Ex Parte Imhof

Patent Trial and Appeal Board

Jun 3, 2014

12296796 (P.T.A.B. Jun. 3, 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.
12/296,796 05/18/2009 Martin Imhof PT-3507-US-PCT
(27214-17)
1652
18007 7590 06/03/2014
SMITH & NEPHEW, INC.
Sabrina Chambers
1450 Brooks Road
Memphis, TN 38116
EXAMINER
HOFFMAN, MARCIA
ART UNIT PAPER NUMBER
3774
MAIL DATE DELIVERY MODE
06/03/2014 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 2012-001789
Application 12/296,796
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 9-36. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

1 The Real Party in Interest is Smith And Nephew Orthopaedics AG (App.
Br. 1).
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STATEMENT OF THE CASE
The Specification discloses “a joint socket, especially for a hip
endoprosthesis, having a socket shell and having a socket insert for
mounting a joint head” (Spec. 1:1-3).
Claim 9 is representative of the claims on appeal and reads as follows:
9. A joint socket for a hip joint endoprosthesis, comprising:
a socket shell configured for implantation in a bone and comprising a
receiving space comprising an inner face; and
a socket insert coupleable to the socket shell and configured to
accommodate a joint head of a hip prosthesis stem therein, the socket insert
comprising a spherical portion comprising a spherical outer face,
the spherical portion configured to be received by the receiving space
so that the spherical outer face and inner face contact each other
concentrically with a rotational axis of the socket shell,
a radius of curvature of the inner face being greater than a radius of
curvature of the spherical portion in a region of concentric contact, such that
the spherical portion self-lockingly clamps in the receiving space,
wherein a resistance to deformation of one or more of the inner face
and outer spherical face is less than that of a core region of the
corresponding socket shell or socket insert.

Issue
The Examiner has rejected claims 9-36 under 35 U.S.C. § 103(a) as
obvious in view of Imhof ’3902 and Kälberer ’936,3 with citations to the
English language equivalents of Imhof ’4644 and Kälberer ’647,5

2 Imhof, DE 103 60 390 A1, published Jul. 28, 2005.
3 Kälberer, DE 43 37 936 A1, published May 11, 1995.
4 Imhof, US 2009/0171464 A1, published Jul. 2, 2009.
5 Kälberer et al., US 5,609,647, issued Mar. 11, 1997.
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respectively (Ans. 4-8).6 We focus our initial analysis on independent
claim 9.
The issue presented is: Has the Examiner established by a
preponderance of the evidence that the cited references would have made
obvious the use of Kälberer’s surface structure in the Imhof joint socket to
thereby arrive at the joint socket with “a resistance to deformation of one or
more of the inner face [of the socket shell] and outer spherical face [of the
socket insert] is less than that of a core region of the corresponding socket
shell or socket insert” as required by claim 9?
Findings of Fact
FF1. The Examiner finds that Imhof discloses a hip joint
endoprosthesis comprising “a socket shell (18) configured for implantation
in a pelvic bone (10) and comprising a receiving space (24) comprising an
inner face (30); and a socket insert (20) coupleable to the socket shell (18)
and configured to accommodate the joint head (16)” (Ans. 5 (citing Imhof,
Figure 1)).
FF2. The Examiner finds that the Imhof socket insert comprises “a
spherical portion comprising an outer face (figure 2), the spherical portion
configured to be received by the receiving space (24) so that the outer face
and inner face [of the socket shell] contact each other concentrically about a
rotational axis (26) of the socket shell” (id.).
FF3. The Examiner finds that, in Imhof, the radius of curvature of the
inner face of the socket shell is “greater than the radius of curvature of the

6 All of our citations to Imhof and Kälberer in this Decision are to the
English translations of record, i.e., Imhof ’464 and Kälberer ’647.
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spherical portion in a region of concentric contact (figure 2), such that the
spherical portion can self-lockingly clamp in the receiving space” (id. (citing
Imhof, ¶ 21)).
FF4. The Examiner finds that “the inner face [of the socket shell] is
conical in a region of concentric contact between the socket shell and socket
insert” (id. (citing Imhof, Figure 2)).
FF5. Imhof discloses that the socket insert for its joint socket for a
hip endoprosthesis is
[L]oosely inserted in the accommodating space 24 of the socket
shell 18 . . . [to] contact with the conical inner surface 28 of the
accommodating space 24 along the line of contact 34 . . . [and]
can then be rotated at will about its axis of rotation 38 and . . .
tilted at will with respect to the axis of rotation 26 of the socket
shell 18.

