Ex Parte Chudik

Patent Trial and Appeal Board

Jul 28, 2016

13068309 (P.T.A.B. Jul. 28, 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.
13/068,309 05/09/2011 Steven C. Chudik 5181-1000GP(II)(A) 7527
7590 07/28/2016
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
07/28/2016 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 2014-003518
Application 13/068,309
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 5–15. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).

We AFFIRM.

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STATEMENT OF THE CASE
The Appellant’s invention relates to “implants for orthopedic surgery
and, more specifically, to rotator cuff sparing procedures and associated
devices for shoulder replacement surgery.” (Spec. ¶ 2.)
Illustrative Claim1
5. A humeral implant comprising a humeral surface component
having a non-articular surface configured for long-lasting
fixation of the implant on a humeral head and no stem.
References
Arcand US 6,368,353 B1 Apr. 9, 2002
Wiley US 2004/0122519 A1 June 24, 2004
Maroney US 2004/0193276 A1 Sept. 30, 2004
Cyprien US 2004/0230311 A1 Nov. 18, 2004
Winslow US 7,585,327 B2 Sept. 8, 2009
Leonard FR 2825263 Dec. 6, 2002
Rejections
I. The Examiner rejects claims 5–15 under 35 U.S.C. § 112,
second paragraph, as indefinite. (Final Action 3.)
II. The Examiner rejects claim 5 under 35 U.S.C. § 102(b) as
anticipated by Leonard. (Id. at 5.)
III. The Examiner rejects claims 6–9 under 35 U.S.C. § 103(a) as
unpatentable over Leonard in view of Cyprien. (Id.)
IV. The Examiner rejects claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Leonard in view of Arcand. (Id. at 6.)

1 This illustrative claim is quoted from the Claims Appendix (“Claims
App.”) set forth on pages 24–25 of the Appeal Brief.
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V. The Examiner rejects claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Leonard in view of Winslow. (Id.)
VI. The Examiner rejects claims 12, 13, and 15 under
35 U.S.C. § 103(a) as unpatentable over Leonard in view of Wiley. (Id. at 7.)
VII. The Examiner rejects claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Leonard in view of Maroney. (Id.)

ANALYSIS
Claim 5 is the sole independent claim on appeal, with the rest of the
claims on appeal (i.e., claims 2–15) depending therefrom. (See Claims
App.) Independent claim 5 is directed to “[a] humeral implant” comprising
“a humeral surface component.” (Id.)
Rejection I
Independent claim 5 recites that the humeral surface component, and
thus, the implant, has “a non-articular surface.” (Claims App.) However,
independent claim 5 does not recite an “articular surface.” (Id.) According
to the Examiner, “to recite that the implant is a ‘humeral implant’ and have
no structure to define such an articulating surface is indefinite and contrary
to the choice of terminology.” (Final Action 4.)
The Appellant argues that the Examiner has failed “to point to any
statement in the [S]pecification saying that ‘the articular surface and its
structure’ are essential elements of the invention recited in claim 5.”
(Appeal Br. 17.) We agree with the Appellant’s position that the Examiner
has not established that a structure must comprise an articular surface in
order to be considered a “humeral implant.” Independent claim 5 is indeed
broad enough to cover a structure without an articular surface, for example,
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a structure used in conjunction with another humeral implant (or other
separate element) having an articular surface. However, this is a matter of
breadth, not indefiniteness.2
Independent claim 5 also recites that the non-articular surface is
“configured for long-lasting fixation of the implant on a humeral head.”
(Claims App.) According to the Examiner, “[t]he phrase ‘long-lasting’ in
claim 5 is relative terminology which renders the claim indefinite.” (Final
Action 4.) The Examiner implicates that one of ordinary skill in the art
would not understand whether “long-lasting” is measured in “weeks,
months, years, etc.” (Id.)
The Appellant argues that one of ordinary skill in the art “would not
find the term indefinite.” (Appeal Br. 18.) We are persuaded by the
Appellant’s position because one of ordinary skill in the art would
understand the bounds of the term “long lasting” in light of the
Specification.3 One of ordinary skill in the art would understand that, in the
context of shoulder-replacement implants, “long lasting” would be measured
in years after completion of the surgery as opposed to, for example, trial
implants inserted during the surgery. (See e.g., Spec. ¶ 132.)
The Examiner also maintains that independent claim 5 “fails to define
how some vague structural surface render[s] the implant long-lasting.”
(Final Action 4.) However, as pointed out by the Appellant, independent

