Ex Parte Imhof

Patent Trial and Appeal Board

Mar 26, 2014

10596752 (P.T.A.B. Mar. 26, 2014)

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.
10/596,752 12/08/2008 Martin Imhof PT-3464-US-PCT
(27214-15)
1141
18007 7590 03/26/2014
SMITH & NEPHEW, INC.
Diana Houston
1450 Brooks Road
Memphis, TN 38116
EXAMINER
HOFFMAN, MARCIA
ART UNIT PAPER NUMBER
3774
MAIL DATE DELIVERY MODE
03/26/2014 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 MARTIN IMHOF
__________

Appeal 2012-001741
Application 10/596,752
Technology Center 3700
__________

Before LORA M. GREEN, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL
This is a decision on appeal1 under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 5-10 and 12-35.2 We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 The Real Party in Interest is Smith and Nephew Orthopaedics AG (App.
Br. 1).
2 Claim 11 is also pending, but stands withdrawn from consideration
(Ans. 3).
Appeal 2012-001741
Application 10/596,752

2
STATEMENT OF THE CASE
The Specification discloses “a joint socket for a hip endoprosthesis”
(Spec. 1). Figure 2 of the Specification is shown below:

Figure 2 shows an “axial section through the joint socket of [the] prosthesis”
(id. at 4). The Specification discloses that the joint socket of Figure 2
“consists of a socket shell 18 and a socket insert 20” (id.). The Specification
discloses that “accommodating space 24 has an internal surface 28 in the
form of a straight circular cone” (id.).
Claims 5 and 6 are representative of the claims on appeal, and read as
follows (emphasis added):
5. A joint socket for a hip endoprosthesis, comprising:
a socket shell configured to be implanted in the pelvic bone of a
patient, the socket shell having an inner surface that defines an
accommodating space extending about an axis of rotation; and
a socket insert configured to provide a bearing for a joint head of a
prosthesis stem, a spherical outer surface of said socket insert configured to
be disposed in the accommodating space of the socket shell and contact the
inner surface of the socket shell along a line of contact that is concentric
with the axis of rotation of the accommodating space of the socket shell, the
line of contact being surrounded by and intersecting the spherical outer
Appeal 2012-001741
Application 10/596,752

3
surface of the socket insert, the socket insert coupleable in a self-locking
manner within said accommodating space along said line of contact,
wherein the inner surface of the socket shell tapers toward a pole of
the shell in a region on either side of said line of contact in such a manner
that a radius of curvature of the taper of the inner surface of the socket shell
in the region of said line of contact is greater than the spherical radius of
the outer surface of said socket insert at said line of contact when the shell
and insert are in contact with each other.

6. The joint socket of Claim 5, wherein the inner surface has a conical
shape and defines an infinite radius of curvature in the region of said line of
contact.

The claims stand rejected as follows:3
I. Claims 6-10 and 21-254 under 35 U.S.C. § 112, second
paragraph (Ans. 5);
II. Claims 5-10, 12, 14-17, and 19-35 under 35 U.S.C. § 102(b) as
anticipated by Serbousek5 (Ans. 5-8);
III. Claim 13 under 35 U.S.C. § 103(a) in view of Serbousek and
Shelley6 (Ans. 8-9);

3 The Examiner also provisionally rejected claims 5-10 and 12-25 for
obviousness-type double patenting based on claims 9-28 of US Patent
Application No. 12/296,796 (Ans. 9-10). We do not reach the merits of this
rejection. See Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010)
(precedential). Upon return of this application, the Examiner should treat
this rejection as appropriate under MPEP § 804(I)(B).
4 The Examiner states that claims 5-10, 12-29, and 34-35 are rejected under
35 U.S.C. § 112, second paragraph, but also states that the rejection of
claims 5, 12-20, and 26-35 under 35 U.S.C. § 112, second paragraph, has
been withdrawn (id. at 4). Thus, only claims 6-10 and 21-25 stand rejected
under 35 U.S.C. § 112, second paragraph.
5 Serbousek et al., US 2002/0068980 A1, published Jun. 6, 2002.
6 Shelley, US 4,997,447, issued Mar. 5, 1991.
Appeal 2012-001741
Application 10/596,752

