Ex Parte Townley

Board of Patent Appeals and Interferences

Apr 21, 2011

10758455 (B.P.A.I. Apr. 21, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/758,455 01/15/2004 Charles O. Townley THUMB-604DIV 5634
7590 04/21/2011
Christopher John Rudy
209 Huron Ave., Ste. 8
Port Huron, MI 48060
EXAMINER
PELLEGRINO, BRIAN E
ART UNIT PAPER NUMBER
3738
MAIL DATE DELIVERY MODE
04/21/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHARLES O. TOWNLEY
____________

Appeal 2010-000094
Application 10/758,455
Technology Center 3700
____________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
LORA M. GREEN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 21-26, 28, 29, 31,
32, 34-37, and 40-42 (App. Br. 2). We have jurisdiction under 35 U.S.C.
§ 6(b).

STATEMENT OF THE CASE
The claims are directed to a basal thumb joint implant. Claims 21 and
40 are representative and are reproduced in the “Claims Appendix” of
Appellant’s Brief (App. Br. CA-1 - CA-3).
Appeal 2010-000094
Application 10/758,455

2
The rejections presented by the Examiner follow:
1. Claims 21, 22, 25, 26, 28, 29, 40, and 41 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over McLaughlin.
1

2. Claim 23 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of McLaughlin and Townley.
2

3. Claim 24 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of McLaughlin and Lane.
3

4. Claims 31, 32, and 34-36 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of McLaughlin and Abouaf.
4

5. Claim 37 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of McLaughlin and Wright.
5

6. Claim 42 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of McLaughlin and ASTM.
6

We reverse.

ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?

1
McLaughlin, US 5,507,818, issued Apr. 16, 1996.
2
Townley, US 2,934,065, issued Nov. 1, 1954.
3
Lane et al., US 5,674,297, issued Oct. 7, 1997.
4
Abouaf et al., US 5,871,547, issued Feb. 16, 1999.
5
Wright Medical Technology – Swanson Titanium Basal Thumb Implant.
6
ASTM F 1377-98 Standard Specification for Cobalt-28 Chromium-6
Molybdenum Powder for Coating of Orthopedic Implants (UNS-R30075)
699-700 (1998).
Appeal 2010-000094
Application 10/758,455

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FACTUAL FINDINGS
FF 1. The Examiner finds that McLaughlin teaches a modular joint
prosthesis that has, inter alia a head 12 (Ans. 3).
FF 2. McLaughlin teaches a multipolar joint endoprosthesis as illustrated
in McLaughlin’s FIG. 1, reproduced below:

“FIG. 1 is a frontal view of a joint endoprosthesis embodying . . .
[McLaughlin’s] invention functioning as a hip endoprosthesis. The figure
illustrates the orientation of the various components with the lower
extremity in the anatomic position (i.e. standing)” (McLaughlin, col. 2, ll. 9-
13).
FF 3. McLaughlin teaches that “proximal component 12 is firmly affixed
to the proximal bony landmark (e[.]g. pelvis) 14 by means of
methylmethacrylate bone cement, screws 20, bony ingrowth, etc. in such a
way that no motion occurs at the proximal component-bone interface 17”
(McLaughlin, col. 2, ll. 33-37).

Appeal 2010-000094
Application 10/758,455

4
ANALYSIS
Appellant’s claim 21 requires, inter alia, a head that includes “a
single, smooth, generally hemispherical medio-proximally directed,
articulating surface” (Claim 21). Claim 21 further requires, inter alia, that
the “articulating surface being continuous as to its sphericity and
uninterrupted up to the end of said articulating surface so that said
articulating surface defines a truncated ball of a shape that is from
substantially hemispherical to greater than substantially hemispherical” (id.).
Thus, Appellant’s claim 21 requires the head to have an articulating surface
that is, at least, substantially hemispherical. Claim 40, Appellant’s only
other independent claim, also requires, inter alia, the head to articulate about
an articular surface for mounting (Claim 40).
Notwithstanding the Examiner’s assertions to the contrary (FF 1),
Appellant contends that McLaughlin’s “proximal component 12 . . . is not a
head of a joint or joint prosthesis” (App. Br. 6). In this regard, Appellant
contends that McLaughlin teaches that “proximal component 12 is fixed
with bone screws 20, glue, or bony ingrowth . . . so that its hemispherical
surface does not articulate, in a socket or elsewhere” (id.). We agree (FF 2-
3).
Based on the foregoing, Appellant contends that McLaughlin fails to
suggest a head that includes an articulating surface as required by
Appellant’s claimed invention. We agree. We recognize the Examiner’s
assertion that McLaughlin’s “rounded or hemispherical head is fully capable
of articulation” (Ans. 7). McLaughlin makes clear that “proximal
component 12 is firmly affixed to the proximal bony landmark (e[.]g. pelvis)
14 by means of methylmethacrylate bone cement, screws 20, bony ingrowth,
Appeal 2010-000094
Application 10/758,455

5
etc. in such a way that no motion occurs at the proximal component-bone
interface 17” (FF ). The Examiner failed to identify a disclosure in
McLaughlin that suggests that McLaughlin’s prosthesis articulates about the
rounded or hemispherical head of element 12. Accordingly, we are not
persuaded by the Examiner’s unsupported conjecture.
The Examiner failed to articulate how McLaughlin would be modified
with any one of Townley, Lane, Abouaf, Wright, or ASTM in order to make
up for the foregoing deficiency in McLaughlin. At best, the Examiner
identifies a teaching in Abouaf wherein ceramic is utilized “for articulating
heads of joints” (Ans. 5). According to the Examiner, “[i]t would have been
obvious to one of ordinary skill in the art to utilize a ceramic head . . . with
the thumb implant of McLaughlin such that the prosthesis has reduced wear
at the joint or articulating area” (id.). As discussed above, McLaughlin’s
head does not articulate. Therefore, it is unclear how the Examiner proposes
to apply Abouaf to reduce wear about a region that does not exist in
McLaughlin’s device.

CONCLUSION OF LAW
The preponderance of evidence on this record fails to support a
conclusion of obviousness. Accordingly, we reverse the rejection of:
1. Claims 21, 22, 25, 26, 28, 29, 40, and 41 under 35 U.S.C.
§ 103(a) as unpatentable over McLaughlin.
2. Claim 23 under 35 U.S.C. § 103(a) as unpatentable over the combination
of McLaughlin and Townley.
3. Claim 24 under 35 U.S.C. § 103(a) as unpatentable over the combination
of McLaughlin and Lane.
Appeal 2010-000094
Application 10/758,455

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4. Claims 31, 32, and 34-36 under 35 U.S.C. § 103(a) as unpatentable over
the combination of McLaughlin and Abouaf.
5. Claim 37 under 35 U.S.C. § 103(a) as unpatentable over the combination
of McLaughlin and Wright.
6. Claim 42 under 35 U.S.C. § 103(a) as unpatentable over the combination
of McLaughlin and ASTM.

REVERSED

cdc