Ex Parte Bertram

Board of Patent Appeals and Interferences

Jul 10, 2008

10961805 (B.P.A.I. Jul. 10, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MORTON BERTRAM
__________

Appeal 2008-24581
Application 10/961,805
Technology Center 3700
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Decided: July 10, 2008
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Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and JEFFREY
N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
acetabular liner for use in hip surgery. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

1 Oral Hearing held June 17, 2008.
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Application 10/961,805

Background
“Revision hip surgery for a loosened, cemented cup is technically
straightforward, including revision surgery. However, because cemented
cups fail at an unacceptably high rate, reconstructive hip surgeons in this
country, and the companies that develop related products, have shifted their
efforts to uncemented cups and modular liners” (Spec. 1). The Specification
comments that a “dilemma arises when faced with a well-fixed porous
ingrowth acetabular shell and a failed modular polyethylene liner” (Spec. 1).
According to the Specification, “it has become popular to leave the shell in
place and cement in a new liner to the well-fixed ingrowth acetabular shell”
(Spec. 1). The Specification notes that “some surgeons have elected to
cement the polyethylene liner into an existing shell. To do this, the surgeon
has to use a high-speed burr and roughen up the surface of the polyethylene
liner so that it may be cemented into the metal shell” (Spec. 2).
Statement of the Case
The Claims
Claims 1-3 and 5-18 are on appeal. We will focus on claim 1, which
is representative and reads as follows:

1. An acetabular liner adapted for use with an existing
shell in conjunction with revision hip surgery, comprising:
a cup-shaped body having an uninterrupted inner
surface and an outer surface; and
a plurality of raised projections, each extending a
predetermined distance from the outer surface to ensure a
desired cement mantle thickness when the body is installed
in the existing shell.

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The prior art
The Examiner relies on the following prior art references to show
unpatentability:
Mikhail U.S. 5,549,701 Aug. 27, 1996
Wang U.S. 6,638,311 B2 Oct. 28, 2003
Scales U.S. 3,698,017 Oct. 17, 1972
The issues
The rejections as presented by the Examiner are as follows:
A. Claims 1-3 and 5-18 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Mikhail (Ans. 3).
B. Claims 1-3 and 5-18 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Scales (Ans. 4).
C. Claims 1, 3, 6-8, 10, and 12 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Wang (Ans. 5).
A. 35 U.S.C. § 102(b) rejection over Mikhail
Appellant argues that
Mikhail does not disclose, teach or suggest a cup-shaped
body having ... a plurality of raised projections, each
extending a predetermined distance from [its] outer surface
to ensure a desired cement mantle thickness when the body
is installed in [an] existing shell. When the cup-shaped body
of Mikhail is installed into the existing shell of Mikhail, no
cement is used.

