Ex Parte Sanders et al

Patent Trial and Appeal Board

Jul 29, 2016

13670664 (P.T.A.B. Jul. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/670,664 11/07/2012 Roy W. Sanders
22428 7590 08/02/2016
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
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.
112431-0116 7271
EXAMINER
NELSON, CHRISTINE L
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
08/02/2016 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROY W. SANDERS and SERGIO GUTIERREZ
Appeal2014-004450
Application 13/670,664
Technology Center 3700
Before LYNNE H. BROWNE, JILL D. HILL, and PAUL J. KORNICZKY,
Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants, Roy W. Sanders, et al., 1 appeal under 35 U.S.C. § 134
from the Examiner's decision rejecting claims 1-5 and 8-21 under 3 5
U.S.C. § 103(a) as unpatentable over Reiley (US 7,534,246, iss. May 19,
2009) and Schwyzer (US 2011/0106266 Al, pub. May 5, 2011). 2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
According to Appellants, the real party in interest is Foot Innovations,
LLC. Br. 1.
2 Claims 6 and 7 are cancelled, and claim 22 is withdrawn. Id.
Appeal2014-004450
Application 13/670,664
THE CLAIMED SUBJECT MATTER
The claims are directed to "joint arthroplasty systems, methods, and
components." Spec. i-f 1. Claims 1, 11, and 20 are independent. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A system for use in a joint arthroplasty, the system
compnsmg:
a first implant component having a first implant proximal
end, a first implant distal end, and a first implant body defining
a first implant surface, a concave first articulating surface
opposably facing the first implant surface, a first implant
protuberance extending outward and away from the first implant
surface from a first implant protuberance first end to a first
implant protuberance second end, and a passageway extending
from a first opening defined on the first implant proximal end to
a second opening defined on the first implant protuberance
second end;
a second implant component having a second implant
proximal end, a second implant distal end, and a second implant
body defining a second implant surface, a recess extending into
the second implant body from a side opposably facing the second
implant surface to a recess base, a second implant protuberance
extending outward and away from the second implant surface
from a second implant protuberance first end to a second implant
protuberance second end, and a passageway extending from a
first opening defined on the recess base to a second opening
defined on the second implant protuberance second end; and
an insert adapted to be releasably attached to the second
implant component and having an insert articulating surface that
is convex and adapted to articulate with the first articulating
surface,
wherein said system is configured for use for joint
arthroplasty in a foot.
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Application 13/670,664
Claim 1
OPINION
The Examiner finds that Reiley discloses all of the limitations of
claim 1 except for the limitation reciting the "first protuberance as having a
passageway extending from the proximal side of the first implant component
to the free end of the protuberance." Final Act. 2-3. The Examiner also
finds that Schwyzer discloses this missing feature, and that it would have
been obvious "to modify the first component of Reiley to include this
[passageway] feature in order to further secure the implant to the joint by
virtue of a fastener through the passageway of the protuberance." Id. at 3.
Appellants present several arguments contending that the Examiner's
rejection is incorrect. First, Appellants argue that "Reiley 'does not disclose
the first protuberance as having a passageway extending from the proximal
side of the first implant component to the free end of the protuberance.'" Br.
11 (quoting Final Act. 3) (emphasis added). The Examiner, however, finds
that Schwyzer, not Reiley, discloses the passageway recited in claim 1.
Final Act. 3. Thus, Appellants' arguments are not responsive to the rejection
as articulated by the Examiner and do not apprise us of error. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.").
Second, Appellants argue that Reiley fails to disclose the recess
recited in claim 1, stating that "sidewalls 64 do not result in 'a recess
extending into the second implant body."' Br. 12-13. However,
Appellants do not construe the "recess" limitation or identify support for any
construction in their Specification. The Specification states that "[r]ecess
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Application 13/670,664
139 is adapted to receive a portion, or the entirety, of insert 106." Spec. if
87. Similarly, Figures 12A-12C, for example, in Reiley illustrate a space
defined between platform 20 and sidewalls 64 which is adapted to receive a
portion, or the entirety, of inserts such as joint surface 26, spacers 58, and
plate 60. See also Reiley, 12:30-42, 12:55-57. Furthermore, one dictionary
defines "recess" as an "indentation, cleft, or alcove." Recess, Merriam-
Webster, http://www.merriam-webster.com/dictionary/recess (last visited
July 11, 2016). Given such a definition and the usage of "recess" in the
Specification, Appellants do not apprise us of error in the Examiner's
finding that Reiley discloses "a recess extending into the second implant
body (between the top of arms 64) from a side opposably facing the flat
second implant surface." Final Act. 3.
