Ex Parte Solomons

Patent Trial and Appeal Board

Mar 27, 2017

12518191 (P.T.A.B. Mar. 27, 2017)

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.
12/518,191 06/08/2009 Michael Wayne Solomons HHI.P.US0003 2891
7590
Arthur M Reginelli
106 South Main Street
Suite 400
Akron, OH 44308
03/29/2017 EXAMINER
GANESAN, SUBA
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
03/29/2017 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):
pto@rennerkenner.com
akruger@rennerkenner.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL WAYNE SOLOMONS
Appeal 2014-006925
Application 12/518,191
Technology Center 3700
Before: MICHELLE R. OSINSKI, BEVERLY M. BUNTING, and
GORDON D. KINDER, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant1 appeals under 35 U.S.C. § 134 from a rejection of claims 1
and 3—11. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
The claims are directed to a trapezium bone prosthesis. Appeal Br. 16
(Claims App.). Claim 1 illustrates the claimed subject matter and is
reproduced below:
1 The inventor, Michael Wayne Solomons, informs us that he is the real
party in interest. Appeal Br. 3.
Appeal 2014-006925
Application 12/518,191
1. A prosthesis which includes:
an implant which is configured, contoured and
dimensioned to facilitate engagement and articulation with a
trapezoid, scaphoid, index metacarpal and thumb metacarapal
[sic] bones of a patient to allow the implant to imitate or replicate
the anatomic characteristics and functions of a trapezium bone to
be replaced; and
means for mounting the implant on a flexor carpi radialis
(FCR) tendon of a patient thereby to inhibit dislocation of the
implant in use.
Appeal Br. 16 (Claims App.).
The prior art relied upon by the Examiner in rejecting the claims on
REFERENCES
appeal is:
Stubstad U.S. 3,745,590
U.S. 5,013,316
U.S. 5,352,229
July 17, 1973
May 7, 1991
Oct. 4, 1994
Jan. 25, 2007
Goble
Goble
Lowe U.S. 2007/0021839 A1
2
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Application 12/518,191
REJECTIONS
Claims 1 and 3—11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lowe in view of Goble ‘229 and Goble ‘316 with
supporting evidence from Stubstad.2,3
OPINION
This decision turns on the interpretation of the limitation in claim 1,
“means for mounting the implant on a . . . tendon . . . Appeal Br. 16
(Claims App.). Claim 1 is the only independent claim, and Appellant argues
claims 1 and 3—11 together as a group. Appeal Br. 7—15. We select claim 1
as representative, and claims 3—11 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
Appellant argues that when the “means clause” of claim 1 is properly
construed, the subject matter of claim 1 is not unpatentable over Lowe
combined with either of the Goble patents. Appeal Br. 7 et seq. We turn,
then, to the proper construction of the last clause of claim 1. “An element in
2 A rejection of claims 1 and 3—11, dated August 12, 2013, under 35 U.S.C.
§ 112 (first para.) has been withdrawn. Answer 5—6. That rejection stated in
pertinent part:
The specification does not describe means for mounting an
implant on an FCR tendon to inhibit dislocation in use while
allowing the implant to move relative to the length of tendon.
This amended language is not described in the original
specification or drawings or claims in a manner sufficient to
convey that the inventor(s) had possession of the claimed
invention at the time the application was filed.
Id. at 6.
3 An amendment filed Nov. 12, 2013, deleted the phrase in italics in footnote
2, above, and also cancelled claims 27—30.
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Application 12/518,191
a claim for a combination . . . expressed as a means ... for performing a
specified function . . . shall be construed to cover the corresponding structure
described in the specification and equivalents thereof.” 35 U.S.C. § 112,
para. 6.
“The first step in construing a means-plus-fimction claim limitation is
to define the particular function of the claim limitation.” Golight Inc. v.
Wal-Mart Stores Inc., 355 F.3d 1327, 1333—34 (Fed. Cir. 2004) (citing
Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1376 (Fed. Cir. 2001)).
