Ex Parte DesaDownload PDFPatent Trial and Appeal BoardMar 21, 201713606758 (P.T.A.B. Mar. 21, 2017) Copy Citation 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. Appeal 2015-005302 Application 13/606,758 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. 2 Appeal 2015-005302 Application 13/606,758 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). 3 Appeal 2015-005302 Application 13/606,758 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 4 Appeal 2015-005302 Application 13/606,758 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). 5 Appeal 2015-005302 Application 13/606,758 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. 6 Appeal 2015-005302 Application 13/606,758 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 7 Appeal 2015-005302 Application 13/606,758 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). 8 Appeal 2015-005302 Application 13/606,758 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). 9 Appeal 2015-005302 Application 13/606,758 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 10 Appeal 2015-005302 Application 13/606,758 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 11 Appeal 2015-005302 Application 13/606,758 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. 12 Appeal 2015-005302 Application 13/606,758 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 13 Copy with citationCopy as parenthetical citation