Ex Parte Masini

Patent Trial and Appeal Board

Dec 4, 2012

11231271 (P.T.A.B. Dec. 4, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MICHAEL A. MASINI
__________

Appeal 2010-011958
Application 11/231,271
Technology Center 3700
__________

Before TONI R. SCHEINER, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of installing a prosthesis onto a distal femur. The Examiner rejected the
claims as anticipated. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

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Application 11/231,271

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Statement of the Case
Background
“In knee-replacement surgery, the present invention allows for the
creation of a symmetric extension gap while providing restoration of the
joint line with respect to patellar femoral joint in the distal plane, thereby
optimizing patellar femoral mechanics” (Spec. 4, ll. 16-18).
The Claims
Claims 1-7 are on appeal. Claims 2-6 have not been argued separately
and therefore stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
Claims 1 and 7 are representative and read as follows:
1. A method of installing a prosthesis onto a distal femur
having an intramedullary canal so that the joint is restored
with respect to the patellar femoral joint in the distal plane,
the method comprising the steps of:
installing a rod or stem having a first end positioned
within the intramedullary canal and a second end that
remains exposed;
coupling a referencing fixture to the second end of the
rod or stem;
measuring the distal-most extent of the lateral femoral
condyle or trochlear region using the referencing fixture;
and
installing the prosthesis in accordance with the distal-
most extent of the lateral femoral condyle or trochlear
region, as measured with the referencing fixture.

7. When installing a prosthesis onto a distal femur
having a trochlear region, an improvement to promote
restoration with respect to the patellar femoral joint in the
distal plane, comprising:
increasing the depth of the trochlea with increasing
implant size so as to optimize the patella femoral mechanics.

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The issue
The Examiner rejected claims 1-7 under 35 U.S.C. § 102(e) as
anticipated by Katz
1
(Ans. 3-5).
The Examiner finds that “Katz discloses a method of installing a
prosthesis . . . onto a distal femur having an intramedullary canal so that the
joint is restored with respect to the patellar femoral joint in the distal plane,
the method comprising . . . measuring the distal-most extent of the lateral
femoral condyle or trochlear region using the referencing fixture” (Ans. 3).
Appellant contends that “the Katz reference does not meet the steps of
measuring the distal-most extent of the lateral femoral condyle or trochlear
region using a referencing fixture, and installing the prosthesis in accordance
with the distal-most extent as measured” (App. Br. 5).
The Examiner responds and finds that Katz teaches “using the
measure distance D‟ to determine thickness, including thickness t2.
Examiner directs attention to Figs. 1 and 2, which show that t2 is a
„measurement of the distal most extent of the lateral femoral condyle‟” (Ans.
6).
The Examiner also finds that “the limitation, „measuring the distal-
most extent of the lateral femoral condyle or trochlear region using a
referencing fixture,‟ does not clearly and distinctly point out from what the
distal-point extent is being measured from.” The Examiner finds that Figure
12 of Katz “shows the reference guide 30 attached to the stem 24. Tool 30 is
shown abutting the distal end of the lateral femoral condyle” (Ans. 6). The
Examiner finds that Katz teaches “using the tool 30 to use measured distance

1
Katz, L., US 6,024,746, issued Feb. 15, 2000.
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D‟ to determine the thickness t2 to be resected from the distal end of the
femur” (Ans. 6). The Examiner finds that Katz teaches that the “guide is
adjusted to the proper position, using scale 91 for „measuring the distal-most
extent of the lateral femoral condyle.‟ Therefore, the „extent of the lateral
femoral condyle‟ can also be interpreted as being measured from the „plane
perpendicular to the rod‟ described above and seen in Fig. 12” (Ans. 7).
The Examiner also finds that “independent Claim 7 does not include
these steps, and the rejection appears to be uncontested” (Ans. 7).
Appellant contends that
The resection 12 (see Fig. 2, above) is preferably made with
t2 = t3. These are thicknesses. Although thickness t2 extends
from the trochlear region to the distal-most extent of the
lateral femoral condyle, neither the distal-most extent of the
trochlear region, nor the distal-most extent of the lateral
femoral condyle are measured. In other words, according to
Katz, the thickness t2 be the same regardless of the distal-
most extent of the trochlear region or the lateral femoral
condyle.

