Ex Parte Metzger et alDownload PDFPatent Trial and Appeal BoardFeb 28, 201813543621 (P.T.A.B. Feb. 28, 2018) Copy Citation 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. 13/543,621 07/06/2012 Dianne S. Metzger 4394.722US1 8804 104326 7590 03/02/2018 Schwegman Lundberg & Woessner / Zimmer P.O. Box 2938 Minneapolis, MN 55402 EXAMINER HOB AN, MELISSA A ART UNIT PAPER NUMBER 3738 NOTIFICATION DATE DELIVERY MODE 03/02/2018 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 DIANNE S. METZGER, DWIGHT T. TODD, and IAN R. VAUGHAN Appeal 2017-007645 Application 13/543,621 Technology Center 3700 Before EDWARD A. BROWN, WILLIAM A. CAPP, and BRANDON J. WARNER, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Dianne S. Metzger et al. (Appellants)1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—17, 21, 22, 26, 27, 31,32, and 38—51, which are the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 The Appeal Brief identifies Zimmer, Inc. as the real party in interest. Appeal Br. 2. Appeal 2017-007645 Application 13/543,621 CLAIMED SUBJECT MATTER Claims 1, 26, and 38 are independent. Claim 1 is illustrative of the claimed subject matter, and reads: 1. A femoral knee prosthesis component, comprising: an anterior flange, said anterior flange having an anterior flange bone contacting surface comprising an anterior facet configured to contact an anterior surface of a femur; and a condyle extending from said anterior flange, said condyle having a condyle bone contacting surface comprising a posterior facet, facing opposite said anterior facet, and a posterior chamfer facet, at least one facet of said posterior facet and said posterior chamfer facet having a condyle bore formed therein, said condyle bore defining a condyle bore longitudinal axis that intersects said at least one facet and does not intersect said anterior flange. Appeal Br. 25 (Claims App.). REJECTION Claims 1—17, 21, 22, 26, 27, 31, 32, and 38—51 are rejected under 35 U.S.C. § 103(a) as unpatentable over Applicants’ Admitted Prior Art and Wood (US 5,930,966, issued Aug. 3, 1999). ANALYSIS Appellants argue for the patentability of claims 1—17, 21, 22, 26, 27, 31, 32, and 38—51 as a group. Appeal Br. 10-23. We select claim 1 as representative, and the remaining claims of the group stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). In rejecting claim 1, the Examiner applies Appellants’ Figure 1 as Applicants’ Admitted Prior Art (hereafter, “AAPA”). Final Act. 4. This figure depicts a femoral component 11 including an anterior flange 22, a 2 Appeal 2017-007645 Application 13/543,621 posterior side 24 opposite to the anterior flange 22, and a bore (not shown) located in the posterior side 24 and having a longitudinal axis Ai intersecting the anterior flange 22. See Spec. ]Hf 5—6, Fig. 1. The Examiner appears to find that the bore corresponds to the claimed “condyle bore.” Id. at 5. The Examiner finds that AAPA discloses every limitation of claim 1 except for “said condyle bore defining a condyle bore longitudinal axis that. . . does not intersect said anterior flange.'1'’ Final Act. 5—6 (emphasis added). The Examiner relies on Wood to teach a structural support including a screw receiving channel that is angled to be readily accessible without interference from the base of the support. Final Act. 7 (citing Wood, Abstract, col. 1,11. 53—57). The Examiner finds that Wood teaches that the end portion of the platform is set at an angle relative to the main region of the platform to allow good access for a power tool used to secure the screws. Id. (citing Wood, col. 3,11. 10-20, Fig. 2). The Examiner notes that Wood teaches that this angling of the channels produces a very good working tool angle, and allows more positive securing of the substrate to the support platform. Id. (citing Wood, col. 3,11. 22—30). Based on these findings, the Examiner concludes that it would have been obvious to modify the condyle bore in AAPA to be angled such that the condyle bore longitudinal axis intersects the at least one facet and does not intersect the anterior flange “to provide a very good working tool angle, as well as allow greater screw penetration into and more positive securing,” as taught by Wood. Id. at 7—8. Appellants contend that Wood does not qualify as analogous prior art. Appeal Br. 16. The test for determining whether a prior art reference is analogous art is: “(1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the 3 Appeal 2017-007645 Application 13/543,621 field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Id. at 659. The Examiner finds that Wood is reasonably pertinent to the particular problem Appellants were concerned with, namely, “providing a good working tool angle and allowing greater screw penetration into and more positive securing between two components.” Final Act. 2; Ans. 2 (citing Wood, col. 3,11. 22-30). Appellants contend that Wood is not reasonably pertinent to the particular problem they faced. Appellants contend they disclose the problem of securing an augment to a posterior facet within the interior of a femoral knee prosthesis component in which the anterior flange of the component opposes the posterior facet. Appeal Br. 16. Appellants explain that, in the prior art, the longitudinal axis Ai of the bore in the posterior facet intersects the anterior flange, and, consequently, a straight drive shaft could not be used to secure an augment to the posterior facet because the anterior flange is a physical barrier that blocks a straight driver from accessing the bore. Id. at 16—17 (citing Spec. 6—8); see Spec., Fig. 1. Appellants explain Figure 1 shows that the prior art uses an offset drive shaft to tighten a fastener into the bore of the posterior facet to secure a posterior augment to the posterior facet, but the anterior flange remains a physical barrier to the offset drive shaft, preventing it from continuous rotation through 360°. Id. at 17. 