Ex Parte Klotz

Patent Trial and Appeal Board

Sep 19, 2012

11241387 (P.T.A.B. Sep. 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.
11/241,387 09/30/2005 Conrad L. Klotz 1671-0350 5432
7590 09/19/2012
Maginot, Moore & Beck LLP
Chase Tower, Suite 3250
111 Monument Circle
Indianapolis, IN 46204-5109
EXAMINER
SHAY, RANDY CITRIN
ART UNIT PAPER NUMBER
3774
MAIL DATE DELIVERY MODE
09/19/2012 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 CONRAD L. KLOTZ
____________________

Appeal 2011-001948
Application 11/241,387
Technology Center 3700
____________________

Before: PHILLIP J. KAUFFMAN, LYNNE H. BROWNE, and
HYUN J. JUNG, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001948
Application 11/241,387

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STATEMENT OF CASE
Appellant seeks review of the Examiner’s rejection of claims 1, 4, 8-
11, and 15-28 under 35 U.S.C. § 102(e) as anticipated by Glien (DE 101 23
517 C1; pub. Nov. 28, 2002) 1 and alternatively under 35 U.S.C. § 103(a) as
unpatentable over Glien and McQueen (US 7,192,449 B1; iss. Mar. 20,
2007). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

THE INVENTION
Appellant’s claimed invention relates to “a system for achieving
variable positions for the head component of a joint prosthesis relative to a
bone-engaging portion of the prosthesis.” Spec., para. [0001]. Claims 1 and
10 are the independent claims on appeal, are illustrative, and are reproduced
below:
1. A prosthesis assembly, comprising:
a stem configured to be implanted in bone, said stem
including a receptacle extending from an open proximal end to
a closed distal end, said receptacle having a tapered portion
interposed between said open proximal end and said closed
distal end, and said tapered portion being defined by a tapered
wall structure;
a head having a bearing surface configured to mate with
at least one of a natural opposing joint component and a
prosthetic opposing joint component, said head further having a
coupling portion; and
a mounting element including (i) a proximal portion
positioned in mating relationship with said coupling portion of
said head, and (ii) a frusto-spherical distal portion positioned in
contact with said tapered wall structure;

1 Refers to English translation by McElroy Translation Company, PTO 06-
1776, dated Jan. 2006.
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wherein said mounting element is mechanically locked in
fixed relation to said stem by said frusto-spherical distal portion
being positioned in friction fit engagement with said tapered
wall structure and contacting said receptacle only along an
inwardly tapered portion of said receptacle.

10. A prosthesis assembly, comprising:
a stem including a bone engagement portion and a
receptacle having a tapered portion which is defined by a
tapered wall structure;
a head including a bearing surface and a coupling
portion; and
a mounting element including (i) a proximal portion
configured to mate with said coupling portion of said head, and
(ii) a distal portion defining a spheroidal bearing surface
positioned in continuous contact about an entire periphery of
said receptacle.

OPINION2
Anticipation by Glien
Claims 1, 4, 8, 9, and 15-19
Independent claim 1 recites that the frusto-spherical distal portion of
the mounting element is positioned so that it contacts the receptacle of the
stem “only along an inwardly tapered portion” of the receptacle.
The Examiner found that Glien discloses a mounting element (middle
piece 20) having a frusto-spherical distal portion (partially spherical
projection 23) that contacts the receptacle (recess 14) of the stem (widening
proximal head section 12 of stem 10) only along on inwardly tapered