Third, Appellants argue that "Schwyzer merely discloses 'anchoring
pins,"' and fails to disclose (1) a passageway extending between the first
opening and the "second opening defined on the first implant protuberance
second end," and (2) a passageway extending between the first opening and
the "second opening defined on the second implant protuberance second
end." Br. 12-13. Appellants' arguments, however, do not address the
Examiner's rejection in this respect and, as such, are non-responsive to the
rejection as articulated by the Examiner. See In re Merck & Co., 800 F.2d at
1097.
The Examiner, for example, finds that:
as taught by Schwyzer, it is known in the art of joint arthroplasty
to provide angled protuberances (15, 16) on an implant
component with a passageway (20, 21) that extends from a first
opening defined on the implant proximal end (see Fig. 1) to a
second opening defined on the implant protuberance (see Fig. 2)
in order to receive and guide a fastener (22, 23) therethrough to
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Application 13/670,664
secure the implant to the bone of the joint. In view of the
teaching of Schwyzer, it would have been obvious to one of
ordinary skill in the art at the time of the invention to modify the
first component of Reiley to include this [passageway] feature
in order to further secure the implant to the joint by virtue of a
fastener through the passageway of the protuberance in order to
augment the support provided by the long tibial stem of Reiley
and more securely mount the prosthesis to the bone by having a
fastener enter the bone at a different angle from the stem.
Final Act. 3 (emphasis added). The Examiner also explained that "Reiley
[sic Schwyzer] is only relied upon to teach that providing an opening [sic
passageway] that extends from a first opening ... to a second opening
defined on the end of a protuberance is known. . . . The Examiner is merely
suggesting modifying Reiley to include such a passageway into the first
implant component to more securely attach the implant to the bone ... "
Ans. 6-7 (emphasis added). Furthermore, Figures 1--4 of Schwyzer also
show a passageway (e.g., threaded bore 19) extending from opening 18 on
the end of protuberance 17 to the recess base. Schwyzer i-f 42; Figs. 2; 4.
With regard to Appellants' argument that Schwyzer does not disclose the
recited passageway in the second implant component, the Examiner relies on
Reiley, not Schwyzer for this feature. Ans. 7 ("Reiley discloses the second
implant component (20) as having a protuberance with a passageway that
extends from the implant base to the second end of the protuberance, as
required by claim 1. "). Thus, Appellants' arguments do not apprise us of
Examiner error.
Fourth, Appellants argue that Reiley and Schwyzer are non-analogous
art. Br. 15-18. To qualify as prior art for an obviousness analysis, a
reference must qualify as "analogous art," i.e., it must satisfy one of the
following conditions: (1) the reference must be from the same field of
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endeavor; or (2) the reference must be reasonably pertinent to the particular
problem with which the inventor is involved. K-TEC, Inc. v. Vita-Mix
Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012). Appellants argue that
Schwyzer is drawn to a shoulder prosthesis while Reiley relates to an ankle
prosthesis, and one skilled in the art would not look to a shoulder prosthesis
to improve an ankle prosthesis. Br. 15. We agree with the Examiner's
determination that both references are "within the same art area of prosthetic
joint implants, and therefore share the same concern with respect to securely
attaching the two parts of the joint implant to the bone." Final Act. 5; Ans. 4
("both Reiley and Schwyzer are bone joint prostheses and they share the
common problems involved with how to secure the components of the
prosthesis to the bone at the point of attachment."). As the Examiner notes,
in describing the field of endeavor for the instant invention, the Specification
"specifically says that the prosthetic joint 'can be used to treat any suitable
ailment or joint within the body', making clear that the scope of the
invention is not limited to joints in the foot." Ans. 5; see also Spec. i-f 71.
Thus, both Reiley and Schwyzer qualify as analogous art as they are in the
same field of endeavor as the instant invention.
