LIMACORPORATE S.P.A.

Patent Trials and Appeals Board

Aug 3, 2021

2020005801 (P.T.A.B. Aug. 3, 2021)

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.
15/558,543 09/14/2017 MICHELE PRESSACCO 60313-0028 5724
29989 7590 08/03/2021
HICKMAN BECKER BINGHAM LEDESMA LLP
1 ALMADEN BOULEVARD
FLOOR 12
SAN JOSE, CA 95113
EXAMINER
HOBAN, MELISSA A
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
08/03/2021 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):
usdocket@h35g.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHELE PRESSACCO, ANDREA FATTORI,
GABRIELE VIDONI, PATRICK MICHAEL CONNOR,
ROLANDO IZQUIERDO, PETER CHANNEL POON, and
JASON J. SCALISE
____________

Appeal 2020-005801
Application 15/558,543
Technology Center 3700
____________

Before EDWARD A. BROWN, BRANDON J. WARNER, and
JAMES A. WORTH, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 1–16.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
LIMACORPORATE S.P.A. Appeal Br. 1.
2 Claim 17 is cancelled. Appeal Br. 18.
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CLAIMED SUBJECT MATTER
The disclosure “relates to an improved glenoid anchor for a prosthesis
of the shoulder joint, in particular a hybrid prosthesis, namely a convertible
prosthesis.” Spec. 1, ll. 4–6.
Claim 1, reproduced below, is the sole independent claim on appeal.
1. A glenoid anchor for a shoulder joint prosthesis, of
the type intended to be fixed to a glenoid cavity of a shoulder
blade,
wherein the glenoid anchor consists only of a structurally
independent pin, with an internally hollow conical sleeve,
which has a tapered distal end configured for being directly
fixed to the glenoid cavity and an open proximal end
configured for being removably attached to a prosthesis
component,
wherein said prosthesis component is a lug of either one
of an anatomical prosthesis or a reverse prosthesis,
wherein said glenoid anchor is configured for removal of
said lug in order to convert the anatomical prosthesis to the
reverse prosthesis or vice-versa, while keeping the structurally
independent pin inside the glenoid cavity,
wherein an outer surface of the sleeve of said pin has a
trabecular structure for favouring osteogenesis and bone
integration;
wherein said pin further comprises:
- an annular recess formed inside an internal cavity of the
pin, for receiving by means of snap-engagement an edge of the
lug of the prosthesis component;
- at least one pair of oppositely arranged anti-rotation
notches at said annular recess for receiving oppositely arranged
teeth of the lug.
Appeal Br. 16 (Claims App.).

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REJECTION ON APPEAL3
Claims 1–16 are rejected under 35 U.S.C. § 103 as unpatentable over
Burkhead (US 2012/0221111 A1, pub. Aug. 30, 2012), Iannotti (US
2013/0150972 A1, pub. June 13, 2013), and Jones (US 2007/0219638 A1,
pub. Sept. 20, 2007).

ANALYSIS
As for claim 1, the Examiner finds that Burkhead discloses a glenoid
anchor consisting only of a structurally independent pin (central element
103) with an internally hollow conical sleeve (opening 132) having an open
proximal end (end 133) for receiving a prosthesis component comprising a
lug (protrusion 124 on plate 121), “thus allowing conversion of said
shoulder joint convertible prosthesis in either said anatomical prosthesis or
said reverse prosthesis.” Final Act. 4. The Examiner concedes that
Burkhead does not disclose the following recited limitations: the pin
comprises (a) “an annular recess formed inside an internal cavity of the pin,
for receiving by means of snap-engagement an edge of the lug” and (b) “at
least one pair of oppositely arranged anti-rotation notches at said annular
recess for receiving oppositely-arranged teeth of the lug,” and (c) “an outer
surface of the sleeve of said pin has a trabecular structure for favouring
osteogenesis and bone integration.” Id. at 5–6 (emphasis added). The
Examiner relies on Iannotti and Jones for limitations (a)–(c). Id. at 5–6.

