Ex Parte Reubelt et al

Patent Trial and Appeal Board

Jun 28, 2016

11689470 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/689,470 03/21/2007
20995 7590 06/30/2016
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
FIRST NAMED INVENTOR
Leo M. Reubelt
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TRNXSH.033A 1944
EXAMINER
HOBAN, MELISSA A
ART UNIT PAPER NUMBER
3738
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEO M. REUB EL T and PETER L. VERRILLO
Appeal2014-005021
Application 11/689,4701
Technology Center 3700
Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
FREDERICK C. LANEY, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Leo M. Reubelt and Peter L. Verrillo (Appellants) appeal under 35
U.S.C. § 134(a) from the Examiner's decision rejecting under 35 U.S.C.
§ 103(a) claims 42--46 and 48-64 as being unpatentable over Pearl (US
2001/0041940 Al, pub. Nov. 15, 2001) in view of Kropf (US 6,719,799 Bl,
iss. Apr. 13, 2004).2 We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b ).
According to Appellants, the real party in interest is Tomier, Inc.
Appeal Br. 2.
2 Claims 1-41and47 are cancelled. Id. at 21-22.
Appeal2014-005021
Application 11/689,470
SUMMARY OF DECISION
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
INVENTION
Appellants' invention relates to "a reconstructive joint replacement
implant and method of positioning and fitting such an implant." Spec. ,-i 2.
Claims 42, 48, and 56 are independent. Claim 42 is illustrative of the
claimed invention and reads as follows:
42. A method of implanting an orthopedic reconstructive
joint replacement stem implant, the method comprising the
steps of:
resecting a head of a bone of a joint;
broaching a central cavity region in the bone of the joint;
evaluating a plurality of stem components each having a
distal body portion connected to a proximal body portion at an
angular orientation, wherein the angular orientation varies on at
least t\,'1/0 of the stem components, and \'I/herein each of the
plurality of stem components includes a taper extending from
the proximal body portion toward the distal body portion, the
taper comprising a medial curved surface and a lateral curved
surface of a shape different from the medial curved surface, and
wherein a shape of the medial curved surface varies on the at
least two of the stem components;
selecting the stem component with a fix angle that
optimizes engagement of the proximal body portion with the
central cavity region and with medial and lateral curved
surfaces configured to mimic a geometric shape of the bone;
and
inserting the stem component into the central cavity
region of the bone of the joint.
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ANALYSIS
Claims 42, 43, and 45
Appellants have not presented arguments for the patentability of
claims 43 and 45 apart from claim 42. See Appeal Br. 4-9. Therefore, in
accordance with 37 C.F.R. § 41.37(c)(l)(iv) (2015), we select claim 42 as
the representative claim to decide the appeal of the rejection of these claims,
with claims 43 and 45 standing or falling with claim 42.
The Examiner finds that Pearl discloses the claimed method of
implanting an orthopedic reconstructive joint replacement stem implant
including, inter alia, "providing a series of stems ( 11 a-11 d) with
incrementally different superior end wall angles that may range from an
acute angle of 85° in Fig. 2A to an obtuse angle of 110° [in Fig. 2D] ... for
the purpose of providing a metaphyseal region that is sized and shaped to
accommodate a patient's native anatomy" and "selecting the appropriate
components from the available inventory for implantation" Non-Final Act.
3-5; see also Pearl iii! 29, 65; Figs. 2A-2D. According to the Examiner,
"the variations from stem to stem in the series provided by Pearl include a
variation in shape of the medial surface on at least two of the stem
components." Non-Final Act. 5. The Examiner further finds that Pearl does
not explicitly teach stem components having medial and lateral curved
surfaces. Id. The Examiner thus relies upon Kropf to teach an implantable
prosthesis 10 having a taper and "a medial curved surface [24] and a lateral
curved surface [26], of a shape different from the medial curved surface,
which are configured to mimic the geometric shape of the bone." Id. at 6;
see also Kropf, Fig. 1. The Examiner concludes that it would have been
obvious for a person of ordinary skill in the art to include curved lateral and
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Application 11/689,470
medial surfaces, as taught by Kropf~ to Pearl's multiple stems, because such
a configuration of a stem component is well known in the art (see Non-Final
Act. 6) and "in order to design a prosthesis that is adapted to the respective
anatomical aspect of the human bones which are to be connected therewith"
(see Ans. 2).
