Ex Parte Wright et al

Patent Trial and Appeal Board

Apr 13, 2016

12981953 (P.T.A.B. Apr. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/981,953 12/30/2010 Abraham P. Wright
23643 7590 04/15/2016
Barnes & Thornburg LLP (IN)
11 S. Meridian Street
Indianapolis, IN 46204
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.
265280-210152 7505
EXAMINER
SHARMA, YASHITA
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
04/15/2016 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):
INDocket@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ABRAHAM P. WRIGHT, WILLIAM P. BARRETT,
and DAVID S. BARRETT
Appeal2014-002936
Application 12/981,953
Technology Center 3700
Before CHARLES N. GREENHUT, LYNNE H. BROWNE, and PAUL J.
KORNICZKY, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Abraham P. Wright et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner's decision rejecting claims 1, 2, 4, and 51 under 35
U.S.C. § 103(a) as unpatentable over Supinski (US 2003/0088315 Al, pub.
May 8, 2003) and Mendes (US 5,580,353, iss. Dec. 3, 1996). We have
jurisdiction under 35 U.S.C. § 6(b).
1 Although, the statement of the rejection in the Final Action states that
claims 1-3, and 4 are rejected, claim 3 is canceled and claims 1, 2, 4, and 5
are addressed in the rejection. See Final Act. 3-8. Further, in the Answer
claims 1, 2, 4, and 5 are identified as the rejected claims. Accordingly, we
understand claims 1, 2, 4, and 5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Supinski and Mendes.
Appeal2014-002936
Application 12/981,953
We REVERSE and enter NEW GROUNDS OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
CLAIMED SUBJECT MATTER
The claims are directed to a knee prosthesis having commonly-sized
patella components with varying thicknesses and peak surface diameters.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. An implantable orthopaedic knee prosthesis assembly,
compnsmg:
a first dome patella component having (i) a posterior
bearing surface configured to articulate with the femoral
condyles of an implantable femoral component, and (ii) an
anterior surface having a number of pegs extending outwardly
therefrom, wherein, when viewed in a coronal cross sectional
view, (a) the posterior bearing surface of the first dome patella
component has a curved peak surface that includes a posterior-
most point of the first dome patella component, and (b) a first
imaginary line segment extends orthogonally from the anterior
surface of the first dome patella component to the posterior-most
point of the first dome patella component, and
a second dome patella component having (i) a posterior
bearing surface configured to articulate with the femoral
condyles of an implantable femoral component, (ii) an anterior
surface having a number of pegs extending outwardly therefrom,
and (iii) a medial/lateral width that is the same as the
medial/lateral width of the first dome patella component,
wherein, when viewed in a coronal cross sectional view, (a) the
posterior bearing surface of the second dome patella component
has a curved peak surface that includes a posterior-most point of
the second dome patella component, and (b) a second imaginary
line segment extends orthogonally from the anterior surface of
the second dome patella component to the posterior-most point
of the second dome patella component, the second imaginary line
segment being longer than the first imaginary line segment,
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Application 12/981,953
wherein the curved peak surface of both the first and
second dome patella components comprises a hemispherically-
shaped surface, and
the posterior bearing surface of both the first and second
dome patella components further has a conically-shaped surface
that extends anteriorly away from the hemispherically-shaped
surface and transitions into a rounded edge surface that extends
anteriorly away from the conically-shaped surface in the
direction toward the anterior surface.
DISCUSSION
NEW GROUNDS OF REJECTION
Written Description
The following is a quotation of the first paragraph of pre-AIA 35
U.S.C. § 112:
The specification shall contain a written description of the
invention, and of the manner and process of making and using it,
in such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains, or with which it is
most nearly connected, to make and use the same and shall set
forth the best mode contemplated by the inventor of carrying out
his invention.
Claims 1, 2, 4, and 5 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
The claims contain subject matter which was not described in the
Specification in such a way as to reasonably convey to one skilled in the
relevant art that the inventors, at the time the application was filed, had
possession of the claimed invention.
The Specification describes the domes patella component 10 as
having a "curved peak surface 44 [that] is embodied as a hemispherically-
shaped surface." Spec. i-f 39. The Specification further states that:
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Application 12/981,953
The hemispherically-shaped peak surface 44 is geometrically
decoupled from the remainder of the posterior bearing surface
20. In particular, the hemispherically-shaped peak surface 44
does not extend across the entire posterior bearing surface, but
rather it extends anteriorly away from the posterior-most point
3 8 in the general direction toward the anterior surface 40 and
transitions to a substantially conically-shaped surface 46.
Id. Surface 44 is shown in Figures 1, 2, 4, 8, and 9.
A hemisphere is "half of a spherical or roughly spherical body."
Merriam-Webster.com, http://www.merriam-webster.com/
dictionary/hemisphere (last accessed April 12, 2016). Thus, an object is
hemispherically-shaped when it is shaped like half of a sphere. The
Specification does not describe such a surface. Rather, the Specification
describes a surface shaped like a smaller section of a sphere that transitions
to a cone shape. See Spec. 12 i-f 39. Further, the Figures do not show a
hemispherically-shaped surface. Thus, the Specification is misdescriptive
and does not show that the inventors had possession of the invention as
claimed at the time when the instant application was filed.
Indefiniteness
The following is a quotation of pre-AIA 35 U.S.C. § 112, second
paragraph: "The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject matter which the
applicant regards as his invention."
Where applicant acts as his or her own lexicographer to specifically
define a term of a claim contrary to its ordinary meaning, the written
description must clearly redefine the claim term and set forth the uncommon
definition so as to put one reasonably skilled in the art on notice that the
applicant intended to so redefine that claim term. Process Control Corp. v.
HydReclaim Corp., 190 F.3d 1350, 1357, (Fed. Cir. 1999). In order to
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Application 12/981,953
construe the term "hemispherically-shaped" in claims 1 and 2 so as not to
exclude the preferred embodiment, we must conclude the phrase is used by
the claim to mean having the shape of a section of a sphere. However, the
accepted meaning of the phrase is having the shape of half of a sphere, as
discussed supra. The term is indefinite because the Specification does not
clearly redefine the term.
Claims 4 and 5 depend from claim 1 and, likewise, are indefinite.
Obviousness
Having determined that claims 1, 2, 4, and 5 are indefinite, we cannot
sustain the rejections of these claims under 35 U.S.C. § 103(a) because to do
so would require speculation as to the scope of the claims, particularly with
respect to the limitation at issue. See In re Steele, 305 F.2d 859, 862-63
(CCP A 1962) (Holding that the Board erred in affirming a rejection of
indefinite claims under 35 U.S.C. § 103(a)).
DECISION
The Examiner's rejection of claims 1, 2, 4, and 5 is REVERSED.
Claims 1, 2, 4, and 5 are rejected under 35 U.S.C. § 112, first and
second paragraphs.
37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
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the claims so rejected, or both, and have the matter reconsidered
by the Examiner, in which event the proceeding will be remanded
to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
REVERSED; 37 C.F.R. § 41.50(b)
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