4 Appeal 2017-007645 Application 13/543,621 Appellants contend that the invention solves the problems that the anterior flange prevents a straight driver from gaining access to the bore in the posterior facet, and the anterior flange prevents an offset driver from 360° continuous rotation, in securing an augment to a posterior facet of a femoral knee component. Id. Appellants assert they solve these problems by providing a posterior facet having a bore with a longitudinal axis that does not intersect the anterior flange. Id. Appellants contend that Wood discloses the problem of providing a metal support beam that does not require pre-drilled holes to secure it to a substrate, but which can form a strong hold with the substrate using self drilling screws. Appeal Br. 17 (citing Wood, col. 1,11. 23—35). Appellants contend that these problems are entirely different from their concerns. Id. at 18. Appellants also contend that Wood solves this problem by forming the support beam platform 9 with screw guide channels 13, 23 that do not include a bore formed through the support beam platform, but include a web 15 to allow a metal piercing screw to more easily pierce the platform and provide a strong hold to the substrate. Id. at 18 (citing Wood, col. 2,11. 33— 38, 57-64, Fig. 2). Appellants acknowledge that Wood discloses that angling the screw guide channels provides a very good working tool angle. Id. (citing Wood, col. 3,11. 9-30). But, Appellants contend, Wood discloses and solves an entirely different problem from the problem they disclosed and solved, and Wood would not logically commend itself to the attention of an inventor attempting to solve their problem. Id. at 19. Appellants’ contentions are not persuasive. There is no requirement that Wood must relate to the same field as that of Appellants’ endeavor to 5 Appeal 2017-007645 Application 13/543,621 qualify as analogous prior art. Hence, Wood is not required to address a problem found in a femoral knee prosthesis component. Even if Wood may be in a different field of endeavor from that of Appellants’ endeavor, Wood is reasonably pertinent to the particular problem addressed by Appellants, if, because of the matter with which Wood deals, Wood “logically would have commended itself to an inventor’s attention in considering his problem.” Clay, 966 F.2d at 659. As for the scope of analogous art, we are advised: The Supreme Court’s decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007), directs us to construe the scope of analogous art broadly, stating that ‘ familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 402 (emphasis added). Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010). Further, we note that “it [is] not unreasonable in cases such as this, involving relatively simple everyday-type mechanical concepts, to permit inquiry into other areas where one of even limited technical skill would be aware that similar problems exist.” Application ofHeldt, 433 F.2d 808, 812 (CCPA 1970). We are not persuaded that the Examiner fails to identify the actual problems faced by them and Wood. Reply Br. 2. As discussed above, the Examiner finds that Wood relates to the problems of providing a good working tool angle and positive securing between two components. Final Act. 2; Ans. 2. Wood addresses these problems by using an angled screw guide channel that provides a “very good working tool angle” and avoids interference between a power screw driver and a base or web of a beam when passing a screw through the beam platform. Wood, col. 3,11. 9-30. 6 Appeal 2017-007645 Application 13/543,621 This teaching is reasonably pertinent to the problem with which Appellants assert they are involved, which concerns relatively-simple mechanical concepts. Accordingly, we are not persuaded by Appellants that Wood fails to qualify as analogous prior art. Appellants also contend that the combination of AAPA and Wood fails to teach every limitation of claim 1. Appeal Br. 19. Appellants assert that the Examiner’s combination modifies the bores of AAPA to be angled, but claim 1 does not recite a condyle bore that is angled. Id. at 20. Appellants also dispute that Wood’s teaching of an angled screw guide channel, when combined with AAPA, reasonably teaches the claim limitation missing in AAPA. Id. at 20—21. These contentions are not persuasive. Although claim 1 does not recite expressly that the condoyle bore is angled, we note that claim 9, for example, which depends from claim 1, recites that “said condyle bore longitudinal axis forms an angle of 7 - 27° with a line perpendicular to said at least one facet for securing an augment to said condyle.” Appeal Br. 26 (Claims App.). The subject matter recited in claim 9 is described in paragraph 41 of the Specification and depicted in Figure 5. As shown, condyle bore longitudinal axis A2 of bore 62 does not intersect anterior flange 36. See Spec. 141. We must construe claim 1 as sufficiently broad in scope to encompass the further limitation of claim 9. Otherwise, construing claim 1 not to encompass the limitation of claim 9 would result in claim 9 not further limiting claim 1. AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1242 (Fed. Cir. 2003) (“Under the