Appellants argue that Pearl's stems 11 a-11 d lack a taper including
differently shaped curved lateral and medial surfaces, whereas Kropf
discloses a single implant having curved medial and lateral surfaces with
specific dimensions. Appeal Br. 7-8. We are not persuaded by Appellants'
arguments because Appellants cannot show nonobviousness by attacking
Pearl and Kropf individually when the rejection, as articulated by the
Examiner, is based on a combination of Pearl and Kropf. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In this case, the Examiner
correctly relies upon Pearl to disclose a plurality of stem components with
varying shaped medial and lateral surfaces (see the varying inclination
angles of 35°, 40°, 45°, and 50° forming differently shaped medial and lateral
surfaces in Figures 2A-2D and 3A-3D of Pearl), and Kropf to disclose that
both medial and lateral surfaces on a stem component of a prosthesis are
curved. See Non-Final Act. 6-7, Ans. 2. Accordingly, we agree with the
Examiner "that the resulting series of stem components taught by Pearl in
view of Kropf, would include a shape of the medial curved surface that
varies on at least two of the stem components," as called for by claim 42. Id.
Appellants next argue that the prosthetic devices as disclosed in Pearl
are "merely illustrations" of stems components and thus, Pearl does not
disclose a "set of prosthetic devices that are evaluated as claimed." Appeal.
Br. 8. Appellants also contend that Kropf likewise "does not teach or
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Application 11/689,470
suggest evaluating a plurality of stem components." Id. Once more
Appellants are attacking Pearl and Kropf individually when the rejection as
articulated by the Examiner is based on a combination of Pearl and Kropf.
Here, the Examiner is not using Kropf s disclosure for the claimed
"evaluating" step, but rather is using the disclosure of Pearl. Specifically,
the Examiner is correct that as Pearl discloses selecting the appropriate
components from available inventory to build an appropriate prosthesis,
Pearl discloses evaluating a plurality of stem components, as called for by
claim 42. See Ans. 3. For example, Pearl specifically discloses that a
prosthesis is assembled from separate components, namely, stem 11, body
12, head 13, and insert 14, that are provided in various configurations. See
Pearl iii! 29 ("providing a series of stems .... [choosing] [t]he selected stem
lla-lld ... "), 30 ("[A] series of bodies 12a-12d are provided .... ), 36
("[T]he head 13 is typically made available in multiplicity of sizes ... "), 38
("A plurality of inserts 14 with various locking projection offsets can be
provided ... "),and 65.
Appellants also contend that the Examiner's reasoning for modifying
Pearl's medial and lateral surfaces to be curved, as taught by Kropf, lacks
rational underpinnings as Kropf fails to disclose that curved medial and
lateral surfaces are configured to mimic the geometric shape of the bone and
moreover, what benefits curved medial and lateral surfaces would provide to
Pearl's stems. Appeal Br. 8; see also Ans. 2-3 (citing Kropf col. 1, 11. 46-
49). According to Appellants, the portion of Kropf cited by the Examiner to
support the conclusion of obviousness does not refer to the curved surfaces
to mimic the shape of the bone, but rather refers to the head adjustment to
mimic the shape of the bone. Reply Br. 2-3. Although we appreciate that
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Application 11/689,470
Kropf does not refer to any specific benefits that the curved medial and
lateral surfaces of its shaft 12 would provide to Pearl's stems l la-1 ld (see
Appeal Br. 8), nonetheless, we do not agree with Appellants' position
because Kropf refers to "adaptation" of its "prosthesis" to human anatomy,
whereas the prosthesis is described as having both a shaft (stem) and a
dome-shaped joint head. See Kropf, col. 1, 11. 10-14 and 43-48.
Furthermore, Pearl specifically discloses that the shape of the metaphyseal
region of a prosthesis3 is important with respect to "accommodating the
native anatomy." Pearl ii 33. Pearl further explains that its modular
prosthesis is designed to "effectively replicate the anatomic position of the
patient's articular surface." Id. ii 35. Accordingly, the combined teachings
of Pearl and Kropf disclose selecting a stem component with curved medial
and lateral surfaces that replicate human anatomy and thus, "mimic[ s] the
geometric shape of the bone," as called for by claim 42.
In conclusion, for the foregoing reasons, we sustain the rejection of
claim 42 as being unpatentable over the combined teachings of Pearl and
Kropf. Claims 43 and 45 fall with claim 42.
