Ex Parte Leibel

Patent Trial and Appeal Board

Jan 24, 2017

12029429 (P.T.A.B. Jan. 24, 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.
12/029,429 02/11/2008 David A. Leibel TRAUMA 3.0-759 8804
530 7590 01/26/2017
LERNER, DAVID, LITTENBERG,
KRUMHOLZ & MENTLIK
600 SOUTH AVENUE WEST
WESTFIELD, NJ 07090
EXAMINER
WATKINS, MARCIA LYNN
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
01/26/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID A. LEIBEL
Appeal 2014-009398
Application 12/029,4291
Technology Center 3700
Before STEFAN STAICOVICI, ANNETTE R. REIMERS, and
SEAN P. O’HANLON, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
David A. Leibel (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner’s final decision rejecting claims 1—7, 9, 12, 14, 21—24, 26—29,
and 34^45.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.
1 According to Appellant, Small Bone Innovations, Inc, is the real party
in interest. Appeal Br. 2 (filed Mar. 19, 2014).
2 Claims 8, 10, 11, 13, 15—20, 25, and 30-33 are canceled. Id.
Appeal 2014-009398
Application 12/029,429
INVENTION
Appellants’ invention relates to “a radial head implant for replacement
of a head portion of a radius bone.” Spec., para. 6.
Claims 1 and 21 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A radial head implant for replacement of a head portion
of a radius bone comprising:
a head having a proximal surface including a
substantially concave recess configured to articulate with a
capitellum of a humerus bone;
a stem; and
a locking mechanism configured to secure said head to
said stem when said head is fully engaged with said stem, said
locking mechanism comprising:
a longitudinal channel having a first end, a second
end, an end notch disposed at the second end, and a tab
notch disposed at a position between the first end and the
second end;
a mating portion engageable with the longitudinal
channel in a dovetail interaction such that the mating
portion is positioned in the longitudinal channel between
the first end and the tab notch when the head is secured
to the stem; and
an elongate spring arm having a longitudinal axis,
a locking tab and an end tab, each of the locking tab and
the end tab protruding from a first surface of the spring
arm in a direction that is substantially transverse to the
longitudinal axis, and wherein said end notch is adapted
to engage said end tab and said tab notch is adapted to
engage said locking tab when the head is secured to the
stem.
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Appeal 2014-009398
Application 12/029,429
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1—4, 9, 12, 14, 21—24, 26—29, and
34^45 under 35 U.S.C. § 103(a) as being unpatentable over
O’Driscoll (US 2005/0216090 Al, pub. Sept. 29, 2005), Smith
(US 5,108,442, iss. Apr. 28, 1992), and Gibbs (US 7,641,698
Bl, iss. Jan. 5, 2010).
II. The Examiner rejected claims 5—7 under 35 U.S.C. § 103(a) as
being unpatentable over O’Driscoll, Smith, Gibbs, and Cooney
(US 6,709,459 Bl, iss. Mar. 23, 2004).
ANALYSIS
The Examiner finds that O’Driscoll discloses most of the limitations
of independent claims 1 and 21, but fails to disclose a locking mechanism
including a longitudinal channel with an end notch and tab notch, and a
spring arm with an end tab and a locking tab. Final Act. 2—3 (citing
O’Driscoll, paras. 68—73, 110- 113, and Figs. 1, 15, 16) (mailed Mar. 19,
2013). Nonetheless, the Examiner finds that Smith discloses a locking
mechanism to lock and unlock a stem component to a head component
including spring arm 32 having locking tab 34 that is received by tab notch
58. Id. at 3 (citing Smith, Figs. 1, 4—6). The Examiner further finds that
Gibbs discloses a “stem attachment mechanism in bone prosthetics”
including end tab 162 received in end notch 126 of elongated channel 112.
Id. at 4 (citing Gibbs, col. 3,1. 65—col. 4,1. 3, Figs. 6—8). The Examiner
concludes that that it would have been obvious for a person of ordinary skill
in the art “to modify the device of O’Driscoll by substituting the securement
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Appeal 2014-009398
Application 12/029,429
mechanism of Smith in the invention of O’Driscoll as a functional
equivalent with predictable results and a reasonable expectation of success”
and “to . . . provide an easy release mechanism that does not require
screwing during surgery . . . and that is easier to remove than unscrewing of
a screw.” Id. at 3^4. The Examiner further determines that it would have
