Ex Parte Hazebrouck et alDownload PDFPatent Trial and Appeal BoardNov 6, 201211860833 (P.T.A.B. Nov. 6, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte STEPHEN A. HAZEBROUCK, DAREN L. DEFFENBAUGH, and PAUL S. RANDALL __________ Appeal 2011-001149 Application 11/860,833 Technology Center 3700 __________ Before DONALD E. ADAMS, ERICA A. FRANKLIN, and JACQUELINE WRIGHT BONILLA, Administrative Patent Judges. Opinion by ADAMS, Administrative Patent Judge. Dissenting opinion by BONILLA, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants request rehearing of the new ground of rejection entered August 2, 2012 (Opinion) rejecting claims 1-18 under 35 U.S.C. § 102(b) as being anticipated by Ensign 1 and under 35 U.S.C. § 103(a) as unpatentable over Ensign. The request for rehearing is granted and both rejections of record are reversed. 1 Ensign et al., U.S. Pat. No. 6,379,388 B1, issued Apr. 30, 2002. Appeal 2011-001149 Application 11/860,833 2 CLAIM INTERPRETATION The fixed-bearing knee prosthesis of Appellants‘ independent claims 1 and 8 comprises, inter alia, a retaining rail extending upwardly from the upper surface of a platform and posteriorly away from a peripheral rail. In addition, Appellants‘ independent claims 1 and 8 require: (i) The retaining rail has a posterior width defined by the distance between a lateral end and a medial end of a posterior-most edge of the retaining rail, (ii) The retaining rail has a length defined by the distance of an imaginary center line segment extending from the anterior edge of the tibial tray to a midpoint located along the posterior-most edge halfway between the lateral end and the medial end, and (iii) The posterior width of the retaining rail is less than, or equal to, the length of the retaining rail. Like Appellants‘ independent claims 1 and 8, the fixed-bearing knee prosthesis of Appellants‘ independent claim 12 comprises, inter alia, a retaining rail extending upwardly from the upper surface of a platform and posteriorly away from a peripheral rail. Appellants‘ independent claim 12 differs from independent claims 1 and 8 by expressly requiring: (i) A posterior-most edge having a lateral end and a medial end, (ii) A lateral-most edge extending linearly from a first point on the peripheral rail to the lateral end of the posterior-most edge, and (iii) A medial-most edge extending linearly from a second point on the peripheral rail to the medial end of the posterior-most edge. Appeal 2011-001149 Application 11/860,833 3 Appellants‘ remaining claims depend directly or indirectly from one of independent claims 1, 8, or 12. ISSUE Does Ensign support the rejection of Appellants‘ claimed invention as anticipated and/or obvious? FACTUAL FINDINGS (FF) FF 1. For clarity we reproduce Ensign‘s figure 8 below: ―FIG. 8 is a plan view of the tibial plate of‖ Ensign‘s tibial prosthesis (Ensign, col. 3, ll. 32). FF 2. Ensign‘s ―tibial plate 16 includes a perimeter sidewall 32, which is preferably continuous and preferably extends around the entire perimeter. The sidewall 32 includes a posterior side-wall portion 34 … [and] an anterior sidewall portion 36‖ (Ensign, col. 4, ll. 20-24). FF 3. Ensign teaches mail projections 46 and 48 are ―[f]ormed on interior portions of the tibial plate 16‖, wherein rail 46 preferably comprises a ‗T‘ shape as shown, and may be described herein as a first rail 46a and second rail 46b, or alternatively a rail 46 having a first portion 46a and a second portion 46b. (Ensign, col. 4, ll. 30-34.) Appeal 2011-001149 Application 11/860,833 4 FF 4. Ensign teaches that ―assuming the prosthesis 10 is implanted in the right knee of a patient, [the prosthesis 10 will have] a medial sidewall portion 38 and a lateral sidewall portion 40‖ (id. at col. 4, ll. 24-26), for clarity of orientation, we direct attention to Ensign‘s figure 3 reproduced below: ―FIG. 3 is a perspective view of a tibial plate of [Ensign‘s] … tibial prosthesis‖ (Ensign, col. 3, ll. 9-10). FF 5. The Opinion states that Examiner presents an annotated version of Figure 8 in Ensign, where the annotated Figure 8 separates first rail (46a) from second rail (46b) via a dashed line…. The Examiner states that the annotated figure ―indicates where the posterior-most edge would necessarily be located if the rail was formed as two separate pieces, as implied by Ensign.