(App. Br. 5).
The Examiner responds that “the liner of Mikhail is fully capable of
fulfilling all claimed functional language; the liner is fully capable of being
cemented into an existing shell wherein the raised projections 3 ensure a
desired cement mantle thickness” (Ans. 6).
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The Examiner also cites MPEP 2114 regarding functional language
and argues that “device of Mikhail is ‘adapted for use with an existing shelf’
and fully capable of ‘ensur[ing] a desired cement mantle thickness when
installed in the existing shelf’” (Ans. 7).
In view of these conflicting positions, we frame the anticipation issue
before us as follows:
Does the acetabular liner of Mikhail satisfy all of the limitations of
claim 1?
Findings of Fact
1. Mikhail teaches an “acetabular cub member which is suitable
for use in direct cemented implantation in a prepared cavity of an
acetabulum or as an insert for a metal shell affixed in a prepared cavity of an
acetabulum” (Mikhail, col. 2, ll. 18-21).
2. Mikhail teaches a cup shaped body with an uninterrupted inner
surface and an outer surface (Mikhail, fig. 5).
3. Mikhail notes that the “metal shell 14 is cup-shaped an has an
interior face 36 with a configuration designed to snugly receive the
outermost portion of the exterior face 18 of the acetabular cup member 12.
The shell 14 has an exterior face 38” (Mikhail, col. 4, ll. 9-12).
4. Mikhail teaches a plurality of raised projections which extend a
predetermined distance from the outer surface, noting that in Fig. 5, there are
“provided three rows of annular grooves 46 which are substantially
perpendicular to the axis X and are separated by ribs 47.” (Mikhail, Fig. 5;
col. 4, ll. 26-28).
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5. Mikhail teaches that “bone cement 17 fills in the grooves 46, 48
and 49 and serves to retain the acetabular cup member 12 in the cavity
formed in the acetabulum” (Mikhail, col. 4, ll. 34-37).
Discussion of 35 U.S.C. § 102(b) over Mikhail
We agree with the Examiner that Mikhail teaches an article that meets
all of the structural requirements of claim 1. Specifically, Mikhail teaches
an acetabular liner which has a cup shaped body and a plurality of raised
projections (FF 1-4). Mikhail further teaches that cement may be used to
attach the liner to the acetabulum (FF 5). The only elements remaining are
the statements that the liner is “adapted for use with an existing shell in
conjunction with revision hip surgery” and that the projections are at a
distance sufficient to “ensure a desired cement mantle thickness when the
body is installed in the existing shell”.
In analyzing these statements, we first interpret whether they impart
structure or simply represent functional limitations that impart no specific
structure. We give these phrases their broadest reasonable interpretation. See,
e.g., In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000) (“During examination
proceedings, claims are given their broadest reasonable interpretation
consistent with the specification.”).
In our opinion, the “adapted for use” and “to ensure a desired . . .
thickness when the body is installed” language represents a functional
recitation and functional language. It is “well settled that the recitation of a
new intended use for an old product does not make a claim to that old
product patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Thus, functional limitations directed to the intended use of a product claim
do not serve to distinguish the claimed product from prior art products
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inherently capable of performing the claimed function. See id. at 1478-79
(holding that a prior art apparatus meeting all claimed structural limitations
was anticipatory because it was inherently capable of performing the
claimed function).
We are not persuaded by Appellant’s argument that Mikhail does not
anticipate because “when the cup-shaped body of Mikhail is installed into
the existing shell of Mikhail, no cement is used. When the cup-shaped body
of Mikhail is installed directly into an acetabulum, the cement is
intentionally irregular with an inconsistent thickness” (App. Br. 5). This
argument relies upon the method by which the device is inserted and does
not depend upon any structural feature of the device of claim 1.
We affirm the rejection of claim 1 under 35 U.S.C. § 102(b) over
Mikhail. Pursuant to 37 C.F.R. § 41.37(c)(1)(vii)(2006), we also affirm the
rejections of claims 2-3 and 5-18 as these claims were not argued separately.
B. 35 U.S.C. § 102(b) rejection over Scales
Appellant argues that in Scales, the “cement, shown at 11, clearly has
no desired thickness whatsoever” (App. Br. 5). Appellant further argues that
“[w]hen the cup-shaped body of Scales is installed into the existing shell of
Scales, no cement is used. When the cup-shaped body of Scales is installed
directly into an acetabulum, the cement is intentionally irregular with an
inconsistent thickness. Accordingly, prima face anticipation has not been
established” (App. Br. 6).
The Examiner responds that “[a]ll structurally [sic] limitations have
been meet; appellant has failed to distinguish the apparatus in terms of
structure as required in MPEP 2114. Additionally, the body 1 of Scales is
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fully adapted of being installed into an existing shell wherein the projections 3
ensure a desired cement mantle thickness” (Ans. 8).
In view of these conflicting positions, we frame the anticipation issue
before us as follows:
Does the acetabular liner of Scales satisfy all of the limitations of
claim 1?
Findings of Fact
6. Scales teaches “a prosthetic acetabular device comprising a
generally hemispherical cup having a plurality of annular ribs formed around
its outer surface” (Scales, col. 1, ll. 24-26).
7. Scales teaches that the inner surface is uninterrupted (Scales, fig.
3).
8. Scales teaches a plurality of raised projections extending a