Claim 44
The Examiner finds that Pearl fails to disclose, using a single
instrument, as called for by claim 44. Non-Final Act. 5. According to the
Examiner, Appellants' Specification uses the terms "ream" and "broach"
interchangeably and thus the claimed limitation lacks criticality. Id. at 5-6
3 The metaphyseal region of the prosthesis corresponds to the region
connecting body 12 to stem 11 and to form varying inclination angles 35°,
40°, 45°, and 50°. See Pearl, Figs. 2A-2D and 3A-3D.
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(citing Spec. iJ 63 ). The Examiner concludes that it would have been
obvious to modify Pearl and use a single instrument because a person of
ordinary skill in the art would have "easily recognized the benefits of
combining the steps of reaming and broaching through the use of a single
instrument, in order to simplify the surgical procedure and minimize
invasiveness." Ans. 3. Alternatively, the Examiner takes the position that
"the inherent use of a single instrument to perform broaching, as taught by
Pearl, can be construed to meet this limitation since a broach is a tool that is
used to shape or enlarge a hole and can therefore include the function of
reaming, as claimed." Id. at 3--4.
Although we appreciate the Examiner's position that using a single
instrument for reaming and broaching would simplify the surgical procedure
and minimize invasiveness, nonetheless, the Examiner has failed to set forth
any findings as to whether the prior art discloses an instrument that can
"concurrently broach and ream." Although we appreciate the Examiner's
position that combining the broaching and reaming steps would provide
benefits to the implantation method of Pearl, as modified by Kropf,
nonetheless, the Examiner has not set forth any findings that a single
instrument that can both ream and broach is taught in the prior art. Reamers
and broaches are known to be separate instruments that have different
functions for processing materials. See Pearl iii! 58, 60, 62, 64. Thus, the
Examiner has not made the initial factual findings required to demonstrate a
prima facie case of obviousness. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967).
As to the Examiner's position that Pearl's tool can inherently perform
both reaming and broaching because they represent the same process, we do
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Application 11/689,470
not agree because Pearl specifically discloses different tools for performing
different functions, that is, a reamer for reaming a canal and a broach for
"follow[ing] the reamed canal." Pearl iii! 58, 60, 64. "The mere fact that a
certain thing may result from a given set of circumstances is not sufficient."
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted).
Therefore, we agree with Appellants that Pearl fails to disclose necessarily
using a single instrument for concurrently reaming and broaching. See
Reply Br. 3-4.
In conclusion, for the foregoing reasons, we do not sustain the
rejection of claim 44 under 35 U.S.C. § 103(a) as unpatentable over Pearl
and Kropf.
Claim 46
Appellants argue that neither Pearl nor Kropf discloses the limitation
"inserting the proximal body portion of the stem implant into the central
cavity region of the bone of the joint in a direction to avoid the
supraspinatus."4 Appeal Br. 11.
We do not agree with Appellants' position because the Examiner finds
that "it is inherent that the proximal portion of the stem implant of Pearl is
inserted into the central cavity region of the bone of the joint in a direction to
4 The supraspinatus is "a muscle of the back of the shoulder that arises
from the supraspinous fossa of the scapula, that inserts into the top of the
greater tubercle of the humerus, that is one of the muscles making up the
rotator cuff of the shoulder, and that rotates the humerus laterally and helps
to abduct the arm." Merriam-Webster Medical Dictionary
22, 2016).
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Application 11/689,470
avoid the supraspinatus." Ans. 4. An artisan must be presumed to know
something about the art apart from what the references disclose. See In re
Jacoby, 309 F.2d 513, 516 (CCPA 1962). In this case, a person of ordinary
skill in the art of orthopedic surgery would have understood to avoid the
supraspinatus when operating on a patient to insert the implant of Pearl, as
modified by Kropf, to avoid injury to the supraspinatus and, as the Examiner
correctly explains, "deficient rotator cuff muscles can produce poor results
and complications." Ans. 4. Appellants have not persuasively shown error
in the Examiner's findings and reasoning.
In conclusion, for the foregoing reasons, we also sustain the rejection
of claim 46 as unpatentable over the combined teachings of Pearl and Kropf.
Claims 48, 49, 51, 54, and 62
Appellants have not presented arguments for the patentability of
claims 49, 51, 54, and 62 apart from claim 48. See Appeal Br. 11-14.
