Ex Parte Lotke

Patent Trial and Appeal Board

Jan 31, 2017

12480350 (P.T.A.B. Jan. 31, 2017)

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.
12/480,350 06/08/2009 Paul A Lotke 4323-P03363US1/SHE 3227
110 7590 02/01/2017
DANN, DORFMAN, HERRELL & SKILLMAN
1601 MARKET STREET
SUITE 2400
PHILADELPHIA, PA 19103-2307
EXAMINER
SNOW, BRUCE EDWARD
ART UNIT PAPER NUMBER
3738
MAIL DATE DELIVERY MODE
02/01/2017 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 PAUL A. LOTKE
Appeal 2014-006028
Application 12/480,350
Technology Center 3700
Before LINDA E. HORNER, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Paul A. Lotke (“Appellant”) appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 1—9, 12—14, 21—23, 25, and 26,
which are all the pending claims. Appeal Br. 1. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).1
We REVERSE.
1 An oral hearing scheduled for October 21,2016, has been waived due
to Appellant’s failure to file within 21 days any response to the Notice of
Hearing, dated August 12, 2016, or to appear at the hearing as scheduled.
Appeal 2014-006028
Application 12/480,350
CLAIMED SUBJECT MATTER
Appellant’s disclosed invention relates generally to “prosthetics for
knee replacement,” and more particularly to “a prosthesis for replacing the
articulating surfaces of the knee.” Spec. 1 3. Claims 1,12, and 21 are
independent. Claim 1, reproduced below with emphasis added, is illustrative
of the subject matter on appeal.
1. A knee prosthesis for covering a portion of a patient’s
patella, and trochlear groove and intercondylar notch of the
femur, comprising:
a patellar prosthesis configured to cover a posterior
surface of a patella; and
a femoral prosthesis comprising:
a body having a posterior surface configured to
cover a portion of the trochlear groove and an anterior
surface forming a groove that is cooperable with the
posterior surface of the patellar prosthesis;
and at least one of either:
a medial extension having a posterior
surface configured to engage a portion of the
intercondylar notch of the patient, wherein the
medial extension projects away from a distal end
of the body and is configured to extend along a
medial edge of the intercondylar notch to engage a
substantial length of the medial side of the
intercondylar notch; and
a lateral extension having a posterior
surface configured to cover a portion of the
intercondylar notch, wherein the lateral extension
projects away from a distal end of the body and is
configured to extend along a lateral edge of the
intercondylar notch to engage a substantial length
of the lateral side of the intercondylar notch;
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wherein the femoral prosthesis is configured to form an
articular surface between the patella and the femur without
substantially overlying an articular surface between the femur
and the tibia; and
wherein the at least one extension has a length and a
width at an intersection with the body, wherein the length is
substantially greater than the width.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Merchant US 6,616,696 B1 Sept. 9, 2003
Donkers US 2003/0225458 A1 Dec. 4, 2003
Rolston US 2004/0167630 A1 Aug. 26, 2004
Lotke US 7,544,209 B2 June 9, 2009
Keller DE 29 01 009 A1 July 17, 1980
REJECTIONS
The following rejections are before us for review:
I. Claims 1—9, 12—14, 21—23, 25, and 26 stand rejected on the
basis of obviousness-type double patenting as being
unpatentable over claims 1—36 of Lotke. Final Act. 4.
II. Claims 1, 4, 12, and 14 stand rejected under 35 U.S.C. § 102(e)
as clearly anticipated by Rolston. Id. at 5—7.
III. Claims 12—14, 21—23, and 26 stand rejected under 35 U.S.C.
§ 102(e) as anticipated by Donkers. Id. at 7—8.
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IV. Claims 1—9 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Keller or, in the alternative, under 35 U.S.C.
§ 103(a) as being unpatentable over Keller, as evidenced by
Merchant. Id. at 8—9.
ANALYSIS
Rejection I— Claims 1—9, 12—14, 21—23, 25, and 26 as unpatentable
based on obviousness-type double patenting
The Examiner rejected the claims on the basis of obviousness-type
double patenting as being unpatentable over claims 1—36 of Lotke, stating
only that “[ajlthough the conflicting claims are not identical, they are not
patentably distinct from each other claiming the identical knee prosthesis
comprising a femoral component having the same limitations,” and noting
that, with regard to the patellar component, “see at least claim 2 of [Lotke].”
Final Act. 4. We agree with Appellant that a sustainable rejection has not
been established, based on the observation that “[t]his bare assertion of
double-patenting does not meet the Examiner’s burden of making a prima
facie case of non-statutory obviousness-type double-patenting.” Appeal
Br. 9; see id. at 9—10 (citing MPEP § 804 (which explains that the analysis
required for an obviousness-type double patenting rejection is similar to that
which must be undertaken for an obviousness rejection based on 35 U.S.C.
§ 103)).
