John M. Armacost et al.

Patent Trials and Appeals Board

Dec 27, 2019

14548370 - (D) (P.T.A.B. Dec. 27, 2019)

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.
14/548,370 11/20/2014 John M. Armacost 265280-232436 3483
23643 7590 12/27/2019
Barnes & Thornburg LLP (IN)
11 S. Meridian Street
Indianapolis, IN 46204
EXAMINER
BESLER, CHRISTOPHER JAMES
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
12/27/2019 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 JOHN M. ARMACOST, RYAN C. KEEFER, and
JEFFREY A. McANELLY
Appeal 2018-000010
Application 14/548,370
Technology Center 3700
Before ADRIENE LEPIANE HANLON, JAMES C. HOUSEL, and
SHELDON M. MCGEE, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge HOUSEL.
Opinion Dissenting filed by Administrative Patent Judge MCGEE.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to finally reject claims 1–6 under 35 U.S.C. § 103(a) as
unpatentable over Andersen (CA 2354065 A1, pub. Nov. 18, 1999) in view
of Dickerson (US 2012/0010720 A1, pub. Jan. 12, 2012) or Vargas (US

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as DePuy Synthes
Products, Inc. Appeal Brief (“Appeal Br.”) filed May 18, 2017, p. 2.
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Application 14/548,370

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2012/0125896 A1, pub. May 24, 2012). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.2
CLAIMED SUBJECT MATTER
The claims are directed to a method of making an orthopaedic
prostheses, particularly a dual modulus hip stem for use in hip replacement
surgery. Spec. Title and ¶ 2.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:
1. A method of manufacturing an orthopaedic prosthesis for a
patient, comprising:
producing a shell from a metallic foam material having a
first elastic modulus,
producing a stem core from a metallic material having a
second elastic modulus greater than the first elastic modulus,
the stem core including a neck configured to receive a femoral
head component and a stem body that extends from the neck
to a distal tip, and
securing the shell to the stem body such that (i) the shell is
positioned over a proximal segment of the stem body, and (ii)
a cover layer of the shell is positioned distal of the neck and
extends along a lateral surface of a distal segment of the stem
body, wherein the distal segment of the stem body includes
the distal tip.

2 Our Decision additionally refers to the Specification (“Spec.”) filed Nov.
20, 2014, the Examiner’s Answer (“Ans.”) dated July 27, 2017, and
Appellant’s Reply Brief (“Reply Br.”) filed Sept. 27, 2017. We note that
each of the pages of the Answer are labeled as “Page 1.” For purposes of our
Decision, we refer to the pages of the Answer consecutively with the
Grounds of Rejection appearing on page 2.

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OPINION
After review of the Examiner’s and Appellant’s opposing positions
and the appeal record before us, we determine that Appellant’s arguments
are insufficient to identify reversible error in the Examiner’s obviousness
rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly,
we affirm the stated rejection for substantially the fact findings and the
reasons set forth by the Examiner in the Examiner’s Answer and the Final
Office Action. We offer the following for emphasis only.
Claim 1
The Examiner found that Andersen discloses a method of
manufacturing an orthopaedic prostheses substantially as recited in claim 1,
except for forming layer 250 as a sleeve that is secured to stem core 220.3
Ans. 2–3. However, the Examiner found that it was known to form
biocompatible layers such as Andersen’s as a sleeve that is subsequently
secured to a stem core as taught by Dickerson and Vargas. Id. at 3. The
Examiner, therefore, concluded that it would have been obvious to have
formed Andersen’s layer 250 as a sleeve that is secured to stem core 220 in
light of the teachings of Dickerson and Vargas “as a matter of obvious
design choice.” Id.
The Examiner further found that Andersen’s shell layer 250 is a
metallic foam material because it may be a sintered porous titanium
material. Ans. 2, 5. The Examiner provided a definition for “foam”—“a