predetermined distance from the outer surface (Scales, fig. 3).
Discussion of 35 U.S.C. § 102(b) over Scales
We agree with the Examiner that Scales teaches an article that meets
all of the requirements of claim 1. Specifically, Scales teaches an acetabular
liner which has a cup shaped body and a plurality of raised projections (FF
6-8). The only elements remaining are the statements that the liner is
“adapted for use with an existing shell in conjunction with revision hip
surgery” (Claim 1) and that the projections are at a distance sufficient to
“ensure a desired cement mantle thickness when the body is installed in the
existing shell” (Claim 1).
As we already discussed supra, functional limitations directed to the
intended use of a product claim does not serve to distinguish the claimed
product from prior art products inherently capable of performing the claimed
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function. See Schreiber at 1478-79 (holding that a prior art apparatus
meeting all claimed structural limitations was anticipatory because it was
inherently capable of performing the claimed function).
We are not persuaded by Appellants argument that “[w]hen the cup-
shaped body of Scales is installed into the existing shell of Scales, no cement
is used. When the cup-shaped body of Scales is installed directly into an
acetabulum, the cement is intentionally irregular with an inconsistent
thickness. Accordingly, prima face anticipation has not been established”
(App. Br. 6). This argument relies upon the method by which the device is
inserted and does not depend upon any structural feature of the device of
claim 1.
We affirm the rejection of claim 1 under 35 U.S.C. § 102(b) over
Scales. Pursuant to 37 C.F.R. § 41.37(c)(1)(vii)(2006), we also affirm the
rejections of claims 2-3 and 5-18 as these claims were not argued separately.
C. 35 U.S.C. § 102(b) rejection over Wang
Appellant argues that “elements 5 and 6 of Wang actually define an
interruption, and not the lack of one” (App. Br. 7) while “Claim 1 was
amended to include the limitation of a ‘cup-shaped body having an
uninterrupted inner surface and an outer surface’” (App. Br. 6). Appellant
quotes Wang, “‘[t]he element therefore comprises a substantially part-
spherical wall having a rim 13 which is interrupted by a shaped opening to
provide the two spaced arms 5 and 6' ('311 Patent, 2:66-67)” (App. Br. 7).
The Examiner responds that “Appellant has not given any special
definition to the language ‘cup-shaped body’. It is the Examiner's duty to give
the language its broadest reasonable interpretation. It is the Examiner's
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position that the cup-shaped body 1 is uninterrupted between elements 5 and
6” (Ans. 8).
In view of these conflicting positions, we frame the anticipation issue
before us as follows:
Does the acetabular liner of Wang satisfy all of the limitations of
claim 1?
Findings of Fact
9. Wang teaches a “a cementless prosthetic bearing element
according to the invention comprises an acetabular cup 1” (Wang, col. 2, ll.
23-25).
10. Wang teaches that the “bearing component can be in the form
of a cementless bearing element having an outer surface which includes a
number of raised engagement features” (Wang, col. 1, ll. 60-62).
11. Wang teaches that “the element could be substantially
hemispherical and merely carry a thin splitting line or slit to provide the two
separate arms 5 and 6” (Wang, col. 2, ll. 57-59).
12. The Specification does not use the word “uninterrupted” and
provides no definition for this term.
Discussion of 35 U.S.C. § 102(b) over Wang
We agree with the Examiner that Wang teaches an article that meets
all of the requirements of claim 1. Specifically, Wang teaches an acetabular
liner which has a cup shaped body and a plurality of raised projections (FF
9-11). The argued difference for Wang is whether Wang teaches an
“uninterrupted” inner surface.
In analyzing the claim language, we give these phrases their broadest
reasonable interpretation. See, e.g., In re Hyatt, 211 F.3d 1367, 1372 (Fed.
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Cir. 2000) (“During examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.”). While Appellant
appears to understand that the word “uninterrupted” as not permitting “a
shaped opening” in the inner surface (see App. Br. 7), the more reasonable
interpretation of an “interruption” in the context of the claim is the presence or
absence of raised projections. The Specification does not provide any insight
into the word “uninterrupted” (FF 12). The claim indicates that the inner
surface is “uninterrupted” and that there is also an “outer surface” (Claim 1).
The outer surface has “a plurality of raised projections” (Claim 1). Thus,
when determining what constitutes an interruption of a surface in the context
of claim 1, a raised projection is reasonably interpreted as being the required
element for an interruption, since that is the difference between the inner
surface, which is uninterrupted, and the outer surface, which lacks that
limitation. In our opinion, the plain language of the claim, as interpreted in
the context of the claim, supports the position of the Examiner.
We affirm the rejection of claim 1 under 35 U.S.C. § 102(b) over
Wang. Pursuant to 37 C.F.R. § 41.37(c)(1)(vii)(2006), we also affirm the
rejections of claims 3, 6-8, 10, and 12 as these claims were not argued
separately.
CONCLUSION
In summary, we affirm the rejection of claim 1 under 35 U.S.C.
§ 102(b) over Mikhail. We also affirm the rejection of claim 1 under 35
U.S.C. § 102(b) over Scales. We also affirm the rejection of claim 1 under 35
U.S.C. § 102(b) over Wang. Pursuant to 37 C.F.R. § 41.37(c)(1)(vii)(2006),
we also affirm the rejections of claims 2-3 and 5-18 as these claims were not
argued separately.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).
AFFIRMED
lp

GIFFORD, KRASS, SPRINKLE, ANDERSON & CITKOWSKI, P.C
PO BOX 7021
TROY MI 48007-7021

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