‖ (Opinion 9.) FF 6. For clarity, Examiner‘s annotation of Ensign‘s figure 8 is reproduced below: Appeal 2011-001149 Application 11/860,833 5 Examiner annotates Ensign‘s figure 8 to illustrate an instance wherein Ensign‘s ―rail (46) is formed of two separate pieces, the first rail (46a) inherently has a lateral-most edge that extends linearly from a first point on the peripheral rail (32) and a medial-most edge that extends linearly from a second point on the peripheral rail (32)‖ (Ans. 8-9; Cf. Opinion 9). ANALYSIS Appellants’ independent claims 1 and 8: Appellants recognize that ―the Board has agreed that the Examiner‘s annotated FIG. 8 ‗indicates where the posterior-most edge would necessarily be located if the rail was formed as two separate pieces, as implied by Ensign‖ (Req. Rh‘g. 6; FF 5-6). However, as Appellants explain, ―[g]iven Ensign‘s silence regarding the features, dimensions, and relationship of ‗the first rail 46a‘ and ‗the second rail 46b,‘‖ a person of ordinary skill in this art could draw a line at any location along Ensign‘s rail 46a, ―either anterior or posterior of the line[] drawn‖ by Examiner (id. at 7). Therefore, Appellants contend that ―[w]ithout the extrinsic evidence or analysis that would unmistakably show where the rail portion 46a ends and where the rail portion 46b begins, Ensign cannot be said to necessarily disclose that the rail 46a has the claimed … ‗posterior width‘‖ required by Appellants‘ independent claims 1 and 8 (id.). To be clear, depending on the choice of location to separate Ensign‘s rail 46a from rail 46b, the posterior end of Ensign‘s rail 46a could be straight or flared to a variety of degrees (id. at 10 (―the medial and lateral edges of the rail 46a would flare outward before reaching the rail 46b, as illustrated in … [Ensign‘] drawing[s]‖)). Therefore, this record fails to establish that the posterior width of Ensign‘s retaining rail Appeal 2011-001149 Application 11/860,833 6 46a, if or when separated from rail 46b, is less than, or equal to, the length of the retaining rail as required by Appellants‘ independent claims 1 and 8. Accordingly, we agree with Appellants‘ contention that Ensign does not support a conclusion based on inherent anticipation (id. at 6). See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Similarly, because the evidence on this record fails to suggest (1) the posterior width of Ensign‘s retaining rail 46a or (2) where to separate Ensign‘s rail 46a from rail 46b, the choice of the precise location to separate the rails in order to meet the limitations of Appellants‘ claimed invention is an exercise in hindsight reconstruction. We also agree with Appellants‘ contentions regarding the substitution of Ensign‘s rail 46 with Ensign‘ rail 48 (Req. Rh‘g. 12). Appellants’ independent claim 12: As Appellants explain the evidence of record fails to establish that the lateral-most and medial-most edges of Ensign‘s rail 46a extend linearly from a first and second point, respectively, on the peripheral rail to the posterior-most edge of the rail as required by Appellants‘ independent claim 12 (Req. Rh‘g. 11; Cf. FF 6). Upon reconsideration, we agree with Appellants‘ contention that the edges of Ensign‘s rail 46a ―follow an arced path from [a first and second point on] the peripheral rail‖ (id.; Cf. FF 1 and 6). For the foregoing reasons, we agree with Appellants‘ intimation that Ensign does not support a conclusion based on inherent anticipation (id. at 9- 11). See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Similarly, we find that absent some evidence on this record directing a person of ordinary skill to extend the lateral and medial most edges of Appeal 2011-001149 Application 11/860,833 7 Ensign‘s rail 46a in linear direction from a first and second position on the peripheral rail, the arbitrary selection of a particular location on Ensign‘s device that may, upon further modification of Ensign‘s device, potentially meet the requirements of Appellants‘ claimed invention is an exercise in hindsight reconstruction (see generally Req. Rh‘g 16-17). CONCLUSION OF LAW Ensign fails to support the rejection of Appellants‘ claimed invention as anticipated and/or obvious. The rejection of claims 1-18 under 35 U.S.C § 102(b) as anticipated by Ensign is reversed The rejection of claims 1-18 under 35 U.S.C § 103(a) as obvious over Ensign is reversed. SUMMARY Appellants‘ request for rehearing is granted. The rejections of record are reversed. GRANTED; REVERSED alw Appeal 2011-001149 Application 11/860,833 8 BONILLA, Administrative Patent Judge, dissenting Many arguments raised by Appellants are identical to those addressed by this panel previously. For example, Appellants continue to assert that ―Ensign‘s disclosure is directed to a single, integral rail 46 and there is simply no discussion of forming the rail as two separate pieces‖ (App. Br. 8; Second Req. Rh‘g. 2 (stating that there ―is simply no discussion in Ensign of any alternative structure of the rail 46‖); see also, id. at 2-4, 5, 14-15). As already discussed, Ensign does not support this position (see, e.g., First Decision on Req. Rh‘g. 9). Appellants also present certain new arguments in response to ―the new grounds of rejection‖ (Second Req. Rh‘g. 1). 