Ex Parte Smith et al

Patent Trial and Appeal BoardJan 31, 2018

14182696 (P.T.A.B. Jan. 31, 2018)

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. 14/182,696 02/18/2014 Daniel B. Smith 5394.A24US1 2212 104326 7590 02/02/2018 Schwegman Lundberg & Woessner / Zimmer P.O. Box 2938 Minneapolis, MN 55402 EXAMINER ORTIZ, RAFAEL ALFREDO ART UNIT PAPER NUMBER 3728 NOTIFICATION DATE DELIVERY MODE 02/02/2018 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): SLW @ blackhillsip.com USPTO@slwip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANIEL B. SMITH and KATIE M. SCHINDLER (Applicants: BIOMET MANUFACTURING, LLC) Appeal 2017-004667 Application 14/182,696 Technology Center 3700 Before BRETT C. MARTIN, LYNNE H. BROWNE, and ERIC C. JESCHKE, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1—11, 25, and 26. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2017-004667 Application 14/182,696 THE INVENTION Appellants’ claims are directed generally “to methods and devices for reducing implant contamination from handling.” Spec. 11. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An orthopedic implant assembly providing reduced contamination from handling, comprising: an orthopedic implant having an outer surface including a grasping portion and a bonefacing portion; a removable handling cover providing a thin-walled layer shaped to match the grasping portion of the outer surface and extending over the grasping portion of the outer surface; an outer container sealingly housing the orthopedic implant within a sterile environment and supporting the orthopedic implant in an orientation that presents the handling cover for grasping upon opening the outer container; wherein the removable handling cover provides a removable grasping portion for manually grasping, handling and manipulating the implant into an implantation position during implant surgery without the need to directly contact any of the outer surface of the orthopedic implant, and which removable handling cover is removable during surgery after the implant is moved into the implantation position. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Cohen Stocks US 4,750,619 June 14, 1988 US 6,432,141 B1 Aug. 13, 2002 US 6,863,692 B2 Mar. 8, 2005 US 2006/0287733 A1 Dec. 21,2006 US 8,790,413 B2 July 29, 2014 Meulink ’692 Bonutti Meulink (filed Oct. 27, 2005) 2 Appeal 2017-004667 Application 14/182,696 REJECTIONS The Examiner made the following rejections: Claims 4—6 stand rejected under 35 U.S.C. § 112(a) and (b) as failing to comply with the written description requirement, as lacking enablement, and as being indefinite. Ans. 2—3. Claims 1—5, 7, 8, 10, and 25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Meulink and Cohen. Ans. 4. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Meulink, Cohen, and Stocks. Ans. 8. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Meulink, Cohen, and Meulink ’692. Ans. 9. Claims 11 and 26 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Meulink, Cohen, and Bonutti. Ans. 10. ANALYSIS The Examiner rejects claims 4—6 as failing to comply with the written description and enablement requirements as well as being indefinite. These rejections all rest on the same basic premise that the Specification lacks certain detail regarding the specific film and adhesives that would be utilized to create the device in the claims, which really is only a written description issue. The Examiner then restates the same written description issue and recharacterizes it as enablement and indefmiteness.1 Accordingly, in dealing 1 We note that a proper enablement rejection must consider the factors enumerated in In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) and any other appropriate factors. See MPEP §2164.01. We further note that a claim is not per se indefinite even if it does not comply with the enablement or written description requirements. See MPEP § 2174. 3 Appeal 2017-004667 Application 14/182,696 with the written description issue below, we can dispense with the enablement and indefiniteness rejections as well. As Appellants state, “any person skilled in the art would readily understand a ‘compliant film’ and ‘an adhesive’ from the plain meaning of the claim terms, and from the claim when read in light of the specification and based on common knowledge.” App. Br. 10 (emphasis omitted). Appellants also state that “[a] practitioner skilled in the art of orthopedic implant assemblies would routinely use compliant films and adhesives, even if the practitioner isn’t aware of the precise material composition of the film and the adhesive.” Id. Accordingly, it is clear to us that Appellants have satisfied the requirements of § 112 and that specific detail regarding examples of adhesives is not necessary for one of skill in this art to make and use the invention. As such, we do not sustain the rejections under § 112. Regarding the prior art rejections, Appellants argue that the Examiner is in error because “Meulink is not shaped to match any particular element.” App. Br. 14. Appellants’ argument is based upon a much narrower construction that is not necessarily required by the claims. We first note that the Specification does not use the phrase “shaped to match” and so is mostly unhelpful in determining its meaning. The Specification does, however, utilize the term “molded” throughout to describe how the cover is made, which would seem to either imply a more permanent configuration than merely “shaped to match” or require that the cover have a certain shape whether in place on the implant or not. The Specification states, for example, that “handling cover 150 can be molded to closely fit the polished outer surface 148.” Spec. 1 59. We agree that the terminology “molded” implies a more permanent shape to the cover that closely fits the implant, but 4 Appeal 2017-004667 Application 14/182,696 Appellants chose to use a different (and broader) phrase in the claims, which does not imply the same kind of permanence to the shape. We are not, therefore, persuaded that the Examiner is incorrect in finding that “the sleeve is ‘shaped to match the grasping portion of the outer surface’ by the fact that the sleeve of Meulink is made of an elastic material [that] would conform to the shape of the outer surface of the implant due to its material properties.” Ans. 14. It is clear from the Specification that Appellants were aware of language that would connote the kind of permanent shape they desire in the claims when using the term “molded,” but Appellants chose to use broader language, language not specifically utilized anywhere else in the Specification, by claiming that the cover is merely “shaped to match.” We agree with the Examiner that when Meulink’s sleeve is in place over an implant, as shown, for example, in Fig. 5, it is shaped to match the implant in the broad sense allowed by Appellants’ choice of language not clearly defined in the Specification. Nothing in the claims requires that the sleeve also be shaped to match when not in place on the implant and adding such a requirement would be an improper importation of limitations from specific embodiments into the claims. Accordingly, we do not discern any error in the Examiner’s application of Meulink. Appellants do not make any other arguments regarding Meulink or any of the secondary references other than to point out that none of the secondary references cures this alleged defect in the Examiner’s interpretation of the term “shaped to match.” Given that we agree with the Examiner’s interpretation, we further sustain all of the remaining obviousness rejections. 5 Appeal 2017-004667 Application 14/182,696 DECISION For the above reasons, we REVERSE the Examiner’s decision to reject claims 4—6 under § 112, and AFFIRM the Examiner’s decision to reject claims 1—11, 25, and 26 as unpatentable over Meulink and the various secondary references. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 6