Ex Parte Iannotti et alDownload PDFPatent Trial and Appeal BoardApr 6, 201512565039 (P.T.A.B. Apr. 6, 2015) 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. 12/565,039 09/23/2009 Joseph P. Iannotti 1671-0468 9689 28078 7590 04/07/2015 MAGINOT, MOORE & BECK, LLP One Indiana Square, Suite 2200 INDIANAPOLIS, IN 46204 EXAMINER SHARMA, YASHITA ART UNIT PAPER NUMBER 3774 MAIL DATE DELIVERY MODE 04/07/2015 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOSEPH P. IANNOTTI, KIMERLY A. POWELL, and GERALD R. WILLIAMS JR. ____________ Appeal 2012-009104 Application 12/565,039 1 Technology Center 3700 ____________ Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and KENNETH G. SCHOPFER, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims related to glenoid prostheses. The Examiner rejected the claims as anticipated or obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real party in interest is Depuy Products, Inc. App. Br. 2. Appeal 2012-009104 Application 12/565,039 2 STATEMENT OF THE CASE Background “The present invention relates generally to the field of orthopedics, and, more particularly, to glenoid component apparatuses for shoulder arthroplasty and methods for making them.” Spec. ¶ 2 The Claims Claims 1–5, 8, and 16–23 are on appeal. Claim 1 is representative and reads as follows. 1. A glenoid component apparatus for shoulder arthroplasty, the apparatus comprising: a bearing portion configured to mate with a bearing element associated with the humerus; and a stem portion connected to said bearing portion; wherein the stem portion includes an outer surface defining (i) an exterior superior surface, (ii) an exterior lateral surface, (iii) an exterior inferior surface, (iv) an exterior anterior-medial surface, and (v) an exterior posterior-medial surface, and wherein said outer surface of said stem portion is configured to correspond to surfaces of a glenoid vault model derived by normalizing a digital data set obtained from medical imaging a plurality of scapulas, said surfaces of said glenoid vault model including (i) a superior model vault surface, (ii) a lateral model vault surface, (iii) an inferior model vault surface, (iv) an anterior-medial model vault surface, and (v) a posterior- medial model vault surface. App. Br. 15 (emphasis added). Appeal 2012-009104 Application 12/565,039 3 The Rejections 1. The Examiner maintains that claims 1, 2, 16, 17, 19, and 20 are unpatentable under 35 U.S.C. § 102(b) over Maroney. 2,3 2. The Examiner maintains that claims 3–5, 21, and 22 are unpatentable under 35 U.S.C. § 103(a) over Maroney in view of White. 4 3. The Examiner maintains that claims 8 and 23 are unpatentable under 35 U.S.C. § 103(a) over Maroney in view of Pria. 5 4. The Examiner maintains that claim 18 is unpatentable under 35 U.S.C. § 103(a) over Maroney in view of Pope. 6 DISCUSSION 1. Anticipation With respect to this rejection, Appellants only present arguments with respect to claim 1 and rely on those arguments for independent claim 16. App. Br. 6–10. We address claim 1 below, and claims 16, 17, 18, and 20 fall with claim 1. Principles of Law The Examiner must establish a prima facie case of anticipation under § 102 by showing, as a matter of fact, that all elements arranged as specified in a claim are disclosed within the four corners of a reference, either 2 Maroney et al., US 2004/0064189 A1, published Apr. 1, 2004. 3 The Examiner’s rejection of these claims under 35 U.S.C. § 103(a) has been withdrawn. See Ans. 10. 4 White, US 2002/0004685 A1, published Jan. 10, 2002. 5 Pria, US 2004/0220674 A1, published Nov. 4, 2004. 6 Pope et al., US 6,488,715 B1, issued Dec. 3, 2002. Appeal 2012-009104 Application 12/565,039 4 expressly or inherently, in a manner enabling one skilled in the art to practice an embodiment of the claimed invention without undue experimentation. ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1344 (Fed. Cir. 2012); Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1083 (Fed. Cir. 2008). Further, during prosecution, an application’s claims are given their broadest reasonable scope consistent with the specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). To establish prima facie unpatentability of a product-by- process claim, the Patent Office need only find that the prior art product “reasonably appears to be either identical with or slightly different from” the claimed product. See In re Brown, 459 F.2d 531, 535 (C.C.P.A. 1972). “Where a product-by-process claim is rejected over a prior art product that appears to be identical, although produced by a different process, the burden is upon the applicants to come forward with evidence establishing [a] difference between the claimed product and the prior art product.” In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983). Analysis The dispositive issue with respect to this rejection is whether Maroney discloses a stem portion as required by claim 1. Specifically, Appellants argue that the claimed stem portion has a structure different than Maroney’s stem portion because the claimed stem portion has a particular configuration of surfaces corresponding to the surfaces of a glenoid vault model derived as claimed. App. Br. 7–9. For the reasons set forth below, we are not persuaded. Appeal 2012-009104 Application 12/565,039 5 As an initial matter, we note that Appellants do not dispute the Examiner’s findings regarding the structure of Maroney, and we agree with and adopt the Examiner’s findings. Specifically, we find that Maroney discloses a glenoid component apparatus with a bearing portion and a stem portion as shown in Figure 19, reproduced below. Figure 19 shows an “exploded perspective view of a shoulder prosthesis assembly.” Maroney ¶ 58. Further, Appellants do not dispute that Appeal 2012-009104 Application 12/565,039 6 Maroney’s stem portion includes five exterior surfaces, as claimed. See Ans. 4–5; App. Br. 7–9. Appellants argue that deriving a glenoid vault model in the manner recited in the claim results in a particular configuration of surfaces for the model, which are imparted to the surface of the stem portion. App. Br. 7. However, we agree with the Examiner that while a glenoid vault model derived in this manner may be unique, the vault model itself is not positively recited in the claim and the claim only requires that surfaces of the stem are “configured to correspond” to the surfaces of the model. We find that Appellants have not shown that a glenoid vault model derived as claimed results in a device that is different than Maroney’s, particularly because the claim only requires that the outer surface is “configured to correspond” to the surface of the model and does not require an exact match. Under the broadest reasonable interpretation of the “configured to correspond” language, we find that Figure 19 of Maroney shows a stem portion configured to correspond to the surfaces of the glenoid vault in which it is to be inserted, as depicted in the bottom of Figure 19. See Ans. 9. Based on the foregoing, we find that the Examiner has established a prima facie showing of anticipation with respect to independent claims 1 and 16, which Appellants have failed to rebut. Accordingly, we affirm the rejection of claims 1 and 16 and dependent claims 2, 17, 19, and 20. 2. Obviousness Rejections With respect to each of the obviousness rejections, Appellants argue only that they should be reversed based on the alleged deficiencies in the rejection of claims 1 and 16. App. Br. 12–13. We found no such deficiencies in Maroney with respect to claims 1 and 16, and thus, for the Appeal 2012-009104 Application 12/565,039 7 reasons set forth in the Answer, we find that the Examiner has established a prima facie showing of obviousness with respect to claims 3–5, 8, 18, and 21–23, which Appellants have failed to rebut. Thus, we affirm the rejection of these claims. CONCLUSION For the reasons set forth above, we affirm the rejection of claims 1, 2, 16, 17, 19, and 20 as anticipated, and we affirm the rejection of claims 3–5, 18, and 21–23 as obvious. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Kmm Copy with citationCopy as parenthetical citation