Ex Parte Harris et al

Patent Trial and Appeal Board

Jun 13, 2013

11626608 (P.T.A.B. Jun. 13, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL
BOARD
__________

Ex parte WILLIAM H. HARRIS, BRIAN R. BURROUGHS, and
DANIEL P. HOEFFEL
__________

Appeal 2011-010250
Application 11/626,608
Technology Center 3700
__________

Before DONALD E. ADAMS, DEMETRA J. MILLS and
LORA M. GREEN, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for anticipation and obviousness. We have jurisdiction under 35
U.S.C. § 6(b). Claims 1-3, 6, 7, and 9-21 have been finally rejected and are
being appealed. (App. Br. 8.)
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STATEMENT OF CASE
The Specification page 2 indicates that “[w]hen the hip joint is
articulated (for example, flexed, extended, rotated, etc.) to its limit,
impingement between the femoral neck and acetabular liner may occur.” The
“point of impingement acts as the fulcrum through which the force produced
by the leg could lever the femoral head out of the liner and hence lead to
dislocation.” (id.) “The invention disclosed herein … provides a separate
constraining ring that can be used in conjunction with the monopolar
constrained acetabular liner and the cut away monopolar constrained
acetabular liner to provide additional support for the femoral head to stay
with the acetabular liner and avoid dislocation.” (Id. at 5.) “The liner can, in
certain embodiments, include one or more recesses or cut-aways to facilitate
additional range of motion.” (Id. at 7.)

Claim 1 is representative.
1. A cut away monopolar acetabular liner for enclosing a femoral
head to form a hip replacement prostheses, wherein the hip replacement
prostheses comprises a constraining ring having at least two positioned
recesses, wherein the cut away monopolar acetabular liner has a rim that
creates an orifice, and wherein the orifice has a diameter that is smaller than
the diameter of the femoral head, wherein the cut away monopolar
acetabular liner accommodates the constraining ring, wherein the cut away
monopolar acetabular liner contains at least two positioned recesses that are
compatible with the recesses on the constraining ring, wherein the recesses
facilitate increased range of motion in a desired direction, wherein the cut
away monopolar acetabular liner is used with the constraining ring and
accommodates the femoral head and prevents dislocation, wherein the
constraining ring fits around the perimeter of the cut away monopolar
acetabular liner to serve as a structural support of the liner and to
ensure that the femoral head stays within the acetabular liner, and wherein
the cut away of the liner permits a greater range of motion.

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Cited References

Noiles, US 4,960,427, Oct. 2, 1990
Sun et al., US 5,414,049, May 9, 1995
Tian, US 6,093,208, Jul. 25, 2000
Legrand, US 4,676,799, Jun. 30, 1987

Grounds of Rejection
Claims 1-3, 9, 10, 13-15, 18, and 21 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Noiles.
Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Noiles in view of Sun.
Claims 7, 12, and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Noiles in view of Tian.
Claims 11, 16, 17 and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Noiles in view of Legrand.

FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages 3-
5. The following facts are highlighted.
1. Figure 3 of the Specification is reproduced below.
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Figure 3 of the Specification shows the metal acetabular shell
(52); cut away monopolar acetabular liner (54) and constraining
ring (56) of the invention.
2. Figure 6 of Noiles is reproduced below.

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Figure 6 shows Noiles acetabular liner recesses (24) and
constraining ring 74 bevelled (36) pin (34), and recess (38).
(Noiles, col. 9, ll. 30-35.)
3. Figure 7 of Noiles is reproduced below.

Figure 7 of Noiles shows engagement of socket bearing (12) with
ring (74).
4. The Examiner finds that, “Noiles further discloses retaining ring
74 that fits around the perimeter of the liner having recesses 36 that
are cooperative with the recesses 24 in the liner (Figs. 6-8, col. 10;
II. 35-40).” (Ans. 4.)

Discussion anticipation and obviousness
Because all rejections depend upon the disclosure of Noiles, we treat
them together.
ISSUE
The Examiner concludes that Noiles teaches each element claimed.
Appellants argue that “Noiles does not disclose a “cut away”
monopolar acetabular system comprising a constraining ring having at least
two positioned recesses, wherein the ‘cut away’ monopolar acetabular liner
accommodates the constraining ring for enclosing a femoral head, wherein
the ‘cut away’ monopolar acetabular liner contains at least two positioned
recesses that are compatible with the recesses on the constraining ring.”
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(App. Br. 19.) Appellants argue that the Examiner has misconstrued Noiles'
product and arranged components out of order in an attempt to arrive at the
claimed invention and that the claimed acetabular liner and the constraining
ring are structurally and functionally different from that of Noiles. (App. Br.
20.)
The issue is: Does Noiles teach each element as claimed, particularly
a cut away monopolar acetabular liner which accommodates the constraining
ring, wherein the cut away monopolar acetabular liner contains at least two
positioned recesses that are compatible with the recesses on the constraining
ring wherein the recesses facilitate increased range of motion in a desired
direction?
PRINCIPLES OF LAW
In order for a prior art reference to serve as an anticipatory reference,
it must disclose every limitation of the claimed invention, either explicitly or
inherently. See In re Schreiber, 128 F.3d 1473, 1477(Fed. Cir. 1997). To
anticipate, every element and limitation of the claimed invention must be
found in a single prior art reference, arranged as in the claim. Karsten Mfg.
Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
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issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.

ANALYSIS
We do not find that the Examiner has provided evidence to support a
prima facie case of anticipation or obviousness. In particular, we do not find
that the Examiner has provided prior art evidence showing a cut away
monopolar acetabular liner which accommodates the constraining ring,
wherein the cut away monopolar acetabular liner contains at least two
positioned recesses that are compatible with the recesses on the constraining
ring to provide increase range of motion. As seen in Fig. 3 of the
Specification (FF1) recesses in the liner (54) are compatible with (or fit
over) recesses in the constraining ring to facilitate range of motion of the
hip. On the other hand, the Examiner argues that Noiles discloses retaining
ring 74 (that fits around the perimeter of the liner) having recesses 36 that
are cooperative with the recesses 24 in the liner. (FF4.) We are not
persuaded. While we agree with the Examiner that recesses 24 are present
in the socket bearing or liner (12) of Noiles we do not find that the beveled
36 pins 34 (Noiles, col. 9, ll. 30-35) or recesses 38 of the ring (74) (Fig. 6)
are recesses within the scope of the claim. The Examiner has not explained
how the recesses within the liner of Noiles are compatible with the recesses
on the constraining ring wherein the recesses facilitate increased range of
motion in a desired direction. Noiles has limited the range of motion in
order to avoid the risk of impingement and dislocation because Noiles
bearing/liner does not employ a constraining ring with positioned recesses to
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allow a greater range of motion. (App. Br. 9.) For the same reason, we
reverse each of the obviousness rejections.

CONCLUSION OF LAW
The cited references do not support the Examiner’s anticipation and
obviousness rejections, which are reversed.

REVERSED

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