bearing is capable of being replaced during surgery
without having to remove the stems from a patient’s bones.
In view of the foregoing, we sustain the rejection of independent
claims 22 and 25. We also sustain the rejection of dependent claims 24,
which Appellant does not separately argue (Appeal Br. 20).
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Obviousness based on Devas, Schlein, and Steffee
Claims 3 and 4
Claim 3 recites “wherein said shell arch of curvature comprises a shell
arch angle of about 250°.” Appeal Br., Claims App. Appellant argues that
the cited passage of Steffee does not recite the specific shell arch angle
recited in claim 3. Appeal Br. 22 (referencing Steffee 3:39-44). In the
Answer, the Examiner explains that the cited passage of Steffee teaches the
claimed shell arch angle because “based on observation of figure 4 and the
[cited passage], it is clear that a range of motion of up to 90[]degrees
requires a shell arch angle and cup arch angle, respectively, to form this
limited range of motion.” Ans. 7. Appellant does not address this finding.
Reply Br. 8.
Moreover, regardless of whether Steffee expressly discloses the
claimed shell arch angle, the Examiner also finds that Steffee teaches that
shell arch angle is a result effective variable that is adapted based on the
anatomical configurations of a patient’s joint. Non-Final Act. 7; Ans. 7.
According to the Examiner, it would have been obvious to make the shell
arch angle about 250° to suit a particular patient’s joint. Non-Final Act. 7—8.
Appellant does not address the Examiner’s determination of obviousness
based on shell arch angle being a result effective variable, and, thus,
Appellant does not apprise us of Examiner error.
Appellant further contends that the prior art teaches away from the
claimed invention and that a person of ordinary skill in the art would not
have been motivated to combine the teachings of Devas of Schlein with the
teachings of Steffee. Appeal Br. 22—23; Reply Br. 8. According to
Appellant, Devas and Schlein restrict the shell arch angle of the respective
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socket to maximize range of motion within the joint, whereas Steffee
discloses a finger joint implant having a limited range of motion (i.e., larger
shell arch angle). Id. at 23 (citing Devas 1:46—60; Steffee 3:40-44).
Appellant’s arguments are not persuasive. Although Devas and
Schlein may teach different ranges of motion, and consequently different
shell arch angles, than Steffee, Appellant does not refer to any portion of the
prior art that discredits, criticizes, or otherwise discourages other ranges of
motion or shell arch angles. One of ordinary skill in the art would appreciate
that Devas and Schlein are not limited to the ranges of motion and shell arch
angles disclosed therein. Consequently, Appellant does not apprise us of
error in the Examiner’s finding that one of ordinary skill in the art would
have modified the shell arch angle of the prosthesis resulting from the
combined teachings of Devas and Schlein to have a shell arch angle of about
250° to accommodate a particular patient’s joint, as taught by Steffee (Non-
Final Act. 7—8).
In view of the foregoing, we sustain the rejection of claim 3. We also
sustain the rejection of claim 4, which Appellant does not separately argue
(Appeal Br. 23).
Claims 8 and 9
Claim 8 recites “wherein said cup arch of curvature comprises a cup
arch angle from about 190° to about 280°.” Appeal Br., Claims App.
Appellant argues that the prior art teaches away from the claimed invention.
Appeal Br. 24—25; Reply Br. 9. In particular, Appellant contends that
Schlein teaches bearing 18 has a cup arch angle that is greater than 280°.
Appeal Br. 24 (citing Schlein, Fig. 4). Appellant’s argument is not
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persuasive. Although Schlein may teach a different cup arch angle than the
claimed invention, Appellant does not refer to any portion of Schlein that
discredits, criticizes, or otherwise discourages a cup arch angle from about
190° to about 280° so as to teach away from the claimed invention.
Accordingly, we sustain the rejection of claim 8. We also sustain the
rejection of claim 9, which Appellant does not separately argue (Appeal
Br. 25).
Claim 23
Claim 23 depends from independent claim 22 and includes limitations
similar to claims 3 and 8. Appeal Br., Claims App. Appellant reiterates the
arguments for independent claims 1 and 22 and dependent claims 3 and 8 for
claim 23. Appeal Br. 25—26. We do not find these arguments persuasive for
the reasons discussed above, and we sustain the rejection of claim 23.
Obviousness over Devas, Schlein, and Justin
Claims 10-12 depend from independent claim 1 (Appeal Br., Claims
App.), and Appellant reiterates the arguments for independent claim 1 for
these claims. Appeal Br. 26—27; Reply Br. 9-10. We do not find these
arguments persuasive for the reasons discussed above in regard to
independent claim 1, and we sustain the rejection of claims of 10-12.
DECISION
The Examiner’s rejections of claims 1—13 and 22—25 are affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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