Ex Parte Bonitati et al

Patent Trial and Appeal Board

Jan 22, 2013

11859425 (P.T.A.B. Jan. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JOHN A. BONITATI, ANDREW JACOBS, KYLE THOMAS,
MARIO BERTAZZONI, and NIKHIL KULKARNI
__________

Appeal 2012-002471
Application 11/859,425
Technology Center 3700
__________

Before JEFFREY N. FREDMAN, STEPHEN WALSH, and
ULRIKE W. JENKS, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to an orthopaedic prosthesis. The Patent Examiner rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2012-002471
Application 11/859,425

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STATEMENT OF THE CASE
Claims 7, 8, 12, and 13 are on appeal. Claim 7 is representative and
reads as follows:
7. An orthopaedic prosthesis comprising:
a tibial tray configured to be coupled to a surgically-prepared surface
of the proximal end of a tibia, the tibial tray including a platform having an
upper surface, a bottom surface, a side surface extending between the upper
surface and the bottom surface, a first guide track defined in the bottom
surface_extending from a first opening in the side surface to a second
opening in the side surface, and an elongated opening defined in the upper
surface, the elongated opening extending downwardly from the upper
surface of the tibial tray to the first guide track;
a stem coupled to the tibial tray, the stem including a mounting end
received in the first guide track such that the mounting end of the stem is
permitted to slide to any location along the elongated opening; and
a fastener received in the elongated opening of the tibial tray and in a
threaded aperture defined in the mounting end of the stem, wherein the
fastener secures the stem to the tibial tray at any location along the elongated
opening.

The claims stand rejected under 35 U.S.C. § 103(a) as follows:
I. claims 7 and 8 in view of Slamin1 and Schall;2 and
II. claims 12 and 13 in view of Slamin, Schall, and Oudard.3

DISCUSSION
Appellants group claims 7 and 8 together, and claims 12 and 13
separately. However, the arguments presented for all four claims are the
same; we therefore consider them together. As a helpful preliminary,
Appellants direct attention to Specification Figures 109-111 for an

1
John E. Slamin, US 5,879,391, issued March 9, 1999.
2
Scott Schall et al., US 6,033,440, issued March 7, 2000.
3
Jean-Loup Oudard, US 5,326,359, issued July 5, 1994.
Appeal 2012-002471
Application 11/859,425

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illustration of the prostheses of claims 7 and 13. (App. Br. 3-4.)
Specification Figure 109 is reproduced here:

“FIG. 109 is a bottom perspective view of another embodiment of the
orthopaedic prosthesis assembly of FIG. 108.” (Spec. 15, [00126].)

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Application 11/859,425

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The Examiner’s position is that Slamin described a tibial tray in an
orthopaedic prosthesis, but that Slamin’s tibial tray differed from
Appellants’ tray in that
Slamin does not teach a first opening in the side surface or a
second opening in the side surface from which the first guide
track extends or corresponding dovetail shapes. Slamin also
does not explicitly teach that the mounting end of the stem is
permitted to slide to any location along the elongated opening
or that the stem is secured to the tray at any location along the
elongated opening.

(Ans. 6.) Finding that Schall described an analogous tray in its prosthetic
limb assembly, the Examiner reasoned:
It would have been obvious to one having ordinary skill
in the art at the time of the invention to modify the invention of
Slamin to include a first opening in the side surface or a second
opening in the side surface from which the first guide track
extends, in order to provide further adjustability and easy
removal of the tray component, as indicated by Schall,
particularly in view of the lack of any disclosed criticality of the
claimed limitation (see paragraph 00302 of applicant's
specification which states that the guide track may be closed on
one or both ends).
It also would have been obvious to one having ordinary
skill in the art at the time of the invention to modify the shapes
of the guide track and mounting end to have corresponding
dovetail shapes, in order to allow sliding connection between
the components, thereby allowing lateral adjustment of
position, as taught by Schall, particularly since this type of
connection is well known in the art and the claim limitation
appears to lack disclosed criticality. It would have been an
obvious matter of design choice to make the guide track and
mounting end of whatever form or shape was desired or
expedient. . . .
Schall also contemplates the use of the invention on a
knee joint assembly (24; fig. 1 b). Therefore, the examiner takes
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Application 11/859,425