been obvious for a person of ordinary skill in the art to provide end notch
126 and end tab 162 of Gibbs in the longitudinal channel and on the spring
arm, respectively, of O’DriscolTs device, as modified by Smith, “in order to
aid in slidably guiding the components into engagement (i.e. seating of the
components).” Id. at 5 (citing Gibbs, col. 3,1. 65—col. 4,1. 3).
Appellant argues that the Examiner arrived at the rejection by
employing impermissible hindsight reconstruction. See Appeal Br. 9.
Appellant more specifically argues that “the Examiner is selectively
identifying various components in the prior art then impermissibly using the
current application as a roadmap to modify the cited references to
improperly arrive at what the Examiner purports to be the claimed
invention.” Id. According to Appellant, as Smith teaches a single groove 50
and Gibbs discloses a single slot 126, “none of the cited prior art teach . . .
that multiple notches should be used, nor what benefit such additional
notch(es) may provide.” Reply Br. 5 (filed Sept. 2, 2014).
As the reason proffered by the Examiner, i.e., “in order to aid in
slidably guiding the components into engagement,” appears to already be
performed by the O’Driscoll’s device, as modified by Smith, we agree with
Appellant that the rejection appears to improperly rely on hindsight
reconstruction using the claims as a guide.
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Appeal 2014-009398
Application 12/029,429
Smith discloses that as “component 20 moves in the direction of
arrow 52 . . ramp surface 56 engages the tab 34 of spring clip [30] and
forces the tab 34 in the direction of arrow 58 into . . . section 44 of recessed
portion 28.” Smith, col. 4,11. 20—24, Figs. 4, 5. Smith further discloses that
“[a]fter . . . component 20 is fully inserted onto . . . component 12 . . . tab 34
of spring clip 30 springs upwardly in the direction of arrow 60 ... so that the
tab 34 enters groove 50.” Id., col. 4,11. 26—32, Fig. 6. As such, because
Smith’s locking mechanism already guides components 12, 20 into
engagement, when substituting Smith’s locking mechanism for the locking
mechanism of O’Driscoll, as the Examiner proposes, the locking mechanism
in the device of O’Driscoll’s, as modified by Smith, will likewise guide
O’Driscoll’s head component 194 and stem component 192 into
engagement. See O’Driscoll, Fig. 15.
Although we appreciate that elements of O’Driscoll, Smith, and Gibbs
can be combined, this does not, in itself, provide a reason to combine them.
Rather, an obviousness rejection further must explain the reasoning to
support the Examiner’s conclusion of obviousness. Perfect Web Techs., Inc.
v. InfoUSA, Inc., 587 F.3d 1324, 1328—30 (Fed. Cir. 2009). In this case, the
Examiner has not adequately explained why providing end tab 162 and end
notch 126, as taught by Gibbs, to the device of O’Driscoll, as modified by
Smith, will “aid in slidably guiding the components into engagement (i.e.
seating of the components).” See Final Act. 5. As noted above, the locking
mechanism in the device of O’Driscoll, as modified by Smith, already
guides head component 194 and stem component 192 into engagement. The
Examiner has not provided any findings that either O’Driscoll or Smith
recognized a problem with guiding components into engagement. Without a
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Application 12/029,429
persuasive, articulated reasoning based on rational underpinnings for
modifying the device of O’Driscoll, as modified by Smith, with the
teachings of Gibbs, the Examiner’s rejection appears to be the result of
hindsight analysis. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(cited with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007)).
In conclusion, for the foregoing reasons, we do not sustain the
rejection of claims 1—4, 9, 12, 14, 21—24, 26—29, and 34-45 as unpatentable
over O’Driscoll, Smith, and Gibbs.
With respect to the rejection of claims 5—7, the Examiner’s use of the
Cooney disclosure does not remedy the deficiency of the Examiner’s
combination of the teachings of O’Driscoll, Smith, and Gibbs. See Final
Act. 9-10. Accordingly, we also do not sustain the rejection of claims 5—7
under 35 U.S.C. § 103(a) as unpatentable over O’Driscoll, Smith, Gibbs, and
Cooney.
SUMMARY
The Examiner’s decision to reject claims 1—7, 9, 12, 14, 21—24, 26—
29, and 34-45 is reversed.
REVERSED
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