3 Although the Examiner refers to Andersen’s element 260 as the stem core,
Andersen refers to the stem core as distal portion 220 of the hip joint
prostheses, whereas Andersen refers to the distal segment as distal stem 260.
Accordingly, we refer to the stem core using numeral 220 here and
thereafter.
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material in a lightweight cellular form resulting from introduction of gas
bubbles during manufacturing” (id. at 5)—in support of the Examiner’s
interpretation of Andersen’s sintered porous metallic material as a metallic
foam material.
In addition, the Examiner found that Andersen’s shell layer 250
includes a shell body that is positioned over a proximal segment of stem core
220 and a cover layer positioned distal of neck 240 and extending along a
lateral surface of a distal segment of stem core 220, wherein the distal
segment includes the distal tip. Ans. 2–3. According to the Examiner,
Andersen’s proximal segment is the portion of stem core 220 extending from
the neck and covered by the shell body, whereas the distal segment is the
portion of stem core 220 extending from the distal tip, a portion of which is
covered along a lateral surface thereof by a cover layer extending from the
shell body. Id. at 6–8.
Appellant argues that the Examiner failed to sufficiently support the
finding that Andersen’s porous sintered metal material is necessarily or
inherently a metallic foam material. Appeal Br. 3–4. Appellant urges that the
Examiner’s inherency position “is effectively that all porous metallic
structures with a plurality of holes are metallic foams.” Reply Br. 2.
Appellant cites three porous metal structures, e.g., a wire mesh, a metal
grate, and a cheese grater, as examples that would not be understood to be
metallic foams. Id. Appellant contends that neither the Examiner’s definition
nor Andersen satisfy the standard for inherency. Appeal Br. 5. Appellant
also contends that it is not clear whether Andersen’s partially sintered porous
structure becomes part of Andersen’s implant. Id.
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Although Appellant correctly notes that the Examiner bears the initial
burden of establishing inherency, Appellant makes no attempt in this
argument to direct us to any reversible error in the Examiner’s finding that
the “porous sintered metal” described in Andersen is encompassed by the
claimed “metallic foam.” Indeed, Appellant does not advance any definition
of a “metallic foam” that excludes Anderson’s porous sintered metal, nor
direct us to any disclosure in the Specification demonstrating that the
claimed metallic foam is produced from a process that would have been
expected to yield a physically different product from Anderson’s porous
sintered metal.
With regard to the three examples of porous metallic structures that
Appellant provides as an indication that not all porous metallic structures are
metallic foams, we note that each of these examples is generally a two-
dimensional metallic grid with holes or openings therethrough. Appellant
does not contend that Andersen’s porous sintered metallic layer is equivalent
to such structures. Further, the ordinary artisan would generally understand
such porous sintered metallic layer to have a three dimensional network of
holes, just as expected for Appellant’s metallic foam material.
Moreover, as the Examiner found (Ans. 5), Andersen teaches that the
shell may be sintered by forming a layer of a mixture of metal particles,
binder, and a sacrificial binder, wherein it was known in the art that, during
sintering, the sacrificial binder evaporates, thereby resulting in the porous
structure. Thus, the sintered porous layer becomes a part of the prosthetic
structure. Accordingly, Appellant has not identified any error in the
Examiner’s treatment of Andersen’s porous sintered metal as covering the
recited metallic foam material of the claims.
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Appellant next argues that the Examiner failed to establish that the
combination of Andersen, Dickerson, and Vargas produces the claimed shell
and cover layer. Appeal Br. 6. In particular, Appellant contends that
Andersen fails to disclose manufacturing a prosthesis with a shell positioned
over a proximal segment of the stem body, and (ii) a cover layer of the shell
is positioned distal of the neck and extends along a lateral surface of a distal
segment of the stem body, wherein the distal segment of the stem body
includes the distal tip. Id. at 7. In this regard, Appellant contends that the
Examiner applies an unreasonably broad interpretation of “distal” and
“proximal” which does not comport with the understanding of a person of
ordinary skill in the art and is nonsensical. Id. at 8. Appellant urges that a
person of ordinary skill in the art would understand that Andersen’s tissue
fixation surface (shell) 250 is positioned on only a proximal segment of
Andersen’s stem. Id. Appellant further contends that neither Dickerson nor
Vargas remedy this deficiency in Andersen. Id. at 8–11.
Appellant’s argument depends on a claim interpretation that requires
the cover layer extend over the distal segment so as to include (and cover)