(Imhof 2, ¶ 0020.)
FF6. Imhof discloses that “[a]s soon as the socket insert 20 has been
optimally oriented, the socket insert 20 is pressed axially into the
accommodating space 24 so that it is clamped in self-retaining manner in
that orientation position” (id. at 2, ¶ 0021).
FF7. The Examiner finds that Imhof is silent as to whether “a
resistance to deformation of one or more of the inner face and outer face is
less than that of a core region of the corresponding socket shell or socket
insert due to a surface structure on one or more of the inner face and
spherical outer face” (id.).
FF8. The Examiner finds that Kälberer discloses that “a resistance to
deformation of one or more of the inner face and outer face is less than that
of a core region of the corresponding socket shell or socket insert . . . due to
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a surface structure on one or more of the inner face and spherical outer face”
(id. at 6 (citing Kälberer, col. 2, ll. 31-33 and 47-50; col. 3, ll. 18-22, 33-36,
40-41)).
FF9. The Examiner finds that Kälberer’s surface structure “is
configured to reduce the resistance to deformation and the pressure between
contact surfaces of one or more of the faces in the socket shell and socket
insert” (id.).
FF10. The Examiner finds that Kälberer’s surface structure
“comprises ribs or protuberances with breaks or grooves . . . extending
around a periphery of the receiving space and/or the socket insert” (id.
(citing Kälberer, Figure 3; col. 3, ll. 40-41)). FF10. Kälberer discloses “a
hip joint socket for insertion into bone tissue and which has an outside metal
shell and a ceramic shell anchored in the metal shell” (Kälberer, col. 1, ll. 6-
8).
FF11. Kälberer discloses that “the inside of the metal shell and the
outside of the ceramic shell have a spherical shape precisely fitted to one
another, and means are provided for spreading out the transfer of force
between the ceramic shell and the metal shell” (id. at col. 2, ll. 19-23).
FF12. Kälberer discloses that the “ceramic shell is anchored in the
metal shell by a retaining ring which is fastened on the margin of the metal
shell” (id. at col. 2, ll. 62-64).
FF13. Kälberer discloses that “the means for equalizing the
transmission of force is a surface roughening applied to the inside of the
metal shell, making the surface plastically deformable. The surface
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roughening enables the roughened surface of the metal shell to yield and
compensate for dimensional inaccuracies” (id. at col. 2, ll. 47-52).
FF14. Kälberer discloses that it “is state of the art to fix the inner
ceramic shell in the metal shell by means of a taper lock . . . [but a]
disadvantage of this taper lock is that once inserted, a ceramic shell can no
longer be removed from the metal shell because the seizing forces are too
great” (id. at col. 1, ll. 21-26).
FF15. The Examiner concludes that it would have been obvious to
one of ordinary skill in the art to include the Kälberer surface structure
“around a periphery of the receiving space and/or the socket insert . . . of
Imhof in order to equalize the transmission of force and compensate for peak
stresses which occur due to technically caused and unavoidable dimensional
variations” (id.).

Principles of Law
In determining whether obviousness is established by combining the
teachings of the prior art, “the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981). In addition, a reference disclosure
is not limited only to its preferred embodiments, but is available for all that it
discloses and suggests to one of ordinary skill in the art. In re Lamberti, 545
F.2d 747, 750 (CCPA 1976).
Moreover,
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
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would be led in a direction divergent from the path that was
taken by the applicant. The degree of teaching away will of
course depend on the particular facts; in general, a reference
will teach away if it suggests that the line of development
flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.

