Ex Parte Meier et al

Patent Trial and Appeal Board

May 31, 2017

13247453 (P.T.A.B. May. 31, 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.
13/247,453 09/28/2011 Rusty T. Meier 265280-212774 9173
23643 7590 06/02/2017
Barnes & Thornburg LLP (IN)
11 S. Meridian Street
Indianapolis, IN 46204
EXAMINER
HOB AN, MELISSA A
ART UNIT PAPER NUMBER
3738
NOTIFICATION DATE DELIVERY MODE
06/02/2017 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):
INDocket@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RUSTY T. MEIER, DAREN L. DEFFENBAUGH,
MARK A. HELDRETH, and STEPHEN A. HAZEBROUCK
Appeal 2016-003896
Application 13/247,4531
Technology Center 3700
Before DONALD E. ADAMS, TAWEN CHANG, and DAVID COTTA,
Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims 1—3, 6—15, 19,
and 20 (Final Act. I).2 The Examiner entered rejections under 35 U.S.C.
§ 102(b) and 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 Appellants identify the real party in interest as “DePuy (Ireland), a Johnson
& Johnson Company” (App. Br. 2).
2 Final Office Action, mailed March 19, 2015 Office Action.
Appeal 2016-003896
Application 13/247,453
STATEMENT OF THE CASE
Appellants’ disclosure relates “to an implantable knee prosthesis”
(Spec. 11). Claims 1 and 10 are representative and reproduced below:
1. A fixed-bearing knee prosthesis, comprising:
a femoral component having a medial condyle surface
and a lateral condyle surface,
a bearing having (i) a medial bearing surface configured
to articulate with the medial condyle surface of the femoral
component, and (ii) a lateral bearing surface configured to
articulate with the lateral condyle surface of the femoral
component, and
a tibial tray secured to the bearing, the tibial tray having a
platform with a fixation member extending inferiorly from an
inferior surface thereof, the platform having a posterior buttress
extending anteriorly away from a posterior section of a
perimeter of the platform and extending superiorly from a
superior surface of the platform, wherein the posterior buttress
is generally Y-shaped and comprises:
a first arm extending along a posterior edge of the
platform,
a second arm extending along the posterior edge of the
platform in a direction away from the first arm,
a third arm extending anteriorly away from the first arm
and the second arm,
a lateral-most edge that is defined in the first arm and the
third arm such that the lateral-most edge of the posterior
buttress extends anteriorly away from the posterior edge of the
platform along the first arm and the third arm, the lateral-most
edge having a convex surface that faces outward from the first
arm and the third arm and transitions to a concave surface that
faces outward from the first arm and the third arm, the convex
surface of the lateral-most edge being positioned superior to the
concave surface of the lateral-most edge, and
a medial-most edge that is defined in the second arm and
the third arm such that the medial-most edge of the posterior
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Appeal 2016-003896
Application 13/247,453
buttress extends anteriorly away from the posterior edge of the
platform along the second arm and the third arm, the medial-
most edge having a convex surface that faces outward from the
second arm and the third arm and transitions to a concave
surface that faces outward from the second arm and the third
arm, the convex surface of the media-most edge being
positioned superior to the concave surface of the medial-most
edge.
(App. Br. 19—20 (emphasis added).)
10. A fixed-bearing knee prosthesis, comprising:
a femoral component having a medial condyle surface
and a lateral condyle surface,
a bearing having (i) a medial bearing surface configured
to articulate with the medial condyle surface of the femoral
component, (ii) a lateral bearing surface configured to articulate
with the lateral condyle surface of the femoral component, (Hi)
a locking tab, and
a tibial tray secured to the bearing, the tibial tray having a
platform with a fixation member extending inferiorly from an
inferior surface thereof, the platform having an anterior buttress
extending along an anterior section of a perimeter of the
platform and extending superiorly from a superior surface of
the platform, wherein the anterior buttress comprises a
posterior-most edge having (i) a convex surface that transitions
to a concave surface, the convex surface being positioned
superior to the concave surface, and (ii) an undercut defined in
the concave surface,
wherein (i) an imaginary line extends along the posterior-
most edge of the anterior buttress, and the imaginary line
defines a curve having a constant radius, (ii) the undercut
defined in the anterior buttress is centered on the midpoint of
the imaginary line, and (iii) the locking tab of the bearing is
positioned in the undercut defined in the anterior buttress.
