Ex Parte Ernsberger

Patent Trial and Appeal Board

Dec 19, 2012

11702303 (P.T.A.B. Dec. 19, 2012)

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.
11/702,303 02/05/2007 Craig N. Ernsberger 1671-0402 4982
28078 7590 12/19/2012
MAGINOT, MOORE & BECK, LLP
CHASE TOWER
111 MONUMENT CIRCLE
SUITE 3250
INDIANAPOLIS, IN 46204
EXAMINER
HOBAN, MELISSA A
ART UNIT PAPER NUMBER
3738
MAIL DATE DELIVERY MODE
12/19/2012 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 CRAIG N. ERNSBERGER
____________

Appeal 2010-010159
Application 11/702,303
Technology Center 3700
____________

Before STEFAN STAICOVICI, GAY ANN SPAHN, and
CHARLES N. GREENHUT, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Craig N. Ernsberger (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s rejections of claims 1-20. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

Appeal 2010-010159
Application 11/702,303

2
The Claimed Subject Matter
The claimed subject matter “relates to the field of prosthetic devices,
and particularly joint prostheses comprising head and cup arrangements.”
Spec. 1, para. [0001]. Claims 1, 17, and 19 are independent and claim 17,
reproduced below, with emphasis added, is illustrative of the subject matter
on appeal.
17. A prosthetic device comprising:
a cup including a concave cup surface, the concave cup
surface defined by at least one radius of curvature RC;
a head configured to fit within the cup, the head
including a convex head surface configured to engage the
concave cup surface, the convex head surface defined by at
least one radius of curvature RH;
an articulation zone provided upon the convex head
surface, the convex head surface configured to engage the
convex1 cup surface in the articulation zone, wherein RC differs
from RH in the articulation zone by a first radial clearance,
wherein the first radial clearance is no greater than fifty
microns; and
a peripheral zone provided on the convex head surface
outside of the articulation zone, wherein RC differs from RH in
the peripheral zone by a second radial clearance that is greater
than the first radial clearance; and
wherein the first radial clearance gradually increases in
the articulation zone from a lesser radial clearance near a pole
of the head to a greater radial clearance near the peripheral
zone.

1 In view of the recitation of “the head including a convex head surface
configured to engage the concave cup surface” in lines 4-6, we assume that
the word “convex” here is a typographical error and that Appellant meant
the word “concave.” We are treating claim 17 as if it recited “concave”
here. Appellant should consider amending claim 17 when the application is
returned to the Technology Center. See also claim 11.
Appeal 2010-010159
Application 11/702,303

3
The Rejections
The following Examiner’s rejections are before us for review:
I. claims 17 and 18 under 35 U.S.C. § 102(b) as anticipated by
Lippincott (US 6,059,830, issued May 9, 2000);
II. claims 1-7, 9-16, 19, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Lippincott; and
III. claim 8 under 35 U.S.C. § 103(a) as unpatentable over
Lippincott and Farrar (US 2005/0256584 A1, published Nov. 17, 2005).

OPINION
Rejection I – Anticipation based on Lippincott
Independent claim 17
The Examiner finds that Lippincott teaches each and every limitation
to anticipate independent claim 17. Ans. 3-4. In particular, the Examiner
finds that Lippincott discloses a prosthetic device in the form of a ball
prosthesis including a cup 18 having a concave surface, a head 14 having a
convex surface, an area of intimate contact ϕ, and a non-contact area θ
adjacent to the area of intimate contact ϕ. Ans. 3. The Examiner also finds
that Lippincott’s “area of intimate contact (ϕ) in combination with at least a
portion of the non-contact area (θ) constitutes an articulation zone and the
area outside of the portion of the non-contact area (θ) constitutes a peripheral
zone (see figure [1 or Annotated drawing #1] below).” Id.

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Appeal 2010-010159
Application 11/702,303

5
24 of the cup 18 differs from the radius R3 of the articulating surface 25 of
the ball 14 by no more than 50 microns. Lippincott, col. 2, ll. 19-24 and 27-
29, col. 4, ll. 2-6, and Fig. 1. However, Lippincott further teaches that
“[b]eyond the area of intimate contact, the surfaces of the ball and cup
diverge.” Id., col. 4, ll. 6-7. Furthermore, the Examiner has not pointed to
any portion of Lippincott and has not provided any technical reasoning to
show that the radial clearance in the “at least a portion of the non-contact
area (θ)” of Lippincott is necessarily “no greater than 50 microns,” as called
for by independent claim 17. As such, because claim 17 calls for the radius
of the concave cup surface RC to differ from the radius of the convex head
surface RH in the “articulation zone” by a first radial clearance which is no
greater than fifty microns, the Examiner’s “at least a portion of the non-
contact area (θ) cannot be considered as part of the claimed “articulation
zone.” Thus, the Examiner’s finding, that Lippincott’s “area of intimate
contact (ϕ) in combination with at least a portion of the non-contact area (θ)
constitutes an articulation zone and the area outside of the portion of the
non-contact area (θ) constitutes a peripheral zone” (Ans. 3), is in error.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 17 under 35 U.S.C. § 102(b) as anticipated by Lippincott.
Dependent claim 18
Claim 18 depends from independent claim 17. App. Br., Clms.
App’x. The Examiner’s rejection of claim 18 relies upon the same
erroneous finding as discussed supra with respect to claim 17. Ans. 3-4.
Appellant makes the same argument as discussed supra for claim 17. App.
Br. 20. Accordingly, for the same reason as discussed supra with respect to
Appeal 2010-010159
Application 11/702,303

