Ex Parte Maloney et al

Patent Trial and Appeal Board

Sep 21, 2016

13009117 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/009, 117 01119/2011
105330 7590 09/23/2016
Adams and Reese, LLP
One Shell Square
701 Poydras Street, Suite 4500
New Orleans, LA 70139
FIRST NAMED INVENTOR
William J. Maloney
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
025111-000017 1159
EXAMINER
WATKINS, MARCIAL YNN
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
09/23/2016 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):
jason.mueller@arlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM J. MALONEY, JOHN M. GREEN, and
MICHAEL L. BROOKS
Appeal2014-009523
Application 13/009,117 1
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and
FREDERICK C. LANEY, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
William J. Maloney et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner's final decision rejecting claims 1-11 and 13-
15.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.
1 According to Appellants, the real party in interest is Microport Orthopedics
Holding Inc. Appeal Br. 2 (filed Aug. 28, 2014).
2 Claim 12 is canceled. Id. at 15 (Claims App.).
Appeal2014-009523
Application 13/009,117
INVENTION
Appellants' invention "relates to knee prostheses that more closely
emulate the kinematics of the actual knee joint." Spec. i-f 1.
Claims 1 and 11 are independent. Claim 11 is illustrative of the
claimed invention and reads as follows:
11. A tibial insert for a total knee replacement prosthesis
configured to cooperate with a femoral component of the
prosthesis, the femoral component comprising a lateral
condylar surface, medial condylar surface and a posterior cam,
the tibial insert comprising:
a lateral bearing surface for contacting the lateral
condylar surface;
a medial bearing surface for contacting the medial
condylar surface; and
a raised portion having a posterior surface adapted to
cooperate with the posterior cam of the femoral component, the
posterior surface comprising a posteriorlateral camming surface
and a posteriormedial camming surface, the posteriorlateral
camming surface having a smaller radius of cur1ature than the
posteriormedial camming surface.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 11 and 15 under 35 U.S.C.
§ 102(b) as being anticipated by Suguro (US 2005/0209701 Al,
pub. Sept. 22, 2005).
II. The Examiner rejected claims 1-7, 9, and 10 under 35 U.S.C.
§ 103(a) as being unpatentable over Suguro and Kaufman (US
6,013,103, iss. Jan. 11, 2000).
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Application 13/009,117
III. The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as
being unpatentable over Suguro, Kaufman, and Mihalko (US
2012/0095564 Al, pub. Apr. 19, 2012).
IV. The Examiner rejected claims 13 and 14 under 35 U.S.C.
§ 103(a) as being unpatentable over Suguro and Mihalko.
ANALYSIS
Rejection I
The Examiner finds that Suguro discloses,
[A] raised portion (i.e. post) (13) having a posterior surface
comprising a posterior lateral camming surface (see annotated
version of figure 7B below) and a posteriormedial camming
surface (see annotated version of figure 7B below), the
posteriorlateral camming surface having a smaller radius of
curvature than the posterior medial camming surface (e.g., figure
7B; paragraph [0036]).
Final Act. 2-3 (mailed May 14, 2014). To better visualize the Examiner's
position, the Examiner sets forth a first annotated Figure 7B of Suguro, as
shown below:
3
Appeal2014-009523
Application 13/009,117
Id. at 3. The Examiner's first annotated Figure 7B of Suguro shows bearing
post 13 and cam 7, where the Examiner points to the right comer of post 13
as the claimed posteriorlateral camming surface and to the left comer of post
13 as the claimed posterior medial camming surface.
Appellants argue that paragraph 3 6 of Suguro discloses that the center
of the radius of curvature of the posteriorlateral camming surface of post 13
is displaced outward towards cam 7, such that "the posteriorlateral side of
the post 13 is closer to cam 7 than the posteriormedial side of post 13."
Appeal Br. 6 (emphasis omitted). 3 To better support their position,
Appellants present their own annotated Figure 7B of Suguro, as shown
below:
.....•..•...••...•...•.. ~
-:.~:-:~{oy..;:.~·~·x·:~ ...... :· ~.;.; .
: ::'..<-~~ .. --: ~~ ·~«~;:.. .. ~ ·=:-:-· :
: ~;:-.,.- ·-:.:-;..'\;.:,·:~:-.:~«~-: ;.;~ :
.:;:;;~~~;:~-.---~: ::~;--::~: .. ..
·~«):..-...::~..;: .::>... . ~~ ....... ~~-
FtG. 78
3 Paragraph 3 6 of Suguro states that:
[I]f the cam 7 is symmetric in terms of right and left
diameter, the lateral articular surface 11 side at the posterior
surface of the post 13 should be set back from the medial articular
surface 10 side, that is, the center of the curvature (or radius) can
be displaced outward as shown in Fig. 7B.
4
Appeal2014-009523
Application 13/009,117
Id. at 7. Appellants' annotated Figure 7B of Suguro shows bearing post 13,
where the center of the radius of curvature of the posteriorlateral camming
surface (right comer) is displaced outward toward cam 7.
According to Appellants, "[t]here is no mention [in Suguro] of the
radius of curvature of the posteriorlateral camming surface being changed."
Id. As such, Appellants assert that Suguro does not disclose that the
posteriorlateral camming surface has a smaller radius of curvature than the
posteriormedial camming surface, as called for by independent claim 11. Id.
Appellants further contend that the Examiner's reliance on Suguro' s Figure
7B is in error because Suguro does not disclose that Figure 7B is drawn to
scale. Id. at 9; see also Reply Br. 2 (citing Hockerson-Halberstadt, Inc. v.
Avia Group Int'!., 222 F.3d 951, 956 (Fed. Cir. 2000)).
In response, the Examiner takes the position that the small circular
comer camming surfaces of Suguro' s post 13, which Appellants rely on for
making their arguments, "are not the 'camming surfaces' relied upon in the
Examiner's rejection." Ans. 2-3. According to the Examiner, the
"posterio[r]lateral and posteriormedial surfaces of the post 13 are identified
as the surface defined between the respective outer comers to the line of
symmetry as depicted in figure 7B." Id. at 3. In other words, the Examiner
divides the surface connecting the left and right comer surfaces of post 13
into a posteriormedial camming surface from the left comer to the symmetry
axis and a posteriorlateral camming surface from the symmetry axis to the
right comer. The Examiner then proceeds to draw two circles that are each
tangential to the posteriormedial and posteriorlateral camming surfaces,
respectively, to show that the radius of curvature of the posteriorlateral
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Appeal2014-009523
Application 13/009,117
camming surface is smaller than the radius of posteriormedial camming
surface. Id. To support this finding, the Examiner presents a second
annotated Figure 7B of Suguro, as shown below:
. ~n. r~~h~~:r ~\~1:td.~< tht '.r~~:\~?f··cd' .. :-~ ~{:~ff~B~~~.g ~~~~ .. f~~~~e:~ ~~n~- ~h~-:
:~\ff.fr~~-:t~ "!;: ~~:;:§ b~~·;:::·~~~ .. t: rb-::::· ~~br~){~ id~r;tkG~d. p~~r~~u~:t m~~s.
~\t~;.}~t~~}~':· ·~··:f:~~~~~d (\~~
~di:~~trt:i:~~B"X~ :~-:~~·~J~~~~~
• • Y.
;~·nr11trnng ~:urr.a.-.::,f.
Id. at 3. The Examiner's second annotated Figure 7B of Suguro shows
bearing post 13, where the posteriorlateral camming surface has a smaller
radius of curvature than the posterior medial camming surface.
The Examiner further asserts that because "Suguro is clearly relied
upon in the anticipation rejection for showing trends of radii of curvature
between posterio[r]lateral and posteriormedial sides, not exact proportions
therebetween," the Examiner's reliance on Suguro's Figure 4 is not in error.
Id. at 4.
It is well settled that a drawing teaches all that it reasonably discloses
and suggests to a person of ordinary skill in the art. In re Aslanian, 590 F .2d
911, 914 (CCPA 1979). In this case, although Suguro's Figure 7B shows an
asymmetric bearing post 13, this does not necessarily mean that the radii of
the posteriorlateral and posteriormedial camming surfaces are in the
relationship of claim 11, as the Examiner asserts. Although we appreciate
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Appeal2014-009523
Application 13/009,117
that the Examiner is not using Suguro' s Figure 7B to determine exact
proportions of the curvature radii, nonetheless, for the reasons explained
infra, the Examiner's finding that the posteriorlateral camming surface of
Suguro' s post 13 has a smaller radius of curvature than the posteriormedial
camming surface requires speculation on the Examiner's part and is
therefore, deficient.
In a first instance, if we consider the left and right comers of Suguro' s
post 13 as the claimed posteriormedial and posteriorlateral camming
surfaces, it is feasible that the radii of the posteriorlateral and
posteriormedial camming surfaces are the same and yet form the asymmetric
shape of Suguro' s post 13. Appellants are correct that such a situation may
occur when displacing the center of curvature of the posteriorlateral
camming surface, as Suguro discloses in paragraph 36. See Appeal Br. 7. A
person of ordinary skill in the art may draw two circles, having the same
radius and being tangential to each comer surface, but having their centers
displaced. This is shown below in our first annotated Figure 7B of Suguro:
13
7
Our first annotated Figure 7B of Suguro shows bearing post 13, cam 7, and
two circles, having the same radius and being tangential to each comer
surface of post 13.
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Appeal2014-009523
Application 13/009,117
Hence, as the circles in our first annotated Figure 7B of Suguro have
the same radius, and yet form the asymmetric shape of Suguro' s post 13, the
posteriormedial (left comer) and posteriorlateral (right comer) camming
surfaces do not necessarily have different radii, as the Examiner finds, and
thus the Examiner's finding is speculative. Therefore, in such a case, we
agree with Appellants that Suguro does not disclose explicitly or inherently
the radii of the posteriormedial (left comer) and posteriorlateral (right
comer) camming surfaces as being different. Appeal Br. 7.
Secondly, with respect to the Examiner's alternative interpretation of
Suguro' s Figure 7B, we note that such an interpretation of the claimed
posteriormedial and posteriorlateral camming surfaces is not consistent with
Appellant's Specification. Claims are to be given their broadest reasonable
interpretation consistent with the Specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). In this case, Appellants' Specification describes outer comers 209,
211 of raised portion 207 as the posteriorlateral and posteriormedial
camming surfaces, respectively. Spec. i-f 40; see also id. at Fig. 7.
Accordingly, in light of Appellants' Specification, the Examiner's exclusion
of the left and right comer surfaces of Suguro' s post 13 is not reasonable.
Furthermore, we note that the Examiner's choice of circles that are
tangential to the posteriormedial and posteriorlateral camming surfaces is
speculative at best. See Ans. 3 (Examiner's second annotated figure 7B of
Suguro ). For example, a person of ordinary skill in the art could equally
have drawn a single circle that is tangential to the entire surface connecting
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Appeal2014-009523
Application 13/009,117
the outer comers of post 13. Our second annotated Figure 7B of Suguro is
shown below:
7
Our second annotated Figure 7B of Suguro shows bearing post 13, cam 7,
and a single circle tangential to the surface connecting the left and right
comers of post 13.
Hence, as the circle is tangential to both posteriorlateral and
posteriormedial camming surfaces, as identified by the Examiner, the
surfaces do not necessarily have different radii, as the Examiner finds, and
thus the Examiner's finding is speculative. Therefore, we agree with
Appellants that Suguro does not disclose explicitly or inherently the radii of
the posteriormedial and posteriorlateral camming surfaces as being different.
Appeal Br. 7.
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 102(b) of claims 11 and 15 as being anticipated
by Suguro.
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Appeal2014-009523
Application 13/009,117
Rejections II-IV
Rejections II-IV rely on the Examiner's finding that the radii of
curvature of the first and second camming surfaces of the posterior surface
of Suguro' s post 13 are different. See Final Act. 4 (citing Suguro i-f 3 6, Fig.
7B). However, for the reasons set forth supra, the Examiner's finding is
deficient. As such, we agree with Appellants that, "Suguro does not disclose
a tibial insert having a raised portion whose posterior surface comprises 'a
first camming surface and a second camming surface having different radii
of curvature'," as called for by independent claim 1. The Examiner's use of
the disclosures of Kaufman and Mihalko does not remedy the deficiencies of
Suguro as discussed supra.
Therefore, for the same reasons as discussed above, we also do not
sustain the rejections under 35 U.S.C. § 103(a) of claims 1-7, 9, and 10, as
being unpatentable over Suguro and Kaufman; of claim 8 as being
unpatentable over Suguro, Kaufman, and Mihalko; and of claims 13 and 14
as being unpatentable over Suguro and Mihalko.
SUMMARY
The Examiner's decision to reject claims 1-11 and 13-15 is reversed.
REVERSED
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