(App. Br. 22—23 (emphasis added).)
3
Appeal 2016-003896
Application 13/247,453
The claims stand rejected as follows:
Claims 1—3 and 6—9 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Robie.3
Claims 10-15, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Robie.
Appellants’ “FIG. 3 is a perspective view of the tibial tray of [Appellants’]
knee prosthesis” and illustrates, inter alia, “a generally Y-shaped posterior
3 Robie et al., WO 99/66864, published Dec. 29, 1999.
FACTUAL FINDINGS (FF)
FF 1. Appellants’ Figure 3 is reproduced below:
■14
S \\
k_. ^'
V'
22
4
Appeal 2016-003896
Application 13/247,453
buttress 44 [that] extends upwardly from the superior surface 24 of the tibial
tray 14,” wherein
the posterior buttress 44 has a pair of arms 46, 48 extending
along a posterior section of the perimeter of tibial tray’s
platform 18. Specifically, the lateral arm 46 of the posterior
buttress 44 extends along the posterior edge 50 on the lateral
side of the platform 18, whereas the medial arm 48 of the
posterior buttress 44 extends along the posterior edge 50 on the
medial side of the platform 18 in a direction away from the
lateral arm 46. A third arm 52 of the posterior buttress 44
extends anteriorly away from the intersection of the lateral arm
46 and the medial arm 48 (i.e., in a direction toward the center
of the platform 18).
(Spec. 1127 and 39.)
FF 2. Appellants’ Figure 2 is reproduced below:
:-152
...sr-vi -is
38'
/
154
y
»-154150 J % f-.____ v"mJ \\ 'kisz
A--
164
AyAx (
C
42 —"
A0
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144
y-'36
.^34
Appellants’ “FIG. 2 is a bottom perspective view of the bearing of the knee
prosthesis” and illustrates, inter alia, that the “anterior [locking] tab 42 of
the bearing 16 is sized and positioned to be received into the anterior
undercut 74 of the anterior buttress 64 [illustrated in Appellants’ FIG. 3,] to
facilitate locking the bearing 16 to the tibial tray 14” (Spec. H 26, 44, and
57 (“anterior locking tab 42”)).
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Appeal 2016-003896
Application 13/247,453
FF 3. Robie’s Figure 1 is reproduced below:
Robie’s “FIG. 1 is an exploded view of [Robie’s] tibial component of a total
knee prosthesis which includes a tibial tray 12, tibial insert 14 and retaining
element or clip 16. The tibial tray 12 includes[, inter alia,] an upstanding
anterior rail 24 and posterior rail 26” (Robie 4: 24—26).
FF 4. Robie’s
support shelf 22 is generally oblong with a curved posterior
edge where the dovetail 36 intersects the planar top surface 28.
The posterior rail 26 is curved to define a clearance notch 38 for
the intact posterior cruciate ligament. The top surface 28, inner
wall 32 and dovetail surface 36 form a receptacle for receiving
the tibial insert 14.
(Robie 5: 12—16.)
FF 5. Robie’s
retaining claim 16 includes a head portion 43, a tab 44
extending from the head portion 43, and a resilient holding
member which, in one illustrative embodiment, comprises a
pair of tines 46a, 46b extending from head portion 43 beneath
tab 44. The anterior rail 24 includes a clip tab cutout 40 []
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Appeal 2016-003896
Application 13/247,453
configured to receive tightly the tab 44, and a slot 42 which
receives tines 46a, 46b of retaining clip 16.
(Robie 5: 17-22.)
ISSUE
Anticipation'.
Does the preponderance of evidence on this record support
Examiner’s finding that Robie teaches Appellants’ claimed invention?