4
IV. Claim 18 under 35 U.S.C. § 103(a) in view of Serbousek
(Ans. 9-10).
I.
The Examiner has rejected claims 6-10 and 21-25 under 35 U.S.C.
§ 112, second paragraph, as being indefinite (Rejection I).
The Examiner finds that “[c]laims 6 and 21 recite ‘an infinite radius of
curvature’, wherein it is unclear if this is the same as ‘a radius of curvature’
recited [in] claims 5 . . . and 19 . . . upon which these claims respectively
depend” (Ans. 5).
Appellant argues that “it is clear on the face of the claims that these
terms reference the same characteristic of the same region” (App. Br. 11-
12). Appellant argues that “[c]laim 5 recites ‘a radius of curvature of the
taper of the inner surface of the socket shell in the region of said line of a
contact.’” (Id. at 12.) Appellant argues that “[c]laim 6 depends from claim 5
and further recites that ‘the inner surface has a conical shape and defines an
infinite radius of curvature in the region of said line of contact’” (id.).
Appellant argues that claim 6 “adds that the radius of curvature is a specific
type—an infinite radius of curvature” (id.). Appellant argues that the “claim
language is consistent with the conical inner surface of the socket shell and
the spherical socket insert” as shown and described in the Specification (id.).
Appellant argues that “[c]laims 19 and 21 use similar language to claims 5
and 6,” and thus are not indefinite for the same reasons.7 (Id.)

7 The text of claims 19 and 21 can found in the Claims Appendix to the
Appeal Brief (App. Br. 23-24).
Appeal 2012-001741
Application 10/596,752

5
We agree with Appellant that it is clear on the face of the claims that
the term “infinite radius of curvature” in claims 6 and 21 further defines the
“radius of curvature” recited in claims 5 and 19, respectively, for the reasons
set forth by Appellant. Thus, we reverse the rejection of claims 6-10 and 21-
25 under 35 U.S.C. § 112, second paragraph.
II.-IV.
Issue
The Examiner has rejected claims 5-10, 12, 14-17, and 19-35 under
35 U.S.C. § 102(b) as anticipated by Serbousek (Rejection II). The
Examiner has also rejected, under 35 U.S.C. § 103(a), claim 13 in view of
Serbousek and Shelley (Rejection III) and claim 18 in view of Serbousek
(Rejection IV). Since the same issue is dispositive for these rejections, we
will consider them together. We focus our initial analysis on independent
claim 5.
The issue presented is: Has the Examiner established that the
preponderance of the evidence supports the finding that Serbousek discloses
a joint socket in which a spherical outer surface of a socket insert is
configured to contact an inner surface of a socket shell along a line of
contact, wherein “a radius of curvature of the taper of the inner surface . . .
in the region of said line of contact is greater than the spherical radius of the
outer surface of said socket insert at said line of contact when the shell and
insert are in contact with each other,” as required by claim 5.
App
App

Find

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FIGS. 2-7
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01741
/596,752
ct
rbousek is
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6
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.

,
,
App
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FF8. Se
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01741
/596,752
ure 4 of S
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than