doctrine of claim differentiation, dependent claims are presumed to be of narrower scope than the independent claims from which they depend.”). Accordingly, we 7 Appeal 2017-007645 Application 13/543,621 construe claim 1 as sufficiently broad to encompass an angled condoyle bore. Further, the Examiner’s proposed modification of AAPA in view of Wood would result in AAPA’s condyle bore longitudinal axis not intersecting the anterior flange, as required by claim 1. Appellants do not explain persuasively why this combination of teachings would not reasonably teach the limitation missing in claim 1. Appellants also assert that Wood does not teach an angled hole. Appeal Br. 21. Rather, Appellants contend, Wood teaches screw guide channels 13 having a closed end and being formed by angled flanges 19, 21. Id. (citing Wood, Fig. 1). Appellants contend that the Examiner’s combination would eliminate the condyle bore in AAPA, and thus, not meet every limitation in claim 1. Id. Further, Appellants contend, the combination would require AAPA to be modified to include Wood’s angled flanges, but this would result in a substantial reconstruction of AAPA and also would likely interfere with proper seating of the augment. Id. at 21—22. Appellants’ argument directed to modifying AAPA to include Wood’s channels with closed end and/or angled flanges appears to be premised on a bodily incorporation into AAPA of one or more specific teachings in Wood, which, according to Appellants, would require further modification to achieve the device set forth in claim 1. The test for obviousness is not, however, whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. “It is well- established that a determination of obviousness based on the teachings from multiple references does not require an actual, physical substitution of elements.” In re Keller 642 F.2d 413, 425 (CCPA 1981) (“The test for 8 Appeal 2017-007645 Application 13/543,621 obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . More significantly, the rejection as articulated by the Examiner does not call for the bodily incorporation of any specific teaching found in Wood. Appellants also contend that Wood does not indicate that the support beam base 27 prevents a driver accessing a bore in the platform of the support beam, or that the support beam base prevents continuous, 360° rotation, of a driver when securing the support beam platform to a substrate. Reply Br. 2. This argument is not persuasive. Wood discloses the use of an angled screw guide channel to provide a “very good working tool angle” and to avoid interference between a power screw driver and a base or web of a beam when passing a screw through the beam platform. Wood, col. 3,11. 9— 30. The base 27 is shown to be located opposite to platform 9 having angled channels. Wood teaches that the angled screw channels avoid interference between a tool and the base when passing a screw through platform 9. Appellants do not explain persuasively how the configuration of the structural supports 7 would not enable a driver accessing a bore in the platform of the support beam, or why base 27 would not enable continuous, 360° rotation, of a driver when securing structural supports 7 to substrate 5. Appellants also contend that Wood teaches away from the use of pre drilled holes, and “[bjecause Wood teaches away from the use of pre-drilled holes, one of ordinary skill in the art would not have any motivation to modify AOAP A FIG. 1 to eliminate the condyle bore of FIG. 1 and replace it with the flanges/screw guide channels of Wood (FIG. 2 # 19, 21).” Appeal Br. 23. Appellants also contend that claim 1 does not recite a screw or other 9 Appeal 2017-007645 Application 13/543,621 fastener extending through the bore. Reply Br. 3. According to Appellants, “[i]n order for the Examiner’s position to make sense, the claim would necessarily need to recite a screw because it would be a required to form the recited bore, i.e., it would be an essential feature.” Id. The Examiner, however, proposes to modify the condyle bore in AAPA to be angled such that the condyle bore longitudinal axis does not intersect the anterior flange. Final Act. 7—8. This modification does not require eliminating the condyle bore shown in Figure 1 and replacing it with “the flanges/screw guide channels [19, 21] of Wood.” “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009). Wood teaches that a channel can be oriented (angled) to provide a “very good working tool angle” and to avoid interference between a power screw driver and a base or web of a beam when passing a screw through the beam platform. Wood, col. 3,11. 9— 30. Appellants have not provided any persuasive reason why a person of ordinary skill, upon reading Wood, would be discouraged from following the path set out in Wood, or would be led in a direction divergent from the path that was taken by Appellants. Thus, we are not persuaded that Wood teaches away from the Examiner’s proposed modification of AAPA. Appellants’ contentions do not apprise us of any error in the Examiner’s findings or reasoning. Therefore, we sustain the rejection of claim 1 as unpatentable over AAPA and Wood. Claims 2—17, 21, 22, 26, 27, 31, 32, and 38—51 fall with claim 1. 10 Appeal 2017-007645 Application 13/543,621 DECISION We affirm the rejection of claims 2—17, 21, 22, 26, 27, 31, 32, and 38— 51. No time period for taking any subsequent action in connection with this appeal maybe extended according to 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 11 Copy with citationCopy as parenthetical citation