ANALYSIS
Examiner finds that Robie teaches Appellants’ claimed invention
wherein, inter alia, Robie’s posterior buttress (26) extend[s] anteriorly away
from a posterior section of a perimeter of the platform and extend[s]
superiorly from a superior surface of the platform, wherein the posterior
buttress is generally Y-shaped [] and comprises: a first arm extending along
a posterior edge of the platform, a second art extending along the posterior
edge of the platform in a direction away from the first arm, and a third arm
extending anteriorly away from the first [and] second arm[s]” (Final Act. 6;
see also Non-Final 3;4 Ans. 2-4; and App. Br. 2). In this regard, Examiner
4 Examiner’s Non-Final Office Action mailed September 30, 2015.
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Appeal 2016-003896
Application 13/247,453
annotates Robie’s FIG. 4 and Appellants’ FIG. 4, both of which are
reproduced below:
3rd arm ] 2r,l:i arm
i 'Jf If
Latsrai'snost
edge
Medtes-most
edge
Robs©
'f
Examiner annotates FIG. 4 of Robie’s to define various portions of Robie’s
posterior rail 26 as corresponding to the claimed configuration of
Appellants’ “Y-shaped posterior buttress 44” (see Ans. 3; see also cf. FF 1,
3, and 4).
Applicant’s
Examiner annotates Appellants’ FIG. 4 in an attempt to establish a
correlation between the requirements of Appellants’ claimed invention and
Robie’s posterior rail 26. We are not persuaded.
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Appeal 2016-003896
Application 13/247,453
Notwithstanding Examiner’s assertion to the contrary, we agree with
Appellants’ that “[b]ased on the use of the term ‘generally Y-shaped’ in
[Appellants’] [Specification and the general understanding of a person of
ordinary skill, the term ‘generally Y-shaped’ refers to a shape that generally
corresponds to the shape of the letter ‘Y’” (App. Br. 7). In this regard,
Examiner failed to establish an evidentiary basis on this record to support a
finding that Robie teaches a tibial tray that comprises a posterior buttress
that is generally Y-shaped, as is required by Appellants’ claimed invention.
Specifically, Robie lacks a third arm that extends anteriorly away from the
first arm and the second arm as defined by both Appellants’ claimed
invention and Specification (see App. Br. 19; see also FF 1; cf. Final Act. 3—
5; FF 3^4; and Ans. 2-4). Therefore, we are compelled to reverse the
anticipation rejection of record.
CONCFUSION OF FAW
The preponderance of evidence on this record fails to support
Examiner’s finding that Robie teaches Appellants’ claimed invention. The
rejection of claims 1—3 and 6—9 under 35 U.S.C. § 102(b) as anticipated by
Robie is reversed.
Obviousness:
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
ANAFYSIS
Based on Robie, Examiner concludes that, at the time Appellants’
invention was made, it would have been prima facie obvious to consider
Robie’s bearing as having a locking tab, specifically element 16 illustrated
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Appeal 2016-003896
Application 13/247,453
in Robie’s FIG. 1, when Robie’s device is configured into a unified whole
prosthesis (see Ans. 4; see also FF 3—5). We are not persuaded.
Appellants’ claim 10, expressly defines each component of
Appellants’ fixed-bearing knee prosthesis (see Appellants’ claim 10). In
defining each component of Appellants’ fixed-bearing knee prosthesis,
Appellants’ claim 10 expressly requires the bearing of the prosthesis to have,
inter alia, a locking tab (id.; see also FF 2). As Appellants explain,
notwithstanding Examiner’s contention to the contrary, “Robie’s retaining
element or clip 16 ... is a separate component from the tibial insert 14, as
such, the insert 14 does not have the retaining claim 16 as alleged by []
Examiner” (App. Br. 16). We agree.
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner support a
conclusion of obviousness. The rejection of claims 10—15, 19, and 20 under
35 U.S.C. § 103(a) as unpatentable over Robie is reversed.
REVERSED
10