Appeal 2012-001741
Application 10/596,752

8
FF9. Serbousek discloses that “[a]s shown in FIG. 4, which illustrates
symmetrical tapers 30, 44, an angle 48 between the opposite points on male
taper 44 is greater than zero degrees and less than or equal to about seven
degrees” (id.).
FF10. Serbousek discloses that a “curved locking taper is achieved
when the acute angles between tangents to the curve over much of its length
and perpendicular to rim 40 are greater than zero degrees and do not exceed
about seven degrees” (id.).
FF11. The Examiner finds that Serbousek discloses “a joint socket
(10) for a hip endoprosthesis (i.e. acetabular cup assembly), comprising: a
socket shell (12) . . . that defines an accommodating space (24)” (Ans. 5).
FF12. The Examiner finds that Serbousek discloses “a socket insert
(14) . . . [wherein] a spherical outer surface of the socket insert [is]
configured to be disposed or inserted in the accommodating space (24) of
the socket shell (12) . . . and contact the inner surface of the socket shell
along a line of contact” (id.).
FF13. The Examiner finds that Serbousek discloses “a spherical outer
surface of an insert in self-locking contact with a straight inner surface of an
acetabular shell as the line of contact” (id.).
FF14. The Examiner finds that Serbousek discloses that “the socket
insert [is] coupleable in a self-locking manner within the accommodating
space along the line of contact” (id. at 5-6).
FF15. The Examiner finds that Serbousek discloses that
the inner surface (at 30) of the socket shell (12) tapers toward a
pole of the shell (figure 4) in a region on either side of the line
of contact in such a manner that a radius of curvature of the
Appeal 2012-001741
Application 10/596,752

9
taper of the inner surface of the socket shell in the region of the
line of contact is greater than the spherical radius of the outer
surface of the socket insert at the line of contact when the shell
and insert are in contact with each other . . .

(Id. at 6.)
Analysis
Independent claim 5 is set forth above. Appellant argues that “claim 5
requires that[,] at the line of contact, a socket shell must (1) be self-locking
with a socket insert, and (2) have a greater radius of curvature than that of
the socket insert” (App. Br. 15). Appellant argues that Serbousek “teaches
only that tapers 30, 44 of shell 12 and liner 14 may be self-locking . . . [but]
fails to disclose any self-locking tapers, where the radius of curvature of the
shell is greater than the radius of curvature of the insert at the line of
contact” (id. at 15-16). Appellant argues that “Figures 3-4 show straight
tapers, which both have the same radius of curvature” (id.). Appellant
argues that “Serbousek states that curved tapers may be used,” but does not
disclose that the curvature will be different between the male and female
members of a pair of tapers (id. at 16).
The Examiner responds that Serbousek discloses, at paragraphs
[0034]-[0035], “the use of a curved self-locking taper (paragraphs [0034]-
[0035])” (Ans. 11). The Examiner further responds that Serbousek discloses
“different radii of curvature . . . in paragraph [0035] by stating [that] ‘[a]
curved locking taper is achieved when the acute angles between tangents to
the curve over much of its length and perpendicular to rim 40 are greater
than zero degrees and do not exceed about seven degrees” (id. at 11-12,
emphasis deleted). The Examiner further responds that “[b]ecause
Appeal 2012-001741
Application 10/596,752

10
Serbousek . . . expressly discloses the scenario wherein the inner surface
female taper element 30 . . . has a greater radii of curvature than the outer
surface male taper element 44,” Serbousek anticipates claim 5. (Id. at 13.)
We agree with Appellant that the Examiner has not adequately
explained how Serbousek anticipates claim 5. The Examiner points to
Serbousek’s paragraph 35 discussion of both the angle of straight tapers and
the curve shape of curved tapers as disclosing a female taper with a greater
radius of curvature of a male taper. The Examiner, however, has not pointed
to anything in Serbousek that discloses that the female taper has a greater
radius of curvature than the male taper. Rather, Serbousek discloses that the
tapers are symmetrical and matching, i.e., a straight male taper with a
straight female taper, and the discussion of the angle of the tapers and the
curve shape of the curved tapers appears to refer to the angle that would be
held by both the male and female taper simultaneously.
Thus, we reverse the rejection of independent claim 5 and dependent
claims 6-10, 12, 14-17, 26, and 28 as anticipated by Serbousek.
The Examiner has also rejected independent claim 19 as anticipated
by Serbousek (Ans. 5-6). Claim 19, like claim 5, is directed to a joint socket
that comprises a socket shell and a socket insert. Claim 19 requires that
the inner surface of the socket shell tapers toward a pole of the
shell in a region on either side of said line of contact in such a
manner that a radius of curvature in the region is greater than
the spherical radius of the outer surface of said socket insert.8

8 The full text of claim 19 can found in the Claims Appendix to the Appeal
Brief (App. Br. 23-24).
Appeal 2012-001741
Application 10/596,752