Therefore, we select claim 48 as the representative claim to decide the
appeal of the rejection of these claims, with claims 49, 51, 54 and 62
standing or falling with claim 48.
Independent claim 48 requires, inter alia, each of a plurality of stem
components to include a "proximal body portion ... comprising a bearing
surface adapted to support a head component having a geometric head center
... wherein the head center is spaced from the longitudinal axis ... at a
medial offset distance" and "at least two of the plurality of stem components
include different medial offset distances." Appeal Br. 22.
The Examiner finds that "the head center of Pearl is [] spaced from a
longitudinal axis of the distal body portion at a medial offset distance."
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Non-Final Act. 9. The Examiner further takes the position that as "the
limitations regarding the head component are not positively claimed, they
are given little patentable weight." Id. at 10. According to the Examiner,
Id.
[T]he device taught by Pearl is at least fully capable of
supporting a head component having a geometric head center
located within the proximal portion, when the head component
is engaged with the bearing surface, and spaced from a
longitudinal axis extending through the distal body by various
medial offset distances, as claimed by applicant.
In addition to the arguments presented supra with regards to the
rejection of claim 42, which we have found unpersuasive, Appellants further
argue that neither Pearl nor Kropf discloses the above recited limitations.
Appeal Br. 12-13.
We agree with the Examiner's position for the following reasons. The
fact that a geometric head center and a medial offset distance are not
specifically mentioned in either Pearl or Kropf does not, without more,
establish that the Examiner erred. What a reference teaches or suggests must
be examined in the context of the knowledge, skill, and reasoning ability of a
skilled artisan and is not limited to what a reference specifically "talks
about" or what is specifically "mentioned" or "written" in the reference.
Syntex (U.S.A.) LLC v. Apotex, Inc. 407 F.3d 1371, 1380 (Fed. Cir. 2005).
"[A] person of ordinary skill is also a person of ordinary creativity, not an
automaton." KSR v. Teleflex, 550 U.S. 398, 421 (2007). In this case, as all
geometric objects have a geometric center, Pearl's head 13 likewise has a
geometric head center. Furthermore, as Pearl's head 13 is laterally offset
from stem 11, the geometric head center is likewise laterally offset by a
distance from longitudinal axis SCL of stem 11, that is, by a medial offset
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Application 11/689,470
distance. 5 We further agree with the Examiner that Pearl discloses a variety
of head inserts 14 that allow head 13 to be located at various offset positions
with respect to body 12. Non-Final Act. 8-9; see also Pearl ,-i,-i 37, 38, 47,
and 48. Therefore, as the location of head 13 changes among different
positions relative to stem 11, the location of the geometric center also
changes position relative to stem 11, and thus, the distance between the
geometric center of head 13 to the longitudinal axis SCL of stem 11 will
change accordingly, to thus obtain a plurality of stem components having
different medial offset distances, as called for by claim 48. As such, the
Examiner is on solid footing to shift the burden to Appellants to prove that
Pearl's plural prostheses do not possess a geometric head center that is
spaced from the longitudinal axis of the stem by a variable medial offset
distance. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). Appellants have
not set forth persuasive evidence or reasoning to show otherwise.
Lastly, we agree with the Examiner's assertion that the limitation of a
"proximal body portion ... adapted to support a head component having a
geometric center" is a functional limitation. See Appeal Br. 22. Our
reviewing court has stated that the claim term "adapted to" "is frequently
used to mean 'made to,' 'designed to,' or 'configured to,' ... [a]lthough the
phrase can also mean 'capable of or 'suitable for."' In re Giannelli, 739
F.3d 1375, 1379 (Fed. Cir. 2014) (citing Aspex Eyewear, Inc. v. Marchan
Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012)). In this case,
5 Appellants' Specification describes the medial offset distance as the
"distance between the head center and the closest point along the
longitudinal axis [of the distal stem portion]." Spec. ,-i 80; see also reference
number 207' in Appellants' Figure l lA.
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Application 11/689,470
Appellants' Specification describes an implant 150, 180 having a proximal
portion 154, 184 with a coupling device 158, 188 for attaching a humeral or
femoral head. See Spec. iii! 72, 74, 75, 77; Figs. 9A, 9B. As such, because
Pearl's body portion 12 locks head 13 in a lateral offset position using insert
14, we agree with the Examiner that the term "adapted to" means "capable
of' in that the "series of stems of Pearl [are] at least fully capable of
supporting a head component having a geometric head center that is
medially offset at different distances as claimed by [A ]pplicant." Ans. 4.
