Ex parte Swarts et al.

Board of Patent Appeals and Interferences

Jun 10, 1998

08388089 (B.P.A.I. Jun. 10, 1998)

Application for patent filed February 14, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DALE F. SWARTS, WILLIAM L. ROHR JR., STEVE T. LIN
THIRUMALAI DEVANATHAN, STEVEN L. KREBS, and PAUL D. SCHOENLE
_____________
Appeal No. 97-2783
Application 08/388,0891
______________
ON BRIEF
_______________
Before COHEN, FRANKFORT and NASE, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 4 through 13 and 15. As noted on page 1
of appellants' brief (Paper No. 8), claims 2, 3 and 14 "are not
presented for Appeal and their final rejection has been accepted
by the Appellant."
Appeal No. 97-2783
Application 08/388,089
Of the claims rejected as being anticipated by Frey '355, claims 12
through 11 and 13 were rejected in a new ground of rejection in the examiner's
answer, while claim 15 was finally rejected based on Frey '355. However, since
appellants have not chosen to pursue the appeal as to claims 2 and 3, we
consider this rejection only as to claims 1, 4 through 11, 13 and 15.
2
Appellants' invention relates to an acetabular cup used in
an orthopaedic procedure to replace a worn or damage acetabulum
(hip socket) of a patient. A copy of representative claims 1, 12
and 13 on appeal, as they appear in the Appendix to appellants'
brief, is attached to this decision.
The prior art references relied upon by the examiner in
rejecting the appealed claims are:
Morscher 4,769,041 Sep. 06, 1988
Frey et al. (Frey '355) 4,978,355 Dec. 18, 1990
Serbousek et al. (Serbousek) 5,336,265 Aug. 09, 1994
Claims 1, 4 through 11, 13 and 15 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Morscher. According to the
examiner, "Although Morscher does not explicitly state the tensile
strength of the interface, it would be inherent that the socket of
Morscher would meet the claimed limitations".
Claims 1 through 11, 13 and 15 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Frey '355.2

Appeal No. 97-2783
Application 08/388,089
3
Claim 12 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Morscher in view of Serbousek.
Rather than attempt to reiterate the examiner's full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and appellants
regarding the rejections, we make reference to the examiner's
answer (Paper No. 9, mailed September 25, 1996) and to the
supplemental answer (Paper No. 11, mailed December 19, 1996) for
the examiner's reasoning in support of the rejections, and to
appellant's brief (Paper No. 8, filed June 28, 1996) and reply
brief (Paper No. 10, filed November 27, 1996) for appellants'
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellants' specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellants and the examiner. As a consequence of
our review, we have made the determinations which follow.
Looking first at the examiner's rejection of claims 1, 4
through 11, 13 and 15 under § 102(b) based on Morscher, we are in
Appeal No. 97-2783
Application 08/388,089
4
agreement with appellants that Morscher fails to disclose, teach
or suggest the limitation of independent claims 1 and 15
regarding the penetration of the polymeric material of the cup
into the pores of the backing as required in these claims, so as
to result in "an interface strength between said polymeric cup
and said backing which is substantially equal to the tensile
strength of said polymeric material." Even the examiner
recognizes (answer, page 3) that Morscher does not disclose or
explicitly state the tensile strength of the interface between
the cup and the backing therein, or the depth of penetration of
the polymeric material of the cup into the pores of the backing.
The examiner's conclusion that this aspect of appellants' claimed
subject matter and the specific level of penetration set forth in
independent claim 13 (i.e., a distance of at least 0.05 inch)
"would be inherent" in Morscher is totally without support in the
reference and is entirely speculative on the examiner's part.
It is well settled that inherency may not be established by
probabilities or possibilities, but must instead be "the natural
result flowing from the operation as taught." See In re Oelrich,
666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981). In the
Appeal No. 97-2783
Application 08/388,089
5
present case, neither the Morscher reference nor the examiner
provides an adequate factual basis to establish that the natural
result flowing from following the teachings of that patent would
be an acetabular cup prosthesis like that claimed by appellants.
Accordingly, since all the limitations of appellants' claims 1, 4
through 11, 13 and 15 are not found in Morscher, either expressly
or under principles of inherency, it follows that the examiner's
rejection of those claims under 35 U.S.C. § 102(b) relying on
Morscher will not be sustained.
Turning next to the examiner's rejection of claims 1, 4
through 11, 13 and 15 under 35 U.S.C. § 102(b) as being
anticipated by Frey '355, we must agree with the examiner that
Frey '355 discloses and shows in Figure 3 an acetabular cup
prothesis comprising a polymeric cup (11) having a cavity (12)
for receiving a femoral head, and a porous backing (2, 6)
disposed about and attached to the polymeric cup. As is apparent
from drawing Figures 1 and 2, and from the description in the
patent, the porous backing of Frey '355 includes interstitial
pores which are (a) sized to receive a portion of the polymeric
Appeal No. 97-2783
Application 08/388,089
6
cup in a radially inner portion thereof (e.g., 2) and (b) adapted
for allowing ingrowth of bone in the radially outer portion
thereof (e.g., 6). At issue in this case with regard to
appellants' independent claim 13 is whether Frey '355 discloses
or teaches an arrangement wherein
said polymeric cup extends into said pores at said
radially inner portion a distance of at least .050 inch
and wherein the bone may extend into said pores at
said radially outer portion a distance of at least .035
inch
(claim 13, lines 7-9).
Given the disclosure in Frey '355 (col. 2, lines 50-52),
that the wires (3) of the inner portion (2) of the grid seen in
Figure 1 are each made from a metal wire having a diameter of
"between 0.2 and 1.5 millimeters," we must agree with the
examiner that Frey '355 clearly meets the requirement of
appellants' claim 13 concerning penetration of the polymeric
material of the cup into the pores of the inner portion of the
backing "a distance of at least .050 inch." Figure 1 of Frey
'355 shows the top surface of the polymeric material which
penetrates into the pores of the inner portion (2) of the backing
at (5). Thus, it is apparent that the polymeric material extends
Appeal No. 97-2783
Application 08/388,089
7
into the inner portion of the backing a distance almost equal to
two wire diameters (e.g., within the range of approximately 0.4
to 3 millimeters). Given that 1 inch equals 25.4 mm, 3mm trans-
lates to 0.118 inches and clearly demonstrates that the level of
penetration of the polymeric material of the cup into the pores
of the inner portion of the backing of Frey '355 falls within the
range set forth in appellants' claim 13 on appeal.
As for the recitation in claim 13 regarding the degree of
bone penetration into the outer portion (6) of the backing, we
note that the language of claim 13 is permissive, stating only
that the bone "may extend into said pores... a distance of at
least .035 inch" (emphasis added). Looking to the disclosure of
Frey '355 at column 2, lines 53 through column 3, line 8, and
particularly at the stated sizing of the wires of the layers (7a,
7b) of the outer portion (6) of the backing as indicated therein,
it is apparent that the pores of the outer portion of the backing
in Frey '355 clearly will allow bone penetration into the outer
portion (6) of the backing to a depth in excess of .035 inches.
