Ex Parte Wright et al

Patent Trial and Appeal BoardApr 13, 2016

12981953 (P.T.A.B. Apr. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/981,953 12/30/2010 Abraham P. Wright 23643 7590 04/15/2016 Barnes & Thornburg LLP (IN) 11 S. Meridian Street Indianapolis, IN 46204 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. 265280-210152 7505 EXAMINER SHARMA, YASHITA ART UNIT PAPER NUMBER 3774 NOTIFICATION DATE DELIVERY MODE 04/15/2016 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): INDocket@btlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ABRAHAM P. WRIGHT, WILLIAM P. BARRETT, and DAVID S. BARRETT Appeal2014-002936 Application 12/981,953 Technology Center 3700 Before CHARLES N. GREENHUT, LYNNE H. BROWNE, and PAUL J. KORNICZKY, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Abraham P. Wright et al. (Appellants) appeal under 35 U.S.C. Â§ 134 from the Examiner's decision rejecting claims 1, 2, 4, and 51 under 35 U.S.C. Â§ 103(a) as unpatentable over Supinski (US 2003/0088315 Al, pub. May 8, 2003) and Mendes (US 5,580,353, iss. Dec. 3, 1996). We have jurisdiction under 35 U.S.C. Â§ 6(b). 1 Although, the statement of the rejection in the Final Action states that claims 1-3, and 4 are rejected, claim 3 is canceled and claims 1, 2, 4, and 5 are addressed in the rejection. See Final Act. 3-8. Further, in the Answer claims 1, 2, 4, and 5 are identified as the rejected claims. Accordingly, we understand claims 1, 2, 4, and 5 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Supinski and Mendes. Appeal2014-002936 Application 12/981,953 We REVERSE and enter NEW GROUNDS OF REJECTION pursuant to our authority under 37 C.F.R. Â§ 41.50(b). CLAIMED SUBJECT MATTER The claims are directed to a knee prosthesis having commonly-sized patella components with varying thicknesses and peak surface diameters. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An implantable orthopaedic knee prosthesis assembly, compnsmg: a first dome patella component having (i) a posterior bearing surface configured to articulate with the femoral condyles of an implantable femoral component, and (ii) an anterior surface having a number of pegs extending outwardly therefrom, wherein, when viewed in a coronal cross sectional view, (a) the posterior bearing surface of the first dome patella component has a curved peak surface that includes a posterior- most point of the first dome patella component, and (b) a first imaginary line segment extends orthogonally from the anterior surface of the first dome patella component to the posterior-most point of the first dome patella component, and a second dome patella component having (i) a posterior bearing surface configured to articulate with the femoral condyles of an implantable femoral component, (ii) an anterior surface having a number of pegs extending outwardly therefrom, and (iii) a medial/lateral width that is the same as the medial/lateral width of the first dome patella component, wherein, when viewed in a coronal cross sectional view, (a) the posterior bearing surface of the second dome patella component has a curved peak surface that includes a posterior-most point of the second dome patella component, and (b) a second imaginary line segment extends orthogonally from the anterior surface of the second dome patella component to the posterior-most point of the second dome patella component, the second imaginary line segment being longer than the first imaginary line segment, 2 Appeal2014-002936 Application 12/981,953 wherein the curved peak surface of both the first and second dome patella components comprises a hemispherically- shaped surface, and the posterior bearing surface of both the first and second dome patella components further has a conically-shaped surface that extends anteriorly away from the hemispherically-shaped surface and transitions into a rounded edge surface that extends anteriorly away from the conically-shaped surface in the direction toward the anterior surface. DISCUSSION NEW GROUNDS OF REJECTION Written Description The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. Â§ 112: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention. Claims 1, 2, 4, and 5 are rejected under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the Specification in such a way as to reasonably convey to one skilled in the relevant art that the inventors, at the time the application was filed, had possession of the claimed invention. The Specification describes the domes patella component 10 as having a "curved peak surface 44 [that] is embodied as a hemispherically- shaped surface." Spec. i-f 39. The Specification further states that: 3 Appeal2014-002936 Application 12/981,953 The hemispherically-shaped peak surface 44 is geometrically decoupled from the remainder of the posterior bearing surface 20. In particular, the hemispherically-shaped peak surface 44 does not extend across the entire posterior bearing surface, but rather it extends anteriorly away from the posterior-most point 3 8 in the general direction toward the anterior surface 40 and transitions to a substantially conically-shaped surface 46. Id. Surface 44 is shown in Figures 1, 2, 4, 8, and 9. A hemisphere is "half of a spherical or roughly spherical body." Merriam-Webster.com, http://www.merriam-webster.com/ dictionary/hemisphere (last accessed April 12, 2016). Thus, an object is hemispherically-shaped when it is shaped like half of a sphere. The Specification does not describe such a surface. Rather, the Specification describes a surface shaped like a smaller section of a sphere that transitions to a cone shape. See Spec. 12 i-f 39. Further, the Figures do not show a hemispherically-shaped surface. Thus, the Specification is misdescriptive and does not show that the inventors had possession of the invention as claimed at the time when the instant application was filed. Indefiniteness The following is a quotation of pre-AIA 35 U.S.C. Â§ 112, second paragraph: "The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, (Fed. Cir. 1999). In order to 4 Appeal2014-002936 Application 12/981,953 construe the term "hemispherically-shaped" in claims 1 and 2 so as not to exclude the preferred embodiment, we must conclude the phrase is used by the claim to mean having the shape of a section of a sphere. However, the accepted meaning of the phrase is having the shape of half of a sphere, as discussed supra. The term is indefinite because the Specification does not clearly redefine the term. Claims 4 and 5 depend from claim 1 and, likewise, are indefinite. Obviousness Having determined that claims 1, 2, 4, and 5 are indefinite, we cannot sustain the rejections of these claims under 35 U.S.C. Â§ 103(a) because to do so would require speculation as to the scope of the claims, particularly with respect to the limitation at issue. See In re Steele, 305 F.2d 859, 862-63 (CCP A 1962) (Holding that the Board erred in affirming a rejection of indefinite claims under 35 U.S.C. Â§ 103(a)). DECISION The Examiner's rejection of claims 1, 2, 4, and 5 is REVERSED. Claims 1, 2, 4, and 5 are rejected under 35 U.S.C. Â§ 112, first and second paragraphs. 37 C.F.R. Â§ 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. Â§ 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to 5 Appeal2014-002936 Application 12/981,953 the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under Â§ 41.52 by the Board upon the same record .... No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). REVERSED; 37 C.F.R. Â§ 41.50(b) 6