6
independent claim 17, we also do not sustain the Examiner’s rejection of
claim 18 under 35 U.S.C. § 102(b) as anticipated by Lippincott.
Rejection II – Obviousness based on Lippincott
Independent claim 1 and dependent claims 2-5 and 9-16
Independent claim 1 is directed to a prosthetic device including, inter
alia, a cup having a concave cup surface with a radius of curvature RC, a
head having a convex head surface with a radius of curvature RH, wherein
RC differs from RH in an articulation zone by a first amount that is no greater
than forty microns. App. Br., Clms. App’x. The Examiner’s rejection of
independent claim 1 relies on the same erroneous finding as discussed supra
with respect to independent claim 17. Ans. 5. Appellant makes the same
argument for independent claim 1 as discussed supra with respect to claim
17. App. Br. 23-27. Accordingly, for the same reason as discussed supra
with respect to independent claim 17 and because the Examiner‘s proposed
modification of Lippincott does not remedy the deficiencies of Lippincott as
described above, we also do not sustain the Examiner’s rejection of claim 1,
and claims 2-5 and 9-16 dependent thereon, under 35 U.S.C. § 103(a) as
unpatentable over Lippincott.
Dependent claims 6 and 7
Claim 6 depends, either directly or indirectly, from independent claim
1 and claim 7 depends from claim 6. App. Br., Clms. App’x. The
Examiner’s rejection of each of claims 6 and 7 relies on the same erroneous
finding as discussed supra with respect to independent claim 17. Ans. 5-6.
Appellant separately argues each of claims 6 and 7, but makes the same
argument for each of claims 6 and 7 as discussed supra with respect to claim
17. App. Br. 27-29 and 29-30. Accordingly, for the same reason as
Appeal 2010-010159
Application 11/702,303

7
discussed supra with respect to independent claim 17, we also do not sustain
the Examiner’s rejection of each of claims 6 and 7 under 35 U.S.C. § 103(a)
as unpatentable over Lippincott.
Independent claim 19
Independent claim 19 is directed to a prosthetic device including, inter
alia, a cup having a concave cup surface with a radius of curvature RC, a
head having a convex head surface with a radius of curvature RH, wherein
RC differs from RH in an articulation zone by a first amount that is less than
fifty microns. App. Br., Clms. App’x. The Examiner’s rejection of
independent claim 19 relies on the same erroneous finding as discussed
supra with respect to independent claim 17. Ans. 5. Appellant makes the
same argument for independent claim 1 as discussed supra with respect to
claim 17. App. Br. 23-27. Accordingly, for the same reason as discussed
supra with respect to independent claim 17 and because the Examiner‘s
proposed modification of Lippincott does not remedy the deficiencies of
Lippincott as described above, we also do not sustain the Examiner’s
rejection of claim 19 under 35 U.S.C. § 103(a) as unpatentable over
Lippincott.
Dependent claim 20
Claim 20 depends from independent claim 19. App. Br., Clms.
App’x. The Examiner’s rejection of claim 20 relies upon the same
erroneous finding as discussed supra with respect to claim 17. Ans. 3-4.
Appellant makes the same argument as discussed supra for claim 17. App.
Br. 20. Accordingly, for the same reason as discussed supra with respect to
independent claim 17, we also do not sustain the Examiner’s rejection of
claim 20 under 35 U.S.C. § 103(a) as unpatentable over Lippincott.
Appeal 2010-010159
Application 11/702,303

8
Rejection III – Obviousness based on Lippincott and Farrar
Claim 8 depends indirectly from independent claim 1. App. Br.,
Clms. App’x. The Examiner’s rejection of claim 8 relies upon the same
erroneous finding discussed supra with respect to claim 17. Ans. 8-9.
Appellant makes the same arguments as discussed supra for claim 17. App.
Br. 34-36. Accordingly, for the same reasons as discussed supra with
respect to independent claim 17 and because the addition of Farrar does not
remedy the deficiencies of Lippincott as described above, we do not sustain
the Examiner’s rejection of claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Lippincott and Farrar.

DECISION
We reverse the Examiner’s decision to reject claims 1-20.

REVERSED

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