Ex Parte Briscoe

Patent Trials and Appeals Board

Jun 10, 2019

14438672 - (D) (P.T.A.B. Jun. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/438,672 04/27/2015 Adam Briscoe
19148 7590 06/10/2019
Shumaker, Loop & Kendrick, LLP
101 South Tryon Street
Suite 2200
Charlotte, NC 28280-0002
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5258/lUS 6483
EXAMINER
DUKERT, BRIAN AINSLEY
ART UNIT PAPER NUMBER
3774
MAIL DATE DELIVERY MODE
06/10/2019 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 PATENT TRIAL AND APPEAL BOARD
Ex parte ADAM BRISCOE
Appeal2018-007870
Application 14/438,672
Technology Center 3700
Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Adam Briscoe ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 1-13 and 15-25. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant's Appeal Brief indicates that Invibio Limited is the real party in
interest. Appeal Br. 4.
Appeal2018-007870
Application 14/438,672
CLAIMED SUBJECT MATTER
Appellant's invention is directed to orthopaedic polymer-on-polymer
bearings. Spec. 1: 10. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. An orthopaedic prosthetic joint comprising a joint couple
compnsmg:
(a) a first joint component having a first bearing surface
comprising a first material which comprises a first polymer;
(b) a second joint component having a second bearing
surface comprising a second material which comprises a second
polymer;
wherein said first and second bearing surfaces are in
sliding engagement with one another;
wherein said first polymer is harder than said second
polymer;
wherein said first material includes barium sulphate;
wherein the joint is a knee joint;
wherein the second material comprises polyethylene
cross-linked by irradiation.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Shen
Arramon
Wang
Valentine
US 6,228,900 B 1
US 2009/0276051 Al
US 2010/0312348 Al
US 2012/0101185 Al
REJECTIONS
May 8, 2001
Nov. 5, 2009
Dec. 9, 2010
Apr. 26, 2012
I. Claims 1-3, 10-13, 15, 16, and 23-25 are rejected under 35
U.S.C. § I03(a) as unpatentable over Arramon, Wang, and Shen.
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II. Claims 4--9 and 17-22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Arramon, Wang, Shen, and Valentine.
OPINION
Rejection I; Arramon, Wang, and Shen
Appellant makes arguments for the patentability of claims 1-3, 10-13,
15, 16, and 23-25 as a group. Appeal Br. 7-20. We select claim 1 as the
representative claim, and claims 2, 3, 10-13, 15, 16, and 23-25 stand or fall
with claim 1. See 37 C.F.R. §4I.37(c)(l)(iv).
The Examiner finds that Arramon discloses most of the limitations of
claim 1 including a first joint component comprising a first polymer (barium
sulfate filled PEEK), and a second joint component comprising a second
polymer that are in sliding engagement with one another. Final Act. 4--5.
The Examiner finds Arramon' s joint is not a knee joint, but Wang remedies
this deficiency by teaching a polymer bearing that couples a knee. Id. at 5.
The Examiner considers that it would have been obvious to apply the
materials and articulating couples of Arramon in a knee joint prosthesis
because it "would involve only routine skill." Id. The Examiner also finds
that the second polymer material of Arramon is not polyethylene cross-
linked by irradiation, but that Shen discloses cross-linking polymers,
including ultra-high molecular weight polyethylene (UHMWPE) to increase
wear resistance. Id. The Examiner concludes that it would have been
obvious at the time of the invention was to use cross-linked UHMWPE "in
order to increase the wear resistance and longevity of the polymer surface."
Id. at 5---6.
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Application 14/438,672
Applicability of Arramon
Appellant argues that "Arramon is not a proper primary prior art
reference," because Arramon relates to the intervertebral medical field
whereas knee joints are in a different field and are subject to different,
unrelated forces than those acting on a vertebral disc. Appeal Br. 7.
Appellant contends that knees and vertebrae have different functions and, in
any event, Arramon does not disclose two joints arranged as recited. Appeal
Br. 8.
The Examiner responds that Arramon teaches the claimed polymer
component as plate 10/12 having barium sulphate. Ans. 3 ( citing Arramon ,r
34). According to the Examiner, one of ordinary skill would recognize that
although the forces and kinematics of the knee and spine are different, "the
concepts and materials utilized in their respective replacement surfaces are
very similar." Id. The Examiner considers that one of ordinary skill in the
art "would be more than capable of applying known concepts and materials
to the intended implant." Id.