Independent claim 1 on appeal sets forth that the portion of
the polymeric material of the cup that extends into the pores of
Appeal No. 97-2783
Application 08/388,089
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the backing is such as to result in an interface strength that is
"substantially equal to the tensile strength of said polymeric
material." Given appellants' disclosure at page 5, line 22,
through page 7, line 30, it is apparent that the language
"substantially equal to the tensile strength of said polymeric
material" is to be understood as encompassing a range of between
70 to 100 percent of the tensile strength of the polymeric
material, and to reach "a maximum value at a penetration depth of
about 0.050 inch, corresponding to the tensile strength of UHMWP
[ultra-high-molecular weight polyethylene]" (page 7, lines 26-
30). UHMWP is apparently a material that is conventionally used
in making these types of prosthetic acetabular cups. While Frey
'355 does not expressly mention interface strength, we note that
the examiner has taken the position that since the cup of Frey
'355 is made of the same polymeric material as appellants' cup
and, as discussed above, has a polymeric material penetration
depth into the backing pores of at least .050 inches, it follows
that the acetabular cup prosthesis of Frey '355 has an interface
strength between the polymeric cup and the backing which falls
within the claimed range. We agree with the examiner, and
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Application 08/388,089
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observe that appellants have provided no convincing line of
argument or evidence to the contrary.
Since in the present case, all the limitations of
appellants' independent claims 1 and 13 are found in Frey '355,
either expressly or under principles of inherency, the examiner's
rejection of these claims under 35 U.S.C. § 102(b) will be
sustained. Given appellants' statement in the "GROUPING OF
CLAIMS" on page 3 of the brief, that "Claims 1-11 and 15 should
be grouped together as Group I," it follows that claims 4 through
11 and 15 on appeal will fall with claim 1.
The last of the examiner's rejections for our review is that
of claim 12 under 35 U.S.C. § 103 as being unpatentable over the
combined teachings of Morscher and Serbousek. Like appellants',
we find no reasonable teaching, suggestion, or incentive in the
applied references which would have led one of ordinary skill in
the art to make a first and second acetabular cup prosthesis
wherein the first and second cups have a different outside
diameter at a rim thereof, and with
at least one of said backing thickness and said
penetration depth varying between said first acetabular
cup and said second acetabular cup, whereby each of
said first acetabular cup and said second acetabular
cup have substantially the same stiffness in a radial
direction,
Appeal No. 97-2783
Application 08/388,089
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as required in appellants' claim 12 on appeal. Based on
appellants' disclosure (specification, page 8), we understand
that it is appellants' intent to "equalize" the stiffness between
the two acetabular cups (10) and (42) in a radial direction, and
we understand the language of Claim 12 on appeal to mean that
such radial stiffness of the two recited cups will be equal, at
least to the extent that manufacturing tolerances will allow.
The examiner's position that Serbousek "teaches making
femoral implants of varying sizes with a stiffness equivalent to
bone to reduce stress despite the length or diameter" (answer,
page 4), is without clear support in the reference. As is
explained in column 3, lines 25-31, of Serbousek, the dimensions
of the groove (46) in the stem of the femoral implant
are chosen so as to obtain a predetermined stiffness
profile of the stem between the proximal and distal
ends. In either event, the stem has a magnitude of
stiffness no greater than that at which stress
shielding of the first bone has been clinically
identified by radiographic methods.
Moreover, at lines 44-48, of column 3 in Serbousek, it is noted
that by reducing the stiffness of the femoral implant, "more load
is borne by the surrounding bone," which, in turn, will reduce
bone mineral loss caused by stress shielding and promote the
Appeal No. 97-2783
Application 08/388,089
11
longevity of the hip arthroplasty. Thus, the intent of Serbousek
is actually to allow more stress loading of the bone and prevent
"stress shielding" caused by rigid femoral implants of the prior
art. Serbousek never mentions an acetabular cup prosthesis, or
the sizing and radial stiffness of such components.
Since we are of the view that the examiner's conclusion of
obviousness with regard to claim 12 on appeal is based on a
hindsight reconstruction using appellants' own disclosure as a
blueprint to arrive at the claimed subject matter, it follows
that we will not sustain the examiner's rejection of claim 12
under 35 U.S.C. § 103 based on Morscher and Serbousek.
In light of the foregoing, the examiner's rejection of
claims 1, 4 through 11, 13 and 15 under 35 U.S.C. § 102(b) as
being anticipated by Morscher has been reversed; the examiner's
rejection of claims 1, 4 through 11, 13 and 15 under 35 U.S.C.
§ 102(b) as being anticipated by Frey '355 has been affirmed; and
the rejection of claim 12 under 35 U.S.C. § 103 as being
unpatentable over Morscher in view of Serbousek has been
reversed.
The decision of the examiner is accordingly affirmed-in-
part.
Appeal No. 97-2783
Application 08/388,089
12
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-2783
Application 08/388,089
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Appeal No. 97-2783
Application 08/388,089
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Todd T. Dawson
Zimmer, Inc.
P.O. Box 708
Warsaw, IN 46581-0708