The Examiner takes the position in the Answer that Appellant’s
arguments “are untimely.” Ans. 9. This is incorrect. Appellant has the
opportunity in the Appeal Brief to present argument against any and all
rejections made in the action from which the appeal is taken. Although we
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agree with the Examiner that Appellant’s arguments “do not point out any
specific patentable distinction between the current application and the stated
patent,” it nevertheless remains the Examiner’s initial burden to set forth a
proper rejection. Accordingly, we do not sustain this rejection.
Rejection II— Claims 1, 4, 12, and 14 as clearly anticipated by Rolston
Independent claim 1 recites, in relevant part, “a femoral prosthesis”
that includes a trochlear groove body portion having “an anterior surface
forming a groove” to cooperate with a posterior surface of a patellar
prosthesis, and an intercondylar notch extension portion having “a posterior
surface configured to engage [and/or cover] a portion of the intercondylar
notch” of the bone of a patient, where “the femoral prosthesis is configured
to form an articular surface between the patella and the femur without
substantially overlying an articular surface between the femur and the
tibia.'” Appeal Br. 16—17, Claims App. (emphasis added). Independent
claim 12 also recites “a femoral prosthesis” and includes similar limitations,
including a recitation that an intercondylar notch portion of the femoral
prosthesis “A configured to form a patellar-femoral articular surface
without substantially overlying a condylar surface of a femoral-tibial
articular surface.'” Id. at 19, Claims App. (emphasis added). Appellant
argues that Rolston does not disclose a femoral prosthesis that is configured
to cover the intercondylar notch without extending onto condylar surfaces,
as in the limitations emphasized above. See Appeal Br. 11—12; Reply
Br. 2, 6. We agree.
In rejecting these claims as anticipated by Rolston, the Examiner
relies on Rolston’s femoral prosthesis component 10 as disclosing the
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femoral prosthesis as recited in the claims. See Final Act. 6—7. Regarding
the limitations emphasized above that the femoral prosthesis be configured
to form an articular surface “without substantially overlying” a condylar
surface, the Examiner states that Rolston meets this limitation based on the
Examiner’s interpretation that a “non-replaced condyle” is not covered
(substantially overlain) by the femoral prosthesis. See id.', Ans. 10. This
interpretation misconstrues the requirements of the claims.
Although we appreciate the Examiner’s position based on Rolston’s
disclosure of a prosthesis that we understand to replace either a medial or
lateral condylar surface (while presumptively leaving uncovered the other
condylar surface), such a prosthesis does not fall within the scope of the
present claims. Considering the plain text of the limitations emphasized
above, we agree with Appellant that Rolston’s prosthesis covers
(substantially overlies) a condylar surface (one or more), thus violating a
requirement of the claimed femoral prosthesis. See Appeal Br. 11—12. The
fact that Rolston’s prosthetic may not also cover the other condylar surface
does not change this fact.
An anticipation rejection requires a finding in a single reference of
each and every limitation as set forth in the claims. As discussed above,
Rolston’s disclosure falls short of this requirement. Accordingly, we do not
sustain this rejection.
Rejection III— Claims 12—14, 21—23, and 26 as anticipated by Donkers
Similar in some respects to the discussion above, independent
claim 12 recites, in relevant part, “a femoral prosthesis” that includes “an
intercondylar notch portion” that “is configured to form a patellar-femoral
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articular surface without substantially overlying a condylar surface of a
femoral-tibial articular surface.'” Appeal Br. 19, Claims App. (emphasis
added). Independent claim 21 similarly recites, in relevant part, “a femoral
prosthesis” that includes “an intercondylar notch portion” that “A configured
to overlie a portion of the intercondylar notch without substantially
extending over an articular surface between a condyle and the tibia.” Id.
at 20, Claims App. (emphasis added). Appellant argues that Donkers does
not disclose a femoral prosthesis that is configured to cover (overlie) the
intercondylar notch without extending onto condylar surfaces, as in the
limitations emphasized above. See Appeal Br. 12—15; Reply Br. 2—5. We
agree.
In rejecting these claims as anticipated by Donkers, the Examiner
relies on Donkers’s femoral component 400 as disclosing the femoral
prosthesis as recited in the claims. See Final Act. 7—8. Regarding the
limitations emphasized above that the femoral prosthesis be configured to
form an articular surface “without substantially overlying” or “extending
over” a condylar surface, the Examiner states that Donkers meets this
limitation based on the Examiner’s interpretation of Donkers’s prosthesis “as
not comprising elements 420 and 430.” Final Act. 8; see Ans. 10—11. This
interpretation is not supported by a preponderance of the evidence.