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the position that it would have been obvious to one having
ordinary skill in the art to apply the apparently well-known
adjustable dovetail configuration, such as that taught by Schall,
to a tibial tray and stem connection, such as that taught by
Slamin, in order to provide an adjustable coupling between
prosthetic components, as taught by Schall.

(Id. at 7-8.)
Appellants contend that the prior art teaches away from the rejections’
proposed modifications of Slamin’s tibial base plate. (App. Br. 6.)
According to Appellants,
Slamin teaches having a limited, discrete number of possible
engagement positions for the stem instead of permitting the
stem to be positioned at any location as claimed. Similarly,
Oudard, which has been used to reject claims 12 and 13, also
teaches away from an implantable device having the claimed
configuration. Oudard, like Slamin, teaches having the stem
secured to the tibial component at a limited, discrete number of
positions.

(Id.) Importantly, “those teachings, which run counter to the rejection's
central assertion, are not reconciled or even addressed in the rejection.”
(Id.)
We find this argument unpersuasive. Slamin described an
arrangement “to allow the adapter to be retained at a selected one of
numerous possible positions on the base plate 70 from one end of the
aperture 76 to the opposite end thereof;” and explained that “[t]he number of
possible engagement positions for the adapter is determined by the length of
the aperture 70 and the size, shape, and spacing of the teeth 82.” (Slamin,
col. 6, ll. 1-16.) By providing “numerous” positions, Slamin suggested that
position adjustment is a desirable feature, and did not lead away from the
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Application 11/859,425

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greater number of positions suggested by Schall. Oudard described an
arrangement providing “a possibility of laterally adjusting the position of the
bushing, therefore of the stem, due to the presence of a plurality of
impressions 16, 17, 18 in the bottom of the slideway 15.” (Oudard, col. 2, ll.
53-56.) By providing a “plurality” of positions, Oudard suggested that
position adjustment is a desirable feature, and did not lead away from the
greater number of positions suggested by Schall.
Appellants also contend that “merely because a technical solution is
advantageous in an external prosthetic limb design by no means suggests
that the same solution would be advantageous (or even desirable) if included
in an implantable prosthetic device . . . .” (App. Br. 8-9.) Appellants further
argue that
[w]hile the rejection suggests that the proposed modification of
Slamin is obvious “to provide an adjustable coupling between
prosthetic components, as taught by Schall,” that assertion is
undermined by the fact that (1) Slamin already discloses one
form of adjustable coupling for an implantable device, and (2)
Oudard already discloses another form of adjustable coupling
for an implantable device that includes a “dovetail
configuration” for a tibial tray and stem connection. Indeed, the
rejection has not explained why Schall's disclosure, which
pertains to external prosthetic limbs, should outweigh the
combined teachings of Slamin and Oudard, which are both
directed to implantable prosthetic devices.

(Id. at 11.)
The Examiner found the distinction between implantable and external
prostheses unpersuasive because both are in the same field of endeavor, and
because Schall’s disclosure was reasonably pertinent to the problem Slamin
or Oudard addressed, which is the same as the problem Appellants address.
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(Ans. 11-12.) We agree with the Examiner’s response. Accordingly, we
sustain the Examiner’s rejections for the reasons set forth in the Answer.

SUMMARY
We affirm the rejection of claims 7 and 8 under 35 U.S.C. § 103(a)
over Slamin and Schall.
We affirm the rejection of claims 12 and 13 under 35 U.S.C. § 103(a)
over Slamin, Schall, and Oudard.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc