Ex Parte Poncet et alDownload PDFPatent Trial and Appeal BoardFeb 21, 201813803533 (P.T.A.B. Feb. 21, 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. 13/803,533 03/14/2013 Didier Poncet 265280-224499 3197 23643 7590 02/23/2018 Barnes & Thornburg LLP (IN) 11 S. Meridian Street Indianapolis, IN 46204 EXAMINER COLEY, ZADE JAMES ART UNIT PAPER NUMBER 3775 NOTIFICATION DATE DELIVERY MODE 02/23/2018 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): INDocket@btlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DIDIER PONCET, DAVID M. WARLOP, and LAURENT ZANCHIN Appeal 2017-002684 Application 13/803,5331 Technology Center 3700 Before JEFFREY N. FREDMAN, RICHARD J. SMITH, and DAVID COTTA, Administrative Patent Judges. COTTA, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) relating to a surgical instrument for use during a surgical procedure to implant a stemless humeral component. The Examiner rejected the claims on appeal under 35 U.S.C. § 102(b) as anticipated and under 35 U.S.C. § 103(a) as obvious. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is DePuy Synthes Products, Inc. App. Br. 2. Appeal 2017-002684 Application 13/803,533 STATEMENT OF THE CASE The Specification discloses: “The present disclosure relates generally to orthopaedic implants, instruments, and surgical methods, and more particularly to a stemless humeral component of an orthopaedic shoulder implant, along with its associated surgical instruments and methods.” Spec. 117. Claims 1 and 3—11 are on appeal. Claim 1 is illustrative and reads as follows (emphasis added to highlight limitation at issue): 1. A surgical instrument for use during a surgical procedure to implant a stemless humeral component to replace the humeral head of a patient’s humerus, comprising: an implant insertion tool comprising (i) a body having an elongated bore extending therethrough, (ii) a locking rod captured in the bore so as to rotate freely relative to the body, the locking rod having a knob formed on a proximal end thereof, and a set of locking threads formed in a distal end thereof, and (iii) an alignment collar having a number of alignment keys extending downwardly from a lower surface thereof, wherein (i) a distal end of the elongated bore opens into the lower surface of the alignment collar, and (ii) the locking rod extends outwardly from the distal end of the elongated bore such that the locking threads extend from within the elongated bore, through the distal end of the elongated bore, and to a distal tip spaced apart from the alignment collar, and are positioned between the alignment keys of the alignment collar, and wherein the knob is configured to rotate relative to the body and rotation of the knob causes rotation of the locking threads. App Br. 17. 2 Appeal 2017-002684 Application 13/803,533 The claims stand rejected as follows: Claims 1, 4—7, and 9-11 were rejected under 35 U.S.C. § 102(b) as anticipated by Charpenet.2 Claims 1, 4—7, and 9-11 were rejected under 35 U.S.C. § 103(a) as obvious over Charpenet. Claims 3 and 8 were rejected under 35 U.S.C. § 103(a) as obvious over the combination of Charpenet and Turner.3 Claims 1 and 3—11 were rejected on the ground of non-statutory obviousness-type double patenting over claims 1 and 14 of US Patent No. 9,161,843 (“the ’843 patent”) in view of Charpenet and Turner. ANTICIPATION Charpenet discloses “ancillary equipment for the implantation of artificial acetabular cups of hip prostheses.” Charpenet, col. 1,11. 8—10. Figure 6 of Charpenet is reproduced below. Figure 6 is “a longitudinal elevation view of an embodiment of [Charpenet’s] ancillary device for impaction of the acetabular cup.” Id. at 2 Charpenet et al., US Patent No. 5,976,148, issued Nov. 2, 1999 (“Charpenet”). 3 Turner et al., US Patent Publication No. 2011/0060342 Al, published Mar. 10,2011 (“Turner”). 3 Appeal 2017-002684 Application 13/803,533 col. 3,11. 10—11. As shown in Figure 6, Charpenet’s device includes “a shaft 24 mounted freely in translation inside a tubular grip 25,” a “threaded finger 22 designed to be screwed into the plug 8,” and “at least one stud 31... designed to be introduced into complementary holes 32 in the obturator cover.” Id. at col. 4,11. 35—49. In finding that Charpenet disclosed all of the elements recited in the pending claims, the Examiner determined that elements 24 and 28 of Charpenet’s impactor comprised a contiguous bar that extended through a bore in body 25 and that corresponded to the “locking bar” of the pending claims. Final Act.4 2—3. The Examiner further found that the collar that prongs 31 project out of corresponded to the “alignment collar” of the pending claims. Id. at 2. The Examiner acknowledged that Charpenet did not “show a figure” in which the “threads [element 22 of Charpenet] extend from within the elongated bore, through the distal end of the elongated bore, and to a distal tip spaced apart from the alignment collar” as required by claim 1. Ans. 2. However, the Examiner noted that Charpenet disclosed that the shaft 24 was “mounted freely in translation inside the grip 25.” Id. The Examiner thus concluded that it was “certainly possible” that the shaft 24 could be pulled toward the user such that the threads began where the bore ended. Id. The Examiner illustrated this possibility with the below Figure. 4 Office Action mailed March 3, 2016 (“Final Act.”). 