Ex Parte GrotzDownload PDFPatent Trial and Appeal BoardNov 30, 201612460703 (P.T.A.B. Nov. 30, 2016) Copy Citation 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. 12/460,703 07/23/2009 R. Thomas Grotz 13292-701.201 7474 66854 7590 12/02/2016 SHAY TtT FNN T T P EXAMINER 2755 CAMPUS DRIVE WATKINS, MARCIA LYNN SUITE 210 SAN MATEO, CA 94403 ART UNIT PAPER NUMBER 3774 NOTIFICATION DATE DELIVERY MODE 12/02/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): info@ shayglenn.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte R. THOMAS GROTZ Appeal 2015-000331 Application 12/460,703 Technology Center 3700 Before KEVIN W. CHERRY, CYNTHIA L. MURPHY, and KENNETH G. SCHOPFER, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON APPEAL The Appellant (R. Thomas Grotz) appeals under 35 U.S.C. § 134 from the Examiner’s rejections of claims 1—22, 31, 33, and 35—41. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2015-000331 Application 12/460,703 STATEMENT OF THE CASE The Appellant’s invention “relates to arthroplasty, and more particularly, to an implant for use in arthroplasty.” (Spec. 12.) Illustrative Claim 1. A resilient orthopedic implant comprising: a. a first wall configured to engage an articulating end of the acetabulum of the pelvic bone; b. a second wall configured to engage an articulating end of the femur, the second wall having one or more appendages configured to secure, directly or indirectly, the second wall to the articulating end of the femur; c. a side wall extending between the first wall and the second wall and configured to facilitate relative motion between the first and second walls; and d. an interior portion enclosed by the first, second, and side walls; wherein at least some length of the first wall overlaps at least some length of the second wall creating a concave fold in the implant, the concave fold in the implant comprising of at least some length of the side wall, wherein the implant is configured for deployment between the articulating ends of the femur and the acetabulum of the pelvic bone of the hip joint structure, and wherein neither the femur nor the pelvic bone is resected. References Pederson US 2003/0093152 A1 May 15,2003 Hunter US 2005/0182463 A1 Aug. 18,2005 Hendrik DE 103 39 605 A1 Apr. 14, 2005 Rejections I. The Examiner rejects claims 1, 3—14, 20-22, 31, and 35 under 35 U.S.C. § 102(b) as anticipated by Hendrik. (Final Action 5.) II. The Examiner rejects claims 15—19, 33, and 36-41 under 35 U.S.C. § 103(a) as unpatentable over Hendrik and Hunter. (Id. at 11.) 2 Appeal 2015-000331 Application 12/460,703 III. The Examiner rejects claims 1, 3—14, 20—22, 31, and 35 under 35 U.S.C. § 102(b) as anticipated by Pederson. (Id. at 7.) IV. The Examiner rejects claims 8—13, 31, and 33 under 35 U.S.C. § 112, second paragraph, as indefinite. (Id at 2.) V. The Examiner rejects claims 12 and 13 under 35 U.S.C. § 112, fourth paragraph, as being of improper dependent form. (Id. at 4.) VI. The Examiner provisionally rejects claims 1—22, 31,33, and 35 41 on the ground of nonstatutory double patenting as being unpatentable over claims 1—36 of US Application 13/574,517 and/or over claims 1—31 of US Application 13/514,539. (Id. at 15.) ANALYSIS Claim 1 is the sole independent claim on appeal with the rest of the claims on appeal (i.e., claims 2—22, 31, 33, and 35—41) depending therefrom. (Appeal Br., Claims App.) Independent claim 1 is directed to “[a] resilient orthopedic implant.” (Id.) Rejection I— 35 U.S.C. § 102 - Hendrik Independent claim 1 requires “a concave fold in the implant.” (Appeal Br., Claims App.) The Examiner finds that Hendrik discloses an implant having such a concave fold. (See Final Action 5—6, especially annotated drawing on page 6.) The Appellant argues that Hendrik’s implant has a “convex fold,” not a “concave fold” as required by independent claim 1. (Appeal Br. 7.) In this regard, the Appellant provides definitions, drawings, and detailed discussions regarding concavity, convexity, isolated curves, and/or optical geometric shapes. (See id. 6—7; see also Reply Br. 4—6.) 3 Appeal 2015-000331 Application 12/460,703 We are not persuaded by these arguments because they are not commensurate with the claim language. Independent claim 1 does not recite a point of reference for identification of features of the fold (see Answer 4) in contrast to, for example, original claims 12 and 13 which recited that “the first wall has an exterior surface with a concave shape” and that “the second wall has an exterior surface with a convex shape.” (Spec., 29, emphasis added.) And we agree with the Examiner that the fold in Hendrik’s implant has a concave interior surface, and thus can be considered “a concave fold in the implant.” (Answer 5.) Thus, we sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 102(b) as anticipated by Hendrik. The Appellant does not argue dependent claims 3—14, 20—22, 31, and 35 separately from independent claim 1 (see Appeal Br. 7), and so they fall therewith. Rejection II— 35 U.S.C. § 103 — Hendrik and Hunter With respect to the dependent claims rejected as unpatentable over the combined teachings of Hendrik and Hunter, the Appellant argues only that “Hunter does not remedy the deficiency in Hendrik” in failing to disclose the “concave fold” required by independent claim 1. (Appeal Br. 12.) However, as discussed above, we are not persuaded by the Appellant’s position that Hendrik is deficient in this regard. Thus, we sustain the Examiner’s rejection of dependent claims 15—19, 33, and 36-41 under 35 U.S.C. § 103(a) as unpatentable over Hendrik and Hunter. Rejection III— 35 U.S.C. §102 - Pederson As indicated above, independent claim 1 requires “a concave fold in the implant.” (Appeal Br., Claims App.) The Examiner finds that Pederson 4 Appeal 2015-000331 Application 12/460,703 shows, in Figure 10, an implant having such a concave fold. (See Final Action 7—9, especially annotated drawing on page 9.) The Appellant advances arguments similar to those discussed above as to why Pederson discloses a “convex fold” and not a “concave fold.” (See Appeal Br. 9—11; see also Reply Br. 4—7.) For the same reasons discussed above, we are not persuaded by these arguments. And we agree with the Examiner that the implant shown in Pedersen’s Figure 10 has a concave interior surface and thus can be considered a concave fold in the implant. (See Answer 5.) Thus, we sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 102(b) as anticipated by Pederson. The Appellant does not argue dependent claims 3—14, 20-22, 31, and 35 separately from independent claim 1 (see Appeal Br. 11), and so they fall therewith. Rejections IVand V— 35 U.S.C. § 112 The Appellant does not argue the Examiner’s rejections under 35 U.S.C. § 112 on appeal (see Reply Br. 3) and thus we summarily sustain the Examiner’s rejections of claims 8—13, 31, and 33 under 35 U.S.C. § 112. Rejection VI—Double Patenting The previously copending applications on which this rejection is based have been abandoned1 and thus we dismiss as moot the Examiner’s provisional rejection of claims 1—22, 31, 33, and 35—41 on non-statutory double patenting grounds. 1 PTO electronic records indicate that US Application 13/574,517 was abandoned on October 29, 2015 and that US Application 13/514,539 was abandoned on March 19, 2016. 5 Appeal 2015-000331 Application 12/460,703 DECISION We AFFIRM the Examiner’s rejections of claims 8—13, 31, and 33 under 35 U.S.C. §§ 102, 103, and 112. We DISMISS as moot the Examiner’s provisional rejection of claims 1—22, 31, 33, and 35—41 on non-statutory double-patenting grounds. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation