Ex Parte Townley

Board of Patent Appeals and Interferences

Mar 19, 2003

09408409 (B.P.A.I. Mar. 19, 2003)

1 Claims 2, 19, 20 and 23 were amended subsequent to the final rejection. The rejection of claim
23 under 35 U.S.C. § 112 set forth in the final rejection was not set forth in the examiner's answer. We
assume that this ground of rejection has been withdrawn by the examiner. See Ex parte Emm, 118 USPQ
180, 181 (Bd. App. 1957).
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CHARLES O. TOWNLEY
____________
Appeal No. 2002-2198
Application No. 09/408,409
____________
ON BRIEF
____________
Before FRANKFORT, McQUADE, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 2 to 14
and 19 to 25, which are all of the claims pending in this application.1
We REVERSE.
Appeal No. 2002-2198
Application No. 09/408,409
Page 2
BACKGROUND
The appellant's invention relates to a prosthetic joint implant having a tissue-
integratable rough surface and as a special example a porous coating on a surface
other than that which may be commonly provided for the intramedullary prosthetic-bone
interface (specification, p. 1). A copy of the claims under appeal is set forth in the
appendix to the appellant's brief.
Claims 2 to 14 and 19 to 25 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by U.S. Patent No. 5,702,483 to Kwong.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejection, we make reference to the answer
(Paper No. 22, mailed April 12, 2002) for the examiner's complete reasoning in support
of the rejection, and to the brief (Paper No. 21, filed March 15, 2002) and reply brief
(Paper No. 23, filed May 20, 2002) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the Kwong patent, and to the respective
positions articulated by the appellant and the examiner. As a consequence of our
Appeal No. 2002-2198
Application No. 09/408,409
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review, we will not sustain the rejection of claims 2 to 14 and 19 to 25 under 35 U.S.C.
§ 102(b) since all the claimed limitations are not found in Kwong.
Kwong's invention relates generally to a prosthetic hip joint assembly, and more
particularly to a prosthetic hip joint assembly which has been adapted to promote
the formation of a fibrous capsule of tissue which seals and encapsulates the prosthetic
hip joint. Referring to Figure 1A, there is shown an exemplary preferred embodiment of
a prosthetic hip joint assembly 10. The hip joint assembly 10 is a two component
assembly comprising an acetabular component 12 and a femoral component 54. The
acetabular component 12 comprises a shell 14 and a bearing insert 26 disposed within
the hollow of the shell 14. The femoral component 54 comprises a spherically shaped
head 56, a neck 58, an elongated stem 60 joined to the head 56 by the neck 58, and a
collar 62 around the neck 58 near its juncture with the stem 60.
The marginal end of the shell 14 defines a base region 20. The base region 20
of the shell 14 terminates at an annular rim 21 which defines a surface 22. Preferably,
the surface 22 of the annular rim 21 includes a groove 23 for containing a surface
treatment 24 as best shown in Figure 1B. Kwong teaches that the groove 23 can be
omitted depending on the type of surface treatment employed. In any event, a surface
treatment 24 is provided on or in the surface 22 of the annular rim 21 for the purpose of
Appeal No. 2002-2198
Application No. 09/408,409
Page 4
promoting the attachment of fibrous tissue to the annular rim 21 of the shell 14. As best
seen in Figure 1A, the collar 62 defines a surface 64. Preferably, the surface 64 of the
collar 62 is arranged in a manner similar to surface 22 of the acetabular component as
just described. Thus, the surface 64 of the collar 62 preferably includes a groove 66 for
containing a surface treatment 68 as shown in Figure 1C. This groove 66 can be
omitted, however, depending on the type of surface treatment employed as long as the
surface treatment 68 is provided on or in the surface 64 of the collar 62. The surface
treatment 68 is provided for the purpose of promoting the attachment of fibrous tissue
to the femoral component. Kwong describes in detail the surface treatments provided
on both the acetabular and femoral components at column 5, lines 6-53.
As shown in Figure 4, the implanted femoral 54 and acetabular 12 components
are situated such that the rim surface 22 of the acetabular cup is oriented in opposing
relation with the surface 64 of the collar 62 of the femoral component 54. The surface
treatments on the opposing surfaces promote the attachment of fibrous tissue to the
acetabular and femoral components. The fibrous tissue, when fully developed, extends
between the surface of the collar or base of the neck of the femoral component and the
surface of annular rim of the acetabular cup thereby forming a substantially sealed
capsule 82. Any wear debris 83 resulting from the rubbing together of the aforesaid
articulating surfaces is confined within the capsule 82 and away from the boundary of
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Application No. 09/408,409
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the bone preparation. Thus, wear debris is substantially prevented from migrating
toward the interfaces between the implant components and their associated bone
tissues. Accordingly, wear debris promoted osteolysis and its resulting trauma, pain
and potential for implant loosening is reduced. The capsule 82 further operates to
substantially prevent metal and cement debris 84, remaining at the interfaces between
the components and their associated bones, from migrating into the capsule and
