12067635 - (D) (P.T.A.B. Feb. 9, 2016)

Ex Parte Moser et al

Patent Trials and Appeals BoardFeb 9, 2016

12067635 - (D) (P.T.A.B. Feb. 9, 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. 12/067,635 10/15/2008 Walter Moser SMNE-4/PT-3460-US-PCT 2762 18007 7590 02/09/2016 SMITH & NEPHEW, INC. Sabrina Chambers 1450 Brooks Road Memphis, TN 38116 EXAMINER WATKINS, MARCIA LYNN ART UNIT PAPER NUMBER 3774 MAIL DATE DELIVERY MODE 02/09/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte WALTER MOSER, ALEX SEIDL, and DIRK WUNDERLE ____________ Appeal 2013-010018 Application 12/067,635 Technology Center 3700 ____________ Before EDWARD A. BROWN, MICHELLE R. OSINSKI, and WILLIAM A. CAPP, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the rejection of claims 9, 10, 15–23, 26–31, 33, 38–42, and 45–59. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and enter new grounds of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). Appeal 2013-010018 Application 12/067,635 - 2 - THE INVENTION Appellants’ invention relates to a hip joint prosthesis. Spec. 1. Claim 22, reproduced below, is illustrative of the subject matter on appeal. 22. A hip joint prosthesis stem for anchoring in a femur, comprising: a prosthesis neck portion; and a femur-anchoring portion extending from the prosthesis neck portion and having a proximal end, a distal end, and a total length extending from the proximal end to the distal end, the femur-anchoring portion tapering towards the distal end, the femur-anchoring portion comprising a lateral narrow side comprising a distal straight portion extending from a location adjacent the distal end and a proximal arcuate portion extending from the distal straight portion to a location adjacent the proximal end, the proximal arcuate portion having a radius of curvature that becomes increasingly smaller in a distal-to- proximal direction. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: The following rejections are before us for review: 1. Claims 9, 10, 15–18, 22, 23, 26–29, 33, 38–42, and 45–59 are rejected under 35 U.S.C. 102(b) as being anticipated by Lee.1 2. Claims 9, 10, 15–18, 26–29, and 45–51 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lee. 1 Claim 32 has been cancelled. Claims App. Andriacchi Lee Badatcheff US 4,279,042 US 4,753,657 US 2005/0055103 A1 July 21, 1981 June 28, 1988 Mar. 10, 2005 Appeal 2013-010018 Application 12/067,635 - 3 - 3. Claims 19–21, 30, and 31 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lee and either Andriacchi or Badatcheff. 4. Claims 9, 10, 15–23, 26–31, 33, 38–42 and 45–59 are provisionally rejected on the ground of non-statutory, obviousness-type double patenting as being unpatentable over claim 15 of co-pending Application No. 12/778,866.2 OPINION Anticipation by Lee Claims 22, 23, 33, 46, and 52–55 The Examiner finds that Lee discloses each limitation of claim 22. Final Action 2–3. In particular, the Examiner finds that Lee discloses an arcuate portion extending from a distal straight portion to a location adjacent the proximal end where the proximal arcuate portion has a decreasing radius of curvature as claimed. Id. This finding depends on the Examiner’s analysis of Figures 1 and 2 of Lee including an annotated version of Figure 2 prepared by the Examiner. Id. at 4. Appellants traverse the Examiner’s rejection by arguing that Lee exhibits a constant radius of curvature over the curved portion proximal to the femoral stem. Appeal Br. 10. Appellants argue that the Examiner’s reliance on Figures 1 and 2 of Lee is misplaced, because Lee’s drawings do not clearly show the structure that is claimed. Id. at 11 (citing In re Mraz, 455 F.2d 1069 (CCPA 1972)). In response, the Examiner reiterates that that there is a clear change in curvature at the point where the stem first begins to depart from a straight 2 We note that the ’866 application was issued as U.S. Patent No. 8,337,565, on December 12, 2012, and thus, this provisional rejection is moot. Appeal 2013-010018 Application 12/067,635 - 4 - section. Ans. 5–6. Once again, the Examiner relies on the same annotated figure that was used in the Final Rejection. Id. at 6; Final Action 4. In Reply, Appellants reiterate their previous contention that Lee exhibits a constant radius of curvature over its curved portion and, in support thereof, rely on their own annotated version of Figure 2. Reply Br. 4–6. The dispute between Appellants and the Examiner centers entirely on interpretation of what is depicted in Figure 2 of Lee. This follows from the fact that Lee’s specification is silent as to whether the curved portion of the stem has a constant or decreasing radius, a point that is not disputed by the Examiner. Appellants and the Examiner both rely on Figure 2 of Lee to support their respective, opposing views. Appellants and the Examiner both provide their own annotated versions of the same drawing in support of their respective contentions. Although patent drawings are not working drawings, that does not mean that things patent drawings show clearly are to be disregarded. See In re Mraz, 455 F.2d at 1072. Instead, 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 the Mraz case, the court determined that a claimed structure was shown “with great particularity” in the drawings of a prior art reference. Id. The court distinguished the facts of that case from another case, In re Wilson, 312 F.2d 449, 454 (CCPA 1963), where the attempted reliance was not on a patent drawing per se, but on a greatly enlarged section of a small drawing that was never intended to show the dimensions of anything. Mraz, at 1072. We have studied Figure 2 of Lee as well as the respective annotated versions of Figure 2 provided by both Appellants and the Examiner. In our Appeal 2013-010018 Application 12/067,635 - 5 - opinion, the evidence that Lee exhibits the claimed decreasing radius of curvature is equivocal, at best. It is not clear to us that the proximal arcuate portion of Lee has a radius of curvature that becomes increasingly smaller in a distal-to-proximal direction. The Examiner’s evidence is not sufficient, in our opinion, to support a finding, by the requisite preponderance of the evidence, that the claim limitation is, in fact, satisfied. See In re Caveney, 761 F.2d 671, 674 (Fed.Cir. 1985) (preponderance of the evidence is the standard that must be met by the PTO in making rejections). For this reason, we do not sustain the Examiner’s anticipation rejection of claim 22, neither do we sustain the anticipation of rejection of claims 23, 33, 46, and 52–55 that depend therefrom. Claims 9, 10, 15–18, 26–29, 45, and 48–51 Claim 9 is an independent claim. Claims App. Claims 10, 15–18, 26–29, 45, and 48–51 depend, directly or indirectly, from claim 9. Id. As with claim 22, claim 9 has a limitation directed to a proximal arcuate portion with a radius of curvature that becomes increasingly smaller in a distal-to- proximal direction. Id. For the same reasons discussed above with respect to claim 22, we determine that the Examiner’s fact finding as to this limitation being met by Lee is not supported by a preponderance of the evidence. For this reason, we do not sustain the anticipation rejection of independent claim 9, neither do we sustain the rejection of claims 10, 15–18, 26–29, 45, and 48–51 that depend therefrom. Claims and 38–42, 47, and 56–59 Claim 38 is an independent claim and claims 39–42, 47, and 56–59 depend from claim 38. Claims App. As with claims 9 and 22, claim 38 has a limitation directed to a proximal arcuate portion with a radius of curvature Appeal 2013-010018 Application 12/067,635 - 6 - that becomes increasingly smaller in a distal-to-proximal direction. Id. For the same reasons expressed above with respect to claims 9 and 22, we do not sustain the anticipation rejection of claims 38–42, 47, and 56–59. Unpatentability of Claims 9, 10, 15–18, 26–29, and 45–51 over Lee The Examiner’s unpatentability rejection of claims 9, 10, 15–18, 26– 29, and 45–51 over Lee relies on the same finding of fact with respect to the radius of curvature limitation discussed above in connection with the anticipation rejection of claim 9. Final Action 5 (“Lee discloses the present invention substantially as claimed”). As discussed above, we have assigned error to this finding of fact. For this reason, we do not sustain the unpatentability rejection of claims 9, 10, 15–18, 26–29, and 45–51 over Lee. Unpatentability of Claims 19–21, 30, and 31 over Lee and either Andriacchi or Badatcheff Claim 30 depends from claim 9 and adds the limitation: “wherein said proximal arcuate portion comprises a changing radius of curvature between 200 mm and 500 mm.” Claims App. The Examiner finds that Lee discloses the invention of claim 30 substantially as claimed. Final Action 7. The Examiner concedes that Lee is silent regarding the proximal arcuate portion comprising a changing radius of curvature between 200 mm and 500 mm. Id. The Examiner finds that Andriacchi teaches that the arcuate portion of the stem depends on the size required for the particular femur involved. Id. (citing Andriacchi, col. 3, ll. 32–36, 40–42). The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time the invention was made to make the stem in the invention of Appeal 2013-010018 Application 12/067,635 - 7 - Lee with a proximal arcuate portion with changing radius of curvature within the claimed range in order to fit the size required