Ex Parte Shohat

Patent Trial and Appeal Board

May 29, 2018

13967973 (P.T.A.B. May. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/967,973 08/15/2013
26181 7590 05/31/2018
FISH & RICHARDSON P.C. (SV)
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
FIRST NAMED INVENTOR
Shaul Shohat
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.
42014-0002002 1758
EXAMINER
PRONE, CHRISTOPHER D
ART UNIT PAPER NUMBER
3738
NOTIFICATION DATE DELIVERY MODE
05/31/2018 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):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte SHAUL SHOHAT
Appeal2017-005901
Application 13/967 ,973 1
Technology Center 3700
Before FRANCISCO C. PRATS, JOHN E. SCHNEIDER, and
DAVID COTTA, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims to a methods in
which a prosthetic implant is placed between bones in a human hand. The
Examiner rejected the claims for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant states that "Ortho-Space Ltd., the assignee of the present patent
application, is the real party in interest." Appeal Br. 1.
Appeal2017-005901
Application 13/967,973
STATEMENT OF THE CASE
The following rejections are before us for review:
(1) Claims 1-9 and 17-25, under 35 U.S.C. § 103(a) as being obvious
over Calandruccio2 and Ward3 (Final Act. 3--4);
(2) Claims 11and12, under 35 U.S.C. § 103(a) as being obvious over
Calandruccio, Ward, and Bauer4 (Final Act. 4--5); and
(3) Claims 11, 14, and 15, under 35 U.S.C. § 103(a) as being obvious
Calandruccio, Ward, and Ogilvie5 (Final Act. 5).
Claim 1, the only independent claim on appeal, is representative and
reads as follows:
1. A method for implanting between small bones in a
human hand comprising:
forming a cavity between at least two of the small bones
in the hand by cutting a portion of at least one of thumb
metacarpal and trapezium;
inserting into said cavity an expandable implantable
device comprising a first smooth surface on which a first small
bone may slide; and
expanding said device to occupy a space between said at
least two small bones, such that said device acts as a cushion
between said at least two small bones, to permit full range of
thumb motion and to prevent thumb shortening.
Appeal Br. 8.
2 US 5,743,918 (issued Apr. 28, 1998).
3 US 2002/0082699 Al (published Jun. 27, 2002).
4 US 2004/0059017 Al (published Mar. 25, 2004).
5 US 2006/0241778 Al (published Oct. 26, 2006).
2
Appeal2017-005901
Application 13/967,973
OBVIOUSNESS
The Examiner's Prima Facie Case
In rejecting claim 1 over Calandruccio and Ward, the Examiner found
that Calandruccio describes a process having all of the claimed steps and
features, differing from claim 1 's process only in that "Calandruccio does
not disclose the use of an expandable implant .... " Final Act. 3.
As evidence that the claimed process nonetheless would have been
obvious, the Examiner cited Ward as disclosing "an expandable,
biodegradable, implantable device 20 comprising a first smooth distal
surface and a second smooth proximal surface fillable with a bioactive liquid
wherein the liquid is eluted through the walls of the implant after some
degradation [0059]." Id.
Based on the references' combined teachings, the Examiner reasoned
that it would have been obvious to "to replace the implant of Calandruccio
with the expandable implant of Ward in order to make the surgery less
invasive and biodegradable in order to achieve temporary structural support
and stabilizing benefits [0032]." Id. at 4.
Analysis
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden ... of presenting a
primafacie case ofunpatentability ....
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In the present appeal, having carefully considered the arguments and
evidence advanced by Appellant and the Examiner, Appellant does not
3
Appeal2017-005901
Application 13/967,973
persuade us that the preponderance of the evidence fails to support the
Examiner's prima facie case of obviousness.
Appellant argues:
[T]here would have been no reasonable expectation, by
someone of ordinary skill looking to improve upon
Calandruccio, that adopting Ward's teachings would have led to
a suitably smooth, spherical prosthesis, at least because the
seams resulting from Ward's fabrication process would have
been expected to inhibit free rotation of the carpometacarpal
joint. While such a seamed prosthesis structure may have been
suitable for insertion in a spinal disc cavity (e.g., as depicted in
FIGS. 6A and 6B of Ward), one of ordinary skill would have
understood that methods and materials used to fabricate a
prosthesis suitable for one type of joint would not necessarily
result in a prosthesis suitable for another. For example, one of
ordinary skill in the art at the time of the invention would have
understood the mechanical requirements for carpometacarpal
joint implant to differ greatly from the mechanical requirements
of a device for insertion in a spinal disc cavity, given the
kinematic and loading difference in these two locations.
Appeal Br. 6; see also Reply Br. 1 ("[T]he seal around the perimeter of the
spinal disc nucleus of Ward would not be expected to inhibit movement of
the vertebrae in the way the seal would inhibit movement of the more mobile
carpometacarpal joint.").
We are not persuaded. As the Supreme Court has explained, "when a
patent claims a structure already known in the prior art that is altered by
mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result." KSR Int'! v.
Teleflex Inc., 550 U.S. 398, 416 (2007).
In the present case, Calandruccio discloses a process in which, as
required by claim 1, a cavity is cut between the trapezium and first thumb
metacarpal, and a prosthesis is inserted into the cavity. Calandruccio,
4
Appeal2017-005901
Application 13/967,973