11
Appellant argues that “Serbousek fails to disclose a shell having a
radius of curvature greater than the spherical radius of the outer surface in a
region on either side of a line of contact” (App. Br. 16). Appellant argues
that, “at the line of contact in Serbousek, both the shell and insert have the
same radius of curvature” (id.).
We agree with Appellant’s arguments for the reasons discussed above.
Thus, we reverse the rejection of independent claim 19 and dependent
claims 20-25, 27, and 29 as anticipated by Serbousek.
The Examiner has also rejected independent claim 30 as anticipated
by Serbousek (Ans. 7-8). Claim 30 is directed to a joint socket that
comprises a socket shell and a socket insert. Claim 30 requires that the
socket shell “defines an accommodating space . . . in the form of a straight
circular cone.” Claim 30 also requires that the socket insert “is spherically
shaped at least in a region in which the outer surface of the socket insert
comes into contact with the . . . straight circular cone [portion of the socket
shell] when in use.”9
Appellant argues that “Serbousek does not teach a spherical shaped
region of an insert contacting a straight circular cone surface of a shell”
(App. Br. 17).
We agree with Appellant’s arguments for the reasons discussed above
with respect to claim 5. Thus, we reverse the rejection of independent claim
30 and dependent claims 31-33 as anticipated by Serbousek.

9 The full text of claim 30 can found in the Claims Appendix to the Appeal
Brief (App. Br. 25).
Appeal 2012-001741
Application 10/596,752

12
The Examiner has also rejected independent claim 34 as anticipated
by Serbousek (Ans. 7-8). Claim 34, like claim 5, is directed to a joint socket
comprising a socket shell and socket insert that come into contact along a
line of contact.10 Claim 34 also requires that “a radius of curvature of the
taper of the tapered portion [of the socket shell] surrounding the line of
contact is greater than the radius of curvature of the spherically shaped
region of the socket insert,” and Appellant argues that Serbousek fails to
disclose this element for the reasons discussed above (App. Br. 17).
We agree with Appellant’s arguments for the reasons discussed above.
Thus, we reverse the rejection of independent claim 34 and dependent claim
35 as anticipated by Serbousek.
The Examiner has also rejected claim 13 under 35 U.S.C. § 103(a) in
view of Serbousek and Shelley (Rejection III) (Ans. 8-9). Claim 13 depends
from independent claim 5. In setting forth the rejection of claim 13, the
Examiner relies on Serbousek as discussed above, and the Examiner relies
on Shelley only to supply dependent claim limitations. Thus, we also
reverse the rejection of claim 13 as being obvious in view of Serbousek and
Shelley.
The Examiner has also rejected claim 18 under 35 U.S.C. § 103(a) as
obvious in view of Serbousek (Rejection IV) (Ans. 9-10). Claim 18 depends
from independent claim 5. In setting forth the rejection of claim 18, the
Examiner relies on Serbousek, as discussed above, as disclosing independent

10 The full text of claim 34 can found in the Claims Appendix to the Appeal
Brief (App. Br. 26).
Appeal 2012-001741
Application 10/596,752

13
claim 5. Thus, we also reverse the rejection of claim 18 as being obvious in
view of Serbousek.
Conclusion of Law
The preponderance of the evidence does not support the Examiner’s
finding that Serbousek discloses a joint socket in which a spherical outer
surface of a socket insert is configured to contact an inner surface of a socket
shell along a line of contact, wherein “a radius of curvature of the taper of
the inner surface . . . in the region of said line of contact is greater than the
spherical radius of the outer surface of said socket insert at said line of
contact when the shell and insert are in contact with each other,” as required
by claim 5.

SUMMARY
We reverse the rejection of claims 6-10 and 21-25 under 35 U.S.C.
§ 112, second paragraph.
We reverse the rejection of claims 5-10, 12, 14-17, and 19-35 under
35 U.S.C. § 102(b).
We reverse the rejection of claims 13 and 18 under 35 U.S.C.
§ 103(a).

REVERSED

cdc