for a particular femur involved, as taught by Andriacchi.3 Id. Claim 19 depends from claim 15 which, in turn, depends from claim 9. Claims App. Claim 15 adds the limitation: “wherein said anchoring portion widens over the lateral-distal straight portion starting from the distal end toward the proximal end. Id. Claim 19 adds the limitation: “wherein said anchoring portion widens with a taper angle between about 0.5° to about 6°.” Id. The Examiner finds that Lee discloses the invention substantially as claimed, but is silent regarding a taper angle between about 0.5 degrees to about 6 degrees. Final Action 8. The Examiner finds that the taper angle is a result effective variable that optimizes the bending and torsional characteristics of the prosthetic device when implanted. Id. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time the invention was made to make the taper angle between about 0.5 degrees to about 6 degrees in order to optimize the bending and torsional characteristics of the prosthetic device when implanted. Appellants do not argue for the separate patentability of claims 19–21, 30, and 31, stating that these claims stand or fall with independent claim 9, which is rejected as unpatentable over Lee as a stand-alone obviousness reference. Appeal Br. 34; Final Action 5. Appellants have waived the right to argue claims 19–21, 30, and 31 in this appeal and we, therefore, summarily sustain the rejection of these claims over Lee and Andriacchi or 3 The Examiner makes a similar finding with respect to Badatcheff. Id. Appeal 2013-010018 Application 12/067,635 - 8 - Badatcheff.4 See 37 C.F.R. § 41.37(c)(1)(iv)(2015); see also Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that summary affirmance without consideration of the substantive merits is appropriate where an appellant fails to contest a ground of rejection). New Ground of Rejection of Claims 9 and 15 over Lee and either Andriacchi or Badatcheff Settled law maintains that a broader independent claim cannot be nonobvious where a dependent claim stemming from that independent claim is invalid for obviousness. See Soverain Software LLC v. Victoria’s Secret Direct Brand Management, LLC, 778 F.3d 1311, 1315 (Fed. Cir. 2015). In view of our previous determination that each of claims 19 and 30 are unpatentable over Lee and Andriacchi or Badatcheff, we hereby exercise our discretion under 37 C.F.R. § 41.50(b) and enter a new ground of rejection of claims 9 and 15 over Lee and Andriacchi or Badatcheff.5 4 The obviousness rejection based on Lee alone relies on the Examiner’s erroneous finding that Lee teaches a radius of curvature that becomes increasingly smaller in a distal-to-proximal direction. Final Act. 5. In contrast, the obviousness rejection based on Lee and either Andriacchi or Badatcheff provides an explanation by the Examiner as to why it would have been obvious to one of ordinary skill in the art to provide a proximal arcuate portion with a changing radius of curvature within the claimed range—in order to fit the size required for a particular femur involved (Id. at 7) — thereby remedying the deficiency in regard to the obviousness rejection of claim 9 over Lee as a stand-alone reference discussed above. 5 We leave it to the Examiner to determine the applicability of this rejection to other pending claims. Appeal 2013-010018 Application 12/067,635 - 9 - Double Patenting We do not reach the Examiner's provisional rejection of all pending claims on the ground of non-statutory obviousness-type double-patenting. See Ex parte Moncla, 95 U.S.P.Q.2d 1884 (BPAI 2010) (precedential). DECISION The decision of the Examiner to reject claims 9, 10, 15–18, 22, 23, 26–29, 33, 38–42, 45–59 under 35 U.S.C. 102(b) as being anticipated by Lee is REVERSED. The decision of the Examiner to reject claims 9, 10, 15–18, 26–29, and 45–51 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lee is REVERSED. The decision of the Examiner to reject claims 19–21, 30, and 31 under 35 U.S.C. § 103(a) as being unpatentable over Lee and either Andriacchi or Badatcheff is AFFIRMED. We do not reach the Examiner’s provisional, double patenting rejection of claims 9, 10, 15–23, 26–31, 33, 38–42 and 45–59. We enter a NEW GROUND OF REJECTION of claims 9 and 15 under 35 U.S.C. § 103(a) as being unpatentable over Lee and either Andriacchi or Badatcheff. FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise Appeal 2013-010018 Application 12/067,635 - 10 - one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Should Appellant elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the examiner unless the affirmed rejection is overcome. If Appellant elects prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)