Ex Parte Komistek

Patent Trial and Appeal Board

Dec 23, 2016

13330259 (P.T.A.B. Dec. 23, 2016)

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.
13/330,259 12/19/2011 Richard D. Komistek 265280-224333 8403
23643 7590 12/28/2016
Barnes & Thornburg LLP (IN)
11 S. Meridian Street
Indianapolis, IN 46204
EXAMINER
JONES, DIANA S
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
12/28/2016 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):
INDocket@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD D. KOMISTEK
Appeal 2015-003953
Application 13/330,2591
Technology Center 3700
Before LYNNE H. BROWNE, MICHELLE R. OSINSKI, and
NATHAN A. ENGELS, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 81—84, 86, 89, and 92—94. Claims 2—80, 85, 87, 88, 90, and 91 are
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
appellant identifies DePuy (Ireland), a Johnson & Johnson Company, as
the real party in interest. App. Br. 2.
Appeal 2015-003953
Application 13/330,259
ILLUSTRATIVE CLAIM
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A trial for use with total hip arthroplasty, the trial
comprising:
a first spherical insert having a plurality of tabs mounted
thereto, each of the plurality of tabs at least partially defining an
orifice, wherein the first spherical insert is sized to fit within an
unreamed acetabulum, the first spherical insert further being
sized to contact the acetabulum and a resected femoral neck
when the first spherical insert is positioned within the unreamed
acetabulum.
THE REJECTION
Claims 1, 81—84, 86, 89, and 92—94 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Banks et al. (US 2011/0054628 Al; Mar. 3,
2011).
ANALYSIS
Appellant contends the Examiner erred in finding that Banks discloses
the “spherical insert” of claim 1. App. Br. 4. The Examiner finds Banks
discloses the claimed spherical insert with Banks’s disclosure of two
“substantially semi-spherical” portions that combine to form a spherical
insert. Final Act. 2—3; Ans. 5—6. Appellant argues that each of the two
semispherical portions disclosed in Banks has a radius different from that of
the other portion such that the parts do not combine to form a sphere. See
App. Br. 5; Reply Br. 3 (arguing joining half of a baseball to half of a golf
ball would not define a sphere).
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Appeal 2015-003953
Application 13/330,259
We agree with Appellant. Copied below is the relevant portion of
Banks’s Figure 12, which depicts an orthopedic insert having a first
semispherical portion 110 and a second semispherical portion 147, where the
radius of the first semispherical portion is greater than the radius of the
second semispherical portion.
no
Excerpt of Banks Fig. 12: a schematic side, cross-sectional
view of an orthopedic device. See Banks |32.
As evidenced by Figure 12, the first and second portions do not combine to
form a sphere. See also Banks 147 (describing portion 110 as “substantially
semi-spherical” and resembling or having some of the characteristics of a
sphere). Contrary to the Examiner’s findings, we find no disclosure in
Banks of a spherical insert as claimed. Accordingly, we do not sustain the
Examiner’s rejection of claim 1. For the same reasons, we do not sustain the
Examiner’s rejection of claims 81—84, 86, 89, and 92—94, each of which
similarly requires a sphere-shaped surgical instrument.
DECISION
For the above reasons, we reverse the Examiner’s rejection of claims
1,81-84, 86, 89, and 92-94.
REVERSED
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