toward the articulating surfaces of the components.
Kwong states (column 6, lines 35-50) that this is in marked contrast to the prior
art prosthetic hip joint assembly shown in Figure 5, which shows the formation of a
normal capsule 85 of fibrous tissue. Since the prior art acetabular and femoral
components lack the surface treatments of Kwong's invention, the fibrous tissue tends
to attach within the boundary of the bone preparation circumscribing the acetabular
component and the femoral component. Consequently, any wear debris 86 from the
bearing insert can easily migrate toward the preparation boundary into the interfaces
between the implants and adjacent bone producing osteolysis and eventual implant
loosening. Moreover, metal and cement debris 88, remaining at the interfaces between
the components and their associated bones, can easily migrate into the capsule and
toward the articulating surfaces of the components and cause premature bearing wear
and additional wear debris.
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Kwong teaches (column 6, lines 56-60) that "[m]oreover, the surface treatments
may be located anywhere on the acetabular and femoral components as long as the
fibrous capsule of tissue formed therebetween extends within the preparation boundary
between the implants and adjacent bone thereby forming a sealed enclosure."
The appellant argues (brief, pp. 3-8) that all the claims under appeal recite that
the prosthetic component include a non-bone-interfacing rough surface on the
peripheral side faces of the platform and that such is not taught by Kwong. We agree.
To anticipate a claim, a prior art reference must disclose every limitation of the
claimed invention, either explicitly or inherently. In re Schreiber, 128 F.3d 1473, 1477,
44 USPQ2d 1429, 1431 (Fed. Cir. 1997). As stated in In re Oelrich, 666 F.2d 578, 581,
212 USPQ 323, 326 (CCPA 1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214, 40
USPQ 665, 667 (CCPA 1939)) (internal citations omitted):
Inherency, however, may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is not
sufficient. If, however, the disclosure is sufficient to show that the natural result
flowing from the operation as taught would result in the performance of the
questioned function, it seems to be well settled that the disclosure should be
regarded as sufficient.
Thus, a prior art reference may anticipate when the claim limitation or limitations not
expressly found in that reference are nonetheless inherent in it. See In re Oelrich, 666
Appeal No. 2002-2198
Application No. 09/408,409
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F.2d at 581, 212 USPQ at 326; Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628,
630, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). Under the principles of inherency, if the
prior art necessarily functions in accordance with, or includes, the claimed limitations, it
anticipates. See In re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986).
However, inherency is not necessarily coterminous with the knowledge of those of
ordinary skill in the art. See Mehl/Biophile Int'l Corp. v. Milgraum, 192 F.3d 1362, 1365,
52 USPQ2d 1303, 1305-06 (Fed. Cir. 1999); Atlas Powder Co. v. Ireco Inc., 190 F.3d
1342, 1347, 51 USPQ2d 1943, 1946-47 (Fed. Cir. 1999).
Kwong does teach providing a non-bone-interfacing rough surface on the
top/obverse face of the collar/platform 62. Kwong does not specifically teach providing
a non-bone-interfacing rough surface on the peripheral side faces of the collar/platform
62 and such is not inherent in the teachings of Kwong. While Kwong does teach that
the surface treatments may be located anywhere on the acetabular and femoral
components as long as the fibrous capsule of tissue formed therebetween extends
within the preparation boundary between the implants and adjacent bone thereby
forming a sealed enclosure, Kwong does not teach that providing a non-bone-
interfacing rough surface on the peripheral side faces of the collar/platform would
permit a fibrous capsule of tissue to be formed between the acetabular and femoral
components with the fibrous capsule extending within the preparation boundary
Appeal No. 2002-2198
Application No. 09/408,409
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2 No rejection under 35 U.S.C. § 103 based on the teachings and suggestions of Kwong is before
us in this appeal. When obviousness is based on a single prior art reference there must be a showing of a
suggestion or motivation to modify the teachings of that reference to arrive at the claimed invention. See
In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000).
between the implants and adjacent bone thereby forming a sealed enclosure.2 Thus,
the claimed subject matter is not a necessary consequence of what was disclosed by
Kwong.
Since the claimed limitation that the prosthetic component include a non-bone-
interfacing rough surface on the peripheral side faces of the platform is not disclosed in
Kwong for the reasons set forth above, the decision of the examiner to reject claims 2
to 14 and 19 to 25 under 35 U.S.C. § 102(b) is reversed.
Appeal No. 2002-2198
Application No. 09/408,409
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CONCLUSION
To summarize, the decision of the examiner to reject claims 2 to 14 and 19 to 25
under 35 U.S.C. § 102(b) is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2002-2198
Application No. 09/408,409
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CHRISTOPHER JOHN RUDY
209 HURON AVENUE
PORT HURON, MI 48060-3860
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