Appellant argues that the Examiner does not provide evidence that
one of ordinary skill in the art would recognize any similarity in these
unrelatedfields. Reply Br. 2. By contrast, Appellant asserts that it has
submitted evidence that based on the above-noted differences, one of
ordinary skill would not have combined teachings from the spine field with
those from the knee field. Reply Br. 3.
Appellant's arguments on this point are unavailing. As to Appellant's
contention that the references are in unrelated fields (see Appeal Br. 7),
Arramon "relates to a medical device," and specifically discloses polymer
materials that are "ideally suited for the base material for an articulating
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Application 14/438,672
joint." Arramon ,r 34 (emphasis added); see also Final Act. 4--5. Thus, we
find that Arramon is in the same field as Appellant's invention, implanted
articulating joints. The Examiner then relies on paragraphs 8 and 9 of Wang
to support the finding that polymer on polymer joints are known for knee
joints. Final Act. 5. Wang discloses that PEEK-ON-UHMWPE bearing
couples "are used in artificialjoints that replace biological joints such as
hips, knees, shoulders, elbows, fingers and spine." Wang ,r 8. Wang also
discloses that "wear takes place when two surfaces contact and rub each
other. The wear rate is highly determined by the sharpness and hardness of
the surface asperities under standard body contact force and wet
lubrication." Wang ,r 9. Wang, thus, recognizes that polymer on polymer
joints include various different applications, and that the forces that a
component is subject to vary.
Similarly, the Examiner relies on Shen as disclosing a specific
polymer, namely, a cross-linked polymer that is used in "numerous types of
articulating implants, including but not limited to replacements of the knee,
shoulder, hip and spine/vertebrae." Final Act. 5 (citing Shen, 6:58-7: 15).
Shen discloses that "UHMW polymers crosslinked by gamma radiation ...
can be used to make implants for various parts of the body, such as
components of a joint in ... the knee ... and other bearing components. In
the spine, the preformed polymeric composition can be used to make
intervertebral disk replacement and facet joint replacement." Shen, 6:55-
7: 12. Given that each of the references relate to articulating joints, and that
Wang and Shen disclose that an articulating joint can be a knee or spine joint
that depends on the bearing design, a preponderance of the evidence
supports the Examiner's finding that Arramon' s polymer materials could be
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Application 14/438,672
used in a knee joint. We agree with the Examiner that one of ordinary skill
in the art "would be more than capable of applying known concepts and
materials to the intended implant." Ans. 3. Thus, given the related
teachings of Arramon, Wang, and Shen, Appellant's argument that
"Arramon is not a proper primary prior art reference" (Appeal Br. 7) does
not apprise us of Examiner error.
Person Having Ordinary Skill in the Art
Appellant argues that the Examiner's rejection is not based on what a
person having ordinary skill in the art (PHOSIT A) would have done.
Appeal Br. 9-10. According to Appellant, the Examiner has (a) "attributed a
'high' level of skill rather than the required 'ordinary' level of skill;" (b)
failed to provide evidence why a PHOSIT A "would combine the references
to increase wear resistance;" and ( c) made a combination of references that
is "counterintuitive," because "one of only ordinary skill in the art would not
expect to achieve Applicant's results." Appeal Br. 10-14.
The Examiner responds to (a) that although there are structural
difference in the different joints, a person of ordinary skill knows that the
material used for the different joints is the same. Ans. 4--5. For (b ), the
Examiner states that Shen provides a reason to combine. Ans. 5 ( citing
Shen, 1:21-23, 2: 16-19, and 4:38--42). The Examiner notes that for (c),
Arramon already uses PEEK having barium sulfate and Wang is only cited
for using polymer components in a knee joint. Ans. 6.
Appellant replies that the Examiner applies "a level of skill in the art
which is 'high' rather than 'ordinary,"' as the Federal Circuit warns against.
Reply Br. 4 (citing In re NuVasive, Inc., 842 F.3d 1376 (Fed. Cir. 2016).
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Appellant contends that no ordinary artisan would be versed in the knee
replacement field as well as the intervertebral medical field, and that a
person versed in both "would be highly skilled." Id. Appellant asserts that
although a PHOSIT A would know that there are different requirements for
different joints, they "would not be led to look for solutions to knee joints in
the spinal field." Reply Br. 5.