Furthermore, we note that Pearl's proximal portion of body 12 is
"made to," "designed to," or "configured to" support a head 13 having a
geometric head center located at a medial offset distance, as called for by
claim 48. Specifically, Pearl's proximal portion of body 12 is configured to
include aperture 21 for receiving locking projection 17 of insert 14 that
attaches head 13 in a lateral offset position with respect to the longitudinal
axis SCL of stem 11. See Pearl iii! 36, 38; Figs. IA, lB; see also Final Act.
8-9. In this manner, Pearl's proximal portion of body 12 and insert 14 are
configured to support head 13 just as Appellants' proximal portion 154, 184
and coupling device 158, 188 are configured to support a humeral or femoral
head.
In conclusion, for the foregoing reasons, we sustain the rejection of
claim 48 as unpatentable over the combined teachings of Pearl and Kropf.
Claims 49, 51, 54, and 62 fall with claim 48.
Claims 5 0, 5 2, and 64
With respect to the rejection of claims 50, 52, and 64, Appellants
argue that the Examiner's modification of Pearl's prostheses, to include
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Application 11/689,470
lateral curved surfaces, as taught by Kropt: would not have been obvious to
a person of ordinary skill in the art because Kropf does not refer to any
specific benefits that the curved lateral surfaces of its shaft 12 would provide
to Pearl's stems 11 a-11 d and furthermore, Kropf fails to disclose "surfaces
of the shaft 12 [as] being configured to mimic the geometric shape of a
bone." Appeal Br. 14-15. Appellants further argue that the Examiner's
reasoning for making the combination lacks rational underpinnings. Id. at
15.
We are not persuaded by Appellants' arguments for the reasons set
forth supra in the rejection of claim 42. Accordingly, we sustain the
rejection of claims 50, 52, and 64 over the combined teachings of Pearl and
Kropf.
Claim 53
Claim 53 depends from independent claim 48 and adds the limitation
that "the medial offset distance of each of the three stem components is at
least two millimeters different from the medial offset distance of the other
two of the three stem components." Appeal Br. 23.
The Examiner takes the position that although Pearl does not
expressly teach three stem components having the claimed medial offset
relationship, nonetheless,
it would have been obvious to one having ordinary skill in the art
at the time of the invention to specify a distance between the
offset positions of Pearl, in order to accommodate the native
anatomy, particularly since it has been held that discovering an
optimum value of a result effective variable involves only routine
skill in the art.
Non-Final Act. 9 (citing Jn re Boesch, 617 F.2d 272 (CCPA 1980)).
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Application 11/689,470
Appellants argue that because Pearl does not disclose medial offset
values, but rather head-to-stem angles, it would not have been obvious to
optimize the medial offset distances of Pearl's stems, as modified by Kropf.
See Appeal Br. 16.
Although we appreciate that Pearl discloses a plurality of stem
components having different medial offset distances, nonetheless, the
Examiner has not shown where Pearl discloses three stem components
having the claimed medial offset distance relationship, provides sufficient
information to permit values to be determined, or otherwise provides support
for the finding that a person of ordinary skill would have considered the
claimed medial offset distance relationship between three stem components
to be a result-effective variable.
As such, we are not persuaded that the medial offset distance
relationship between the claimed three stems is a result-effective variable,
rendering its optimization within the grasp of one of ordinary skill in the art.
Therefore, we do not sustain the rejection of claim 53 as unpatentable over
the combined teachings of Pearl and Kropf.
Claim 56, 59, 60, and 63
With respect to the rejection of claims 56, 59, 60, and 63, Appellants
rely on the same arguments, discussed supra, and asserted against the
rejection of claim 42. See Appeal Br. 17-19. Accordingly, for the same
reasons as discussed above, we likewise sustain the rejection of claims 56,
59, 60, and 63 over the combined teachings of Pearl and Kropf.
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Claims 55 and 61
Claim 55 depends from independent claim 48 and adds the limitation
that "the distal body portion and the proximal body portion comprise a
single unitary member." Appeal Br. 23. Claim 61 includes the same
limitation as claim 55, but depends from independent claim 56. Id. at 24.
