Ex parte Fischetti et al.

Board of Patent Appeals and Interferences

May 22, 1998

08200118 (B.P.A.I. May. 22, 1998)

Application for patent filed February 22, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte GARY FISCHETTI and DAVID SHEEHAN
__________
Appeal No. 97-0933
Application 08/200,1181
__________
ON BRIEF
__________
Before McCANDLISH, Senior Administrative Patent Judge, and
ABRAMS and McQUADE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1-7, which constitute all of the
claims of record in the application.
Appeal No. 97-0933
Application No. 08/200,118
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The appellants’ invention is directed to a prosthesis
having an offset attachment mechanism. The subject matter
before us on appeal is illustrated by reference to claim 1,
which has been reproduced in an appendix to the Appeal Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Bolesky 4,822,366 Apr. 18,
1989
Elloy et al. (Elloy) 4,950,297 Aug. 21,
1990
Slamin 5,152,796 Oct. 6,
1992
THE REJECTIONS
Claim 1 stands rejected under 35 U.S.C. § 102(a, b, and
e) as being anticipated by Slamin.
Claim 2 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Slamin in view of Elloy.
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Application No. 08/200,118
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Claim 3 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Slamin in view of Bolesky.
Claims 4-7 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Slamin.
The rejections are explained in Paper No. 7 (the final
rejection).
The opposing viewpoints of the appellants are set forth
in the Appeal Brief.
OPINION
The Rejection Under Section 102
Independent claim 1 stands rejected as being anticipated
by Slamin, which means that this reference must disclose,
expressly or under the principles of inherency, each and every
element of the claimed invention. See, for example, RCA Corp.
v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221
USPQ 385, 388 (Fed. Cir.), cert. dismissed sub nom., Hazeltine
Corp. v. RCA Corp., 468 U.S. 1228 (1984).
Claim 1 is directed to a femoral component for a knee
system. It requires, inter alia, that there be an implantable
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Application No. 08/200,118
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femoral stem and a bolt for bolting the stem to an
articulating component, and that the bolt have a shaft
“offset” from the head of the bolt. The term “offset” is
defined in the specification as meaning that the position of
the head of the bolt is spaced from the longitudinal axis of
the shaft portion of the bolt (page 3). The effect of this is
to displace laterally the longitudinal axis of the bolt shaft
with respect to that of the bolt head. The purpose of the
offset is to allow the femoral stem to be adjusted to align
with the axis of the bone into which it is to be inserted, by
the use of a bolt having the appropriate amount of offset.
This is illustrated in Figure 3.
Slamin, which was cited by the appellants as prior art in
their specification, discloses a modular knee prosthesis which
has much in common with the appellants’ invention. Like the
appellants, Slamin wishes to adjust the femoral stem to align
with the bone into which it will be installed. However,
Slamin is concerned with changing the angle of the stem and
not its offset. This reference therefore teaches using bolts
in which the shafts are at an angle to the heads, so that
selection of a proper bolt results in the femoral stem being
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Application No. 08/200,118
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tilted at the desired angle with respect to the component to
which it is attached by the bolt.
Claim 1 requires a bolt with an offset, whereas Slamin
discloses a bolt with an angle. The reference therefore fails
to anticipate the subject matter recited in claim 1, and we
will not sustain this rejection.
The Rejections Under Section 103
The test for obviousness is what the combined teachings
of the prior art would have suggested to one of ordinary skill
in the art. See In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981). However, the mere fact that the prior
art structure could be modified does not make such a
modification obvious unless the prior art suggests the
desirability of doing so. See In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). The initial burden
of establishing a basis for denying patentability to a claimed
invention rests with the examiner. See In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
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Claim 2, which depends from claim 1, stands rejected as
being unpatentable over Slamin in view of Elloy. We have
discussed the Slamin reference above, noting that it failed to
teach offsetting the bolt, as required by claim 1. Claim 2
adds to claim 1 the limitation that the offset range from 0 to
5 mm.
Elloy discloses a knee prosthesis comprising tibial,
meniscal and femoral components. The problem to which Elloy
directs his inventive efforts is insuring that the movement of
the meniscal component is limited, so that it does not move
out of alignment with the other components, that is,
dislocate, when the knee prosthesis is flexed, as in bending
or rotation (columns 2 and 6). Elloy provides a control peg
(21) which has a pair of parallel but offset portions (21a and
21b), one of which is inserted in a matching opening and the
other in a round or elongated opening, depending upon the
motion limits desired (Figures 7a, b, and c; column 6).
While we would agree with the examiner that Elloy
discloses an element in which one component is offset from the
other, neither the element nor the offset is for the same
purpose as that of the appellants’ invention. We fail to
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perceive any teaching, suggestion or incentive in either
Slamin or Elloy which would have led one of ordinary skill in
the art to modify the Slamin device by replacing the angled
bolt stem with an offset one. In fact, to do so would destroy
the very essence of the Slamin invention, which we regard as a
disincentive for such modification. The examiner states that
Elloy teaches it is well known “to effect an off-set . .
rather than an angular displacement for purposes of
adjustability” (Paper No. 7, page 4). However, the examiner
did not annotate to the patent for support for this
conclusion, nor can we find such a teaching there. From our
perspective, therefore, suggestion for the proposed
modification of Slamin is found only in the luxury of the
hindsight accorded one who first viewed the appellants’
disclosure. This, of course, is not a proper basis for a
rejection. See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d
1780, 1784 (Fed. Cir. 1992).
The rejection of claim 2 is not sustained.
Nor will we sustain the rejection of claim 3, which is
based upon Slamin and Bolesky, the latter of which was cited
for disclosing a knee prosthesis having a flared inferior end
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on a stem. Be that as it may, it is our view that Bolesky
fails to alleviate the shortcoming we have pointed out above
in Slamin, namely, the lack of an offset attaching bolt.
Claims 4 through 7 are dependent from claim 1, and stand
rejected as being unpatentable over Slamin. Again, the
failure of Slamin to disclose or teach the required offset
bolt recited in independent claim 1 rears its head. It is our
opinion that this rejection fails at the outset on that
ground, for lacking the required offset teaching Slamin fails
to establish a prima facie case of obviousness with regard to
the subject matter of independent claim 1 which, of course,
forms a part of dependent claims 4-7.
The rejection of claims 4-7 is not sustained.
SUMMARY
None of the rejections are sustained.
The decision of the examiner is reversed.
REVERSED
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Application No. 08/200,118
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Harrison E. McCandlish, Senior )
Administrative Patent Judge )
)
)
)
Neal E. Abrams ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
John P. McQuade )
Administrative Patent Judge )
Appeal No. 97-0933
Application No. 08/200,118
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Audley A. Ciamporcero, Jr.
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New Brunswick, NJ 08933-7003