Appellant's arguments on this point are unpersuasive. Though the
Examiner did not make an explicit finding regarding the level of skill in the
art, Appellant does not make any specific proposal regarding what the level
of ordinary skill in the art is, or that it is other than what the applied art
connotes. Here, both Wang and Shen teach implants for various parts of the
body including knee and spine joints, and we consider the applied prior art
to be reflective of the level of skill in the art. See In re GP AC Inc., 57 F .3d
1573, 1579 (Fed. Cir. 1995) ("The person of ordinary skill in the art is a
hypothetical person who is presumed to know the relevant prior art.") ( citing
Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962
(Fed. Cir. 1986)). See also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
Cir. 2001) ("[T]he absence of specific findings on the level of skill in the art
does not give rise to reversible error 'where the prior art itself reflects an
appropriate level and a need for testimony is not shown."') (citation
omitted). Given that there is no dispute that Wang and Shen both disclose
knee and spine joints, the prior art reflects the level of ordinary skill in the
prosthetic joint art and that a person of ordinary skill in the art would
consider disclosures related to both spinal and knee joints.
Consistent with In re Nu Vasive, the Examiner provides a reason why
one of ordinary skill in the art would have combined the references that
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comes directly from Shen, namely, "in order to increase the wear resistance
and longevity of the polymer surface." Final Act. 5-6 (citing Shen, 1:21-33
("Improving the wear resistance of the UHMWPE socket ... would extend
the useful life of artificial joints.")). As to the combination of Arramon and
Wang, as the Examiner correctly notes, Arramon already teaches the barium
sulphate materials for the joint components (see Arramon ,r,r 34 and 55; see
also Final Act. 4--5) and Wang is cited only for the proposition that a joint
can be components of a knee or the spine. See Ans. 6. Thus, we are not
apprised of Examiner error.
Evidence to Support Rejection
Appellant argues that the Examiner has provided no evidence that the
basis for the rejection is within the "knowledge generally available to one of
ordinary skill in the art." Appeal Br. 15. According to Appellant, the
Examiner's "substitution is supported only by 'Examiner's bald assertion"'
that the substitution was within the skill level in the art, but the "Examiner
has not provided any explanation, grounded in evidence, as to why a
PHOSITA would make the substitution." Appeal Br. 16-17.
The Examiner responds that although "the forces and kinematics in
both the knee and spine are not identical ... one of ordinary skill would be
well-versed in the potential biomaterials utilized in articulating couples ( e.g.,
Arramon []) and be fully capable of applying said materials to any of the
numerous articulating joint within the body." Ans. 7.
Appellant replies that because "different joint replacements require
different concepts, materials and structural characteristics," these differences
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create "roadblocks that would inevitably lead the PHOSIT A away from prior
art relating to the spinal field." Reply Br. 7.
Appellant's arguments are unavailing. As discussed above, Arramon
relates to the field of medical devices including polymeric articulating
joints. See Arramon ,r,r 2 and 34. Wang discloses that the "PEEK-on-
UHMWPE bearing couple of the present invention can be used for both
small and large weight bearing joints with both conforming bearing designs
such as ball-in-socket joints (hips, spines and shoulders) and non-
conforming bearing designs (knees, elbows, etc)." Wang ,r 18. Similarly,
Shen discloses that "polymeric composition of the present invention can be
used to make ... components of a joint in the body. For example, in the hip
joints ... the artificial knee joint ... the ankle joint ... the elbow joint ... the
shoulder joint ... the spine ... and finger joints." Shen, 6:58-7: 14; see also
Final Act. 5.
Both Wang and Shen evidence that one of ordinary skill in the art
would have been able to carry out such a substitution, and that use in any of
the aforementioned joints, including a knee or the spine would have been
reasonably predictable. See In re O'Farrell, 853 F.2d 894 (Fed. Cir. 1988).
This is not a situation where the rejection is a statement that it would have
been "obvious to try" without more. Here there was a reasonable
expectation of success given that both Wang and Shen disclose bearing
components in both the knee and the spine. "Obviousness does not require
absolute predictability of success." In re O 'Farrell, 853 F.2d at 903. The
rationale to support a conclusion that the claim would have been obvious is
that the substitution of one known element for another yields predictable
results to one of ordinary skill in the art. See KSR Int'! Co. v. Teleflex Inc.,
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Application 14/438,672
550 U.S. 398, 416-417 (2007) ("if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill."). See Ans. 7.
Improper Hindsight
Appellant also argues that the Examiner's rejection relies on
impermissible hindsight. Appeal Br. 17. Appellant asserts that the
Examiner's rejection relies on "multiple disparate and discrete references,"
with no evidence that "a knee joint and the complexities of replacements are
equivalent to spinal joints." Id. According to Appellant, "no prior art
references together or in combination would lead one of ordinary skill in the
art to Applicant's claimed invention without the benefit of impermissible
hindsight." Appeal Br. 18.