Here, there is little doubt that the claimed function is to mount the implant to
the FCR tendon. Spec. 6, first full para, (“hook portion 30 to facilitate
retention of the FCR tendon 18, and with it the implant 12.1.”), Ans. 2
(“claims recite function []means for mounting the implant.”).
The next step in construing a means-plus-fimction claim
limitation is to look to the specification and identify the
corresponding structure for that function. Under this second
step, ‘structure disclosed in the specification is "corresponding"
structure only if the specification or prosecution history clearly
links or associates that structure to the function recited in the
claim.
Golight, Inc., 355 F.3d at 1334 (internal citations omitted.) The Examiner
found “the corresponding means described in the specification includes a
hook (figure 2) and an elbow (figure 8).” Ans. 3. Appellant agrees. “The
means for mounting are set forth in the specification and drawings include
the following: a hook-shaped element as described at page 6 and shown in
Figures 3—6; and an elbow-shaped element as described at pages 6—7 and
shown in Figures 7—8.” Appeal Br. 6 (Summary of Claimed Subject
Matter); see also Reply Br. 3.
4
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Application 12/518,191
The statute, quoted above, also requires that a “means” clause cover
“equivalents” to the disclosed means. In order for a prior art element to
meet a section 112, paragraph 6, means-plus-function limitation, the prior art
element must either be the same as the disclosed structure or be a section
112, paragraph 6 equivalent. In re Donaldson Co., 16 F.3d 1189, 1195 (Fed.
Cir. 1994) (en banc). Two structures may be “equivalent” for purposes of
section 112, paragraph 6 if they perform the identical function, in
substantially the same way, with substantially the same result. Kemco Sales,
Inc. v. Control Papers Co., 208 F.3d 1352, 1364 (Fed. Cir. 2000).
The Examiner finds that Lowe discloses a trapezium implant (Final
Act. 4—5) and a means for mounting the implant on the FCR tendon while
noting that Lowe does not specifically disclose use of the FCR tendon as a
mount but is capable of being so mounted. Final Act. 5. The Examiner
further finds that Lowe’s use of a suture to mount the implant is “an
equivalent mounting means to Applicant’s mounting means as described in
Applicant’s specification” (citing Spec. 19,4 figure 2) “because both means
attach filamentous body structures to a trapezium prosthesis.” Id.
The Examiner finds that Goble ‘229 discloses an anchor with a hook
portion 30 and an extension portion 17 that extends from the hook portion,
citing figure 1. Id. The Examiner further finds that Goble ‘316 teaches the
interchangeability of ligament and tendon anchors, citing column 3, lines
65—67 (“anchor system for anchoring a ligament, tendon, or the like graft”).
Id. at 5—6.
4 We take this to be a reference to the third full paragraph on page 2 of the
Specification.
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Application 12/518,191
With these factual predicates, the Examiner concludes that it would
have been obvious to provide the trapezium implant of Lowe with a tendon
anchor having a hook and extension as taught by Goble ‘229 and ‘316 in
order to anchor a tendon to the implant. Id. at 6. The Examiner finds that
the skilled artisan would have been motivated to use the tendon anchor of
Goble ‘229 with the prosthetic trapezium of Lowe “in order to provide a
stronger anchor structure that cannot be accidentally cut during the surgical
procedure.” Id.
Turning to the question of whether the Lowe/Goble ‘229 combination
is an equivalent of the disclosed means, the Examiner applies the Kemco
test: The Examiner finds that Lowe performs the identical function specified
in the claims because Lowe’s implant is mounted to the surrounding
ligaments, and Goble ‘229 and ‘316 teach a stronger ligament/tendon anchor
to secure a ligament or tendon. Ans. 6—7. The proposed combination
functions in substantially the same way as the way disclosed in the
specification. Namely, both Appellant’s hook and elbow secure the tendon
between the hook or elbow and the prosthesis just as Goble ‘229 teaches an
anchor that hooks around the ligament and holds it securely between the
arms 17 of Goble ‘229. Ans. 7. Finally, the Examiner concludes that “in
both Goble ‘229 and Appellant’s ‘means for mounting’, the filamentous
body structure is secured, thus both mounts produce substantially the same
results.” Id.