Fifth, Appellants argue that the Final Action "sets forth no motivation
for one of ordinary skill in the art to modify the ankle prostheses of Reiley
by adding the anchoring pins ... of Schwyzer to both implant components
of Reiley." Br. 19. Appellants' argument, however, mischaracterizes the
Examiner's reasoning:
In view of the teaching of Schwyzer, it would have been
obvious to one of ordinary skill in the art at the time of the
invention to modify the first component of Reiley to include
this [passageway] feature in order to further secure the implant
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to the joint by virtue of a fastener through the passageway of
the protuberance in order to augment the support provided by
the long tibial stem of Reiley and more securely mount the
prosthesis to the bone by having a fastener enter the bone at a
different angle from the stem. Inasmuch as there is no structure
which would prevent the system of Reiley as modified by
Schwyzer from being used for joint arthroplasty in a foot, the
system meets the limitation of being so configured.
Final Act. 3; Ans. 8. Appellants' argument does not explain why the
Examiner's articulated reasoning lacks rational underpinnings. Thus,
Appellants' arguments are not persuasive.
Finally, Appellants contend that Reiley explicitly teaches away from
the invention because Reiley teaches "[t]he prosthesis can be assembled in a
snap fit and/or interlocking fashion that provides positive locking means
without the use of screws or other fasteners." Br. 19. Reiley merely
discloses an alternative which is not, by itself, sufficient to demonstrate a
teaching away. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
("The prior art's mere disclosure of more than one alternative does not
constitute a teaching away from any of [the disclosed] alternatives because
such disclosure does not criticize, discredit, or otherwise discourage the
claimed solution claimed .... "). Thus, Appellants' argument does not
apprise us of error.
For the reasons discussed above, we sustain the rejection of claim 1
under 35 U.S.C. § 103(a) as unpatentable over Reiley and Schwyzer.
Claim 11
Appellants argue that "[Reiley], alone or in combination with
Schwyzer, fails to render the invention defined by claim 11 obvious under
35 U.S.C. § 103 for the reasons set forth above regarding claim 1." Br. 20.
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For the reasons discussed above with respect to claim 1, these arguments are
unconvmcmg.
Appellants also argue that
Reiley fails to disclose a second implant component
having a recess but instead merely discloses a flat talar platform
20 having sidewalls 64. Accordingly, contrary to the suggestion
in the final Office Action, Reiley does not disclose an implant
component having a recess and "a recess first portion extending
from the recess base" and "a recess second portion extending
from the recess first portion" as required in claim 11.
Br. 21.
For the reasons discussed above with respect to the "recess" limitation
in claim 1, Reiley discloses that the flat talar platform 20 and sidewalls 64
define a "recess." The Examiner correctly finds that Figure 12C, for
example, of Reiley discloses that this recess also "includes a recess first
portion extending up from the recess base at the bottom of component 20
(having a wide width and receiving locking plate 60) and a recess second
portion extending up from the recess first portion (and having a narrower
width than the recess first portion)." Ans. 9 (citing to Reiley, Fig. 12C).
Appellants do not identify any error in the Examiner's findings, and we
sustain the rejection of claim 11 as unpatentable in view of Reiley and
Schwyzer.
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Application 13/670,664
Claim 203
Appellants argue that "Reiley, alone or in combination with
Schwyzer, fails to render the invention defined by independent claim 20
obvious under 35 U.S.C. § 103 for the reasons set forth above in Section (1)
regarding independent claims 1 and in Section (2) regarding independent
claim 11." Br. 21. For the reasons discussed above with respect to claims 1
and 11, we sustain the Examiner's rejection of claim 20 as unpatentable in
view of Reiley and Schwyzer.
Claims 2-5, 8, 12-14, and 17
For dependent claims 2-5, 8, 12-14, and 17, Appellants argue that, for
the reasons "discussed above in relation to independent claims 1, 11 and
20," "Reiley, alone or in combination with Schwyzer, fails to teach or
suggest" the limitations in these dependent claims. Br. 23-24. For the
reasons discussed above with respect to claims 1, 11 and 20, we sustain the
rejection of claims 2-5, 8, 12-14, and 17.
