Ex Parte Komistek

Patent Trial and Appeal BoardDec 23, 2016

13330259 (P.T.A.B. Dec. 23, 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. 13/330,259 12/19/2011 Richard D. Komistek 265280-224333 8403 23643 7590 12/28/2016 Barnes & Thornburg LLP (IN) 11 S. Meridian Street Indianapolis, IN 46204 EXAMINER JONES, DIANA S ART UNIT PAPER NUMBER 3775 NOTIFICATION DATE DELIVERY MODE 12/28/2016 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): INDocket@btlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD D. KOMISTEK Appeal 2015-003953 Application 13/330,2591 Technology Center 3700 Before LYNNE H. BROWNE, MICHELLE R. OSINSKI, and NATHAN A. ENGELS, Administrative Patent Judges. ENGELS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1, 81—84, 86, 89, and 92—94. Claims 2—80, 85, 87, 88, 90, and 91 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. appellant identifies DePuy (Ireland), a Johnson & Johnson Company, as the real party in interest. App. Br. 2. Appeal 2015-003953 Application 13/330,259 ILLUSTRATIVE CLAIM Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A trial for use with total hip arthroplasty, the trial comprising: a first spherical insert having a plurality of tabs mounted thereto, each of the plurality of tabs at least partially defining an orifice, wherein the first spherical insert is sized to fit within an unreamed acetabulum, the first spherical insert further being sized to contact the acetabulum and a resected femoral neck when the first spherical insert is positioned within the unreamed acetabulum. THE REJECTION Claims 1, 81—84, 86, 89, and 92—94 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Banks et al. (US 2011/0054628 Al; Mar. 3, 2011). ANALYSIS Appellant contends the Examiner erred in finding that Banks discloses the “spherical insert” of claim 1. App. Br. 4. The Examiner finds Banks discloses the claimed spherical insert with Banks’s disclosure of two “substantially semi-spherical” portions that combine to form a spherical insert. Final Act. 2—3; Ans. 5—6. Appellant argues that each of the two semispherical portions disclosed in Banks has a radius different from that of the other portion such that the parts do not combine to form a sphere. See App. Br. 5; Reply Br. 3 (arguing joining half of a baseball to half of a golf ball would not define a sphere). 2 Appeal 2015-003953 Application 13/330,259 We agree with Appellant. Copied below is the relevant portion of Banks’s Figure 12, which depicts an orthopedic insert having a first semispherical portion 110 and a second semispherical portion 147, where the radius of the first semispherical portion is greater than the radius of the second semispherical portion. no Excerpt of Banks Fig. 12: a schematic side, cross-sectional view of an orthopedic device. See Banks |32. As evidenced by Figure 12, the first and second portions do not combine to form a sphere. See also Banks 147 (describing portion 110 as “substantially semi-spherical” and resembling or having some of the characteristics of a sphere). Contrary to the Examiner’s findings, we find no disclosure in Banks of a spherical insert as claimed. Accordingly, we do not sustain the Examiner’s rejection of claim 1. For the same reasons, we do not sustain the Examiner’s rejection of claims 81—84, 86, 89, and 92—94, each of which similarly requires a sphere-shaped surgical instrument. DECISION For the above reasons, we reverse the Examiner’s rejection of claims 1,81-84, 86, 89, and 92-94. REVERSED 3