Appellant asserts that the cited prior art structures and combinations
of structures are not equivalent to the structures disclosed in Appellant’s
specification. Appeal Br. 7. Appellant contends that the Examiner was
wrong to equate the function of Lowe’s structure to the function of the
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Application 12/518,191
claimed means for mounting, and that the Examiner was wrong to say that
an anchor for a tendon is the equivalent of an anchor for a ligament because
both anchor filamentous elongate body structures. Appeal Br. 7—8.
However, Appellant does not explain these asserted errors except as
addressed below, and so without more, they do not persuade us of Examiner
error.
Contrary to Appellant’s assertion (Appeal Br. 7), we do not find that
the Examiner focused exclusively on the function performed by the prior art
structures. Function is necessarily determined when construing a clause in a
claim that invokes 35 U.S.C. § 112, | 6, both in the first step and also when
determining whether prior art structures are equivalents, which is done using
the function-way-result test. See Kemco, supra. Appellant has not
persuaded us the Examiner failed to make findings on each of the three parts
of the Kemco test. See Ans. 6—7.
Appellant contends that the interchangeability of parts must be known
to those of ordinary skill in the art, and that in light of the established
surgical techniques for replacing trapezium bones with implants, the use of
Lowe’s implant with Goble ‘229’s clamp would not be recognized as
interchangeable with Appellant’s elbow or hook. Appeal Br. 9. There are
two reasons this argument is not persuasive. First, the Federal Circuit does
not require that the interchangeability of elements be known, as asserted by
Appellant. In Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus.,
Inc., 145 F.3d 1303, 1309 (Fed. Cir. 1998), cited and relied on by Appellant,
the court said known interchangeability is “an important factor” but “is
certainly not dispositive”. See also DePuy Spine, Inc. v. Medtronic Sofomor
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Application 12/518,191
Danek, Inc., 567 F.3d 1314, 1336—37 (Fed. Cir. 2009) (quoting Chiuminatta
as above and emphasizing “not dispositive.”)
Second, Appellant’s argument is not based on the limitations of claim
1. To meet the identical function requirement of claim 1 the Lowe/Goble
‘229 combination only needs to mount the prosthesis to the tendon. In an
attempt to show that Goble ‘229’s clamp was not an art recognized
equivalent of the claimed means for mounting, Appellant makes several
arguments about how trapezium replacement surgery would be performed.5
For example, Appellant argues that it would be difficult to drive the staple
from Goble ‘229 into bone. Appeal Br. 11—13. The argument is not
convincing because Appellant ignores the fact that the proposed combination
would have Goble ‘299’s staple fit into the predrilled holes of Lowe.
Instead, we agree with the Examiner’s finding that the function of the means
for mounting is broadly to mount the prosthesis to the tendon (Ans. 2, 6—7
(“identical function specified in the claims because Lowe’s implant is
mounted to the surrounding ligaments.”)). Appellant also argues that the
claimed means for mounting is secured by, e.g., a bolt and nut. Appeal Br.
12. However, the fastening means is not part of the means for mounting, as
admitted by Appellant. See Appeal Br. 6.6
5 We also note that there is no evidence in the record to support Appellant's
factual assertions about surgical techniques. Appellant's Specification
describes how to use his device, but not all similar surgeries. It is well
settled that arguments of counsel cannot take the place of factually supported
objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir.
1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
6 We note that Appellant “must identify the structure . . . described in the
specification in the Record as corresponding to each claimed function with
reference to the specification in the Record by page and line number or by
paragraph number, and to the drawing, if any, by reference characters.” 37
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In another argument, directed to subject matter outside the scope of
claim 1, Appellant contends that the spikes of Goble ‘229 would have to be
removed to provide a smooth surface with which to contact the tendon.