2 Appellants argue for the first time now that ―Ensign does not indicate where the rail portion 46a might end and where the rail portion 46b might begin,‖ and therefore Ensign ―does not expressly disclose that the rail 46a has the claimed ‗posterior-most edge‘ or the claimed ‗posterior width‘‖ (Second Req. Rh‘g. 5). Appellants further assert that the Board erroneously concluded that Ensign ―inherently discloses‖ such features (see, e.g., id. at 6; see also above Opinion, 5-6). I respectfully disagree that Appellants are correct in their ―contention that Ensign does not support a conclusion based on inherent anticipation‖ (above Opinion 6). Ensign states that ―rail 46 preferably comprises a ‗T‘ shape as shown [in Figure 8, for example], and may be described herein as a first rail 46a and second rail 46b, or alternatively a rail 46 having a first portion 46a and a second portion 46b‖ (Ensign, col. 4, ll. 30-35; see FF 3 above) (emphasis added). Ensign also teaches that ―46a preferably extends 2 Under 37 C.F.R. 41.52(a)(3), ―[n]ew arguments responding to a new ground of rejection made pursuant to § 41.50(b) are permitted.‖ Appeal 2011-001149 Application 11/860,833 9 linearly in the medial-lateral direction 96‖ (id. at col. 6, ll. 49-55) and ―46b extends in a transverse and preferably orthogonal direction relative to the rail portion 46a and by the rail 48‖ (id. at col. 7, ll. 6-11). In other words, an ordinary artisan reading this reference would have understood that Ensign expressly disclosed the option of 46a and 46b as two separate rails, and that rails 46a and 46b differed in terms of direction they extended. Especially as to independent claims 1 and 8, Appellants‘ argument regarding where one could separate 46a and 46b (i.e., place the dotted line in Figure 8) is a red herring. Ensign discloses an embodiment where rail 46a is separate from rail 46b—otherwise designations of ―first rail 46a‖ and ―second rail 46b‖ in Ensign have no meaning (see FF 3 above). Looking at Figure 8 (see FF 6 above), no matter where one precisely places a dotted line, as long as rail 46a (which extends linearly) is distinct from rail 46b (which extends in a traverse direction relative to rail 46a), 46a rail necessarily meets (i) – (iii) as recited in claims 1 and 8. This is true regardless of whether rail 46b is also present—as we have discussed previously, claims 1 and 8 do not exclude an additional retaining rail, such as rail 46b (First Decision on Req. Rh‘g. 10). Relevant case law explains that ―speculative modeling premised on unstated assumptions in prior art patent drawings cannot be the basis for challenging the validity of claims reciting specific dimensions not disclosed directly in such prior art.‖ Nystrom v. TREX Co., Inc., et al., 424 F.3d 1136, 1149 (Fed. Cir. 2005). In other words, ―where precise measurement or considerable and careful evaluation of an illustration in a prior art reference or in a prior application are required in order to demonstrate that the illustration meets a dimensional limitation of a claim, findings or Appeal 2011-001149 Application 11/860,833 10 conclusions based upon such evaluation will be disfavored or assigned little weight when the prior art reference lacks explicit disclosure that the drawings are to scale or that the particular elements at issue possess some particular dimensional relationship.‖ Ex Parte Matsunaga et al., 2012 WL 260128, *3 (BPAI 2012) On the other hand, it is not the case ―that things patent drawings show clearly are to be disregarded.