4 Appeal 2017-002684 Application 13/803,533 Ans. 3. The above figure is a version of Figure 6 of Charpenet modified by the Examiner to show how the locking bar can be pulled inward such that the threads extend from the bore. Appellants argue that the Examiner’s anticipation rejection should be reversed because, inter alia, the disclosure in Charpenet does not establish with certainty that the Charpenet’s device is configured as recited in the pending claims. App. Br. 8. As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992): “[T]he examiner bears the initial burden ... of presenting a prima facie case of unpatentability.” Appellants have persuaded us that the Examiner has not carried the burden of establishing that the Charpenet anticipates the claimed surgical instrument. The Examiner finds that the shaft 24 in Charpenet’s device slides within the grip 25 based on the following passage from Charpenet: The ancillary device 11 for impaction and extraction of the obturator cover 7 includes (FIG. 6) a shaft 24 mounted freely in translation inside a tubular grip 25 advantageously having a 5 Appeal 2017-002684 Application 13/803,533 ribbed zone 26 making it easier for the surgeon to hold, as well as a lateral control lever 27. Charpenet, col. 4,11. 36-40 (emphasis added). This passage leaves some ambiguity as to the nature and degree of translational movement permitted. The Examiner implicitly recognizes this ambiguity, describing the interpretation of Charpenet on which anticipation was based as “certainly possible based on the disclosure of Charpenet.” Ans. 2 (emphasis added). While we agree with the Examiner that it is possible to interpret the above passage as describing a shaft that can be pulled toward the user such that the threads extend from the bore, the disclosure is not clear enough to support a finding of anticipation. In re Brink, 419 F.2d 914, 917 (CCPA 1970) (“[I]f a reference is ambiguous and can be interpreted so that it may or may not constitute an anticipation of an appellant’s claims, an anticipation rejection under 35 U.S.C. § 102 based upon the ambiguous reference is improper.”) (citing In re Hughes, 345 F.2d 184, 52 CCPA 1355 (1965)). Accordingly, we reverse the Examiner’s rejection of claims 1, 4—7, and 9—11 as anticipated by Charpenet. OBVIOUSNESS OVER CHARPENET Claims E 5—7, 10, and 11 Appellants argue claims 1, 5—7, 10, and 11 together. We designate claim 1 as representative. The Examiner’s obviousness rejection applies Charpenet to claim 1 in the same way discussed in connection with the Examiner’s anticipation rejection with the exception that the Examiner does not rely upon the Charpenet as disclosing a rod with threads that extend out of the bore. Instead, the Examiner finds that it would have been obvious to modify Charpenet’s rod such that the threads extend all the way to the bore. The 6 Appeal 2017-002684 Application 13/803,533 Examiner reasons: “[wjhether the shaft has three revolutions of threads or ten revolutions of threads that extend farther up the shaft seems to be an obvious matter of design choice, based on the strength one wishes to get from the threaded connection.” Ans. 4. We agree with the Examiner that claims 1, 5—7, 10, and 11 would have been obvious over Charpenet. We address Appellants’ arguments below. Appellants argue that the Examiner’s analysis is conclusory and relies upon hindsight. App. Br. 12. Appellants further argue that “merely reciting a purported advantage of a proposed modification is not the same as undertaking the required analysis for combining the references as required by the KSR Court.” Id. We are not persuaded. The only difference between the surgical instrument of claim 1 and Charpenet’s instrument is the length of the threads at the end of the locking rod. Both locking rods extend from a bore. However, the threads of the locking bar recited in claim 1 extend from the distal tip of the locking rod to the bore while the threads in Charpenet’s locking rod extend from the distal tip to a point short of the bore. The Examiner found that the number of revolutions of threads affects the strength of the threaded connection. Ans. 4. We discern no error in this finding. Based on this finding, the skilled artisan would have found it obvious to extend the threads farther up the shaft such that they “extend from within the elongated bore” in order to optimize the strength of the threaded connection. Appellants have not identified persuasive evidence that the claimed thread length solves a problem in the art, provides unexpected results, or demonstrates some other objective indicia of non- 7 Appeal 2017-002684 Application 13/803,533 obviousness. Accordingly, we affirm the Examiner’s rejection of claims 1, 5—7, 10 and 11 as obvious over Charpenet. In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (finding that use of a “metallic wrapping” that “presents no novel or unexpected result” and “solves no stated problem” “would be an obvious matter of design choice”). Claims 4 and 9 Claims 4 and 9 depend from claims 1 and 7 and further recite that “each of the alignment keys is positioned in a location that aligns with a number of viewing windows of the stemless humeral component.” Appellants argue that “[t]he Examiner has not identified any passage or teaching of Charpenet to suggest that its tools are configured for use in implanting ‘a stemless humeral component to replace the humeral head of a patient’s humerus,’ as required by the claims.” App. Br. 11. Appellants have persuaded us that the Examiner has not carried the burden of establishing that the Charpenet renders claims 4 and 9 obvious. In re Oetiker, 977 F.2d at 1445. Charpenet relates to equipment for the implantation of acetabular cups of hip prostheses. Charpenet Abstract. The Examiner does not identify any disclosure relating to a humeral component. Nor does the Examiner articulate any reasons reason why the skilled artisan would use Charpenet’s device for implanting acetabular cups to implant a stemless humeral component. Accordingly, we reverse the Examiner’s rejection of claims 4 and 9 as obvious over Charpenet. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (explaining that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some 8 Appeal 2017-002684 Application 13/803,533 articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). OBVIOUSNESS OVER CHARPENET AND TURNER Claims 3 and 8 depend from claims 1 and 7 and further recite that an “upper surface of the knob comprises a metallic impact surface.” The Examiner acknowledges that “Charpenet does not mention what material the tool is made of.” Final Act. 6. However, the Examiner found that Turner disclosed a surgical instrument with a metallic impact surface. Id. The Examiner concluded: It would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the instrument of Charpenet to include a metallic impact surface, as taught by Turner, since this is a well-known material to make an instrument of this type out of. Furthermore, this material is known to those of ordinary skill in the art to be biocompatible and it will yield the proper strength and mechanical stability for inserting the implant. Id. Appellants argue that “the Examiner has not provided any analysis or evidence to show that the maneuvering handle 29 of Charpenet (identified by the Examiner as ‘the knob’) even includes an impact surface.” App. Br. 15. Appellants contend that “Charpenet does not disclose, teach, or suggest the maneuvering handle 29 being impacted along the longitudinal axis along the body to apply force to the opposite end of the shaft 24” and that “the Examiner has not established that a person of ordinary skill in the art would be motivated to integrate the impaction face 6 of Turner with the maneuvering handle 29 of Charpenet.” Id. at 15—16. We are not persuaded. 9 Appeal 2017-002684 Application 13/803,533 Turner, like Charpenet, discloses a device that may be used for implanting an acetabular component. Turner || 43, 44, and 57. Turner discloses that its device “may be made of metal.” Id. 135. We agree with the Examiner that it would have been obvious to make Charpenet’s device out of metal because metal is well known for instruments of this type, biocompatible, and provides the proper strength and mechanical stability. While Charpenet does not expressly disclose impacting its handle, it describes its device as an “ancillary impaction device” (Charpenet col. 1,11. 42 44), and the handle of the impaction device includes a surface that can be impacted. Id. at Fig. 6. We do not discern any structural differences between the flat surface atop handle 29 in Charpenet’s device and the claimed “impact surface.” Moreover, to the extent Charpenet’s device lacks an impact surface, we agree with the Examiner that it would have been obvious to include one. Turner discloses that “[i]n use, the surgeon impacts the implant into the acetabulum by applying force to impaction face 6.” Turner 174. Charpenet disclose “an ancillary impaction device 11 with which it is possible to impact the acetabular cup into the cavity 6.” Charpenet, col. 1,11. 42-44. We thus agree with the Examiner that it would have been obvious to include an impact surface, like impaction face 6 of Turner in Charpenet’s impaction device, because it would “give the tool of Charpenet the strength and mechanical stability to help insert an implant.” Ans. 5. Accordingly, we affirm the Examiner’s rejection of claims 3 and 8 as obvious over the combination of Charpenet and Turner. DOUBLE PATENTING 10 Appeal 2017-002684 Application 13/803,533 Appellants argue that Examiner’s double patenting rejection should be reversed because a terminal disclaimer has been filed and approved. Decisions regarding whether a terminal disclaimer meets the Office’s requirements are not “adverse decisions of examiners upon applications for patents.” See 35 U.S.C. § 6(b) (“The Patent Trial and Appeal Board shall— (1) on written appeal of an applicant, review adverse decisions of examiners upon applications for patents pursuant to section 134(a).”). Thus, we lack jurisdiction to review the Office’s decision regarding the sufficiency of Appellants’ terminal disclaimer. Rather, those decisions are among the “various kinds of decisions . . . which have not been and are not now appealable to the board . . . when they are not directly connected with the merits of issues involving rejections of claims, but traditionally have been settled by petition to the Commissioner.” In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971). Because Appellants have not disputed the merits of the rejection for obviousness-type double patenting, we affirm it. SUMMARY For the reasons set forth herein: We affirm the Examiner’s rejection of Claims 1, 5—7, 10, and 11 under 35 U.S.C. § 103(a) as obvious over Charpenet. We affirm the Examiner’s rejection of claims 3 and 8 under 35 U.S.C. § 103(a) as obvious over Charpenet and Turner. We affirm the Examiner’s rejection of claims 1 and 3—11 on the ground of non-statutory obviousness-type double patenting over claims 1 and 14 of US Patent No. 9,161,843 (“the ’843 patent”) in view of Charpenet and Turner. 11 Appeal 2017-002684 Application 13/803,533 We reverse the Examiner’s rejection of claims 1, 4—7, and 9—11 under 35 U.S.C. § 102(b) as anticipated by Charpenet. We reverse the Examiner’s rejection of claims 4 and 9 under 35 U.S.C. § 103(a) as obvious over Charpenet. 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 12 Copy with citationCopy as parenthetical citation