Ex Parte Ondrla et al

Patent Trial and Appeal Board

Sep 19, 2012

10748448 (P.T.A.B. Sep. 19, 2012)

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.
10/748,448 12/30/2003 Jeff Ondrla 1671-0285 2398
28078 7590 09/19/2012
MAGINOT, MOORE & BECK, LLP
CHASE TOWER
111 MONUMENT CIRCLE
SUITE 3250
INDIANAPOLIS, IN 46204
EXAMINER
BLANCO, JAVIER G
ART UNIT PAPER NUMBER
3774
MAIL DATE DELIVERY MODE
09/19/2012 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 JEFF ONDRLA, GERALD ROSS WILLIAMS, JR.,
JOSEPH PATRICK IANNOTTI, PAUL GIBBONS, and
JAMES EDWARD CLARK
____________________

Appeal 2010-004573
Application 10/748,448
Technology Center 3700
____________________

Before: PHILLIP J. KAUFFMAN, LYNNE H. BROWNE, and
HYUN J. JUNG, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/748,448

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
27-37.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part,2 and we designate our affirmance of claims 32-37
as anticipated by Glien as A NEW GROUND OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b).

THE INVENTION
Appellants’ claimed invention relates to “a system for achieving
infinitely variable positions for the head component relative to a bone
engaging portion of the prosthesis.” Spec. 1:45. Claims 27 and 32 are the
independent claims on appeal, and claim 27, reproduced below, is
illustrative of the claimed subject matter:
27. A prosthesis comprising:
a stem configured to be implanted within a bone, the
stem defining a first coupler bore;
a joint component having a bearing surface and defining
a second coupler bore; and
a mounting element having (i) a proximal portion
received within the second coupler bore of the joint component
in a friction fit manner, and (ii) a spherical articulating portion
received within the first coupler bore of the stem,
wherein the stem includes a proximal surface that defines
a coupler opening through which the mounting element
extends, and the stem, when viewed in a cross-section, further
includes an interior wall portion located within the first coupler

1 Because Appellants elected not to appeal the rejection of claims 19-26,
they have been cancelled and are not before us on appeal. App. Br. 2 (filed
Apr. 25, 2008); Ans. 3 (dated Aug. 15, 2008); Misc. Communication (dated
Feb. 18, 2010).
2 We affirm a rejection against all of the claims on appeal except claim 28.
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bore that extends inwardly toward a longitudinal axis of the
first coupler bore from the proximal surface in a straight line,
and
wherein the spherical articulating portion of the mounting
element touches the interior wall portion at a point along the
straight line.

REJECTIONS3
Appellants seek review of the following rejections:
1. Claims 27-35 under 35 U.S.C. § 102(b) as anticipated by Horber4
(WO 02/39932 A1; pub. May 23, 2002).
2. Claims 32 and 33 under 35 U.S.C. § 102(b) as anticipated by Leonard
(US 6,228,120 B1; iss. May 8, 2001).
3. Claims 27 and 29-37 under 35 U.S.C. § 102(b) as anticipated by
Glien5 (DE 101 23 517 C1; pub. Nov. 28, 2002).6