Prosecution history estoppel precludes this argument. Appellant gave up
any claim to sliding movement of the tendon with respect to the prosthesis
when it canceled that subject matter from claim 1 in response to the
Examiner’s finding that this feature is not disclosed in the application. Ans.
8; see also Festo v. Shoketsu Kinzoku Kogyo Kabushiki, 344 F. 3d 1359,
1366 (Fed. Cir. 2003), and footnotes 2 and 3, above. Asserting that the hook
or elbow that forms the means for mounting must be smooth, is an effort by
Appellant to recapture this surrendered claim scope. For that reason,
Appellant’s arguments relating to a smooth hook or elbow are not
persuasive. Moreover, “[t]he court must construe the function of a means-
plus-fimction limitation to include the limitations contained in the claim
language, and only those limitations. ... It is improper to narrow the scope
of the function beyond the claim language.” Cardiac Pacemakers, Inc. v. St.
Jude Medical, Inc., 296 F.3d 1106, 1113 (Fed. Cir. 2002) (citing Lockheed
Martin Corp. v. Space Sys./Loral, Inc., 249 F.3d 1314, 1324 (Fed. Cir.
2001)). See also Micro Chem. Inc. v. Great Plains Chem. Co., 194 F.3d
1250, 1258 (Fed. Cir. 1999) (“An error in identification of the function can
improperly alter the identification of the structure in the specification
corresponding to that function.”).
Appellant contends that the Examiner has failed to show sufficient
motivation to combine the prosthesis secured by a suture described in Fowe
CFR § 41.37(c)(l)(iii). Appellant did not identify the fasteners. See Appeal
Br. 6.
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Application 12/518,191
with the fastener taught by Goble ‘229. Appeal Br. 13—14, Reply Br. 7—8.
Appellant challenges the proposed combination as nonsensical in view of
standard operating procedures, and Appellant asserts the motivation found
by the Examiner for making the proposed combination not realistic because,
during ordinary operating procedures, there would be no cutting after the
prosthesis is in place and therefore no reason to protect the means for
mounting from a stray scalpel. Appeal Br. 9—13. In doing so Appellant
focuses on when, in an ordinary surgical replacement of a trapezium bone,
cutting might be done, suggesting that no cutting takes place at times when
the suture of Lowe might be exposed. Id. The Examiner finds that cutting
could still happen, and Appellant has provided no evidence to show this is
not true. However, an overarching reason for finding Appellant’s argument
not persuasive is that principal motivation for combining Lowe and Goebel
‘229 found by the Examiner was to make the anchoring structure stronger.
Final Act. 6, Ans. 4. Appellant has provided no evidence or arguments
demonstrating that a desire for a stronger anchor would not be sufficient
motivation for the Lowe/Goble ‘229 combination.
Appellant’s Reply Brief repeats its arguments on some issues and
raises others for the first time. Appellant seeks to include in the “means for
mounting” the manner in which the hook and/or elbow are fixed to the
prosthesis (Reply Br. 2), and specifically Appellant again argues that the
disclosed structure necessarily includes a smooth surface, an argument we
find Appellant is estopped from making. Reply Br. 3^4. The attributes
disclosed in a specification become part of the claim scope “only if the
specification or prosecution history clearly links or associates that structure
to the function recited in the claim.” Med. Instrumentation & Diagnostics
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Application 12/518,191
Corp. v. ElektaAB, 344 F.3d 1205, 1210 (Fed. Cir. 2003). Setting aside the
estoppel which bars Appellant from asserting a smooth surface for some part
of the hook and/or elbow of the claimed “means for mounting”, the surface
texture is not mentioned in the Specification and not identified in the
Summary of Claimed Subject Matter, as required by 37 C.F.R. § 41.37(c)(1)
(iii). The asserted “smooth surface” of the hook and elbow are at best
disclosed in the Figures by an absence of surface texture. This does not
clearly link or associate a speculative surface quality to the function of
mounting a patient’s FCR tendon.