3 According to Appellants,
The Office Action states "Applicant is advised that should claim
12 be found allowable, claim 20 will be objected to under 37
CPR 1. 7 5 as being a substantial duplicate thereof' (Office Action
mailed September 4, 2013, page 5). Appellant previously
amended claim 12 to incorporate the limitations of claim 21 to
overcome any remaining objections under 37 CPR 1.75.
Accordingly, Appellant requests the objection be reversed.
Br. 30. Since the rejections of claims 12 and 20 are sustained, we do not
need to address the objection.
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Application 13/670,664
Claims 10 and 19
Claims 10 and 19 depend from rejected independent claims 1 and 11,
respectively. Appellants argue that "Reiley, alone or in combination with
Schwyzer, fails to teach or suggest a system wherein 'the first implant
component is adapted to be attached to the talus; and wherein the second
implant component is adapted to be attached to the calcaneus. "' Br. 24--27.
Figure 7C, for example, of Reiley discloses that first implant component 12
is "adapted to be attached" to talus 15 and second implant component 20 is
"adapted to be attached" to calcaneus 17. See also Reiley 6:45--49. We
agree with the Examiner's determination that the "implant of Reiley in view
of Schwyzer is capable of being used in the manner claimed [in claims 10
and 19] and is therefore 'adapted to' be so used." Ans. 10. Appellants do
not show any error in the Examiner's findings and, thus, are not persuasive.
We sustain the rejections of claims 10 and 19.
Claims 15 and 16
For claim 15, Appellants argue that "the passageway axis for
anchoring pins 15 and 16 of Schwyzer appear to be in the same plane." Br.
28. For claim 16, Appellants argue that the "passageway axis for each of the
anchoring pins 15 and 16 of Schwyzer appear to be in the same plane and do
not intersect at an angle." Id. Appellants' reference to the Schwyzer
passageways, rather than Reiley, does not address the rejection as articulated
by the Examiner. See In re Merck & Co., 800 F .2d at 1097. We agree with
the Examiner's determination that, when Reiley is modified by the Schwyzer
teachings, the passageway in Reiley' s first implant protuberance has a first
plane, the passageway in Reiley' s second implant protuberance has a second
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Application 13/670,664
plane, and the two planes intersect each other at an angle when the implant
articulates. Final Act. 4 ("the first and second components articulate with
respect to one another, there will inherently be [a multitude] of positions of
the first component relative to the second component for which the first and
second planes will intersect at an angle."). Appellants do not apprise us of
error. We sustain the rejection of claims 15 and 16.
Claim 21
For dependent claim 21, Appellants argue that
Reiley merely describes an ankle replacement system
using "a multi-piece stem component" which is installed into a
tibia and/or talus (e.g., Reiley, column 5, line 60 to column 6,
line 11 ). Appellant submits it would not have been obvious to
configure the system of Reiley for use in either the subtalar,
calcaneocuboid and talonavicular joints required by claim 21 ...
As discussed above, the biomechanics and structural
requirements of these devices are very different and the devices
of Reiley and Schwyzer serve remote purposes compared to each
other and the present invention.
Br. 29-30. First, we note that Reiley discloses an implant "configured for
implanting" into a subtalar joint as recited by claim 21. See, e.g., Reiley,
6:39--42 ("This stem 26 serves the dual function of supporting the talar
platform as well as fusing the sub-talar joint, should that be necessary or
beneficial to the patient.") (emphasis added); Figs. 2, 7B, 7C. We also agree
with the Examiner's reasoning that:
Inasmuch as no structure has been set forth in the claim which
Reiley as modified by Schwyzer do not meet, and it would be
physically possible to attach the first and second implant
components to the joints mentioned in these claims, the implant
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of Reiley as modified by Schwyzer is "configured to" be attached
to them. If there are any structural features which specifically
configure the system to be implanted in the specific joints
referenced, then it would fall within the capability of one of
ordinary skill in the art to make any adjustments to these types
of features that would be necessary to use it in these other joints,
Ans. 11. We, therefore, sustain the Examiner's rejection of claim 21.
Claim 9
Appellants do not address the Examiner's rejection of claim 9. Thus,
the rejection of claim 9 is summarily sustained.
DECISION
For the above reasons, the Examiner's rejection of claims 1-5 and 8-
21under35 U.S.C. § 103(a) as unpatentable over Reiley and Schwyzer is
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv) (2015).
AFFIRMED
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