The Examiner finds that "the stem components taught by Pearl appear
to comprise a single unitary member, at least when assembled." Non-Final
Act. 7. The Examiner also finds that Kropf discloses "that the use of a
monolithic stem is also clearly well known in the art." Ans. 5. Thus, the
Examiner attempts to present an alternative rejection in concluding that it
would have been obvious "to specify that the distal body portion and the
proximal body portion comprise a single unitary member, since it has been
held that forming in one piece an article which has formerly been formed in
two pieces and put together involves only routine skill in the art." Id (citing
Howard v. Detroit Stove Works, 150 U.S. 164 (1893)).
During examination, "claims ... are to be given their broadest
reasonable interpretation consistent with the specification, [ ] and ... claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art." In re Bond, 910 F .2d 831,
833 (Fed. Cir. 1990) (Internal citation and quotations omitted). In this case,
an ordinary and customary meaning of the term "unitary" is "having the
character of a unit: UNDIVIDED, WHOLE." Merriam Webster's
Collegiate Dictionary (l01h ed. 1997). As such, we agree with Appellants
that the separate stem 11 and body 12 units of Pearl, when assembled, do not
form a unitary unit because they can be disassembled, i.e., divided. Such an
interpretation is consistent with Appellants' Specification that describes the
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proximal and distal body components as forming a "single piece." See Spec.
25, claim 7. Furthermore, the Examiner's reliance on Howard v. Detroit
Stove Works amounts to a per se rule that eliminates the need for fact-
specific analysis of claims and prior art and is legally incorrect. Our
precedents do not establish any rules of obviousness, just as those precedents
themselves expressly declined to create such rules. In re Ochiai, 71 F.3d
1565, 1572 (Fed. Cir. 1995).
In conclusion, for the foregoing reasons, we do not sustain the
rejection of claims 55 and 61 as unpatentable over the combined teachings
of Pearl and Kropf.
Claim 57 and 58
With respect to the rejection of dependent claims 57 and 58,
Appellants make the same arguments, discussed supra, and advanced against
the rejection of claim 50, 52, and 54. See Appeal Br. 19-20. Accordingly,
for the same reasons as discussed above, we likewise sustain the rejection of
claims 57 and 58 over the combined teachings of Pearl and Kropf.
NEW GROUNDS OF REJECTION
We make the following new grounds of rejection pursuant to 37
C.F.R. § 41.50(b).
Claims 53, 55, and 61 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Pearl and Kropf.
We adopt the Examiner's findings and conclusions with respect to the
limitations of independent claims 48 and 56 noted in the Non-Final Action,
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dated February 15, 2013, and as explained in our discussion above. See
Non-Final Act. 7-15.
Claim 53 depends from independent claim 48 and adds the limitation
that "the medial offset distance of each of the three stem components is at
least two millimeters different from the medial offset distance of the other
two of the three stem components." Appeal Br. 23. Pearl discloses
positioning insert 14 at 2 mm increments to obtain a plurality of locations for
head 13. See Pearl ii 50, Fig. 8. For example, each of the locations of insert
14 in the top row of Pearl's Figure 8 corresponds to a separate
stem/prosthesis. As such, if inserts 14 of the three stems/prostheses are
located 2 mm apart, then it stands to reason that heads 13 of the three
stems/prostheses will also be 2 mm apart, and thus the medial offset distance
between the three stems/prostheses will also be 2 mm apart, as called for by
claim 53.
Claim 55 depends from independent claim 48 and adds the limitation
that "the distal body portion and the proximal body portion comprise a
single unitary member." Appeal Br. 23. Claim 61 includes the same
limitation as claim 55, but depends from independent claim 56. Id. at 24.
Pearl discloses that, as an alternative to separate stem, body, head, and insert
portions, a "wide array of single piece stem-body units may be one piece."
Pearl ii 65 (emphasis added). Thus, Pearl discloses a single, unitary stem
arrangement, as called for by claims 55 and 61.
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SUMMARY
The Examiner's decision to reject claims 42--46 and 48-64 is affirmed
as to claims 42, 43, 45, 46, 48-52, 54, 56-60, and 62-64 and reversed as to
claims 44, 53, 55, and 61.
We enter a new ground of rejection of claims 53, 55, and 61 under 35
U.S.C. § 103(a) as unpatentable over Pearl and Kropf.
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:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
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 prosecution will be
remanded to the Examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
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Appeal2014-005021
Application 11/689,470
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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