3 The Examiner withdrew the rejection of claims 27-31 and 34-37 as obvious
over Leonard, Horber, and Glien. Ans. 2. Further, we present the rejections
in an order different from that of the Examiner’s Answer.
4 Citations to Horber are to the corresponding US Patent (US 6,818,019 B2;
iss. Nov. 16, 2004).
5 Refers to English translation by McElroy Translation Company, PTO 06-
1776, dated Jan. 2006.
6 The Examiner withdrew claim 28 from this ground of rejection. Ans. 2.
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OPINION
Claims 27-35 as anticipated by Horber
Claims 27 and 29-317
Independent claim 27 calls for the spherical articulating portion to
touch at a point along the straight line interior wall portion of the first
coupler bore.
Appellants argue that Horber’s spherical articulating portion (joint
head 25) touches at edge 23 of the first coupler bore (cavity 19), and not at a
point along the straight line interior wall portion of the first coupler bore
(cavity 19) as called for in independent claim 27. App. Br. 6-8 (citing
Horber, col. 5, ll. 35-38).
Appellants’ assertion that Horber’s spherical articulating portion (joint
head 25) touches at edge 23 of the first coupler bore (cavity 19) is correct.
See App. Br. 6-8; Horber, col. 5, ll. 35-38; fig. 1. However, Horber’s
spherical articulating portion (joint head 25) also bears against (touches)
circular opening edge 37 (at the lower end of opening 35 of pressure
application disc 31). Horber, col. 5, ll. 45-52; fig. 1; see also Ans. 4, 8.
Thus, Appellants’ argument does not cogently explain an error in the
Examiner’s finding.
Accordingly, we sustain the rejection of claims 27 and 29-31.
Claim 28
Claim 28 depends from claim 27 and recites, “the mounting element
defines a passageway extending therethough; and a proximal part of a

7 Appellants argue claims 27 and 29-31 as a group, and we select claim 27 as
representative. App. Br. 7-8, 10; see 37 C.F.R. 41.37(c)(1)(vii)(2011).
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fastener is located within the passageway, and a distal part of the fastener
contacts the stem.”
The Examiner found that Horber discloses a fastener (screw 105)
coupled with the stem (shaft piece 13 with a shaft shank 15). Ans. 3-4, 8-9
(making reference to Figures 1, 3, 8, 9, and 12).8
Horber discloses an embodiment of a spherical articulating portion
(joint head 25 of collar piece 21) that is comprised of two plates 93 and 959
configured so the slot 101 of plate 93 fits into the slot 103 of plate 95 to
form a collar piece 21. Horber, col. 9, ll. 1-5, 13-15, 32-35; figs. 9-11.
Collar piece 21 includes a collar extension 27 having a groove to
accommodate screw 105, wherein the groove extends from the top of collar
extension 27 to the top of joint head 25 of collar piece 21. Horber, col. 9, ll.
16-18; figs. 9-12 (Figure 10 best depicts the groove). Given that the groove
that accommodates screw 105 only extends from the top of collar extension
27 to the top of joint head 25, Horber’s fastener (screw 105) cannot contact
the stem (shaft piece 13 with a shaft shank 15) as called for in claim 28
because screw 105 cannot go past joint head 25 of collar piece 21. See
Reply Br. 3-5; see also App. Br. 9-10
Accordingly, we cannot sustain the rejection of claim 28.
Claims 32-35
Independent claim 32 is directed to a prosthesis that includes a
mounting element having a spherical articulating portion configured for
“press-fit engagement” with the internal bore of the stem.

8 Horber’s screw 105 is not depicted in Figures 1, 3, 8, or 9.
9 Part 95 is once mistakenly identified as part 94 (Horber, col. 9, l. 4), and
elsewhere properly identified as part 95 (see e.g. col. 9, l. 7, 13; figs. 10, 11).
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The Specification does not provide a lexicographical definition of a
“press-fit.” The Examiner states that a press-fit, or friction-fit, is an
“assembly of two tightly fitting parts, as a hub on a shaft, made by a press or
the like.”10 Ans. 12.
The Specification states that articulating portion 34 is sized so that a
press-fit engagement is achieved by pressing portion 34 sufficiently far into
tapered bore 16 of the stem 12, thus fixing the mounting element 30 to the
stem 12. Spec. 3:18-20 (describing that, in a first mechanism, the mounting
element achieves a friction fit with the bore of the stem); 7:6-27; fig. 2.11
Therefore, consistent with the ordinary meaning of a press or friction-fit, the
Specification states that the two surfaces (the frusto-spherical distal portion
of the mounting element and the receptacle of the stem) are sized so that
when pressed together, they produce a fit that holds those parts together.12
The Examiner found that Horber’s spherical articulating portion (joint
head 25) contacts the internal bore13 of the stem (shaft piece 13 having shaft
shank 15) in a friction-fit14 manner as called for in claim 32. Ans. 3-4, 9.
Horber does not expressly disclose that the spherical articulating
portion (joint head 25) contacts the internal bore of the stem (shaft piece 13
having shaft shank 15) in a friction-fit or press-fit manner. Horber, passim.

