11518021 (P.T.A.B. Feb. 9, 2016)

Ex Parte Chudik

Patent Trial and Appeal BoardFeb 9, 2016

11518021 (P.T.A.B. Feb. 9, 2016)

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. 11/518,021 09/11/2006 Steven C. Chudik 5181-1000GP(I) 3446 7590 02/10/2016 Gregory B. Beggs Law Offices of Gregory B. Beggs 928 Warren Avenue Downers Grove, IL 60515 EXAMINER PELLEGRINO, BRIAN E ART UNIT PAPER NUMBER 3738 MAIL DATE DELIVERY MODE 02/10/2016 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 STEVEN C. CHUDIK ____________ Appeal 2013-0079381 Application 11/518,021 Technology Center 3700 ____________ Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and KENNETH G. SCHOPFER, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON APPEAL The Appellant (Steven C. Chudik) appeals under 35 U.S.C. § 134 from the Examiner’s rejections of claims 1–4, 13, 14, 20, 26–30, and 32. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. 1 In this opinion, we refer to the original Specification filed on September 11, 2006 (“Spec.”), the Final Action mailed on September 5, 2012 (“Final Action”), the Appeal Brief filed on February 7, 2013 (“Appeal Br.”), the Claims Appendix contained on pages 18–20 of the Appeal Brief (“Claims App.”), the Examiner’s Answer mailed on April 24, 2013 (“Answer”), and the Reply Brief filed on May 29, 2013 (“Reply Br.”). Appeal 2013-007938 Application 11/518,021 2 STATEMENT OF THE CASE The Appellant’s invention relates to “rotator cuff sparing procedures and associated devices for shoulder replacement surgery.” (Spec. ¶ 2.) Illustrative Claim 1. A method for shoulder replacement comprising creating a first non-bony passage to a glenohumeral joint in a shoulder of a patient; and inserting an implant through the first passage into the glenohumeral joint and replacing a surface of said joint with the implant without dislocation of the glenohumeral joint. Reference Hyde US 2002/0095214 A1 July 18, 2002 Rejections I. The Examiner rejects claims 1–4, 13, 14, 20, 26–30, and 32 under 35 U.S.C. § 112, second paragraph, as failing to particularly point out and distinctly claim the invention. (Final Action 5.) II. The Examiner rejects claims 1–4, 13, 14, 20, 26–30, and 32 under 35 U.S.C. § 102(b) as anticipated by Hyde. (Id. at 6.) ANALYSIS Claim 1 is the sole independent claim 1 on appeal, with the rest of the claims on appeal (i.e., claims 2–4, 13, 14, 20, 26–30, and 32) depending therefrom. (Claims App.) Independent claim 1 is directed to a method for shoulder replacement comprising the steps of “creating a [] non-bony passage to a glenohumeral joint,” “inserting an implant” through this passage, and “replacing a surface of said joint with the implant.” (Id.) Appeal 2013-007938 Application 11/518,021 3 Rejection I The Examiner maintains that independent claim 1 is “indefinite for not reciting or omitting [an] essential step.” (Answer 4.) The Examiner cites to paragraph 112 in the Appellant’s Specification which describes a “transhumeral portal” that is created through the bone to gain access to the surface to be treated. (Final Action 5–6.) According to the Examiner “this is essential to procedure otherwise no replacement can occur.” (Id. at 6.) We are persuaded by the Appellant’s position the Specification does not convey that the creation of a transhumeral portal is critical to the claimed invention. (See Appeal Br. 13–15; Reply Br. 3–5.) In the paragraph cited by the Examiner, for example, the transhumeral portal is not presented as critical to the preparation of the humeral and glenoid surfaces. (See Spec. ¶ 112.) Additionally, the Specification describes “various detailed resurfacing steps taken solely through the anterosuperior passage.” (Appeal Br. 14, see also e.g., Spec. ¶ 113.) The Examiner also maintains that “it is not clear that the step of ‘replacing a surface’ can be performed without some other preparation steps prior to the replacing.” (Answer 4.) We are persuaded by the Appellant’s position that the step of “replacing a surface” encompasses preparing and readying the previous surface for this replacement. (See Reply Br. 4.) We are persuaded because the dictionary defines the word “replacing” as “to take the place of”2 and would include any essential preparation necessary for the implant to take the place of the bone surface. 2 http://www.merriam-webster.com/dictionary/replace (last visited January 25, 2016). Appeal 2013-007938 Application 11/518,021 4 As such, one of ordinary skill in the art would consider the recited steps of independent claim 1 sufficient to particularly point out and distinctly claim the shoulder replacement method that the Appellant regards as his invention. Thus, we do not sustain the Examiner’s rejection of independent claim 1, and the claims depending therefrom, under 35 U.S.C. § 112, second paragraph. Rejection II As indicated above, independent claim 1 requires the step of creating a “non-bony passage to [the] glenohumeral joint.” (Claims App.) The Examiner finds that Hyde discloses a method with such a creating step. (See Final Action 6.) Specifically, the Examiner finds that Hyde discloses the creation of a non-bony passage to the non-articular side of the humerus bone. (Answer 5.) According to the Examiner, independent claim 1 does “not set forth any special definition or location specific to the joint” and so the joint recited in independent claim 1 includes “the entire [humerus] bone.” (Id.) Hence, Hyde’s non-bony passage to the non-articular side of the humerus bone can be considered a “non-bony passage to [the] glenohumeral joint” as required by independent claim 1. We are persuaded by the Appellant’s position that one of ordinary skill in the art would not consider the non-articular side of the humerus bone to be “[the] glenohumeral joint.” (See Appeal Br. 16.) Although this claim term is given its broadest reasonable interpretation, this meaning must be consistent with the interpretation that those skilled in the art would reach. See In re Cortright, 165 F.3d 1353, 1359 (Fed. Cir. 1999). In this regard, we note that the medical dictionary definition of the term “glenohumeral joint” Appeal 2013-007938 Application 11/518,021 5 is “connecting the glenoid cavity and the humerus.”3 Hence, one of ordinary skill in the art would not consider the entire humerus bone to be part of the glenohumeral joint; and therefore would not consider Hyde’s non-bony passage as a passage “to” the glenohumeral joint. As such, the Examiner does not sufficiently establish that Hyde discloses the creation of a non-bony passage “to” the glenohumeral joint. Thus, we do not sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 102(b) as anticipated by Hyde. The Examiner’s further findings with respect to the dependent claims (see Final Action 6–7) do not compensate for this shortcoming; and so we also do not sustain the Examiner’s rejection of dependent claims 2–4, 13, 14, 20, 26–30, and 32 under 35 U.S.C. § 102(b) as anticipated by Hyde. DECISION We REVERSE the Examiner’s rejection of claims 1–4, 13, 14, 20, 26–30, and 32 under 35 U.S.C. § 112, second paragraph. We REVERSE the Examiner’s rejection of claims 1–4, 13, 14, 20, 26–30, and 32 under 35 U.S.C. § 102(b) as anticipated by Hyde. REVERSED 3 http://www.merriam-webster.com/medical/glenohumeral (last visited Jan. 25, 2016.)