Ex Parte Southworth

Board of Patent Appeals and Interferences

Jan 12, 2009

10836473 (B.P.A.I. Jan. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CARLETON B. SOUTHWORTH
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Appeal 2008-5878
Application 10/836,473
Technology Center 3700
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Decided: January 12, 2009
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Before TONI R. SCHEINER, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-6 and 9-27.1 We have jurisdiction
under 35 U.S.C. § 6(b).

1 Claims 7 and 8 are also pending, but have been indicated as being
allowable (App. Br. 2).
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Application 10/836,473

STATEMENT OF THE CASE
The claims are directed to an implant system. Claim 1 is
representative of the claims on appeal, and reads as follows:
1. An implant system for fixation to a bone, the implant system
comprising:
an implant component for fixation to the bone;
a first position reference member sized and shaped to be capable of
being implanted proximate to the implant component;
a second position reference member sized and shaped to be capable of
being implanted proximate to the first position reference;
wherein the first position reference member and the second position
reference member are sized and shaped to be capable of relative movement;
wherein at least one of the first position reference member and second
position reference member includes indicia; and
wherein the first position reference member, second position reference
member and indicia are sized, shaped and made of a material such that post-
operative changes in the relative positions of the first position reference
member and second position reference member can be determined by
viewing the position of the indicia relative to one of the position reference
members by radiography or fluoroscopy.

The Examiner relies on the following references:
Davis US 5,057,103 Oct. 15, 1991
Petersen US 5,133,760 Jul. 28, 1992

We affirm.

ISSUE
The Examiner concludes that claims 1-6 and 9-27 are rendered
obvious by the combination of Petersen and Davis.
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Appellant contends that Peterson provides no motivation to monitor
post-operative changes in the position of reference positions in the implant
of Petersen, and thus there is no motivation to include a reference position
that can be determined by radiography or fluoroscopy.
Thus, the issue on Appeal is: Has Appellant demonstrated that the
Examiner erred in finding motivation to monitor post-operative changes in
the position of reference positions in the implant of Petersen, and has not
provided sufficient reasoning as to why the ordinary artisan would include
reference position that can be determined by radiography or fluoroscopy?

FINDINGS OF FACT
FF1 The invention is drawn to implant systems, and more particularly, to
prosthetic joints “used in replacing parts of human joints, such as the hip,
knee, shoulder, ankle and elbow.” (Spec. 1.)
FF2 According to the Specification, “it is possible for a prosthetic joint
implant to become loose over time. Loose bone-contacting components of a
joint prosthesis (for example, stems received in the intramedullary canal) can
become painful for the patient, and such loosening can eventually require
revision surgery.” (Id. at 2.)
FF3 The Examiner rejects claims 1-6 and 9-27 under 35 U.S.C. § 103(a) as
being obvious over the combination of Petersen and Davis (Ans. 3). As
Appellant does not argue the claims separately, we focus our analysis on
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Application 10/836,473

claim 1 and claims 2-6 and 9-272 stand or fall with that claim. 37 C.F.R. §
41.37(c)(1)(vii).
FF4 The Examiner finds that Petersen teaches all of the limitations of
claim 1 (Ans. 3-4), except for teaching “the first position reference member
and second position reference member being made of a material such that
post-operative changes in the relative positions of the first position reference
member and the second position reference member can be determined by
radiography or flouroscopy and the indicia having radio-opacity properties.”
(Ans. 4.)
FF5 Davis is cited for teaching “an implant system for fixation to a bone
and teaches the use of fluoroscopy to align bone segments.” (Ans. 4.)
FF6 The Examiner concludes:
[i]t would have been obvious to one skilled in the art at the time
the invention was made to construct the device of Petersen [ ]
with the first position reference member and second position
reference member being made of a material such that post-
operative changes in the relative positions of the first position
reference member and second position reference member can
be determined by radiography or fluoroscopy and the indicia
having different radio-opacity properties, in view of Davis, in
order to align the first position reference member and the
second position reference member and the indicia.

(Ans. 4.)

2 Appellant does separately address claim 27 in the argument section of the
Appeal Brief (App. Br. 8), but merely reiterates the arguments made with
respect to claim 1.
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FF7 The Examiner finds further that the orientation of the implant could
change post-operatively, such as by overtightening the nut during
implantation, changes due to loading by the patient’s weight, and other
complications such as infection (id. at 5). The Examiner finds moreover “it
is commonly known that practically every surgical procedure involves post-
operative evaluation.” (Id.)

PRINCIPLES OF LAW
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
The Supreme Court has recently emphasized that “the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007). “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 1739. Moreover, an
“[e]xpress suggestion to substitute one equivalent for another need not be
present to render such substitution obvious.” In re Fout, 675 F.2d 297, 301
(CCPA 1982).

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ANALYSIS
Appellant argues that Peterson provides no motivation to monitor
post-operative changes in the position of reference positions in the implant
of Petersen, and thus there is no motivation to include a reference position
that can be determined by radiography or fluoroscopy (App. Br. 7).
Specifically, Appellant argues that Petersen teaches that “the optimal
orientation of the components is noted on the trial prosthesis and stem, and
this orientation is translated to the permanent stem extension; ‘[a]fter the
final fit is obtained, the nut 96, for example, is tightened to make the
configuration permanent.’” (Id. (quoting Petersen col. 10, ll. 64-66
(alteration in original).) Thus, Appellant asserts, Peterson does not
“contemplate post-operative changes in the relative positions of the stem 84
and stem extension 90 or in the relative positions of elements 93 and 90.”
(Id.)
Appellant’s argument is not convincing. A human being is not a static
system. One of ordinary skill in the art would understand that an prosthetic
joint can move after implantation, for reasons set forth by the Examiner
(FF7), or because of a fall, injury, etc. Thus, it would have been obvious to
the ordinary artisan to include a reference position that can be determined by
radiography or fluoroscopy in order to monitor post-operative changes in the
position of reference positions in the implant of Petersen.

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CONCLUSIONS OF LAW
We thus conclude that the Appellant has not demonstrated that the
Examiner erred in finding motivation to monitor post-operative changes in
the position of reference positions in the implant of Petersen, and that the
Examiner has provided sufficient reasoning as to why the ordinary artisan
would include a reference position that can be determined by radiography or
fluoroscopy. We thus affirm the rejection of claims 1-6 and 9-27 over the
combination of Petersen and Davis.

TIME LIMITS
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

dm

PHILIP S. JOHNSON
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
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