10 While this claim construction is provided in the rejection based upon
anticipation by Leonard, we presume the Examiner applied the same claim
construction of claim 32 as anticipated by Horber.
11 In context, describing machine screw 40 as providing a second fixation
capability implies the press-fit described is a first fixation capability.
12 We discern nothing in the Specification inconsistent with this definition.
13 The Examiner makes three detailed findings regarding the internal bore
that are not relevant to our analysis here. See Ans. 3, 8.
14 Neither the Examiner nor Appellants distinguish a press-fit from a
friction-fit.
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Nor does Horber disclose that the spherical articulating portion (joint head
25) has a larger diameter than the internal bore of the stem (shaft piece 13
having shaft shank 15). Id. Rather, pressure application disc 31 includes a
passage opening 35 having a circular opening edge 27 that bears against the
joint head 25. Horber, col. 5, ll. 48-52; fig. 1. Thus, pressure application
disc 31, and not a friction or press-fit, retains Horber’s spherical articulating
portion (joint head 25) in the stem shaft piece 13 having shaft shank 15).
See Reply Br. 7 (arguing that Horber does not disclose a press-fit as called
for in claim 32).
Accordingly, we cannot sustain the rejection of independent claim 32
and its dependent claims 33-35.

Claims 32 and 33 as anticipated by Leonard
The Examiner found that Leonard’s spherical articulating portion
(hollow hemispherical ball joint 10) is configured for press-fit engagement
as called for in claim 32, because when unit 16 is fully inserted in humeral
plate 9, hemispherical ball joint 18 of unit 16 presses against the internal
face/wall 10b of the ball joint 10 of humeral plate 9 so that the spherical
articulating portion (external wall 10a of hollow hemispherical ball joint 10)
forms a press fit against the internal bore (cavity 7). Ans. 7, 11-12; see also
Leonard, col. 6, ll. 24-27, 54-56, 60-65; figs. 1-3. For the reasons that
follow, this finding is not supported by the reference.
Leonard does not explicitly disclose that unit 16 expands ball joint 10
against cavity 7 when unit 16 is fully inserted. Leonard, passim. Rather,
Leonard discloses that hemispherical ball joint 18 has the same radius, plus
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tolerance, as the internal wall/face 10b of ball joint 1015, and Leonard refers
to the fit between these components as “contact.” Leonard, col. 6, ll. 60-65,
fig. 2. Further, Leonard discloses that locking unit 16 includes a screw head
19 that locks together the locking unit 16, humeral plate 9, and stem 1
(comprising a cavity 7). Leonard, col. 6, l. 66-col. 7, l. 6; fig. 3. Thus,
Leonard’s spherical articulating portion (hollow hemispherical ball joint 10)
is configured only to contact the internal bore (cavity 7) without being held
in place by a friction or press-fit, and is then locked in place by unit 16.
Accordingly, we agree with Appellants that Leonard does not disclose
a press-fit as called for in independent claim 32. See App Br. 17-21. As
such, we cannot sustain the rejection of independent claim 32 and its
dependent claim 33.

