Ex Parte Michel et al

Patent Trials and Appeals BoardFeb 22, 2019

14453722 - (D) (P.T.A.B. Feb. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/453,722 08/07/2014 26096 7590 02/26/2019 CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR Gerlinde Michel 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. 67145-515PUS1 4708 EXAMINER DUKERT, BRIAN AINSLEY ART UNIT PAPER NUMBER 3774 NOTIFICATION DATE DELIVERY MODE 02/26/2019 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): ptodocket@cgolaw.com cgolaw@yahoo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GERLINDE MICHEL and SAMUEL BACHMAIER Appeal2018-004166 Application 14/453,722 1 Technology Center 3700 Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and CYNTHIA L. MURPHY, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. Â§ 134(a), Appellants appeal from the Examiner's rejection of claims 1-14. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 Appellants identify Arthrex, Inc. as the real party in interest. Appeal Br. 3. Appeal2018-004166 Application 14/453,722 According to Appellants, the "invention relates to a talus implant system and a method for surgical reconstitution of the ankle." Spec. ,r 2. Claims 1 and 9 are the independent claims on appeal. Below, we reproduce claim 1 as illustrative of the appealed claims. 1. A talus surface implant having an arc shaped body with a top side configured for interfacing to the tibia, a bottom side, a front section and a rear section, the bottom side having at least one post configured for interfacing with holes in a talus and a plurality of spikes configured for interfacing with the surface of the talus, wherein the height of the at least one post does not exceed the thickness of the talus, the at least one post is arranged in the front section of the arc shaped body, the front section having less than half of the length of the arc shaped body, the front section being oriented anterior, the plurality of spikes is arranged in the rear section of the arc shaped body, the rear section having less than half of the length of the arc shaped body, the rear section being oriented posterior. REJECTIONS AND PRIOR ART The Examiner rejects the claims as follows: I. Claims 1---6 and 8-14 under 35 U.S.C. Â§ I03(a) as unpatentable based on Gannoe et al. (US 2010/0057216 Al, pub. Mar. 4, 2010) (hereinafter "Gannoe") and Perice et al. (US 6,409,767 Bl, pub. June 25, 2002) (hereinafter "Perice"); and II. Claim 7 under 35 U.S.C. Â§ I03(a) as unpatentable based on Gannoe, Perice, and Perler (US 2012/0109326 Al, pub. May 3, 2012). 2 Appeal2018-004166 Application 14/453,722 ANALYSIS Reiection I As set forth above, independent claim 1 recites the following: 1. A talus surface implant having an arc shaped body with a top side configured for interfacing to the tibia, a bottom side, a front section and a rear section, the bottom side having at least one post configured for interfacing with holes in a talus and a plurality of spikes configured for interfacing with the swface of the talus, wherein the height of the at least one post does not exceed the thickness of the talus, the at least one post is arranged in the front section of the arc shaped body, the front section having less than half of the length of the arc shaped body, the front section being oriented anterior, the plurality of spikes is arranged in the rear section of the arc shaped body, the rear section having less than half of the length of the arc shaped body, the rear section being oriented posterior. Appeal Br., Claims App. (Claim 1) (emphases added). Restated, claim 1 recites a talus implant with both i) a post that does not exceed a thickness of the talus on the talus implant's front section and ii) spikes on the talus implant' s rear section. The Examiner's rejection of the claim is based on a combination of Gannoe and Perice. See, e.g., Final Action 4--5. Gannoe describes talus implant 110 with spikes 600, 605, and 610 on (using the claim's nomenclature) the implant's "front section," as well as threaded hole 615 receiving fixing device 120 that extends through the talus, the threaded hole disposed between (using the claim's nomenclature) the implant's "front section" and "rear section." Gannoe, Figs. 1, 2, 5, 6, ,r 40. Perice describes talus implant 1 with (using the claim's nomenclature) "spikes" on both the implant's "front section" and "rear section," although the "spikes" are unnumbered in Perice's figures and undescribed in Perice's written 3 Appeal2018-004166 Application 14/453,722 narrative. In the rejection, the Examiner finds that it would have been obvious to use Perice's spikes on the rear section of Gannoe's talus implant 110, such that the combination discloses the claimed spikes on the rear section, while Gannoe's spikes 600, 605, and 610 on the front section disclose the claimed post. Appellants argue that the Examiner's rejection is in error because Gannoe does not disclose the post, as claimed. Appeal Br. 8-9. More specifically, according to Appellants, one of ordinary skill would not understand that Gannoe's spikes disclose the claimed post; rather, one of ordinary skill would interpret Gannoe's fixing device 120 that extends through the talus as the claimed post. Id. Thus, according to Appellants, the Examiner's proposed combination fails to disclose a post that does not exceed a thickness of the talus on the talus implant's front section, as claimed. Based on our review, the Examiner does not support adequately that Gannoe's spikes 600, 605, and 610 disclose the claimed post. We note, for example, that Appellants' claims and Specification differentiate between spikes and post. See, e.g., Spec. ,r,r 7, 18, 20, 25. The spikes shown in Appellants' figures appear to be similar to the structure that, as set forth above, Gannoe expressly describes as spikes. See Figs. 2, 4---6; see Gannoe, Figs. 2, 5, 6, ,r 18. Conversely, the post shown in Appellants' figures appear to be similar to Gannoe's fixing device 120, except that fixing device 120 extends through the talus. See Figs. 1, 2, 4--6, 8, 9; see Gannoe, Figs. 1, 2, 9D. This is because, for example, in both Appellants' and Gannoe's figures, discussed supra, spikes are shown as relatively shorter protrusions, with relatively smaller thickness, and tapered ends; while Appellants' post and 4 Appeal2018-004166 Application 14/453,722 Gannoe' s fixing device are shown as relatively longer protrusions, with cylindrical shapes having diameters that are greater than the spikes' thicknesses, without tapered ends. Further, each of Appellants' Specification and Gannoe describes drilling a corresponding cylindrical hole in the talus for insertion of the post and fixing device respectively, but each does not describe drilling a hole for receiving the spikes. See Spec. ,r,r 13, 14, 23; see Gannoe ,r,r 45, 46. Thus, based on the foregoing, we do not sustain the Examiner's obviousness rejection of claim 1. Further, we do not sustain the Examiner's rejection of independent claim 9, which the Examiner rejects for similar reasons as claim 1. Still further, we do not sustain the Examiner's rejection of claims 2-6, 8, and 10-14 that depend from, and which the Examiner rejects with, claims 1 and 9. Rei ection II Claim 7 depends from claim 1. Inasmuch as the Examiner does not rely on Perler to remedy the above-discussed deficiency in claim 1 's rejection, we do not sustain the Examiner's obviousness rejection of claim 7. DECISION We REVERSE the Examiner's obviousness rejections of claims 1-14. REVERSED 5