Ex Parte Wright et al

Patent Trial and Appeal Board

May 9, 2013

11526953 (P.T.A.B. May. 9, 2013)

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.
11/526,953 09/26/2006 Sara R. Wright 1671-0389 4202
28078 7590 05/09/2013
MAGINOT, MOORE & BECK, LLP
One Indiana Square, Suite 2200
INDIANAPOLIS, IN 46204
EXAMINER
SCHAPER, MICHAEL T
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
05/09/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte SARA R. WRIGHT, DAREN L. DEFFENBAUGH,
and EDMUND W. FRAZEE
__________

Appeal 2011-012011
Application 11/526,953
Technology Center 3700
__________

Before ERIC GRIMES, FRANCISCO C. PRATS, and
ERICA A. FRANKLIN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to methods
of assembling prosthetic implants. The Examiner has rejected the claims as
anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
STATEMENT OF THE CASE
The Specification discloses impacting devices that “provide impact
force to a prosthetic component in order to secure the prosthetic component
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Application 11/526,953

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to another device or to tissue” (Spec. 1, ¶ 0001). “The disclosed impactor
device is configured to reduce the forces transmitted through the impactor
device to an implant” (id. at 4, ¶ 0011) to reduce “the potential for damage
to the bone tissue or the implant device” (id. at 4, ¶ 0009).
Claims 19-27 and 30-32 are on appeal.
1
Claims 19 and 25 are
representative and read as follows:
19. A method of assembling an implant, the method comprising:
a) providing a first implant component and a second implant
component, the first implant component and second implant component
configured for connection by forcing connection features on the first
component into engagement with connection features on the second
component;
b) providing an impactor device comprising a shaft including an axial
wall, an impaction surface, and an implant engagement surface, wherein a
plurality of holes are formed in the axial wall of the shaft;
c) aligning the connection features of the first implant component with
the connection features of the second an implant component;
d) placing the implant engagement surface of the impactor device and
the first implant component in contact;
e) striking the impaction surface of the impactor device;
f) transferring a first force from the impaction surface to the shaft;
g) diverting a first portion of a transferred first force within the shaft;
h) focusing a second portion of a diverted first portion of the
transferred force; and
i) transferring a focused second portion from the shaft to the first
implant component which brings the connection features on the first implant
component into engagement with the connection features on the second
implant component with a second force that is less than the transferred first
force.

25. A method of assembling an implant, comprising:

1
The rejection of claims 28, 29, and 33-35 was withdrawn (Answer 3).
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positioning a connection feature of a first implant component
proximate a connection feature of a second implant component;
contacting the first implant component with an engagement portion of
an impactor;
transmitting a first axial force to the impactor through an impaction
surface of the impactor;
transferring the first axial force from the impaction surface to an
impactor shaft;
diverting a transferred first axial force within a hollow section of the
impactor shaft;
focusing a portion of a diverted first axial force into a second axial
force within the shaft;
transferring the second axial force to the first implant component with
the hollow section of the impactor shaft; and
axially moving the first implant component toward the second implant
component with the second axial force, the second axial force less than the
first axial force.

The claims stand rejected as follows:
• Claims 23, 25-27, and 30-32 under 35 U.S.C. § 102(b) in view of
Dye;
2
and
• Claims 19-22 and 24 under 35 U.S.C. § 103(a) in view of Murray
3

and Borah.
4

I.
The Examiner has rejected claims 23, 25-27, and 30-32 as anticipated
by Dye. The Examiner finds that Dye discloses a method that meets all of
the limitations of claim 25, including “axially moving the first implant

2
Dye, US 2003/0229356 A1, published Dec. 11, 2003.
3
Murray, US 2003/0074080 A1, published Apr. 17, 2003.
4
Borah, US 3,438,413, issued Apr. 15, 1969.
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component toward the second implant component with the second axial
force (¶14)” (Answer 6).
Appellants argue that Dye does not disclose using an impactor “to
axially move a first component toward a second component,” as required by
claim 25 (Appeal Br. 14). Appellants argue that Dye‟s acetabular shell
impaction instrument is disclosed as being useful only for insertion of a first
component (the shell) into the acetabulum but not for insertion of a second
component (the insert) into the first component (id. at 8-11 and 13-14).
We agree with Appellants that the Examiner has not shown that Dye
anticipates claim 25. The Examiner finds that the acetabular shell impaction
instrument (10) of Dye corresponds to the impactor of claim 25 (Answer 5).
Dye discloses a method of “hip replacement surgery for the acetabulum
using a curved acetabular shell impaction instrument for impacting an
acetabular shell into the acetabulum” (Dye 1, ¶ 0013). Dye discloses that
the method includes the steps of “inserting and aligning an implant shell into
the reamed acetabulum; impacting the implant shell with the acetabular shell
impaction instrument; inserting and impacting an implant insert into the
implant shell; and closing the surgical site” (Id. at 1, ¶ 0014.)
Dye‟s Figure 3 is shown (in relevant part) below:

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Figure 3 shows “the curved shell impaction instrument … implanting an
acetabular shell into the acetabulum” (id. at 2, ¶ 0023). “Head 24 is adapted
to receive striking impacts from a surgical mallet or hammer” (id. at 4,
¶ 0066). Dye discloses that the “connection end 16 includes a bore 40.… A
bolt or screw 50 is captured inside of bore 40.” (Id. at 4, ¶¶ 0068-0069.)
Dye discloses that
[b]olt 50 is threadably engaged with bore 122 so the impaction
instrument can hold, carry, and align the shell into the
acetabulum 126. Once the shell is in position, the impaction end
14 is struck and the shell is impacted into the acetabulum. The
bolt 50 is then threadably disengaged from the shell, and the
instrument is removed.
(Id. at 5, ¶ 0077.)
The Examiner points to Dye‟s paragraph 14 as disclosing that the
acetabular shell impaction instrument is used with both the shell and the
insert (Answer 5, 10). While that paragraph specifically states that the
acetabular shell impaction instrument is used with both the trial shell and the
shell, however, it does not specify that the acetabular shell impaction
instrument is used for impaction of the insert.
The Examiner also points to Dye‟s paragraph 0028 as disclosing that
the acetabular shell impaction instrument is used with both the shell and the
insert (Answer 9-10). That paragraph states that “the method of the present
invention teaches how to implant a prosthetic acetabular shell and insert into
the natural acetabulum using a curved shell impaction instrument” (Dye 2,
¶ 0028). This statement is ambiguous as to whether the impaction
instrument merely plays a role in insertion of the insert (for example, via its
role in implanting the shell) or whether it is used directly to impact the
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insert. Because Dye does not expressly describe using the impaction
instrument to impact the insert – and repeatedly describes the instrument as
an acetabular shell impaction instrument (see, e.g., ¶¶ 0013, 0014) – we do
not find Dye‟s ambiguous statement to be sufficient evidence to support a
finding that Dye discloses using its impaction instrument to impact the insert
in the disclosed method.
Therefore, we agree with Appellants that a preponderance of the
evidence does not support the Examiner‟s finding that Dye discloses the use
of the acetabular shell impaction instrument for impacting the insert and
moving the insert into the acetabular shell. “A claim is anticipated only if
each and every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v.
Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). Because the Examiner
has not set forth a sufficient basis to find that Dye discloses the use of the
acetabular shell impaction instrument to axially move a first implant
component toward a second implant component, as required by claim 25, we
reverse the rejection of claim 25 and dependent claims 26-29 as being
anticipated by Dye.
Independent claim 30, like claim 25, requires using an impactor to
move a first implant component toward a second implant component. For
the reasons discussed above, therefore, we also reverse the rejection of claim
30 and dependent claims 31-33 as being anticipated by Dye.
Claim 23, which depends from independent claim 19, also requires
using an impactor for bringing “the connection features on the first implant
component into engagement with the connection features on the second
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implant component.” Thus, we also reverse the rejection of claim 23 as
being anticipated by Dye.
II.
The Examiner has rejected claims 19-22 and 24 under 35 U.S.C.
§ 103(a) as obvious in view of Murray and Borah. The Examiner finds that
Murray discloses a method of assembling an implant using “an impactor
device comprising a shaft (58) including an axial wall” (Answer 7), but does
not disclose “a plurality of holes formed in the axial wall of the shaft” of the
impactor device (id. at 8). The Examiner finds that Borah discloses a “tool
with a plurality of holes (38 ...) formed in the axial wall of the shaft … for
increased grip for the impaction tool” (id. at 8-9). The Examiner concludes
that it would have been obvious to modify Murray‟s device “wherein a
plurality of holes are formed in the axial wall of the shaft … for increased
grip for the impaction tool” (id.).
Appellants argue that “Borah uses the reference number 38 to identify
„spaced grooves 38‟” (Appeal Br. 26-27). Appellants argue that a “groove is
defined as a „trench, furrow, or groove‟ … Thus, Borah appears to use the
word „groove‟ in a normally accepted manner.” (Id. at 27.)
We agree with Appellants that the Examiner‟s interpretation of the
claim term a “plurality of holes … formed in the axial wall of the shaft” is
unreasonably broad. Although, “during examination proceedings, claims are
given their broadest reasonable interpretation consistent with the
Specification,” In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000),” “the
words of a claim „are generally given their ordinary and customary
meaning.‟” Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir.
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2005). Here, the Specification discloses that a “plurality of holes 60 extend
through the exterior wall 62 of the shaft portion 54 and into the axial channel
62, resulting in a perforated shaft portion 54” (Spec. 7, ¶ 0027). Thus, both
the plain meaning of the term “holes” and the Specification‟s use of the term
make clear that “a plurality of holes … formed in the axial wall of the shaft”
means holes through, rather than grooves in, the axial wall.
Borah discloses a handle for a screwdriver or similar tool (Borah,
col.1, ll. 11-16). Figure 1 of Borah is shown below:

Figure 1 shows Borah‟s screwdriver handle (id. at col. 2, l. 38). Borah
discloses that the handle includes “a series of relatively deep, spaced
grooves 38” (id. at 3, ll. 36-43). Thus, Borah discloses grooves in, rather
than holes through, the axial wall of its tool handle. Since the Examiner has
not shown that the cited references would have made obvious an impactor
device with a plurality of holes in the axial wall, we reverse the rejection of
claim 19 and dependent claims 20-22 and 24 as being obvious in view of
Murray and Borah.
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SUMMARY
We reverse the rejection of claims 23, 25-27 and 30-32 under 35
U.S.C. § 102(b), and the rejection of claims 19-22 and 24 under 35 U.S.C.
§ 103(a).

REVERSED

cdc