Claims 27 and 29-37 as anticipated by Glien
Claim 27 and 29-31
Claim 27 is directed to a prosthesis that includes a stem having a
proximal surface that defines a coupler opening. The Specification does not
provide a lexicographical definition of a surface. A common definition of
“surface” is the outermost part of a solid object.16 We discern nothing
inconsistent with this common definition when applied to the Specification’s
use of surface, and consistent with the common definition, the Specification

15 Implying the radius of hemispherical ball joint 18 is smaller than that of
the internal wall/face 10b of ball joint 10.
16 Surface: the outermost part of a solid object considered with respect to its
form, texture, or extent; an exterior of a particular form or finish; n., def.
1.c., OXFORD ENGLISH DICTIONARY (1989) available at
http://www.OED.com. See also Comaper Corp. v. Antec, Inc., 596 F.3d
1343, 1348 (Fed. Cir. 2010)
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describes that the claimed prosthesis includes a stem 12 having a platform
surface 15 that includes an opening to a tapered bore 16. Spec. 6:28-29; 7:8-
9, 14-16; fig. 2. Therefore, claim 27 calls for the outermost proximal part of
the stem to define a coupler opening.
The Examiner found that Glien’s stem (stem 10)17 has a proximal
surface (proximal/basal 1/3 of cavity 14) that defines a coupler opening.18
Ans. 5, 10.
Glien’s recess 14 is disposed in connecting surface 13 of widening
proximal head section 12 of stem 10. Glien, para. [0044]; figs. 1, 2. The
surfaces that form the proximal/basal 1/3 of recess 14 are within the coupler
opening (at circular opening edge 15). See Id. at fig. 3. These surfaces are
not the proximal surface of the stem, and do not define the coupler opening
as called for in claim 27. Rather, the surface of the widening proximal head
section 12 of stem 10 that surrounds circular opening edge 15 is the
proximal surface of the stem and defines the opening. Consequently, we
agree with Appellants that the Examiner’s finding is in error. See Reply Br.
8-9.
Accordingly, we cannot sustain the rejection of independent claim 27
and its dependent claims 29-31.

17 The Examiner identifies widening proximal head section 12 of Glien’s
stem 10 as “stem 12.” See Ans. 5; see also Glien,para. [0044]; fig. 2.
18 We presume the Examiner meant the surfaces that form the proximal/basal
1/3 of recess 14 correspond to the claimed proximal surface.
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Claims 32-3719
Appellants argue that Glien does not meet two of the limitations of
independent claim 32.
First, Appellants argue that Glien’s cylindrical rod 31 “is not even in
contact with the stem 12, much less ‘coupled’ with the stem” as called for in
independent claim 32. App. Br. 16.20 To the extent that Appellants’
argument suggests that being coupled as claimed requires at least contact,
such argument is unpersuasive because, as explained below, it is not
commensurate in scope with claim 32. See In re Self, 671 F.2d 1344, 1348
(CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . .
they are not based on limitations appearing in the claims.”).
Independent claim 32 recites “a fastener having a first portion coupled
with the spherical articulating portion of the mounting element and a second
portion coupled with the stem.” The Specification does not provide a
lexicographical definition of the claim term “coupled.” A common
definition of “couple” is “to join or connect in any way.”21 We discern

19 Appellants argue claims 32 and 34-37 as a group, and we select claim 32
as representative. App. Br. 16-17; see 37 C.F.R. 41.37(c)(1)(vii).
Appellants argue claims 33, 34, and 35 under separate headings. App. Br.
16-17. However, Appellants’ argument regarding claim 33 is a repetition of
the argument used for claims 28 and 32, Appellants’ additional argument for
claim 34 has been withdrawn, Appellant’s argument for claim 35 relies on
the arguments for claim 34, and Appellants do not provide a substantive
argument as to the separate patentability of claims 36 and 37 that depend
indirectly from claim 32. App. Br. 16-17; Reply Br. 2.
20 Making reference to the argument presented with regard to claim 28 at
App. Br. 15.
21 Couple: to fasten or link together (properly in pairs); to join or connect in
any way; v., def. 2.a., OXFORD ENGLISH DICTIONARY (1989) available at
http://www.OED.com.
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nothing in Appellants’ Specification inconsistent with this ordinary meaning.
Therefore, claim 32 calls for the fastener to include a first portion connected
in any way (directly or indirectly) to the spherical articulating portion of the
mounting element and a second portion connected in any way to the stem.
See Genentech, Inc. v. Chiron Corp. 112 F.3d 495, 499 (Fed. Cir. 1997)
(“To be joined or connected does not necessitate a direct joining or
connection.”); see also Ullstrand v. Coons, 147 F.2d 698, 700 (CCPA 1945)
(interpreting “connected to” to be limited to neither a direct nor an indirect
connection, so that the term is applicable to an indirect connection).
The Examiner found that Glien discloses a fastener (clamping element
30, a bolt) having a first portion (a first half) coupled to the spherical
articulating portion (partially spherical projection 23 of middle piece 20)
with the remainder of the fastener (the second half) being coupled to the
stem. 22 Ans. 6, 11. This finding is consistent with our claim construction
that “coupled” as called for in claim 32, includes both a direct and an
indirect connection. Ans. 11. Appellants’ assertion that Glien’s cylindrical
rod 31 “is not even in contact with the stem 12” does not convincingly
explain how this finding is in error. 23 See App. Br. 16
Second, Appellants argue that Glien’s spherical articulating portion
contains slots, and thus does not disclose a spherical articulating portion
“configured for press-fit engagement with the internal bore such that the

