Ex Parte Grotz

Patent Trial and Appeal Board

Nov 30, 2016

12460703 (P.T.A.B. Nov. 30, 2016)

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.
12/460,703 07/23/2009 R. Thomas Grotz 13292-701.201 7474
66854 7590 12/02/2016
SHAY TtT FNN T T P
EXAMINER
2755 CAMPUS DRIVE WATKINS, MARCIA LYNN
SUITE 210
SAN MATEO, CA 94403 ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
12/02/2016 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):
info@ shayglenn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte R. THOMAS GROTZ
Appeal 2015-000331
Application 12/460,703
Technology Center 3700
Before KEVIN W. CHERRY, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant (R. Thomas Grotz) appeals under 35 U.S.C. § 134 from
the Examiner’s rejections of claims 1—22, 31, 33, and 35—41. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-000331
Application 12/460,703
STATEMENT OF THE CASE
The Appellant’s invention “relates to arthroplasty, and more
particularly, to an implant for use in arthroplasty.” (Spec. 12.)
Illustrative Claim
1. A resilient orthopedic implant comprising:
a. a first wall configured to engage an articulating end of
the acetabulum of the pelvic bone;
b. a second wall configured to engage an articulating end
of the femur, the second wall having one or more appendages
configured to secure, directly or indirectly, the second wall to
the articulating end of the femur;
c. a side wall extending between the first wall and the
second wall and configured to facilitate relative motion between
the first and second walls; and
d. an interior portion enclosed by the first, second, and
side walls; wherein at least some length of the first wall
overlaps at least some length of the second wall creating a
concave fold in the implant, the concave fold in the implant
comprising of at least some length of the side wall,
wherein the implant is configured for deployment
between the articulating ends of the femur and the acetabulum
of the pelvic bone of the hip joint structure, and wherein neither
the femur nor the pelvic bone is resected.
References
Pederson US 2003/0093152 A1 May 15,2003
Hunter US 2005/0182463 A1 Aug. 18,2005
Hendrik DE 103 39 605 A1 Apr. 14, 2005
Rejections
I. The Examiner rejects claims 1, 3—14, 20-22, 31, and 35 under
35 U.S.C. § 102(b) as anticipated by Hendrik. (Final Action 5.)
II. The Examiner rejects claims 15—19, 33, and 36-41 under
35 U.S.C. § 103(a) as unpatentable over Hendrik and Hunter. (Id. at 11.)
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III. The Examiner rejects claims 1, 3—14, 20—22, 31, and 35 under
35 U.S.C. § 102(b) as anticipated by Pederson. (Id. at 7.)
IV. The Examiner rejects claims 8—13, 31, and 33 under 35 U.S.C.
§ 112, second paragraph, as indefinite. (Id at 2.)
V. The Examiner rejects claims 12 and 13 under 35 U.S.C. § 112,
fourth paragraph, as being of improper dependent form. (Id. at 4.)
VI. The Examiner provisionally rejects claims 1—22, 31,33, and
35 41 on the ground of nonstatutory double patenting as being unpatentable
over claims 1—36 of US Application 13/574,517 and/or over claims 1—31 of
US Application 13/514,539. (Id. at 15.)
ANALYSIS
Claim 1 is the sole independent claim on appeal with the rest of the
claims on appeal (i.e., claims 2—22, 31, 33, and 35—41) depending therefrom.
(Appeal Br., Claims App.) Independent claim 1 is directed to “[a] resilient
orthopedic implant.” (Id.)
Rejection I— 35 U.S.C. § 102 - Hendrik
Independent claim 1 requires “a concave fold in the implant.”
(Appeal Br., Claims App.) The Examiner finds that Hendrik discloses an
implant having such a concave fold. (See Final Action 5—6, especially
annotated drawing on page 6.)
The Appellant argues that Hendrik’s implant has a “convex fold,” not
a “concave fold” as required by independent claim 1. (Appeal Br. 7.) In this
regard, the Appellant provides definitions, drawings, and detailed
discussions regarding concavity, convexity, isolated curves, and/or optical
geometric shapes. (See id. 6—7; see also Reply Br. 4—6.)
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Application 12/460,703
We are not persuaded by these arguments because they are not
commensurate with the claim language. Independent claim 1 does not recite
a point of reference for identification of features of the fold (see Answer 4)
in contrast to, for example, original claims 12 and 13 which recited that “the
first wall has an exterior surface with a concave shape” and that “the
second wall has an exterior surface with a convex shape.” (Spec., 29,
emphasis added.) And we agree with the Examiner that the fold in
Hendrik’s implant has a concave interior surface, and thus can be considered
“a concave fold in the implant.” (Answer 5.)
Thus, we sustain the Examiner’s rejection of independent claim 1
under 35 U.S.C. § 102(b) as anticipated by Hendrik. The Appellant does not
argue dependent claims 3—14, 20—22, 31, and 35 separately from
independent claim 1 (see Appeal Br. 7), and so they fall therewith.
Rejection II— 35 U.S.C. § 103 — Hendrik and Hunter
With respect to the dependent claims rejected as unpatentable over the
combined teachings of Hendrik and Hunter, the Appellant argues only that
“Hunter does not remedy the deficiency in Hendrik” in failing to disclose the
“concave fold” required by independent claim 1. (Appeal Br. 12.)
However, as discussed above, we are not persuaded by the Appellant’s
position that Hendrik is deficient in this regard.
Thus, we sustain the Examiner’s rejection of dependent claims 15—19,
33, and 36-41 under 35 U.S.C. § 103(a) as unpatentable over Hendrik and
Hunter.
Rejection III— 35 U.S.C. §102 - Pederson
As indicated above, independent claim 1 requires “a concave fold in
the implant.” (Appeal Br., Claims App.) The Examiner finds that Pederson
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Application 12/460,703
shows, in Figure 10, an implant having such a concave fold. (See Final
Action 7—9, especially annotated drawing on page 9.)
The Appellant advances arguments similar to those discussed above
as to why Pederson discloses a “convex fold” and not a “concave fold.” (See
Appeal Br. 9—11; see also Reply Br. 4—7.) For the same reasons discussed
above, we are not persuaded by these arguments. And we agree with the
Examiner that the implant shown in Pedersen’s Figure 10 has a concave
interior surface and thus can be considered a concave fold in the implant.
(See Answer 5.)
Thus, we sustain the Examiner’s rejection of independent claim 1
under 35 U.S.C. § 102(b) as anticipated by Pederson. The Appellant does
not argue dependent claims 3—14, 20-22, 31, and 35 separately from
independent claim 1 (see Appeal Br. 11), and so they fall therewith.
Rejections IVand V— 35 U.S.C. § 112
The Appellant does not argue the Examiner’s rejections under
35 U.S.C. § 112 on appeal (see Reply Br. 3) and thus we summarily sustain
the Examiner’s rejections of claims 8—13, 31, and 33 under 35 U.S.C. § 112.
Rejection VI—Double Patenting
The previously copending applications on which this rejection is
based have been abandoned1 and thus we dismiss as moot the Examiner’s
provisional rejection of claims 1—22, 31, 33, and 35—41 on non-statutory
double patenting grounds.
1 PTO electronic records indicate that US Application 13/574,517 was
abandoned on October 29, 2015 and that US Application 13/514,539 was
abandoned on March 19, 2016.
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Application 12/460,703
DECISION
We AFFIRM the Examiner’s rejections of claims 8—13, 31, and 33
under 35 U.S.C. §§ 102, 103, and 112.
We DISMISS as moot the Examiner’s provisional rejection of claims
1—22, 31, 33, and 35—41 on non-statutory double-patenting grounds.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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