Ex Parte Biss et al

Board of Patent Appeals and Interferences

Jul 23, 2012

11025223 (B.P.A.I. Jul. 23, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/025,223 12/29/2004 Matthew Biss 1671-0322 6630
28078 7590 07/23/2012
MAGINOT, MOORE & BECK, LLP
CHASE TOWER
111 MONUMENT CIRCLE
SUITE 3250
INDIANAPOLIS, IN 46204
EXAMINER
WILLSE, DAVID H
ART UNIT PAPER NUMBER
3738
MAIL DATE DELIVERY MODE
07/23/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MATTHEW BISS, JACK LONG, and EDMUND FRAZEE
__________

Appeal 2011-000358
Application 11/025,223
Technology Center 3700
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
DEMETRA J. MILLS, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2011-000358
Application 11/025,223

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STATEMENT OF CASE
5. A trial implant for a joint of a patient, comprising:
a stem component configured for placement within a bone of a
patient;
an articulating component configured for articulating contact with a
mating aspect of the joint; and
a mounting assembly for mounting the articulating component to the
stem component at variable angular orientations relative thereto, including;
a cavity defined in the stem component;
a mounting element having a portion configured to support the
articulating component and an expandable portion configured to expand
within said cavity; and
an expansion element rotatable within said mounting element and
cooperating with said expandable portion upon rotation to expand said
expandable portion within said cavity;
wherein said expandable portion of said mounting element includes an
expanding ball, and a bore within said ball;
wherein mating portions of said expansion element and said bore
define a rotational engagement so that rotation of said expansion element
drives said expansion element into said bore;
wherein said expansion element and said bore include cooperating
portions that cooperate to expand said ball when said expansion element is
driven into said bore; and
wherein said expanding ball includes a first ball portion adjacent said
portion of said mounting element configured to support the articulating
component and defining a first spherical diameter, and a second ball portion
defining a second spherical diameter smaller than said first spherical
diameter.

19. A trial implant, comprising:
a stem component having a cavity defining a cavity bottom surface
and a cavity side wall and including a lip that extends into said cavity, said
lip defining an access opening for said cavity;
a head component having a coupling member;
a mount having a first connector portion configured to be received in
said cavity and a second connector portion configured to cooperate with said
coupling member of said head component to connect said mount to said
head component, said first connector portion including an expandable
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Application 11/025,223

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member configured to be received within said cavity, and said expandable
member having (i) a first ball portion connected to said second connector
portion and defining a first spherical diameter, and (ii) a second ball portion
connected to said first ball portion and defining a second spherical diameter
that is smaller than said first spherical diameter; and
an actuator configured to be received within said expandable member
so as to expand said expandable member within said cavity,
wherein, when said actuator is received within said expandable
member to expand said expandable member within said cavity, (i) said first
ball portion contacts said lip, and (ii) said second ball portion contacts said
cavity bottom surface.

Cited References

Walch et al. US 5,702,457 Dec. 30, 1997
Glien DE 101 23 517 Nov. 28, 2002

Grounds of Rejection
Claims 3, 5-9, and 19-31 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Glien in view of Walch.

FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages 3-
6.

Discussion
ISSUE
The Examiner concludes that Glien discloses each element claimed
except for the two ball diameters. The Examiner relies on Walch for the
disclosure of a “first ball portion . . . [that] defines a relatively large overall
spherical diameter, and . . . [a] second ball portion [that] defines relatively
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Application 11/025,223

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small cavity or indent spherical diameters.” (Ans. 4.) The Examiner finds
that Walch’s disclosure of “a ball portion possessing a larger spherical
diameter and a smaller spherical diameter (by virtue of partially spherical
cavities or indents) falls within the scope of the pertinent claim language.”
(Id. at 5.) The Examiner concludes that “[i]ncorporating a series of cavities
or indents into the expandable portion 23 of Glien et al. so as to define
second spherical diameters would have been obvious from the Walch et al.
teaching (Figures 4 and 5; column 3, lines 44-54) in order to provide angular
indexation and/or improved stability by engaging complementary
protrusions.” (Id. at 3.)
Appellants argue that “[a] spherical component which by definition
has a single spherical diameter cannot at the same time have two different
spherical diameters.” (App. Br. 9.)
The issue is: Does the cited prior art disclose a second ball portion
connected to said first ball portion and defining a second spherical diameter
that is smaller than said first spherical diameter, as claimed?

PRINCIPLES OF LAW
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
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Application 11/025,223

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issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
Moreover, “obviousness requires a suggestion of all limitations in a
claim.” CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir.
2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)).

ANALYSIS
The broader question before us is whether the ball of the humeral
prosthesis of Walch makes up for the deficiencies of the shoulder
endoprosthesis of Glien. The Examiner finds that Walch’s disclosure of “a
ball portion possessing a larger spherical diameter and a smaller spherical
diameter (by virtue of partially spherical cavities or indents) falls within the
scope of the pertinent claim language.” (Ans. 5.)
Walch Figure 4 is reproduced below.

Figure 4 of Walch shows a prosthesis sphere with cavities 24’. (Col.
3, ll. 44-51.)
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Application 11/025,223

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We do not agree with the Examiner’s claim interpretation that the
cavities of the sphere of Walch read on the claimed, “a second ball portion
connected to said first ball portion and defining a second spherical diameter
that is smaller than said first spherical diameter.” We do not find that the
cavities of Walch’s sphere are a second ball portion with a second spherical
diameter that is smaller than said first spherical diameter. We therefore
agree with Appellants that “[a] spherical component which by definition has
a single spherical diameter cannot at the same time have two different
spherical diameters.” (App. Br. 9.)
For this reason, the rejections of claims 5 and 19, and their dependent
claims are reversed.

CONCLUSION OF LAW
The cited references do not disclose a second ball portion connected
to said first ball portion and defining a second spherical diameter that is
smaller than said first spherical diameter, as claimed. The obviousness
rejection is reversed.

REVERSED

cdc