Ex Parte Ferrari et alDownload PDFPatent Trial and Appeal BoardSep 25, 201311871809 (P.T.A.B. Sep. 25, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte IRENE FERRARI and MICHAEL WEBER __________ Appeal 2011-010523 Application 11/871,809 Technology Center 3700 __________ Before TONI R. SCHEINER, MELANIE L. McCOLLUM, and JEFFREY N. FREDMAN, Administrative Patent Judges. SCHEINER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1 under 35 U.S.C. § 134 from the final rejection of claims 1-14 and 25-34 directed to a prosthetic ankle assembly. The claims have been rejected on the grounds of anticipation and obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify the Real Party-In-Interest as Tornier, Inc. (App. Br. 2.) Appeal 2011-010523 Application 11/871,809 2 STATEMENT OF THE CASE The present invention is directed to “a prosthetic ankle assembly . . . for the treatment of an ankle in which the articulation between the astragalus and the calcaneus [is] damaged” (Spec. ¶ 1). Specifically, the prosthetic ankle assembly simultaneously “blocks the articulation between the calcaneus and the astragalus and . . . re-establish[es] an articular capacity between the astragalus and the tibia of a patient” (id. at ¶ 8). Claims 1-14 and 25-34 are pending and on appeal. Claim 1 is representative of the subject matter on appeal: 1. A prosthetic ankle assembly comprising: an astragalar component comprising an upper articular surface that forms part of an ankle joint prosthesis and a lower surface comprising a shape adapted to engage an upper face of an astragalus; and an astragalocalcanean rod sized to be positioned in a bore extending through the astragalus and a calcaneus of an ankle, the astragalocalcanean rod comprising a first end adapted to engage with the lower surface of the astragalar component and a second end adapted to engage with a lower region of the calcaneus, such that the distance between the second end of the astragalocalcanean rod is adjustable relative to the lower surface of the astragalar component to adjustably compress the calcaneus against the astragalus. The Examiner relies on the following evidence: Asnis et al. US 5,217,462 Jun. 8, 1993 Martin et al. US 6,508,841 B2 Jan. 21, 2003 Graham US 7,033,398 B2 Apr. 25, 2006 Justin et al. US 2007/0129808 A1 Jun. 7, 2007 The claims stand rejected as follows: Claims 1, 3, 5-8, 11-14, 25-27, 31, and 32 under 35 U.S.C. § 102(b) as anticipated by Justin (Ans. 4-11). Claim 2 under 35 U.S.C. § 103(a) as unpatentable over Justin (Ans. 12). Appeal 2011-010523 Application 11/871,809 3 Claims 4, 9, and 10 under 35 U.S.C. § 103(a) as unpatentable over Justin and Asnis (Ans. 12-14). Claims 28-30 and 33 under 35 U.S.C. § 103(a) as unpatentable over Justin and Graham (Ans. 14-17). Claims 34 under 35 U.S.C. § 103(a) as unpatentable over Justin and Martin (Ans. 17). FINDINGS OF FACT The following findings of fact are supported by a preponderance of the evidence of record: 1. Justin discloses “modular articular bone implants to replace articular bone surfaces” (Justin ¶ 3). Figure 3 of Justin is reproduced below: Appeal 2011-010523 Application 11/871,809 4 Figure 3 is an exploded perspective of a total condylar implant designed for mounting on the proximal end of the tibia (id. at ¶¶ 12, 13, 34). In general, implant 30 comprises a bearing assembly 32 attached to an anchor 34 that is adapted for mounting into a bone. More specifically, as depicted in FIG. 3, bearing assembly 32 comprises a tray 36 with a bearing member 38 adapted for mounting thereon. Anchor 34 projects down from tray 36, and means for securing tray 36 to anchor 34 are provided. In the depicted embodiment, the means for securing comprises a fastener 40. (Id. at ¶ 34.) [The] lower portion 102 of keel 94 is used to mount and secure keel 94 to stem 96. . . . [As seen in] FIG. 3, stem 96 is an elongated member having a proximal end 134 and an opposing distal end 136. Stem 96 includes a head 130 formed at proximal end 134 and a shank 132 projecting from head 130. Shank 132 tapers to a point at distal end 136 and has threads formed thereon so that shank 132 can be threaded or screwed into tibia 12 so as to securely engage tibia 12. At the intersection between head 130 and shank 132, shank 132 has a larger outer diameter than head 130 so that an annular shoulder 117 is formed thereat. Head 130 is threaded so as to enable locking nut 98 to be screwed thereon, as described below. (Id. at ¶¶ 50, 51.) 2. Justin teaches that the implants “can be used in association with resurfacing an articulation surface of a knee joint, ankle joint, hip joint, shoulder joint, wrist joint, interphalangeal joint, or other joints” (Justin ¶ 29). ANTICIPATION Essentially, the Examiner finds that Justin’s tibial condylar implant, depicted in Figure 3 above, meets all the structural requirements of Appeal 2011-010523 Application 11/871,809 5 independent claims 1, 13, and 31 because “Justin discloses the capability of [the] implant to be used within the ankle (at least in [0029]), which includes use in a calcaneus and astragalus” (Ans. 18). The Examiner further finds that Justin’s implant “is capable of being implanted within a bore extending through the astragalus and a calcaneus of an ankle” (id.), and compressing the calcaneus against the astragalus as it is screwed into the two bones (id. at 19). Finally, the Examiner finds that “the intended use of the claimed invention does not patentably distinguish the claimed invention over Justin” (id.). We will reverse this rejection. We agree with the Examiner that the law requires claims directed to an apparatus to be distinguished from the prior art on structural grounds, and merely stating an intended use for an apparatus is not sufficient to distinguish the apparatus from the prior art. See In re Schreiber, 128 F.3d 1473, 1477-1478 (Fed. Cir. 1997), and In re Sinex, 309 F.2d 488, 492 (CCPA 1962). However, in this case, we agree with Appellants that the present claims impose structural limitations that Justin’s implant does not meet. The implant depicted in Figure 3 of Justin is designed to be implanted in the proximal end of a tibia, to replace the original articular surface. While Justin mentions in passing that the implant can be used “in association with articulation surface of a knee joint, ankle joint, [etc.]” (FF2), at a minimum, the tibial implant would require complete remodeling and resizing before it could be mounted on an ankle bone. Moreover, as Appellants point out, Justin’s implant is designed to be anchored in a bone, not to compress two bones together. Even if we accept for the sake of argument that Justin’s passing reference to using the implants to resurface an ankle bone is a Appeal 2011-010523 Application 11/871,809 6 constructive description of an ankle implant, we agree with Appellants that “if stem 96 were placed in a bore in an astragalus, there is nothing in Justin to indicate that stem 96 would be long enough to engage with a lower region of the calcaneus” (App. Br. 9), or that the “distance between the stem’s pointed distal end 136 and the keel 94 is . . . adjustable” (id. at 10), as required by all the claims on appeal. The evidence of record does not support the Examiner’s finding that claims 1, 3, 5-8, 11-14, 25-27, 31, and 32 are anticipated by Justin. Accordingly, the rejection is reversed. OBVIOUSNESS There are four separate obviousness rejections of the claims, all of which are premised on the Examiner’s finding that Justin discloses a prosthetic ankle assembly that meets the limitations of independent claims 1, 13, and 31. As the evidence of record does not support the Examiner’s findings, and none of the additional references cited by the Examiner remedies this underlying deficiency, we will reverse all four of the obviousness rejections as well. SUMMARY All rejections of the claims on the grounds of anticipation and obviousness are reversed. REVERSED lp Copy with citationCopy as parenthetical citation