3 The provisional rejection of claims 1–16 on the ground of non-statutory
double patenting over claims of Application No. 14/662,414 is now moot as
this application was abandoned. Final Act. 10; see Notice of Abandonment
(dated October 7, 2020).
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Appellant contends, inter alia, that the applied references fail to teach
or suggest the claim limitations “wherein said prosthesis component is a lug
of either one of an anatomical prosthesis or a reverse prosthesis” and
“wherein said glenoid anchor is configured for removal of said lug in order
to convert the anatomical prosthesis to the reverse prosthesis or vice-versa,
while keeping the structurally independent pin inside the glenoid cavity.”
Appeal Br. 5. Appellant submits that “the recited approach relates to a
‘hybrid prosthesis’ which allows mounting according to the ‘anatomical’
configuration (a sphere on the humerus and socket in the shoulder) or
according to the ‘reverse’ configuration (a sphere on the shoulder and a
socket on the tip of the humerus).” Id.
Appellant contends that, in contrast, Burkhead does not teach such a
“convertible prosthesis,” but instead teaches a glenoid implant 1 according
to a first embodiment shown in Figures 1–4 that includes a central fixation
element 3 of an “anatomical (or not reversed)” prosthesis, and a different
glenoid implant 101 according to a second embodiment shown in Figures 5–
8 that includes a central fixation element 103, wherein a superior side (of
articular body 102) may be configured to receive a supplemental
hemispherical piece in a “reversed prosthesis.” Appeal Br. 5–6 (citing
Burkhead ¶¶ 27, 57). Appellant contends that Burkhead does not disclose
that central fixation element 3 or 103 is configured for removal of a
component to convert the anatomical prosthesis to the reverse prosthesis or
vice-versa, while keeping central fixation element 3 or 103 inside the
glenoid cavity. Id. Appellant also contends that a person skilled in the art
would be unable to configure the central fixation element of Burkhead “for
removal of said lug . . . while keeping the structurally independent pin inside
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the glenoid cavity.” Id. Appellant submits that Burkhead requires a
different central fixation element for the anatomical prosthesis (i.e., one that
includes a threaded coupling, citing Figs. 1–4) than for the reverse prosthesis
(i.e., one that includes a Morse taper, citing Figs. 5–8). Id. Appellant
contends that the Morse taper cannot be used as a fixation element for the
anatomical prosthesis, and so a skilled artisan would not simply “substitute”
certain features of the fixation element with other prior art features. Id.
Appellant’s contentions are persuasive. Burkhead refers to the
glenoid implant 1 depicted in Figures 1–4 as an “anatomical (or not
revered)” prosthesis configuration. See Burkhead ¶ 27. Articular body 2 of
glenoid implant 1 “is configured to articulate with a head, eventually a
prosthetic head, of a humerus (not shown) of the patient.” Id.
Regarding glenoid implant 101, the Examiner submits:
Paragraph 0057 of Burkhead teaches that the superior side of
the articular body plate (121) may be configured to receive a
supplemental piece adapted to articulate with the humerus and
may be a hemispherical piece in the case of a reversed
prosthesis. It is clear that Burkhead contemplates use of the
plate (121) having an articular surface (122) as an
“anatomical” prosthesis, as well as attaching a hemispherical
supplemental piece to the plate (121) for use as a “reversed”
prosthesis.
Ans. 3 (emphasis added). The Examiner finds that Burkhead’s glenoid
anchor shown in Figures 5–8 is capable of meeting the limitation “wherein
said glenoid anchor is configured for removal of said lug . . . while keeping
the structurally independent pin inside the glenoid cavity.” Id. at 4.
Paragraph 57 of Burkhead states:
The superior side may be configured to receive a
supplemental piece (not shown) adapted to articulate with the
humerus. In the case of a reversed prosthesis, this
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supplemental piece is hemispherical, and an implant which
includes a concave articular surface may be implanted in the
humerus.
Burkhead ¶ 57 (emphasis added). This passage does not expressly mention
an anatomical prosthesis. We understand the Examiner’s position to be that
Burkhead contemplates using superior side 122, itself, as an articular surface
of an anatomical prosthesis. See Ans. 3–4.
As noted by Appellant, however, Burkhead does not describe superior
side 122 of plate 121 as an “articular surface.” Reply Br. 2. Appellant
points out that Burkhead describes anatomical prostheses wherein the
articular body includes a concave surface that constitutes an articular
surface. Id. (citing Burkhead, Fig. 4 (surface 22), ¶ 29; Fig. 11 (articular
body 302), ¶ 91). We note paragraph 29 of Burkhead states, “[t]he plate 21
