Ex Parte Iannotti

Patent Trial and Appeal BoardApr 29, 2016

12780051 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 121780,051 05/14/2010 Joseph P. Iannotti 26294 7590 05/03/2016 TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P. 1300EASTNINTH STREET, SUITE 1700 CLEVELAND, OH 44114 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. CCF-020736-US-ORD 9839 EXAMINER PRONE, CHRISTOPHER D ART UNIT PAPER NUMBER 3738 NOTIFICATION DATE DELIVERY MODE 05/03/2016 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): rkline@tarolli.com docketing@tarolli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSEPH P. IANNOTTI Appeal2014-004508 Application 12/780,051 Technology Center 3700 Before STEFAN STAICOVICI, FREDERICK C. LANEY, and ARTHUR M. PESLAK, Administrative Patent Judges. PESLAK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1-3, 8-12, and 14. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 Appellant submits the real party in interest is The Cleveland Clinic Foundation. Appeal Br. 3. Appeal2014-004508 Application 12/780,051 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is representative of the claimed subject matter. 1. A device for replacing a portion of a bone joint, comprising: a prosthetic head comprising an articulation surface having a shape of a semi-ellipsoid, and a bottom surface, wherein the bottom surface includes a taper feature for engagement with an engagement member connectable to the joint, the engagement member connectable to said prosthetic head and operable to maintain a proper orientation of said semi-ellipsoid shape of said articulation surface with respect to the joint. REJECTIONS Claims 1-3, 8-12, and 14 are rejected under 35 U.S.C. Â§103 as being unpatentable over Stone (US 6,942,699 B2, iss. Sept. 13, 2005) in view of Willert (US 5,370,703, iss. Dec. 6, 1994), Khalili (US 6,187,050 Bl, iss. Feb. 13, 2001), or Horber (US 6,537,321 Bl, iss. Mar. 25, 2003). Final Act. 3. DISCUSSION Appellant's claimed invention relates to a device for replacing a bone joint, as per claim 1, and in particular a shoulder joint, as per claim 9. See App. Br. 14-15, Claims App. The Examiner found that Stone discloses "a device for replacing a portion of a shoulder joint." Final Act. 3. The Examiner found that Stone discloses all the limitations of claim 1 except having an articulation surface that is "semi-ellipsoid shaped." Id. The Examiner noted that Appellant's Specification describes that "the native humeral2 head of adults have a semi ellipsoid shape." Id. at 4. The Examiner then found that Willert, Khalili and Horber each "teach the use of 2 We understand "humeral" to refer to the shoulder. See Spec. i-f3. 2 Appeal2014-004508 Application 12/780,051 cup implants comprising elongated acetabular3 cup components in the same field of endeavor for the purpose of providing a better fit within a natural elongated/semi-ellipsoid socket." Id. The Examiner concluded that it would have been obvious "to modify the cup of Stone to have a semi-ellipsoid shape as taught by Willert, Khalili or Horber such that it will better accommodate the natural semi-ellipsoid shape of the shoulder socket." Id. Appellant asserts the Examiner has not stated a prima facie case because the cited references "teach a spherical ball/articulation surface, not the claimed semi-ellipsoidal bearing/articulation surface." Appeal Br. 9. Appellant contends that the '703 patent[Willert], the '050 patent[Khalili], and the '321 patent[Horber] each unequivocally includes an articulation surface which is not semi-ellipsoid. In the '703 patent, the bearing cup 4 (the articulation surface) is "spherical" (col. 1, lines 54-56). In the '050 patent, the inner surface 14 of the acetabular cup (the articulation surface) is "hemispherical" (col. 3, lines 21-23). In the '321 patent, the hollow 12 (the articulation surface) is "semi-spherical" (col. 3, lines 41-44 ). Id.. Appellant further contends that Willert, Khalili and Horber "all recite a prosthetic cup (providing a concave articulation surface) which has a bone- contacting or anchoring ("back side") surface which is non-circular due to a desire to match a patient's pathological acetabulum shape." Id. at 10; see also Reply Br. 7. Khalili discloses an acetabular cup with "a concave generally hemispherical inner surface and generally concave outer surface .... [that] is elongated." Khalili, col. 2, 11. 39--46. Willert discloses a "spherical bearing cup." Willert, Abstract. Horber discloses base element 10 with an 3 We understand "acetabular" refers to the hip. See e.g. Willert. 3 Appeal2014-004508 Application 12/780,051 external semi-ellipsoidal shape. Horber, Fig. 1, col. 3 11. 46--47 ("base element 10 is of elongated shape"). Horber discloses "a semi-spherical hollow 12 to accommodate a joint ball." Id. at col. 3, 11. 42-43. The Examiner does not refer us to any disclosure of an articulating surface in the cups of Khalili, Willert, or Horber having a semi-ellipsoid shape. Further, the Examiner does not refer us to any disclosure of a prosthetic head "comprising an articulating surface having a shape of a semi-ellipsoid." Reply Br. 5. In order to make the finding that the references disclose the recited "articulating surface having a semi-ellipsoid shape," the Examiner erroneously conflated the exterior shape of the acetabular cups in Willert, Khalili, and Horber with the articulating surface in the interior of the cups. As the rejection is based on an erroneous factual finding, the conclusion of obviousness cannot stand. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that "[t]he legal conclusion of obviousness must be supported by facts. Where the legal conclusion is not supported by facts it cannot stand."). Accordingly, as the articulating surface in the cups of Khalili, Willert, or Horber lack a semi-ellipsoid shape, the Examiner's reasoning to modify Stone's articulation surface lacks rational underpinnings. Therefore, for the foregoing reasons, we do not sustain the rejection, under 35 U.S.C. Â§103(a), of claim 1 and claims 2, 3, 8-12, and 14 which depend thereon. DECISION The Examiner's decision rejecting claims 1-3, 8-12, and 14 is REVERSED. 4 Appeal2014-004508 Application 12/780,051 REVERSED 5