In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Analysis
Appellant argues that the claim 9 recitation of “a radius of curvature
of the inner face being greater than a radius of curvature of the spherical
portion . . . such that the spherical portion self-lockingly clamps in the
receiving space” is directed to a taper lock arrangement (App. Br. 12).
Appellant argues that the Examiner relies on Imhof as disclosing a joint
socket arranged as a taper lock, and relies on Kälberer for teaching the
claim 9 limitation of “a resistance to deformation of one or more of the inner
face and outer spherical face is less than that of a core region of the
corresponding socket shell or socket insert” (id. at 12-13). Appellant argues
that it would not have been obvious to one of skill in the art to apply the
Kälberer resistance to deformation feature to the Imhof taper lock because
Kälberer teaches away from the use of a taper lock and teaches that the
“roughened surface and precise fit . . . are used as an alternative to a taper
lock to avoid the perceived problems caused by a self-locking clamp” (id. at
13).
That argument is not persuasive. Kälberer discloses that taper locks
for hip joint sockets are well known in the art, i.e., that they are state of the
art (FF 14). Kälberer teaches an alternative type of joint socket in which the
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shell and insert are precisely fitted to one another, and that uses a separate
retaining ring or fastener to fasten the insert to the shell (FFs 10-13).
Kälberer discloses that a surface roughening can be applied to the inner
surface of the shell to make the surface plastically deformable and thereby
equalize the transmission of force, such that the resulting deformability of
the shell compensates for dimensional inaccuracies in the fit that would
result in peak stresses (FF 13). Although the teaching of Kälberer is directed
to a joint socket with a non-taper lock configuration, we agree with the
Examiner that one of skill in the art would appreciate that the concept of a
roughened surface to equalize force could be applied to joint sockets that are
in a taper lock configuration to serve the same purpose of equalizing the
transmission of force between two surfaces (see FF15).
Appellant argues that the Examiner erred in concluding that one of
ordinary skill would have been motivated to apply the resistance to
deformation feature of Kälberer to the taper lock of Imhof in order to
equalize the transmission of force and compensate for peak stresses because
“one of ordinary skill [in the art] would expect that equalizing the
transmission of force in DE ‘390 would reduce the seizing forces between
the shell and the insert” (App. Br. 14). Appellant argues that the instant
Specification discloses that, as a result of the resistance to deformation
feature, the pressure between the two faces can be decreased while the
seizing force is increased (id.).
That argument is not persuasive. Appellant has not provided any
evidence or scientific reasoning to support the argument that one of ordinary
skill in the art would expect that the use of a resistance to deformation
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feature for equalizing the transmission of force between two faces in a taper
lock of a joint socket would reduce the seizing force between the shell and
the insert. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(“Attorney’s argument in a brief cannot take the place of evidence.”).
Appellant argues that the Kälberer teaching of “equalizing and
spreading out the transmission of force between the matching spherical
surfaces of the shells 10, 12 is directly contrary to the self-locking taper
feature of Imhof which concentrates locking forces along a line of contact 34
to provide the taper lock between the socket components 18, 20” (Reply
Br. 6). Appellant argues that “the self-locking taper lock feature between
the socket insert 10 and the socket shell 19 of Imhof . . . concentrates
locking forces along a line of contact 34 (i.e., to facilitate increased locking
forces along the line of contact 34) to provide the taper lock feature” (id.,
citing Imhof at ¶¶ 18 and 20).
That argument is not persuasive. Imhof discloses that a line of contact
is formed when the socket insert is loosely fitted into the socket shell such
that the socket insert can be rotated and tilted in the socket shell to obtain
optimal positioning (FF 5). Imhof discloses that, when optimal positioning
has been achieved, the socket insert is pressed axially into the
accommodating space of the socket insert so that it is clamped in a self-
retaining manner (FF 6). Thus, the locking forces are not concentrated along
a line of contact after the socket insert is pressed into the accommodating
space.
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Thus, we affirm the rejection claim 9 as being obvious in view of
Imhof and Kälberer. Claims 10-21 have not been argued separately and
therefore fall with claim 9. 37 C.F.R. § 41.37(c)(1)(vii).
Appellant also argues the rejection of independent claim 22 (App. Br.
16-17). Claim 227 is directed to a hip joint prosthesis and, like claim 9,
requires a socket shell and a socket insert such that “a resistance to
deformation of one or more of the inner face and outer spherical face is less
than that of a core region of the corresponding socket shell or socket insert.”
Claim 22 further requires “a surface structure on one or more of the inner
face and spherical outer face configured to reduce the resistance to
deformation of one or more of the faces in the socket shell and socket
insert.”
Appellant argues that claim 22 is directed to a taper lock (App.
Br. 16). Appellant argues that Kälberer teaches away from a self-locking
taper lock and argue that the “roughened surface and precise fit that Kälberer
discloses are used as an alternative to a taper lock to avoid the perceived
problems caused by a self-locking taper” (id.).
Appellant’s argument is not persuasive for the reasons discussed
above. Thus, we affirm the rejection of claim 22 as being obvious in view of
Imhof and Kälberer. Claims 23-28 have not been argued separately and
therefore fall with claim 22. 37 C.F.R. § 41.37(c)(1)(vii).

7 The full text of claim 22 can be found in the Claims Appendix to the
Appeal Brief (App. Br. 22-23).
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Appellant also argues the rejection of independent claim 29 (App.
Br. 17-18). Claim 298 is directed to a method for implanting a hip joint
endoprosthesis comprising, among other steps, the step of
[I]nserting a socket shell in a pelvic bone, the socket shell
having an inner surface that defines an accommodating space
. . . wherein a surface structure on the inner face reduces a
resistance to deformation of a portion of the inner surface
relative to a core region of the socket shell . . .

Appellant argues that it would not have been obvious to one of skill in the
art to apply the Kälberer resistance to deformation feature to the Imhof taper
lock because “Kalberer teaches away from the self-locking arrangement
and . . . [discloses] an alternative to a taper lock to avoid the perceived
problems caused by a self-locking taper” (App. Br. 17).
This argument is not persuasive for the reasons discussed above.
Thus, we affirm the rejection of claim 29 as being obvious in view of Imhof
and Kälberer. Claims 30-36 have not been argued separately and therefore
fall with claim 29. 37 C.F.R. § 41.37(c)(1)(vii).
Conclusion of Law
The preponderance of the evidence supports the Examiner’s
conclusion that the cited references would have made obvious the use of
Kälberer’s surface structure in the Imhof joint socket to thereby arrive at the
joint socket of claim 9 with “a resistance to deformation of one or more of
the inner face [of the socket shell] and outer spherical face [of the socket

8 The full text of claim 29 can be found in the Claims Appendix to the
Appeal Brief (App. Br. 24).
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insert] is less than that of a core region of the corresponding socket shell or
socket insert.
SUMMARY
We affirm the rejection claims 9-36 under 35 U.S.C. § 103(a).
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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