14014737 (P.T.A.B. Nov. 15, 2017)

Ex Parte Jones et al

Patent Trial and Appeal BoardNov 15, 2017

14014737 (P.T.A.B. Nov. 15, 2017)

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. 14/014,737 08/30/2013 Nolan C. Jones 4394.536US2 3260 104326 7590 11/17/2017 Schwegman Lundberg & Woessner / Zimmer P.O. Box 2938 Minneapolis, MN 55402 EXAMINER NELSON, CHRISTINE L ART UNIT PAPER NUMBER 3774 NOTIFICATION DATE DELIVERY MODE 11/17/2017 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): SLW @ blackhillsip.com USPTO@slwip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NOLAN C. JONES and JEFFERY A. VANDIEPENBOS Appeal 2015-006488 Application 14/014,737 Technology Center 3700 Before MICHELLE R. OSINSKI, ANNETTE R. REIMERS, and THOMAS F. SMEGAL, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Nolan C. Jones and Jeffery A. VanDiepenbos (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1—5 as anticipated by Griner (US 2004/0039450 Al, published Feb. 26, 2004). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2015-006488 Application 14/014,737 CLAIMED SUBJECT MATTER The claimed subject matter relates to a provisional femoral component that assists in determining the proper size of final prosthetic components. Spec. 11. Claim 1, the only independent claim, is representative of the claimed subject matter and recites (with emphasis added): 1. A provisional femoral component, comprising: a provisional condyle, said provisional condyle defining a provisional articulating surface sized and shaped to be engageable with a proximal tibia in joint articulating relationship and an opposing provisional bone contacting surface sized and shaped to be engageable with a distal femur; and indicating means for simultaneously visually representing two different femoral prosthesis profiles. ANALYSIS Appellants do not offer arguments in favor of dependent claims 2-5 separate from those presented for independent claim 1. See Br. 5—9. We select claim 1 as the representative claim, and claims 2-5 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Appellants argue that Griner lacks the means-plus-fimction limitation “indicating means for simultaneously visually representing two different femoral prosthesis profiles,” as recited in claim 1. Specifically, Appellants argue that Griner’s structure including cutting guide slots 28 (1) does not perform the function of being used as indicating means for simultaneously visually representing two different femoral prosthesis profiles, and (2) is not equivalent to Appellants’ structure (e.g., slots 58A). See Br. 6—9. We acknowledge that Griner’s cutting guide slots 28 (and alternating projections) are not intended to be used to simultaneously visually represent the profiles of two differently sized femoral prostheses in the same way as 2 Appeal 2015-006488 Application 14/014,737 disclosed by Appellants. See Br. 6—8. Nonetheless, we note that Griner’s slots 28 inherently perform the function as claimed, which is essentially to represent two different shapes. See e.g., Griner Fig. 4. Stated differently, claim 1 only requires that the two shapes formed by Griner’s slots 28 (and projections) represent or resemble two shapes reasonably described as femoral prosthesis profiles. Because claim 1 does not require femoral prostheses, the claim does not require that Griner’s slots 28 must represent actual femoral prostheses profiles. To that point, the Examiner correctly notes that the two different femoral prostheses, and profiles, are not positively claimed. Ans. 3; See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (Limitations not appearing in the claims cannot be relied upon for patentability). Because the femoral prostheses are not part of the claimed structure, the Examiner properly reasons that Griner’s slots 28 simultaneously visually represent the profiles of two hypothetical differently sized prostheses, i.e., adult and child sized prostheses. Ans. 3. In other words, the Examiner establishes that Griner’s slots 28 simultaneously visually represent two different profiles, the profiles reasonably approximating the shapes of two different hypothetical (rather than actual) femoral prostheses. See Final Act. 2; see also Ans. 3. As such, a preponderance of the evidence supports the Examiner’s finding that Griner’s slots 28 form shapes that resemble adult and child sized femoral prostheses, and therefore, perform the recited function of simultaneously visually representing two different femoral prosthesis profiles. See Final Act. 2; see also Ans. 3. Appellants do not provide persuasive evidence or argument to the contrary. 3 Appeal 2015-006488 Application 14/014,737 In response to Appellants’ argument that Griner’s slots 28 and projections are not equivalent to Appellants’ slots 58A and protrusions 54A, the Examiner responds that the structure disclosed by Appellants is a series of alternating projections and slots, and that Griner comprises such alternating projections and slots. See Ans. 2—A. The Examiner emphasizes the similarity in structure, and correctly notes that means-plus-fimction language in an apparatus claim is a tool to claim the structure of the apparatus and not a way to incorporate a method step into an apparatus claim. See Ans. 3; see also id. at 4 (“The step of using the claimed structure to actually perform the recited function in the means-plus-fimction language is not required for a prior art structure to meet the means-plus-fimction language in an apparatus claim.”). Appellants do not apprise us of Examiner error. In particular, Appellants do not provide persuasive evidence or argument that the structural differences between Appellants’ and Griner’s slots are such that Griner’s slots 28 would not be considered an equivalent under 112, 6th paragraph. In summary, and based on the record presented, we are not persuaded the Examiner erred in rejecting independent claim 1 as anticipated by Griner. Accordingly, we sustain the Examiner’s rejection of claim 1 as anticipated by Griner. We further sustain the Examiner’s rejection of claims 2—5, which fall with claim 1. DECISION We AFFIRM the Examiner’s decision to reject claims 1—5 as anticipated by Griner. 4 Appeal 2015-006488 Application 14/014,737 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 5