Ex Parte Rhodes et alDownload PDFPatent Trial and Appeal BoardNov 21, 201211425921 (P.T.A.B. Nov. 21, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JAMES MATTHEW RHODES and JORDAN SOONJA LEE ____________ Appeal 2010-005423 Application 11/425,921 Technology Center 3700 ____________ Before GAY ANN SPAHN, BRETT C. MARTIN, and RICHARD E. RICE, Administrative Patent Judges. SPAHN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE James Matthew Rhodes and Jordan Soonja Lee (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s rejections of claims 1-3, 5- 7, 9-12, and 19. Appellants cancelled claims 4, 8, and 13-18. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2010-005423 Application 11/425,921 2 The Claimed Subject Matter The claimed subject matter relates “generally to orthopaedic prostheses, and particularly to tibial inserts and the keel portion of the tibial insert.” Spec. 1, ll. 20-21. Claims 1 and 19 are independent and claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A tibial insert comprising: a platform including an upper bearing surface, and a plurality of keels extending downwardly from the platform, each of the plurality of keels having a longitudinal axis and being positioned such that a first longitudinal axis of a first keel of the plurality of keels intersects a second longitudinal axis of a second keel of the plurality of keels. The Rejections The following Examiner’s rejections are before us for review: (1). claims 1-3, 5, and 9-12 under 35 U.S.C. § 102(b) as anticipated by Fell (US 6,966,928 B2, issued Nov. 22, 2005); and (2). claims 6, 7, and 19 under 35 U.S.C. § 103(a) as unpatentable over Fell. OPINION Rejection (1) – Anticipation based on Fell The Examiner finds that Fell discloses each and every limitation to anticipate independent claim 1. Ans. 3-4. In particular, the Examiner finds that Fell discloses a plurality of keels, with each of the keels meeting Appellants’ explicit definition of the claim term “keel” set forth in the Appeal 2010-005423 Application 11/425,921 3 Specification. Ans. 5-6 (quoting Spec. 12, l. 21 to Spec. 13, l. 3). With respect to paragraph (iii) of the Specification’s definition, the Examiner explains that Fell’s keels have: a ratio between a first length, L1, measured along the distal-most edge of the structure (width of the keel) and a second length, L2, measured along the edge of the structure which is formed with or abuts the bottom surface of the platform (width of the keel where it abuts the tibial platform), the ratio is between .15 and 1.0 (The disclosed ratio of Fell is 1.0, because the width of the keel does not change). Ans. 6. The Examiner further explains that Appellants’ “definition does not specify that L1 and L2 must be measured along the length of the keel,” and “Appellant erroneously imputes this assumption into the definition.” Id. Appellants argue that the Examiner’s “rejection erroneously assumes that the term “length” [in Appellants’ definition of keel in the Specification] may be reasonably construed to mean width.” Reply Br. 4-5. Appellants assert that their Specification “make[s] clear that the ‘first length, L1,’ and the ‘second length, L2,’ clearly refer to the length of the keel” so as to “inform[] the person of ordinary skill that length means length, and nothing in the [S]pecification would lead one of ordinary skill to reasonably believe that length means width as alleged by the Examiner.” Id. at 5. Appellants also assert that “[i]n each and every illustration and discussion of L1 and L2, L1 and L2 are measured along the length of the keel,” and “Appellants distinguish L1 and L2 as measurements of length and use other symbols as measurements of the width (W) and the height (H) of the keel.” Id. We determine the scope of the claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest Appeal 2010-005423 Application 11/425,921 4 reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition.” In re Bigio, 381 F.3d 1320, 1325 (Fed Cir. 2004). The properly interpreted claim must then be compared with the prior art. Here, as pointed out by Appellants, the Specification expressly disclaims the Examiner’s broader definition that the widths of Fell’s members 322a and 322b as illustrated in Figure 6 may be considered the lengths L1 and L2 to meet the Specification’s explicit definition of the claim term “keel” by indicating that “‘a keel is distinct from a fin which typically extends downwardly from the platform to a tip or point thus defining a first length measured along the distal-most edge of the fin which is less than 15% the length of the edge of the fin which abuts the bottom surface of the platform.’” App. Br. 8 (quoting Spec. 13, ll. 7-10, emphasis omitted); see also Reply Br. 4. Since a person of ordinary skill in the art would understand the Specification to define that length is measured along the longitudinal axis 15 of the keel 16 as is specifically illustrated in Figure 2 and discussed at page 13, line 19 through page 14, line 3, the person of ordinary skill in the art would find the Examiner’s interpretation, that Fell’s widths at the opposite distal edges of the members 322a and 322b in Figure 6 constitute the first length, L1, and the second length, L2, respectively, of the Specification’s explicit definition of the claim term “keel” to be unreasonable. Appeal 2010-005423 Application 11/425,921 5 Accordingly, we cannot sustain the Examiner’s rejection of independent claim 1, and claims 2, 3, 5, and 9-12 dependent thereon, under 35 U.S.C. § 102(b) as anticipated by Fell. Rejection (2) – Obviousness based on Fell The Examiner’s rejection of claims 6, 7, and 19 relies on the same unreasonable finding discussed supra that Fell’s width at the opposite distal edges of members 322a and 322b in Figure 6 constitutes the first length, L1, and the second length, L2, respectively, to satisfy the Specification’s express definition of the claim term “keel.” Ans. 4-5. Thus, for the same reasons as discussed supra, we cannot sustain the Examiner’s rejection of claims 6, 7, and 19 under 35 U.S.C. § 103(a) as unpatentable over Fell. DECISION We reverse the Examiner’s decision to reject claims 1-3, 5-7, 9-12, and 19. REVERSED Klh Copy with citationCopy as parenthetical citation