Ex Parte FRAUENS

Patent Trials and Appeals BoardJan 31, 2019

12273812 - (D) (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/273,812 11/19/2008 John T. FRAUENS 23448 7590 02/04/2019 Hultquist IP P.O. Box 14329 RESEARCH TRIANGLE PARK, NC 27709 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. 4594-101 9061 EXAMINER WOLF, MEGAN YARNALL ART UNIT PAPER NUMBER 3774 NOTIFICATION DATE DELIVERY MODE 02/04/2019 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): hip@hultquistip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN T. FRAUENS Appeal2018-002927 1 Application 12/273,812 Technology Center 3700 Before DANIEL S. SONG, BRETT C. MARTIN, and GEORGE R. HOSKINS, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL 1 The real party in interest is SoftJoint Corporation. App. Br. 1. Appeal2018-002927 Application 12/273,812 STATEMENT OF CASE Appellant appeals under 35 U.S.C. Â§ 134 from the Examiner's rejection of claims 1 and 21. Claims 2-20 and 22 were canceled during prosecution. See Claims App'x. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. THE INVENTION Appellant's claims are directed "generally to an improved method for the treatment of arthritis of joints and, more specifically, it concerns restoring a joint with an artificial cartilage." Spec. 1, 11. 11-12. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An intra-articular device comprising: a membrane shaped like a cap having a peripheral geometry similar to that of a substantially unmodified head of a bone for a joint to be restored, a cylindrical neck, and an open end of the cylindrical neck sized to be applied over the bone proximate the head, so that the open end can be stretched over the head and neck of the bone and held in position on the bone with the membrane interposed between the head and its corresponding articular component of the joint, wherein said membrane is made of a material selected to have a property of absorbing the joint's own synovial fluid to thereby cause the membrane to swell and have a viscoelastic property similar to the body's own articular hyaline cartilage, wherein the membrane is adapted for use on a femoral head of a femoral bone for a hip joint, wherein said membrane has a balloon shape corresponding to the geometry of the femoral head, and the diameter of its open end of its cylindrical neck is smaller than the balloon shape of the device, and wherein the membrane is made of a polyether- urethane material. 2 Appeal2018-002927 Application 12/273,812 REFERENCES The references relied upon by the Examiner in rejecting the claims on appeal are: Black Steinberg Myung us 3,053,251 US 2005/0085915 Al US 2010/0010114 Al REJECTIONS The Examiner made the following rejections: Sep. 11, 1962 Apr. 21, 2005 Jan. 14,2010 Claims 1 and 21 stand rejected under 35 U.S.C. Â§ 102( e) as being anticipated by Myung. Final Act. 3. Claims 1 and 21 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Steinberg and Black. Final Act. 4. ANALYSIS Anticipation Appellant asserts that Myung is not prior art because Appellant has antedated it, pointing to Figure 4 of the present application's drawings, which is the same cap disclosed in a letter and drawings dated February 26, 2007 that is an agreement to develop the invention, with Myung having an earliest filing date in 2008. See, e.g., Reply Br. 3-5. The Examiner appears to concede that Appellant's July 19, 2007 proposal, also submitted to the USPTO with the February 26, 2007 letter, is sufficient evidence to prove that "Appellant conceived of polyether urethane as a material for the invention prior to Myung," but then asserts that the evidence does "not establish conception of the whole invention, including the cylindrical neck." Ans. 3-5. As Appellant points out, the Examiner appears to focus on Figure 3 of Appellant's prior Application Number 09/421,397 (filed on 3 Appeal2018-002927 Application 12/273,812 February 8, 2001, "the '397 Application) while not addressing Figure 5 thereof, which is also the same as in the development letter. The Examiner does not appear to address this earlier drawing in determining whether the cylindrical neck is shown. We agree with Appellant that Figure 5 of the '397 Application sufficiently discloses possession of the claimed cylindrical neck in situ on the hip at least as of February 26, 2007, and that Figure 4 of the present application merely depicts the same cap in a stand-alone drawing before it is placed on the hip. Although there is no direct priority of the present application to the '397 Application, given that the Examiner has accepted the evidence as establishing prior conception sufficient to antedate Myung as to the materials based on the July 19, 2007 proposal, we agree with Appellant that the February 26, 2007 letter discloses the claimed cylindrical neck at least as of 2007 and thus all aspects of claim 1 were shown to be in Appellant's possession in the same time frame of early to mid-2007. Accordingly, we do not sustain the anticipation rejection of claim 1. Because claim 21 depends from claim 1, we likewise do not sustain the anticipation rejection of claim 21. Obviousness The Examiner finds that Steinberg teaches all of the limitations of claim 1, but fails to teach the inclusion of a cylindrical neck. Final Act. 4--5. The Examiner finds that "Black teaches an intra-articular device, in the same field of endeavor, wherein a cylindrical portion 14b is integral with and extends from a semi-spherical portion of a femoral cap." Id. at 5. The Examiner then concludes obviousness, stating that one of skill in the art would have "modif-1ied] the shape of the semi-spherical cap of Steinberg to 4 Appeal2018-002927 Application 12/273,812 additionally include a cylindrical neck as taught by Black in order to further secure the cap to the bone." Id. Appellant argues that this combination is improper because Black does not utilize the neck for securement as it has inward facing prongs that firmly clamp the rigid metal cup to the femur. We further note that the hip cap of Black, while semi-spherical on the outside with a narrowed neck, is actually a straight cylindrical chamber on the inside. This is mainly due to the fact that, as shown in Figure 5, Black's hip cap is intended to be placed over a femoral cap that has been reamed to fit inside the cylindrical chamber. As Appellant notes, this is because Black's objective is "to provide an improved cup prosthesis which can be used to rebuild the head of the femur when it has been broken up or crushed." App. Br. 16 (citing Black col. 1, 11. 54 - 57). Given that there is no longer a bulbous portion of the hip bone, Black's hip cap actually performs no securement function and requires the tabs in order to secure it in place. This is unlike Appellant's invention, in which a flexible membrane is stretched and placed over an existing, mostly intact hip bone, which has a spherical end and a narrowed area adjacent to the ball joint. In Appellant's invention as claimed, the narrowed neck works in conjunction with the wider balloon portion so as to actually secure the cap in place. Accordingly, we agree with Appellant that the Examiner's combination is deficient as the suggested combination fails to result in the claimed device. 5 Appeal2018-002927 Application 12/273,812 DECISION For the above reasons, we REVERSE the Examiner's decision to reject claims 1 and 21. REVERSED 6