After review of the disclosure of Donkers, we agree with Appellant
that, even without condylar flanges 420 and 430, “femoral component 400 is
still configured to extend over an articular surface between a condyle and the
tibia.” Appeal Br. 13. Given the anatomy of a knee, it is unclear how
Donkers’s femoral component 400 would not substantially overlie (extend
over) a condylar surface, thus violating a requirement of the claimed femoral
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prosthesis. See id.; Reply Br. 3—5 (both including annotated Figure 4 of
Donkers). The Examiner does not explain adequately how the configuration
of Donkers’s femoral component 400 (even without attaching condylar
flanges 420 and 430, femoral component 400 is still sized and shaped for
selective use with these modular components) would not extend over a
condylar surface, which the claims prohibit. See Ans. 10—11.
An anticipation rejection requires a finding in a single reference of
each and every limitation as set forth in the claims. As discussed above,
Donkers’s disclosure falls short of this requirement. Accordingly, we do not
sustain this rejection.
Rejection IV— Claims 1—9 as anticipated by Keller or, in the alternative,
as unpatentable over Keller, as evidenced by Merchant
As discussed above, independent claim 1 recites, in relevant part, “a
femoral prosthesis” that includes a trochlear groove body portion having “an
anterior surface forming a groove” to cooperate with a posterior surface of a
patellar prosthesis, and an intercondylar notch extension portion having “<2
posterior surface configured to engage [and/or cover] a portion of the
intercondylar notch'1'’ of the bone of a patient, where “the femoral prosthesis
is configured to form an articular surface between the patella and the femur
without substantially overlying an articular surface between the femur and
the tibia.'” Appeal Br. 16—17, Claims App. (emphasis added). Appellant
argues that Keller does not disclose a femoral prosthesis that includes an
intercondylar notch extension portion with a posterior surface that is
configured to engage and/or cover a portion of the intercondylar notch of the
bone of a patient, or that is configured to cover the intercondylar notch
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without extending onto condylar surfaces, as in the limitations emphasized
above, and that Merchant does not cure the deficiencies of Keller. See
Appeal Br. 5—9; Reply Br. 2, 6. We agree.
In rejecting these claims as anticipated by Keller, the Examiner relies
on Keller’s body 19 of sliding insert 17 as disclosing the femoral prosthesis
as recited in the claims. See Final Act. 8—9. Regarding the limitations
emphasized above that the femoral prosthesis include an intercondylar notch
extension portion that is configured to engage and/or cover a portion of the
intercondylar notch of the bone of a patient, and that is configured to form
an articular surface without substantially overlying a condylar surface, the
Examiner finds that Keller discloses such an intercondylar notch extension
portion “generally 20” having “self evident” medial and lateral extensions
that meet these limitations. Id. This finding is not supported by a
preponderance of the evidence.
After review of the disclosure of Keller, we agree with Appellant that
femoral prosthesis 6, including sliding insert 17, is only disclosed as being
configured to slide on (or engage and/or cover) other components of Keller’s
total knee replacement device, such as tibial implant 5 or joint block 30. See
Appeal Br. 6—8; Keller, Figs. 3, 4, 6, 7. Initially, we note that an examiner
must give pending claims their broadest reasonable interpretation, but that
such an interpretation must be consistent with the one that one of ordinary
skill in the art would reach. Here, the Examiner does not explain adequately
why one of ordinary skill in the art would consider Keller’s sliding insert 17,
apart from the remainder of Keller’s upper prosthesis 6 that covers the end
of the femur, to be a “femoral prosthesis” as claimed.
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Moreover, given the anatomy of a knee, it is unclear how Keller’s
sliding insert 17, including bifurcated extension 20 with parallel legs 21,
would be “configured to engage” or “configured to cover” a portion of the
natural intercondylar notch of the bone of a patient, as required by the
claims, rather than being configured to simply slide against joint block 30.
See Appeal Br. 6—8; Reply Br. 2, 6; Keller, Figs. 3, 4, 6, 7. Although the
Examiner takes the position that body 19 of sliding insert 17 “is capable of
being used wherein the posterior surface of one of the extensions engages,
either directly or indirectly, the intercondylar notch of the patient,” such a
speculative position is not supported by the disclosure of Keller, which does
not show this element in relation to an intercondylar notch of a patient.
Ans. 8—9. Thus, the Examiner does not explain sufficiently how the
configuration of Keller’s sliding insert 17 (even if considered alone) would
be configured to engage and/or cover a portion of the natural intercondylar
notch of the bone of a patient, or would be configured to form an articular
surface without substantially overlying a condylar surface, as required by the
claims. See id.
An anticipation rejection requires a finding in a single reference of
each and every limitation as set forth in the claims. As discussed above,
Keller’s disclosure falls short of this requirement. Merchant is cited as
evidence that it was well known to use a patellar prosthesis with a femoral
prosthesis, as an alternative to the anticipation position that such inclusion of
a patellar prosthesis would be inherent, but not to cure the deficiency of
Keller discussed above. See Final Act. 9; Appeal Br. 9. Accordingly, we do
not sustain this rejection.
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DECISION
We REVERSE the Examiner’s rejections of claims 1—9, 12—14,
21—23, 25, and 26.
REVERSED
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