2 We have not considered the Examiner's comments in the Office
Communication mailed Nov. 8, 2010. An Examiner's acknowledgement of
receipt and consideration of a Reply Brief under 37 C.F.R. § 41.43(a)(1) is
not a Supplemental Answer.
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portions (first and second clamping surfaces 16 and 17) of the receptacle
(recess 14). Ans. 4-5, 7-8; see also Glien, paras. [0044], [0045]; figs. 6-8.
Claim 1 calls for the frusto-spherical distal portion to contact the
receptacle of the stem “only along an inwardly tapered portion,” meaning a
single tapered portion. Thus, the Examiner’s finding is deficient on its face
in that it finds Glien discloses contact at “portions” (more than one) while in
contrast, claim 1 calls for the frusto-spherical distal portion to contact the
receptacle of the stem “only along an inwardly tapered portion” (meaning a
single tapered portion).
Further, this finding is based upon the interpretation that an inwardly
tapered portion as claimed, is a portion that projects inward with respect to
the radial surface of the receptacle. Ans. 4, 10-12. In other words,
according to the Examiner, a portion of the receptacle wall tapers inwardly
as claimed if it extends towards the center of the receptacle.3 However, such
interpretation is unreasonable because any surface that tapers inwardly
(towards the center of the receptacle), also tapers outwardly (away from the
center of the receptacle).
Claim 1 calls for the inwardly tapered portion to be interposed
between the open proximal end and the closed distal end of the receptacle in
the stem. Such context suggests the portion tapers inwardly with respect to
the specified distance (i.e., along the longitudinal axis of the bore from the
open to the closed end of the receptacle). See Phillips v. AWH Corp., 415
F.3d 1303, 1314 (Fed. Cir. 2005) (“the claims themselves provide
substantial guidance as to the meaning of particular claim terms,” and “‘the

3 By way of contrast, a portion of the wall that increases the radius of the
receptacle (as seen in plan view), that is extends further from the center of
the receptacle, is an outwardly tapered portion.
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context of the surrounding words of the claim also must be considered in
determining the ordinary and customary meaning of those terms’”) (quoting
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)
and ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003)).
This interpretation is consistent with the Specification which describes that
an articulating portion 34 of mounting portion 30 achieves a press-fit
engagement within a “tapered bore 16” when pushed sufficiently far into the
tapered bore 16. Spec., para. [0032]; fig. 2. Therefore, claim 1 calls for a
receptacle that includes a portion that tapers inwardly with respect to the
longitudinal axis (from the open to the closed end) of the receptacle.
Glien’s frusto-spherical distal portion (partially spherical projection
23) contacts the receptacle (recess 14) on an inwardly tapered portion
(second clamping surface 17) and on an outwardly tapered portion of the
stem (first clamping surface 16). Glien, paras. [0044], [0045]; figs. 6-8.
Therefore, Glien does not disclose a frusto-spherical distal portion that
contacts the receptacle of the stem “only along an inwardly tapered portion”
of the receptacle as called for in claim 1.
Accordingly, we cannot sustain the rejection of independent claim 1
and its dependent claims 4, 8, 9, and 15-19, as anticipated by Glien.

Claims 10, 11, and 20-28
Independent claim 10 recites that the spherical bearing surface of the
mounting element is positioned “in continuous contact about an entire
periphery” of the receptacle.
Glien’s frusto-spherical distal portion (partially spherical projection
23) is segmented by two intersecting slots 26 along its entire length. Glien,
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para. [0045]; figs. 6, 7. For that reason, Glien’s frusto-spherical distal
portion (partially spherical projection 23) is in discontinuous contact
(interrupted by slots 26) with the entire perimeter of the receptacle (recess
14). Contra. Ans. 4-5, 13-14. As such, Glien does not disclose a spherical
bearing surface in continuous contact with a receptacle as called for in claim
10.
Accordingly, we cannot sustain the rejection of independent claim 10
and its dependent claims 11 and 20-28 as anticipated by Glien.

Obviousness over Glien and McQueen
Claims 1, 4, 8, 9, and 15-19
Independent claim 1 calls for the frusto-spherical distal portion of the
mounting element to be positioned in friction-fit engagement with the
tapered wall structure of the receptacle. The Specification does not provide
a lexicographical definition of a “friction-fit.” The Examiner states that a
friction-fit, or press-fit, constitutes two surfaces held together by contact of
force, or “‘a fastening between two parts which is achieved by friction after
the parts are pushed together.’” Ans. 8.
The Specification states that articulating portion 34 is sized so that a
press-fit engagement is achieved by pressing portion 34 sufficiently far into
tapered bore 16 of the stem 12, thus fixing the mounting element 30 to the
stem 12. Spec., paras. [0032], [0033]4; see also para. [0009] (describing the
friction fit with the tapered bore as fixing the mounting element relative to
the stem); fig. 2. Therefore, consistent with the ordinary meaning, the