22 The Examiner identifies clamping element 30 as “screw 30” (Ans. 6), and
refers to anterior end 31 of clamping element 30 as “cylindrical rod 31”
(Ans. 11). See also Glien, para. [0046]; fig. 3. Further, the Examiner refers
to the second portion of clamping element 30 as coupled to the stem,
implying that the first portion of the clamping element is coupled to the
spherical articulating portion. See Ans. 11.
23 Indirect coupling would not necessitate direct contact.
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spherical articulating portion touches the internal bore around substantially
an entire perimeter of the bore defined by the intersection of a plane with the
internal bore” as recited in claim 32. Reply Br. 9 (emphasis added).
The Specification does not provide a lexicographical definition of the
claim term “substantially.” “Substantially” is often used to mean largely but
not wholly what is specified. See, e.g., York Prods., Inc., v. Central Tractor
Farm & Family Center, 99 F.3d 1568, 1572-73 (Fed. Cir. 1996); see also,
Amhil Enterprises Ltd. v. Wawa, Inc., 81 F.3d, 1554, 1562, (Fed. Cir.
1996)). We discern nothing in Appellants’ Specification inconsistent with
this meaning.
Glien’s spherical articulating portion (partially spherical projection
23) is “segmented by two intersecting slots 26.” Glien, para. [0045]; figs. 2,
3. Though not to scale, Glien depicts these slots as small in relation to the
remainder of partially spherical projection 23. Glein, figs. 2, 3; see e.g. Vas-
cath Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991) (patent
drawings that are not drawn to scale may nevertheless be used to establish
relative sizes and relationships between the various components which are
clearly depicted therein). In light of this, we find that Glien’s spherical
articulating portion (partially spherical projection 23) is configured for press
fit engagement such that it touches substantially (largely, but not wholly) an
entire perimeter of the bore as called for in claim 32. Because the Examiner
omits such a finding (see Ans. 5-6, 11), we designate the rejection of claims
32-37 as anticipated by Glien a new ground of rejection.

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DECISION
We affirm the Examiner’s decision to reject claims 27 and 29-31
under 35 U.S.C. § 102(b) as anticipated by Horber.
We reverse the Examiner’s decision to reject claims 28 and 32-35
under 35 U.S.C. § 102(b) as anticipated by Horber.
We reverse the Examiner’s decision to reject claims 32 and 33 under
35 U.S.C. § 102(b) as anticipated by Leonard.
We reverse the Examiner’s decision to reject claims 27 and 29-31
under 35 U.S.C. § 102(b) as anticipated by Glien.
We affirm the Examiner’s decision to reject claims 32-37 under 35
U.S.C. § 102(b) as anticipated by Glien, and we designate our affirmance of
the rejection under § 102(b) as a NEW GROUND OF REJECTION pursuant
to our authority under 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 Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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….
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED; 37 C.F.R. § 41.50(b)

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