abstract; see also id. at 3: 10-16 (discussing Fig. 4' s depiction of inserting a
cutting instrument "into the gap between the proximal surface of the first
metacarpal and the distal surface of the trapezium to cut semispherical
cavities . . . in the proximal surface of the first metacarpal and in the distal
surface of the trapezium").
As to the prosthesis inserted into the cavity, Calandruccio states as
follows:
The spherical prostheses may be constructed in various
manners and out of various materials as will now be apparent to
those skilled in the art. Thus, for example, each spherical
prosthesis can be machined, molded or otherwise constructed as
a one-piece, integral unit out of a medical grade,
physiologically acceptable ceramic or metal, etc., such as
zirconium, titanium or the like, in various sizes to fit a range of
typical patients, or may be custom-designed for a specific
patient based on data provided by a surgeon after physical and
radiography examination of the specific patient, etc.
Id. at 13:52-62.
Although Calandruccio might not expressly disclose that its prosthesis
may be an expandable device encompassed by claim 1, Ward discloses an
expandable device which has "many applications" (Ward i-f 54) including as
"prosthetic spinal disc nuclei, prosthetic final discs, ... orthopedic implants,
[and] bone fixation devices" (id.). Given Ward's disclosure of the suitability
of its device for use in multiple orthopedic applications, including as an
orthopedic implant, we agree with the Examiner that an ordinary artisan had
good reason for, and a reasonable expectation of success in, using Ward's
expandable device as the prosthesis in Calandruccio' s process.
Even assuming, as Appellant contends (see Appeal Br. 6), that the
mechanical requirements for an intervertebral disc replacement are different
5
Appeal2017-005901
Application 13/967,973
than the requirements for the prosthesis used in Calandruccio' s process,
Appellant fails to identify any specific evidence of record suggesting that
Ward's expandable prosthesis would be mechanically unsuitable for use as
Calandruccio's prosthesis. Indeed, contrary to Appellant's unsupported
contention that Ward's expandable prosthesis would be mechanically
unsuitable as Calandruccio's prosthesis, Ward discloses that its expandable
prosthesis has sufficient rigidity to act as a substitute for a spinal disc
member deployed between vertebrae (see, e.g., Ward, abstract; id. i-f 55), and
discloses also that its device has "many applications" (id. i-f 54) including as
"orthopedic implants" and "bone fixation devices" (id. i-f 55), as noted above.
Appellant does not persuade us, therefore, that the evidence of record fails to
support the Examiner's finding that an ordinary artisan had a good reason
for, and a reasonable expectation of success in, using Ward's expandable
device as the prosthesis in Calandruccio' s process.
We are similarly unpersuaded by Appellant's contention (Appeal Br.
6; Reply Br. 1) that Ward's prosthesis has seams that an ordinary artisan
would have recognized as unsuitable for use in association with articulating
bones as described in Calandruccio. We acknowledge Ward's disclosure
that embodiments of it device may formed into a pocket-shaped object
surrounded by a membrane that is sealed by radio frequency (RF) welding.
Ward i-f 49. We acknowledge also Ward's disclosure of examples of
preparing its device in which excess membrane outside the weld line is
"trimmed away." Id. i-fi-169, 70.
Other than the unsupported assertions in Appellant's briefs, however,
Appellant directs us to no specific evidence suggesting that any seam that
might remain after RF welding and subsequent trimming would have been
6
Appeal2017-005901
Application 13/967,973
recognized by an ordinary artisan as rendering Ward's device unsuitable for
use as Calandruccio' s prosthesis. It is well settled that attorney argument
lacking evidentiary support is insufficient to demonstrate nonobviousness.
See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997)
Moreover, contrary to the unsupported contention that Ward's device
would necessarily include surface irregularities sufficient to preclude its use
in association with articulating bones, Ward discloses expressly that the
excess membrane outside the weld line was "trimmed away" (Ward i-fi-1 69,
70), as Appellant concedes (Appeal Br. 6). Further undermining Appellant's
unsupported contention that the surface of Ward's device would necessarily
have irregularities precluding its use alongside articulating bones is Ward's
disclosure, noted above, that its device has "many applications" (id. i154)
including as "orthopedic implants" (id. i1 55).
In sum, for the reasons discussed, Appellant does not persuade us that
the preponderance of the evidence fails to support the Examiner's prima
facie case of obviousness as to claim 1. We, therefore, affirm the
Examiner's rejection of claim 1 over Calandruccio and Ward. Because they
were not separately argued, claims 2-9 and 17-25 fall with claim 1.
37 C.F.R. § 41.37(c)(l)(iv).
As to the Examiner's other rejections, Appellant contends only that
the Bauer and Ogilvie references, additionally cited by the Examiner to
show the obviousness of claims 11, 12, 14, and 15, fail to remedy the
deficiencies of the combination of Calandruccio and Ward as to claim 1,
discussed above. Appeal Br. 6-7. As discussed above, however, Appellant
does not persuade us that the combination of Calandruccio and Ward fails to
7
Appeal2017-005901
Application 13/967,973
render the method recited in claim 1 obvious. We, therefore, affirm the
Examiner's rejection of claims 11, 12, 14, and 15 as well.
SUMMARY
For the reasons discussed, we affirm each of the Examiner's
obviousness rejections.
TIME PERIOD
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
8