10941210 (B.P.A.I. Aug. 25, 2010)

Ex Parte DeSmet et al

Board of Patent Appeals and InterferencesAug 25, 2010

10941210 (B.P.A.I. Aug. 25, 2010)

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. 10/941,210 09/15/2004 Koen DeSmet 702.181 9350 37902 7590 08/26/2010 WRIGHT MEDICAL TECHNOLOGY, INC. LEGAL DEPARTMENT 5677 AIRLINE ROAD ARLINGTON, TN 38002-9501 EXAMINER STEWART, ALVIN J ART UNIT PAPER NUMBER 3774 MAIL DATE DELIVERY MODE 08/26/2010 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 KOEN DESMET and STEVEN SEYER ____________________ Appeal 2009-007182 Application 10/941,210 Technology Center 3700 ____________________ Before LINDA E. HORNER, JOHN C. KERINS, and KEN B. BARRETT, Administrative Patent Judges. BARRETT, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-007182 Application 10/941,210 2 STATEMENT OF THE CASE Koen DeSmet and Steven Seyer (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellants’ claimed invention pertains to orthopedic prosthetic implants, and particularly to an acetabular2 cup prosthesis. Spec. 1. Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A unitary acetabular cup prosthesis for use in a deficient acetabulum of a hip bone of a patient, the prosthesis comprising: a cup portion comprising a generally dome-shaped wall having an axis and an upper rim, an inner bearing surface of said wall configured to pivotally engage a femoral head of a hip prosthesis, a pair of adjacent screw retaining members for use in attaching the prosthesis to the patient’s hip bone, each said screw retaining member extending from an outer surface of said dome substantially along said rim, each said screw retaining member integrally formed with said cup portion such that said screw retaining member is fixedly inclined relative to said rim and is fixedly offset relative to said rim, said screw retaining members oriented in a cooperative relationship with one another to facilitate implantation of the prosthesis in one side of the hip of the patient, and 2 The “acetabulum” is “[a] cup-shaped depression on the external surface of the hip bone, with which the head of the femur articulates.” STEDMAN’S MEDICAL DICTIONARY (28th ed. 2005). Appeal 2009-007182 Application 10/941,210 3 each said screw retaining member having a threaded hole therethrough, each said threaded hole fixedly inclined relative to said rim such that an axis of said threaded hole converges toward said axis of said cup portion in one dimension and such that said axis of said threaded hole is oblique to said axis of said cup portion in a second dimension. THE REJECTION Before us for review is the Examiner’s rejection of claims 1-20 under 35 U.S.C. § 103(a) as being unpatentable over Cuckler (US 5,931,870, issued Aug. 3, 1999), Kovaleva (US 4,298,993, issued Nov. 10, 1981), and/or Lin (US 5,085,660, issued Feb. 4, 1992). OPINION The claims on appeal include independent apparatus claims 1 and 11, claims 2-10 and 12-18 which depend from either claim 1 or 11, and method claims 19 and 20 which are directed to the method of implanting the prostheses of claims 1 and 11, respectively. The Examiner found that Cuckler discloses Appellants’ claimed subject matter except for screw retaining members having threaded holes. Ans. 3. Appellants argue that Cuckler discloses a two-piece acetabular cup prosthesis, and fails to disclose the unitary acetabular cup of their invention. App. Br. 10-11. The Examiner responds that “nowhere is it claimed that the cup is a unitary or one-part acetabular cup.” Ans. 5. We disagree with the Examiner’s claim interpretation. The modifier “unitary” does appear in the claims. The term is in the preamble of independent apparatus claims 1 and 11, and serves as a structural limitation rather than a mere statement of purpose or of intended use. Method claims Appeal 2009-007182 Application 10/941,210 4 19 and 20 also each contain three specific recitations of a unitary acetabular cup in the body of the claims. Additionally, the first step of claims 19 and 20 is “providing a unitary acetabular cup prosthesis according to [claim 1 or claim 11, respectively],” thus further supporting the conclusion that claims 1 and 11 are limited to unitary cups. Appellants’ Specification distinguishes a unitary cup from a cup having an insert configured to articulate with the femoral head. Spec. 18:10-19. We construe Appellants’ claims as limited to a unitary cup prosthesis, and as not encompassing a cup-and-insert configuration. The embodiment of Cuckler upon which the Examiner relies is a two-piece acetabular cup prosthesis 50 having cup body 51 and an acetabular socket/plastic liner 11. Cuckler, col. 3, l. 66; col. 4, ll. 45-47, 54- 56; fig. 12. As this is not a unitary cup prosthesis and the Examiner does not rely on either Kovelava or Lin for a disclosure of the unitary cup feature (see Ans. 6), we cannot sustain the rejection of claims 1-20 as obvious over Cuckler, Kovaleva, and/or Lin. DECISION The decision of the Examiner to reject claims 1-20 is reversed. REVERSED Appeal 2009-007182 Application 10/941,210 5 mls WRIGHT MEDICAL TECHNOLOGY, INC. LEGAL DEPARTMENT 5677 AIRLINE ROAD ARLINGTON, TN 38002-9501