4 In context, describing machine screw 40 as providing a second fixation
capability to augment the press-fit between articulating portion 34 and
tapered bore 16 implies the press-fit described is a first fixation capability.
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Specification states that two surfaces (the frusto-spherical distal portion of
the mounting element and the receptacle of the stem) are sized so that when
pressed together, they produce a fit that holds those parts together.5
The Examiner found that McQueen’s shell wall 28 and flexible liner
wall 526 snap together, producing a friction-fit as called for in independent
claim 1. Ans. 9-10; see also Ans. 7 (not specifying corresponding elements
in McQueen, but citing McQueen col. 3, ll. 3-29).
McQueen does not explicitly disclose that shell wall 28 has a larger
radius than flexible liner wall 52, that shell wall 28 is friction or press-fit to
flexible liner wall 52, or that shell wall 28 snaps to flexible liner wall 52.
McQueen, passim.
McQueen discloses an improved hip prosthesis 20 that includes a liner
24 that is inserted into a shell 22. McQueen, col. 1, l. 44; col. 2, l. 67; col. 3,
ll. 3-4, 32; col. 4, ll. 20-26;fig. 1. In such position, shell wall 28 of shell 22
is adjacent flexible liner wall 52 of liner 24. McQueen, fig. 2. To complete
assembly, ball 92 of the femur 90 is placed in the liner 24, and the retainer
ring 26 is slid along the femur 90 towards the liner 24 until catch lip 84 of
catch leg 78 of the retainer ring 26 snapably engages the catch ledge 38 of
shell wall 28 of the liner 24. McQueen, col. 4, ll. 26-43; figs. 1, 2.
Given this, McQueen discloses that shell wall 28 is adjacent flexible
liner wall 52. However, we cannot find by a preponderance of the evidence
that shell wall 28 and flexible liner wall 52 produce a friction-fit as called
for in independent claim 1. See App. Br. 12. Accordingly, we cannot

5 We discern nothing in the Specification inconsistent with this definition.
6 Referred to by the Examiner as “non-articulating shell 28” and “liner 52.”
Ans. 10.
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sustain the rejection of independent claim 1 and its dependent claims 4, 8, 9,
and 15-19.

Claims 10, 11, and 23-28
Independent claim 10 calls for a spherical bearing surface positioned
to be in continuous contact about an entire periphery of a receptacle.
The Examiner makes a generalized finding that a continuous contact
fit for prosthesis assemblies was well-known in the art as evidenced by
McQueen, but fails to identify the elements of McQueen that correspond to a
spherical bearing surface positioned to be in continuous contact about an
entire periphery of a receptacle as called for in claim 10. Ans. 7 (citing col.
3, ll. 3-29).
McQueen does not disclose a spherical bearing surface. McQueen,
passim. Rather, McQueen discloses a liner 24 that includes a flexible liner
wall 52 having a substantially spherical inner liner surface 56 that defines a
liner receiving area 58 that receives the ball 92 of a patient’s femur 90.
McQueen, col. 3, ll. 38-39; col. 4, ll. 26-31; fig. 2. The Examiner provides
no explanation of how such disclosure would have led a person of ordinary
skill in the art to modify Glien’s apparatus to reach the subject matter of
independent claim 10.
As such, we agree with Appellant that the Examiner has failed to
make a prima facie case of obviousness. See App. Br. 18. Accordingly, we
cannot sustain the rejection of independent claim 10 and its dependent
claims 11, and 23-28.

Appeal 2011-001948
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DECISION
We reverse the Examiner’s decision to reject claims 1, 4, 8-11, and
15-28 under 35 U.S.C. § 102(e) as anticipated by Glien.
We reverse the Examiner’s decision to reject claims 1, 4, 8-11, and
15-28 under 35 U.S.C. § 103(a) as unpatentable over Glien and McQueen.

REVERSED

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