‖ In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (quoting In re Wilson, 312 F.2d 449, 454 (CCPA 1963)). A drawing teaches all that it reasonably discloses and suggests to a person of ordinary skill in the art. Ex Parte Matsunaga et al., 2012 WL 260128 at *1 (citing In re Aslanian, 590 F.2d 911, 914 (CCPA 1979)). Consequently, when determining whether a prior art figure drawing discloses a recited element in a claim for the purposes of a patentability determination, it matters if the element can be readily determined by observing the drawing. Ex Parte Karapasha et al., 2012 WL 1980532, *3-*4 (BPAI 2012). Here, one can readily see in Figure 8 of Ensign that rail 46a necessarily meets (i) – (iii) of claims 1 and 8. In relation to retaining rail 46a, it is not a close call as to whether the ―posterior width of the retaining rail is less than, or equal to, the length of the retaining rail‖ as recited in claims 1 and 8. One does not need to measure anything to see that the width of rail 46a is unequivocally smaller than its length in Figure 8. The only way to have it otherwise would be (1) to include the entire length rail 46b (i.e., extending in a perpendicular direction) as part of rail 46a—which corresponds to a different embodiment, i.e., the ―T‖ shape, also disclosed in Ensign—or (2) to eliminate rail 46a, i.e., the rail that ―extends linearly in the medial-laterial direction‖ (Ensign, col. 6, ll. 50-52), thereby removing the Appeal 2011-001149 Application 11/860,833 11 ―significantly increased surface area for resisting movement in the anterior- posterior direction‖ (id. at ll. 52-54), contrary to what Ensign teaches in relation to 46a and shows in Figure 8. Thus, Ensign anticipates claims 1 and 8. Even assuming anticipation, and particularly the inherency of (i) – (iii), is questionable, however, it is difficult to see how Ensign fails to render these claims obvious. Ensign clearly teaches an embodiment where rail 46a is separate from rail 46b. In light of advantages taught by Ensign in relation to rail 46a as distinct from rail 46b (see, e.g., Ensign col. 6, ll. 48-55, 61-67; col. 7, ll. 5-14), not to mention what is shown in Figure 8, one would have been motivated to generate a relevant prosthesis having the retaining rail recited in claims 1 and 8, i.e., a rail 46a where the posterior width of the retaining rail is less than, or equal to, the length of the retaining rail. Independent claim 12 is arguably a closer call in relation to anticipation by Ensign, especially regarding inherency of (ii) and (iii) in the last clause of the claim. It is not a close call when it comes to obviousness, however. Again, Ensign teaches that ―46a preferably extends linearly in the medial-lateral direction 96‖ and that the extension ―significantly increased surface area for resisting movement in the anterior-posterior direction‖ (col. 6, ll. 48-55). Nothing in Ensign suggests that the ―arced path[s]‖ located only at the very ends of 46a in the ―T‖ shape rail shown in Figure 8 (Second Req. Rh‘g. 11; see also 16-17) contribute any such benefit in relation to rail 46a, i.e., a rail separate from rail 46b. Appellants do not mention any surprising results in relation to straight edges/corners at the ends, as compared to the curved ends of 46a shown in Figure 8. Nor do Appellants Appeal 2011-001149 Application 11/860,833 12 point to any prior art teaching away from a rail 46a having linearly extended straight edges, rather than curved ends as shown in Figure 8. It is not ―an exercise in hindsight reconstruction‖ (above Opinion 7) to engage in an obvious modification in relation to what is described in Ensign and shown in Figure 8 when generating two different rails 46a and 46b instead of the single ―T‖ shaped embodiment. Based on ease of manufacturing a straight-edged version of 46a as compared to the curved- end version shown in Figure 8, how similarly a straight-edged version of 46a would have looked and functioned as compared to rail 46a shown in Figure 8, and in light of separate benefits described in Ensign for 46a versus 46b, one would have had reason to make a straight-edged rail 46a separately from 46b, rather than make the ―T‖ shape shown in Figure 8 and thereafter cut it into two pieces, or otherwise generate rail 46a only with curved ends exactly as shown in Figure 8. Thus, an ordinary artisan would have had reasons to generate a knee prosthetic comprising the retaining rail recited in claim 12. Ensign expressly teaches that ―rails 46 and 48 may embody any suitable cross sectional shape‖ (Ensign, col. 5, ll. 56-57), and that the ―T‖ shape shown in figures is preferred but not required (id. at col. 4, ll. 30-35). Even assuming Ensign emphasizes using both rails 46a and 46b to provide ―ʻhighly effective‘ resistance to movement‖ (Second Req. Rh‘g. 17; see also, id. at 15 (discussing ―at least four directions‖), nothing in Ensign indicates that the ―arced path‖ at the ends of rail 46a in Figure 8 contributes to that benefit, or that using a rail 46a having entirely linear lines (a prima facie obvious variation) would detract from the benefit. For the above mentioned reasons, I respectfully dissent. alw Copy with citationCopy as parenthetical citation