defines a superior surface 22 that is concave, which constitutes an articular
surface for the articulation of the scapula with the humeral head. . . .”
(Emphasis added.) Plate 21 is a component of “anatomical” glenoid implant
1 shown in Figures 1–4. See Burkhead ¶¶ 27, 29. We note that the shape of
superior surface 22 as shown in Figures 2 and 4 of Burkhead is closely
similar to the shape of the “slightly concave proximal surface 38” shown in
Figure 4 of Appellant’s application. See also Spec. 9, ll. 20–22. In addition,
superior surface 22 of Burkhead is similarly shaped as, for example,
“concave articulating surface 22” of articulating component 20 in Iannotti
(see, e.g., Iannotti ¶ 68, Fig. 1), and “concave bearing surface 2 for contact
with the humeral head” of bearing element 1 in Jones (see, e.g., Jones, ¶ 61,
Fig. 3). Accordingly, Appellant’s Specification, Iannotti, and Jones support
Appellant’s position that a person of ordinary skill in the art would have
understood that Burkhead discloses an anatomical prosthesis including an
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articular body having a concave surface that constitutes an articular surface
with a humeral head.
Appellant also submits:
A person having ordinary skill in the art would have realized
that the flat top surface of the articular body 102 is uncapable of
providing any articular surface, unless an extra component is
provided, which in this case would be a hemispherical piece as
taught in paragraph [0057] of Burkhead.
Reply Br. 2.
We agree with Appellant that paragraph 57 of Burkhead does not
support the Examiner’s finding that “Burkhead contemplates use of the plate
(121) having an articular surface (122) as an ‘anatomical’ prosthesis.” See
Ans. 3 (emphasis added). Figures 5–8 of Burkhead do not show clearly the
shape of superior side 122; however, superior side 122 appears to have a
generally flat surface, consistent with Appellant’s contention. There is no
indication in these figures, nor does the Examiner identify any description in
Burkhead, that establishes that superior side 122 would present a concave
surface (for an anatomical prosthesis). As such, the Examiner does not
explain how this surface would allow plate 121, by itself, to function as an
“articular surface” of an anatomical prosthesis.
We do not agree with Appellant, however, that paragraph 57 of
Burkhead necessarily limits glenoid implant 101 to being only a reversed
prosthesis. Burkhead describes that the supplemental piece received by
articular body 102 is adapted to articulate with the humerus. Paragraph 57
does not describe that the supplemental piece is only provided in a reversed
prosthesis. In our view, Burkhead’s phrase, “in the case of a reversed
prosthesis,” implies that “a reversed prosthesis” is not necessarily the only
“case” (i.e., type of prosthesis) in which the supplemental piece could
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articulate with the humerus. Regardless, it is not the Examiner’s stated
position that Burkhead discloses or suggests that the supplemental piece
received by superior side 122 of articular body 102 can have an appropriate
configuration to be used in an anatomical prosthesis; that is, that the
supplemental piece itself, rather than superior side 122 to which the
supplemental piece is secured, could have an “articular surface” of an
anatomical prosthesis. Nor does the Examiner propose to modify the
supplemental piece of Burkhead to have such configuration used in an
anatomical prosthesis, such that glenoid anchor 101 would provide
supplemental pieces for both an anatomical prosthesis and a reverse
prosthesis.
Accordingly, we agree with Appellant that the Examiner has not
established by a preponderance of the evidence that Burkhead discloses the
limitations “wherein said prosthesis component is a lug of either one of an
anatomical prosthesis or a reverse prosthesis” and “wherein said glenoid
anchor is configured for removal of said lug in order to convert the
anatomical prosthesis to the reverse prosthesis or vice-versa, while keeping
the structurally independent pin inside the glenoid cavity.” Because the
Examiner’s conclusion that it would have been obvious to modify Burkhead
to result in the claimed glenoid anchor is not supported by an adequate
factual basis with respect to Burkhead, the legal conclusion of obviousness
is in error. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). The
Examiner’s reliance on Iannotti and Jones with respect to above-noted
limitations (a), (b), and (c) of claim 1 (Final Act. 5–6) fails to cure this
inadequate factual basis. Thus, we do not sustain the rejection of claims 1–
16 as unpatentable over Burkhead, Iannotti, and Jones.
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CONCLUSION
The Examiner’s rejection is reversed.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–16 103 Burkhead, Iannotti,
Jones
1–16

REVERSED