2 See In re Johnson, 558 F.2d. 1008, 1016 n. 17 (CCPA 1977) (Even “undue
breadth is not indefiniteness”).
3 See Miles Labs, Inc. v. Shandon, Inc. 997 F.2d 870, 875 (Fed. Circ. 1993)
(“The test for definiteness is whether one skilled in the art would understand
the bounds of the claim when read in light of the specification”).
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claim 5 does not recite that the implant is “long-lasting” (see Appeal Br. 18);
independent claim 5 only recites that the non-articular surface is “configured
for long-lasting fixation of the implant on a humeral head.” (Claims App.)
This claim is indeed broad enough to encompass a structure that requires
additional fixation elements (e.g., screws and/or cement) for long-lasting
fixation of the implant on a humeral head. However, again, this is a matter
of breadth, not indefiniteness.
Thus, we do not sustain the Examiner’s rejection of independent
claim 5, and claims 2–15 depending therefrom, under 35 U.S.C. § 112,
second paragraph.
Rejection II
As indicated above, independent claim 5 is directed to a humeral
implant comprising “a humeral surface component” having “a non-articular
surface configured for long-lasting fixation of the implant on a humeral
head.” (Claims App.) The Examiner finds that Leonard shows, in
Figure 4D (reproduced below), “a humeral implant having a humeral surface
component 24.” (Final Action 5.)

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Leonard’s Figure 4D shows a platen 24 having a convex surface matching a
concave profile in the head of a humerus 12. This figure and other drawings
in Leonard show that platen 24 is connected to a separate base 20 having a
stem 54, which is screwed to the glenoid cavity 14. (See e.g., Leonard,
Figs. 1, 3A and 3B.)
The Appellant argues all of Leonard’s drawings “show a glenoid
implant,” and “there is no showing anywhere” that Leonard’s platen 24 is a
humeral implant. (Appeal Br. 19.) According to the Appellant, if the
Examiner’s use of the term “humeral surface component” is meant “to
suggest that element 24 is implanted on the humerus,” this “is not accurate.”
(Id. at 19–20.) The Appellant appears to be asserting that the recitation of a
“humeral implant” requires the actual “implantation” of the claimed
component on a humeral head. (See Reply Br. 5.)
We are not persuaded by this argument because independent claim 5
does not require the actual implantation of the claimed component on a
humeral head. Such an interpretation would not be not be consistent with
the Specification, which conveys that a structure is considered an “implant”
prior to its implantation in a patient’s body. For example, the Specification
calls the device a “humeral implant” prior to its insertion into the patient’s
shoulder. (See e.g., Spec. ¶¶ 113, 118, 120.)
Accordingly, while the Appellant may be correct that Leonard does
not disclose using platen 24 as a humeral implant, the absence of such
disclosure does not defeat a finding of anticipation. To avoid anticipation,
an apparatus claim (i.e., independent claim 5) must be distinguished from
the prior art in terms of structure. “If the prior art structure is capable of
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performing the intended use [i.e., serving as a humeral implant], then it
meets the claim.” (Answer 10.)4
The Appellant argues that the Examiner is saying “that the non-
articulating side of [Leonard’s platen 24], the side with the ‘portion 40’ [i.e.,
the glenoid side] is capable of being affixed to the head of a humerus.”
(Reply Br. 8.) However, the Examiner states that “it is common knowledge
to surgeons, that if a diseased or deteriorating head needs to be resurfaced, it
can be prepared as such as the humerus head shown for the humeral surface
component (24) is able to replace that section of the head removed in the
embodiment shown in Fig. 4D of Leonard.” (Answer 13.) Thus, we
understand the Examiner to be saying that the humeral-side of Leonard’s
platen 24 is configured for (i.e., capable of) long-lasting fixation on the
removed section of humeral head 12.5
The Appellant argues that the concept of Leonard’s platen 24 having a
side capable of fixation on humeral head “is speculative and has no record
support in this application.” (Reply Br. 8.) However, the Examiner explains
that Leonard shows that “[s]crews and cements are well known means” that