In response, the Examiner notes that the rejection does not rely on an
assertion that "the forces in the knee and the spine are equivalent." Ans. 7.
Rather, the rejection is based on the position that it would have been obvious
to substitute the well-known knee implant of Wang that includes similar
biomaterials for the articulating couple of Arramon. Id.
We find Appellant's argument unavailing. We note that the Examiner
proposes to modify Arramon to make the two articulating joint components
part of a knee as disclosed by Wang; the Examiner does not assert the
equivalence of the knee and spine. See Final Act. 12. Given that Wang
explicitly discloses the applicability of polymer on polymer bearing couples
used in knee and spine joints, the Examiner's use of the teachings in
Arramon as to how to construct a knee joint prosthesis is reasonable as such
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a disclosure would commend itself to a person of ordinary skill in the art
looking to use a joint prosthesis. Shen also discloses the applicability of
polymer compositions for knee and spine joints, and that the shape and
configuration of the component depends on how the bearing surfaces "are in
moving contact with another, e.g., in a sliding, pivoting, or rotating
relationship to one another." Shen, 4:60-63. The disclosures of Wang and
Shen evidence that it is within the abilities of one of ordinary skill in the art
to substitute one joint couple for another depending on the application of the
moving contact for the couple. The Examiner has also provided reasoning to
support the rejection, namely, to predictably provide an "articulating
implant" that would provide "improved implant performance and longevity."
Final Act. 5. This improvement is disclosed in the cited references, rather
than stemming from impermissible hindsight. See Shen, 1 :34--41. Because
the Examiner's reasoning for the proposed modification is supported by
rational underpinnings found in the prior art, we do not agree that the
Examiner's rejection is based on impermissible hindsight.
Wang Addresses Different Problem
Appellant also argues that because Wang addresses a different
problem than Applicant, "there would be no incentive to combine the
references with Wang." Appeal Br. 18. Appellant contends that the present
invention addresses the "problem of X-ray visualization of orthopaedic
prosthetic joints" by using barium sulphate to provide visualization without
affecting wear, whereas Wang addresses the "problem of wear rates" by
using PEEK-on-polymer bearing couplings to lower costs. Appeal Br. 18-
19 (citing Spec. ,r 70; Wang ,r,r 9-10 and 12). According to Appellant,
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because Wang's disclosure of the economic advantages of using PEEK is
inapposite to the use of expensive barium sulphate, one of "ordinary skill in
the art, looking to solve the problem posed by Applicant's invention, would
not have any motivation to" look to Wang. Appeal Br. 19.
The Examiner responds that Wang is cited only to teach that it is
known to use polymer components in a knee prosthesis, and that Arramon
already discloses barium sulphate in PEEK. Ans. 8. According to the
Examiner, Appellant is improperly attacking the references individually
whereas the rejection is based on the combination of references. Id. (citing
In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091
(Fed. Cir. 1986).
Appellant replies that it is "attacking the combination of references,
arguing that a PHOSITA would not combine them; it is Examiner who is
cobbling together discrete references without grounded evidence to support
the combination." Reply Br. 6.
Appellant's arguments are not persuasive. "The use of patents as
references is not limited to what the patentees describe as their own
inventions or to the problems with which they are concerned. They are part
of the literature of the art, relevant for all they contain." In re Heck, 699
F.2d 1331, 1332-33 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d
1006, 1009 (CCP A 1968) ). Here, the Examiner is using Wang for the
proposition that articulating couples are used in knee joints and spine joints,
and that this teaching is sufficient to substitute Arramon's spine joint for a
knee joint to predictably provide an articulating implant. See Final Act.5.
Moreover, as the Examiner correctly points out, Arramon already discloses
an articulating joint made of PEEK containing barium sulphate for X-ray
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visibility (see Arramon ,r 55), the Examiner proposes to modify Arramon's
articulating joint to make it a knee joint. Id. Appellant's argument pointing
out the deficiencies in Wang does not address the Examiner's proposed
combination of Arramon, Wang, and Shen, which meets all the limitations
of claim 1.
We have considered all of Appellant's arguments for the patentability
of claim 1. However, we sustain the Examiner's rejection of claim 1 as
unpatentable over Arramon, Wang, and Shen. Claims 2, 3, 10-13, 15, 16,
and 23-25 fall with claim 1.
Rejection IL Claims 4-9 and 17-22
Appellant makes no additional arguments for any of claims 4--9 and
17-22. See Appeal Br. 7-20. Accordingly, these claims fall with respective
independent claims 1 and 3.
DECISION
The Examiner's decision to reject claims 1-13 and 15-25 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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