Continuing his effort to include additional limitations in the means for
mounting, Appellant also argues that the means for mounting “necessarily
includes adequate structure to engage the implant to allow installation of the
prosthesis.” Reply Br. 4 (citing Specification 6,12). The bolts and clips that
hold Appellant’s means for mounting in place are not part of the means for
mounting, as discussed above. Instead, the “retaining means” 46 and 60 are
described as a separate means (Spec. 6—7) and are not clearly linked to the
function of mounting the FCR tendon to the prosthesis, but instead to
holding the means for mounting to the prosthesis. Accordingly, Appellant’s
arguments do not persuade us that the Examiner erred in his construction of
“means for mounting” to exclude how that device might be mounted to a
prosthesis.
Appellant next argues that Lowe does not disclose a trapezium
implant that meets the limitations of the first clause of claim 1. Reply Br. 4.
This argument is made in response to the fact finding stated in the
Examiner’s Answer, page 2. The Examiner made the identical finding with
respect to Lowe’s disclosure of a trapezium implant in the Final Action,
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Application 12/518,191
page 4. Appellant did not make this argument in his Appeal Brief, and has
not shown good cause for us to consider this argument now. We therefore
do not consider the arguments in the second and third full paragraphs of the
Reply Brief, page 4. 37 CFR § 41.41(b)(2).7
Appellant’s Reply Brief next argues that there was error in finding
“Lowe’s mounting means are considered an equivalent mounting means
. . . .” Reply Br. 4. This same finding is found verbatim in the Final Action,
page 5. The finding was identified in Appellant’s Appeal Brief, page 8, as
being an error, but no argument was made identifying what the error was
and there was no discussion of Lowe’s rough surface as affecting
equivalence. See Appeal Br. 8—9. Because this is a new argument not in
response to an argument made by in the Examiner’s Answer and without
good cause shown to raise it for the first time in Appellant’s Reply Brief, we
decline to consider it. 37 CFR § 41.41(b).
Appellant next argues that the combination of Lowe and Goble is
inappropriate because it fails to meet limitations associated with the hook
and elbow as disclosed in the Specification and because it is based on
function alone. Reply Br. 5. In support of this proposition, Appellant points
to the roughened sides of the prosthesis of Lowe. Reply Br. 6. Whatever
7 “[T]he exception [in 37 C.F.R. § 41.41(b)(2) permitting a response to
the Examiner’s argument in a Reply] did not apply because ‘we do not
interpret the rule to allow an appellant to state conclusory arguments in
the opening brief and defer all substantive argument to the reply brief
(Dec. 5-6). In other words, because the Final Action provided sufficient
notice of the grounds of rejection and Appellant chose not to present
any substantive argument in the Appeal Brief as to why the cited
portions of the references did not teach the claim limitations, any such
arguments were already waived.” Ex Parte Bernhard Michalski,
Appeal No. 2013-005601, slip op. at 3 (PTAB Sept. 25, 2015).
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the merits of this distinction, this argument was not raised in Appellant’s
Appeal Brief and is not made in response to any specified argument by the
Examiner and is made without any showing of good cause why we should
consider it at this time. We therefore decline to consider this argument. 37
CFR§ 41.41 (d)(2).
Appellant further argues that the surgical process of replacing a
trapezium bone precludes the combination of prior art teachings relied upon
by the Examiner. Reply Br. 6—7. As noted above this argument is not
supported by any facts in the record. Therefore, we are not persuaded by
Appellant of Examiner error.
In view of the foregoing, we are not persuaded by Appellant’s
arguments that the Examiner erred in rejecting claim 1. For the same
reasons, the rejection of claims 3—11 is also sustained.
DECISION
The Examiner’s rejection of claims 1 and 3—11 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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