4 See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In Schreiber,
the Appellant argued that its claim called for a dispensing top that could
dispense popcorn from an open-ended popcorn container, and the prior art
reference did not disclose that its dispensing top could do so. Id. at 1477.
The Federal Circuit held that “[a]lthough Schreiber is correct that [the prior
art reference] did not address the use of the disclosed structure to dispense
popcorn,” the absence of such disclosure “does not defeat” a finding of
anticipation. Id.
5 That being said, it appears that a humeral head could instead be resurfaced
into a shape complementary to that of the glenoid side of Leonard’s
platen 24. (See e.g., Leonard Figs. 4A, 4B, and 4E.)
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can be used to “fix” a component on a surface of bone. (Answer 14.) The
Appellant does not adequately address why Leonard’s platen 24 is not
capable of being affixed (e.g., via cement) to a humeral head with
complementary resurfacing. We agree with the Appellant that the recital of
“configured for long-lasting fixation” may impose structural limitations (see
Appeal Br. 22) but, due to the breadth of independent claim 5, Leonard
meets such structural limitations. “[I]f someone such as a surgeon or
orthopedic doctor desired to use bone cement and secure the implant to the
bone, it is capable of being done and would establish the implant as ‘long-
lasting.’” (Final Action 2.)
The Appellant argues that Leonard’ platen 24 has “feet” which are
“grasped by the rest of the glenoid mounting members to fix element 24 in
the glenoid.” (Appeal Br. 19.) Again, while this may augment the
Appellant’s position that Leonard does not disclose using platen 24 as a
humeral implant, it does not distinguish the prior art in terms of structure.
The Appellant does not, for example, assert that these feet somehow render
Leonard’s platen 24 structurally incapable of performing as a humeral
implant and/or humeral surface component.
Independent claim 5 also recites that the humeral surface component
has “no stem.” (Claims App.) The Appellant argues that, in all of Leonard’s
drawings, “there is a stem.” (Appeal Br. 19.) As discussed above, Leonard
does indeed show that platen 24 is connected to a base 20 having a stem 54.
(See e.g., Leonard Fig. 1.) However, as explained by the Examiner,
independent claim 5 only requires the humeral surface component (i.e.,
platen 24) to not have a stem. (See Answer 10–11.) Independent claim 5
does not preclude the humeral implant from having another component with
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a stem and/or preclude the humeral implant from being used in conjunction
with another humeral implant (or other separate element) having a stem.
More succinctly, as discussed above in our indefiniteness analysis,
independent claim 5 is broad enough to cover a stem-less implant structure
with a surface requiring fixation elements (e.g., screws and/or cement) for
long-lasting fixation of the implant on a humeral head. The Examiner finds
that Leonard’s platen 24 is a stem-less implant structure having such a
surface (see Final Action 2–3, 5; Answer 10–14); and the Appellant’s
arguments do not address why this finding by the Examiner is flawed (see
Appeal Br. 19–22; Reply Br. 5–8).
Thus, we sustain the Examiner’s rejection of independent claim 5
under 35 U.S.C. § 102(b) as anticipated by Leonard.
Rejections III–VII
Claims 6–15 depend from independent claim 5 and recite additional
features of the humeral surface component, and particularly its non-
articular surface. (See Claims App.) The Examiner determines that the
humeral implants recited in the dependent claims would have been obvious
over Leonard in combination with other prior art references. (See Final
Action 5–7.) As discussed above, Leonard’s failure to teach using
platen 24 as a humeral implant and/or as a humeral surface component does
not defeat an anticipation rejection. But this non-teaching could factor into
whether it would have been obvious to incorporate features of the humeral
surface component shown in the secondary references into Leonard’s
platen 24.
Here, however, the Appellant argues only that Leonard’s component
“has a stem to hold it in place, the Examiner has already held that such a
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construction is ‘patentably distinct.’” (Appeal Br. 22.) As discussed in our
analysis above, Leonard’s component 24 does not have a stem, as the
illustrated stem 54 is part of a separate base component 20. (See e.g.,
Leonard Fig. 1.) As such, we are not persuaded by the Appellant’s position
that the Examiner errs in determining that humeral implant recited in
dependent claims 6–15 would not have been obvious over the prior art.
Thus, we sustain the Examiner’s rejections of claims 6–15 under
35 U.S.C. § 103(a) as unpatentable over Leonard in view of Cyprien, Arcand
Winslow, Wiley, or Maroney.

DECISION
We REVERSE the Examiner’s rejection of claims 5–15 under
35 U.S.C. §112.
We AFFIRM the Examiner’s rejections of claims 5–15 under
35 U.S.C. §102 and §103.
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).

AFFIRMED