Ex Parte Band et al

Patent Trial and Appeal Board

May 3, 2017

12161529 (P.T.A.B. May. 3, 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.
12/161,529 07/18/2008 Timothy J. Band SMNE-00122 1957
7590
SMITH & NEPHEW, INC.
Sabrina Chambers
1450 Brooks Road
Memphis, TN 38116
05/05/2017 EXAMINER
ROE, JESSEE RANDALL
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
05/05/2017 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):
taft-ip-docket @ taftlaw. com
Patents.Dept.US@smith-nephew.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY J. BAND, HAMISH N. FORSTER,
VIVEK D. PAWAR, ABRAHAM B. SALEHI,
JEFFREY J. SHEA, GORDON B. HUNTER,
SHILESH C. JANI and MARK L. MORRISON
Appeal 2015-005370
Application 12/161,529
Technology Center 1700
Before TERRY J. OWENS, PETER F. KRATZ, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
rejection of claims 24, 26—30, 34—37, 40, 43—51 and 54—63. We have
jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a method for making an orthopedic implant.
Claim 24 is illustrative:
Appeal 2015-005370
Application 12/161,529
24. A method of making an orthopedic implant
comprising the steps of:
forming an orthopedic implant comprising one or more
first components and one or more second components, said
forming step comprise
forming said one or more first components from a first
metal or metal alloy, each of said one or more first components
having a first articulating surface: and
forming said one or more second components from a
second metal or metal alloy, each of said one or more second
components having a second articulating surface, wherein any
of said first articulating surface of said one or more first
components is configured to articulate against any of said
second articulating surface of said one or more second
components; and
forming a diffusion hardened metallic surface on said
orthopedic implant by diffusion hardening, said step of
diffusion hardening being performed with a diffusion hardening
species selected from the group consisting of carbon, nitrogen,
oxygen, boron, and any combination thereof, said step of
diffusion hardening performed according to step (a) or (b):
(a) diffusion hardening to form a diffusion hardened
metallic surface on one and only one of said first and second
articulating surfaces, wherein the non-diffusion hardened
surface comprises a metal or metal alloy surface;
(b) diffusion hardening to form a diffusion hardened
metallic surface on both of said first and second articulating
surfaces wherein said first articulating surface is diffusion
hardened with at least a first diffusion hardening species and
said second articulating surface is diffusion hardened with at
least a second diffusion hardening species and wherein said first
diffusion hardening species is different from said second
diffusion hardening species.
Davidson
Thompson
The References
US 5,415,704
US 7,060,102 B2
May 16, 1995
June 13, 2006
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Appeal 2015-005370
Application 12/161,529
The Rejection
Claims 24, 26—30, 34—37, 40, 43—51 and 54—63 stand rejected under
35 U.S.C. § 103 over Thompson in view of Davidson.
OPINION
We reverse the rejection. We need address only the independent
claims (24, 40 and 51). Claim 24 requires either (a) diffusion hardening one
and only one of first and second articulating surfaces, or (b) diffusion
hardening first and second articulating surfaces with different diffusion
hardening species. Claim 40 requires only diffusion hardening one and only
one of first and second articulating surfaces, and claim 51 requires only
diffusion hardening first and second articulating surfaces with different
diffusion hardening species.
Thompson discloses that hip prostheses typically comprise 1) a
high-strength metal alloy femoral component, and 2) an acetabular cup,
many designs of which “consist of two elements: (i) a liner of wear-resistant
polymeric or ceramic material, and (ii) a supporting metal shell, adapted for
rigid fixation to the prepared surface of the acetabulum of the native pelvis”
(col. 1,11. 10-35).
Davidson diffusion hardens all currently used medical implant metals
and alloys to provide surface hardened, abrasion resistant medical implants
(col. 3,1. 63 — col. 4,1. 21). The diffusion hardening methods include
internal oxidation, internal nitridization and additional interstitial diffusion
strengthening using nitrogen, oxygen or carbon (col. 2,11. 9-27; col. 5,
11. 33—46).
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Appeal 2015-005370
Application 12/161,529
The Examiner relies upon Thompson’s acetabular cup’s supporting
metal shell (col. 1,11. 33—35) as corresponding to one of the Appellants’
articulating surfaces (Ans. 17).
“‘[DJuring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.’” In re
Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). The Appellants’ Specification
states that “[a]s used herein, the term ‘articulating’ as it refers to multiple
medical implant surfaces means surfaces that contact each other in a primary
load-bearing manner” (| 26). Thompson’s acetabular cup’s supporting
metal shell does not contact the femoral component but, rather, is separated
therefrom by the acetabular cup’s wear-resistant polymeric or ceramic liner
(col. 1,11. 31—35). Consequently, the supporting metal shell is not an
articulating surface according to the broadest reasonable interpretation of
that term consistent with the Appellants’ Specification.
The Examiner concludes that “it would have been obvious to one
having ordinary skill in the art at the time the invention was made to apply
the diffusion hardening to one or both of the metal shell of the acetabular
cup and the implant since both surfaces would be susceptible to surface
wear” (Ans. 13).
The Examiner does not establish that Thompson’s acetabular cup’s
supporting metal shell is susceptible to surface wear or that the applied
references would have suggested diffusion hardening either one and only
one of first and second articulating surfaces, or diffusion hardening first and
second articulating surfaces with different diffusion hardening species.
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Application 12/161,529
Thus, the record indicates that the rejection is based upon
impermissible hindsight in view of the Appellants’ disclosure. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section
103 clearly must rest on a factual basis, and these facts must be interpreted
without hindsight reconstruction of the invention from the prior art”).
Accordingly, we reverse the rejection.
DECISION/ORDER
The rejection of claims 24, 26—30, 34—37, 40, 43—51 and 54—63 under
35 U.S.C. § 103 over Thompson in view of Davidson is reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED
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