(Reply Br. 2).
2

The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s conclusion that Katz teaches “measuring the distal-
most extent of the lateral femoral condyle or trochlear region using the
referencing fixture” as required by claim 1?

2
Since the Reply Brief lacks page numbering, we number the
pages consecutively from the first page with the heading
“APPELLANT‟S REPLY BRIEF”.
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Findings of Fact
1. Katz teaches “methods and apparatus for locating bone cuts on
the medial and lateral femoral condyles to form seating surfaces for a
femoral knee prosthesis, and to coordinate tibial and patellar resection and
replacement with femoral resection and replacement” (Katz, col. 2, ll. 51-
55).
2. Katz teaches “placing a longitudinal intramedullary rod in the
femur such that an end of the rod projects from the femur” (Katz, col. 3, ll.
53-55).
3. Katz teaches “mounting a tool on the projecting end of the rod,
establishing, by said tool, an angular position of said prospective planar cut
along a plane” (Katz, col. 3, ll. 55-57).
4. Figure 2 of Katz is reproduced below:

“FIG. 2 is a diagrammatic illustration of the knee joint” (Katz, col. 5, l. 23).

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5. Katz teaches that the
distal end cut 12 is made so that the maximum thickness t2
of bone resected at the distal end is substantially equal to t3,
i.e., the maximum thickness t2 of bone resected at the more
prominent condyle at the distal end (the medial condyle 6 in
FIG. 2) is equal to the minimum thickness t3 of bone
resected at the posterior surface.

(Katz, col. 9, ll. 34-39).
6. Figure 5 of Katz is reproduced below:

“FIG. 5 is a side view . . . in which the tibia has been turned 90° to expose
the distal end of the femur, an intramedullary rod has been inserted into the
femur and a tool placed on the rod” (Katz, col. 5, ll. 31-34).
7. Katz teaches that:
Referring now to FIG. 5, in order to establish the precise
positions of the three planar cuts 10, 11, 12 to be made on
the femur 1, a referencing or datum system is utilized which
in the description herein is in the form of an intramedullary
rod 20 installed in a bore 21 formed in the femur 1. The use
of the intramedullary rod 20 as a benchmark or datum is
known in the art

(Katz, col. 9, ll. 40-46).
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8. Figure 12 of Katz is reproduced below:

“FIG. 12 is a top, plan view showing the cutting guide installed on the tool”
(Katz, col. 5, ll. 47-48).
9. Katz teaches, regarding figure 12, that at “the top of the guide
bar 61 another scale 91 is provided. The scale 91 is marked in millimeters
and represents the distance from a plane perpendicular to the rod and tangent
to the high point of the distal end surface of the more prominent of the
medial or lateral condyles” (Katz, col. 12, ll. 18-22).
10. Katz teaches that “the guide 90 is moved until the slots 95 are
aligned with the distance on scale 91 equal to the determined thickness t3.
The guide 90 is then locked on guide bar 61” (Katz, col. 12, ll. 38-41).
11. Katz teaches that a “conventional cutting blade is then inserted
in guide slots 95 to cut the distal ends of the condyles 6, 7 along the planar
cut 12” (Katz, col. 12, ll. 50-52).
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Principles of Law
Claim terms are interpreted using the broadest reasonable
interpretation in light of the Specification. See, e.g., In re Hyatt, 211 F.3d
1367, 1372 (Fed. Cir. 2000) (“[D]uring examination proceedings, claims are
given their broadest reasonable interpretation consistent with the
specification.”).
“A single prior art reference that discloses, either expressly or
inherently, each limitation of a claim invalidates that claim by anticipation.”
Perricone v. Medicis Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir.
2005).
Analysis
Claim interpretation is at the heart of patent examination because
before a claim is properly interpreted, its scope cannot be compared to the
prior art. In this case, Appellant contends that “the Katz reference does not
teach or suggest Appellant‟s step of measuring the distal-most extent of the
lateral femoral condyle or trochlear region using a referencing fixture
coupled to an intramedullary rod or stem” (Reply Br. 1).
It is the meaning of the phrase “measuring the distal-most extent of
the lateral femoral condyle” which is at issue. (Claim 1).
During prosecution, claim terms are given their broadest reasonable
interpretation as they would be understood by persons of ordinary skill in the
art in the light of the Specification. Therefore, we first turn to the
Specification, but Appellant does not identify, and we do not find, any
definition or explanation of “distal-most extent” in the Specification.
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The Examiner finds that “the limitation, „measuring the distal-most
extent of the lateral femoral condyle or trochlear region using a referencing
fixture,‟ does not clearly and distinctly point out from what the distal-point
extent is being measured from” (Ans. 6). The Examiner finds that Figure 12
of Katz “shows the reference guide 30 attached to the stem 24. Tool 30 is
shown abutting the distal end of the lateral femoral condyle” (Ans. 6). The
Examiner finds that Katz teaches “using the tool 30 to use measured distance
D‟ to determine the thickness t2 to be resected from the distal end of the
femur” (Ans. 6).
Appellant responds that “since the Examiner did not issue a rejection
under 35 USC §112, second paragraph, Appellant‟s limitation is by default
definite and the recitation of a „starting point‟ is presumably unnecessary”
(Reply Br. 3).
We find that the Examiner has the better position. We agree with the
Examiner that the claim phrase does not require any particular measurement
from the “distal-most extent”. While we agree with Appellant (and
presumably the Examiner) that the absence of a starting point is not
indefinite, the limitation broadly opens the claim to any measurement
whatsoever which begins from the “distal-most extent of the lateral femoral
condyle”. Without any limitation to a particular starting point in either
Claims 1 or 5 or in the Specification, we find the broadest reasonable
interpretation, consistent with the Specification, to permit any measurement
whatsoever which begins from the “distal-most extent of the lateral femoral
condyle”. See In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989) (“[D]uring
patent prosecution when claims can be amended, ambiguities should be
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recognized, scope and breadth of language explored, and clarification
imposed.”)
Appellant contends that “the Katz reference does not meet the steps of
measuring the distal-most extent of the lateral femoral condyle or trochlear
region using a referencing fixture, and installing the prosthesis in accordance
with the distal-most extent as measured” (App. Br. 5).
We are not persuaded. Katz clearly teaches measurements from the
“distal-most extent of the lateral femoral condyle” when Katz makes the t2
measurement shown in Figure 2 (FF 4). Katz specifically teaches that:
Referring now to FIG. 5, in order to establish the precise
positions of the three planar cuts 10, 11, 12 to be made on
the femur 1, a referencing or datum system is utilized which
in the description herein is in the form of an intramedullary
rod 20 installed in a bore 21 formed in the femur 1. The use
of the intramedullary rod 20 as a benchmark or datum is
known in the art

(Katz, col. 9, ll. 40-46; FF 5). Therefore, the planar cut 12 is made after
measuring along the rod a specific data point where Figure 2 shows the
comparison to the distal-most extent of the lateral femoral condyle (FF 4-5).
Katz also clearly makes use of a measurement from the lateral femoral
condyle in Figure 12 (FF 8), where Katz teaches that at “the top of the guide
bar 61 another scale 91 is provided. The scale 91 is marked in millimeters
and represents the distance from a plane perpendicular to the rod and tangent
to the high point of the distal end surface of the more prominent of the
medial or lateral condyles” (Katz, col. 12, ll. 18-22; FF 9).
Appellant contends that in Katz the “resection 12 . . . is preferably
made with t2 = t3. These are thicknesses. Although thickness t2 extends from
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the trochlear region to the distal-most extent of the lateral femoral condyle,
neither the distal-most extent of the trochlear region, nor the distal-most
extent of the lateral femoral condyle are measured” (Reply Br. 2).
We are not persuaded. Measurement of a “thickness” where the
starting point is the distal-most point of the femoral condyle satisfies the
claim requirement of claim 1 to “measuring the distal-most extent of the
lateral femoral condyle or trochlear region using the referencing fixture”.
The measurement made in Katz is the distance between the distal most
extent lateral femoral condyle and the distal end cut 12, which is a measure
of distance using the referencing fixture (FF 5). Appellant provides no
reason why “thickness” cannot satisfy the requirement of claim 1, pointing
to no language which distinguishes Katz‟s measurement from claim 1.
Conclusion of Law
The evidence of record supports the Examiner‟s conclusion that Katz
teaches “measuring the distal-most extent of the lateral femoral condyle or
trochlear region using the referencing fixture” as required by claim 1.
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C. §
102(e) as anticipated by Katz. Pursuant to 37 C.F.R. § 41.37(c)(1), we also
affirm the rejection of claims 2-7 as these claims were not argued separately.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED
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