the distal tip. However, claim 1 merely requires that the distal segment
includes the distal tip and that the cover layer “is positioned distal of the
neck and extends along a lateral surface of the distal segment.” Claim 1 does
not require that the cover layer extend any particular amount or length of the
distal segment nor that the cover layer extends to the distal tip. Nor does
claim 1 define how far the proximal segment extends from the neck or how
far the distal segment extends from the distal tip.
Moreover, although Appellant argues that the Examiner applied an
unreasonably broad interpretation to the terms “distal” and “proximal” in the
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claims, Appellant makes no attempt to provide any meaning for these terms
that clearly delineate where the proximal segment ends and the distal
segment begins. Indeed, a skilled artisan would understand that the term
“proximal,” as used in the claims and Specification, refers to a portion of the
stem extending from the neck toward the distal tip, whereas the term “distal”
refers to a portion of the stem that is spaced from the neck and includes the
distal tip. However, no clear delineation is established for the proximal and
distal segments except that the shell is positioned over the proximal segment
and the cover layer is positioned distal of the neck, i.e., spaced from the
neck, extending along a lateral surface of the distal segment. Thus, the neck
and shell define the position of the proximal segment, and the neck, distal
tip, and cover layer define the position of the distal segment.
Applying this interpretation of claim 1 to Andersen, as the Examiner
found (Ans. 7, annotated figure), Andersen’s proximal segment extends
from the neck of the prosthesis to the beginning of the cover layer, whereas
the distal segment extends from the distal tip to the point where the cover
layer joins the shell body. Thus, contrary to Appellant’s argument,
Andersen’s prosthesis has a shell positioned over a proximal segment of the
stem body and a cover layer distal of the neck and extending along a lateral
surface of the distal segment of the stem body. Accordingly, Appellant has
not identified any error in the Examiner’s interpretation of claim 1 and
finding that Andersen teaches a prosthesis having a shell and cover layer
positioned as required in the claim. Because we find no error in the
Examiner’s interpretation of either claim 1 or Andersen, we need not address
the Examiner’s alternative position that it would have been obvious to
modify the shape or configuration of Andersen’s prosthesis.
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We note that, in the view of the dissent, the Examiner fails to provide
sufficient evidence or technical rationale supporting the finding that
Andersen’s “porous, sintered metal” is, in fact, a “metallic foam material,”
and as such improperly shifts the burden to Appellant. This view not only
advances arguments Appellant has not made, but also applies an incorrect
approach to our appellate review procedure. While the Examiner bears the
initial burden of presenting a prima facie case of obviousness during
examination (In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)), on
appeal, the initial burden is on Appellant to identify reversible error.
Shinseki v. Sanders, 129 S.Ct. 1696, 1706 (2009) (citations omitted)
(“Lower court cases make clear that courts have correlated review of
ordinary administrative proceedings to appellate review of civil cases in this
respect. . . . [T]he party seeking reversal normally must explain why the
erroneous ruling caused harm.”) Appellant’s burden on appeal is not met
simply by expressing disagreement with an Examiner’s finding of fact, but
by persuasively pointing to where the error is in that finding. See In re
Lovin, 652 F.3d 1349, 1356–57 (Fed. Cir. 2011).
The Examiner’s finding that Andersen teaches a porous, sintered
metal material is undisputed. Further, although the dissent acknowledges
that the Examiner provided a definition for the term “foam,” the dissent
argues, unlike Appellant, that the Examiner fails to adequately explain––or
provide evidence to support––how that extrinsic definition applies to the
specifics of this case. However, the Examiner found, and Appellant did not
dispute, that one of ordinary skill in the art would have understood that
Andersen’s sacrificial filler would evaporate during sintering, presumably
creating air bubbles or air pockets that form the porous, sintered structure.
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The dissent emphasizes that the Office may show that two products
are identical or substantially the same by showing that they are produced by
identical or substantially identical processes. We note again that Appellant
did not make this argument, nor did Appellant disclose any process for
making the recited metallic foam. We reiterate that Appellant did not even
attempt to structurally define or explain how a “metallic foam” is
structurally distinct from Andersen’s porous, sintered metallic material.
Accordingly, a preponderance of the evidence supports the
Examiner’s conclusion of obviousness of claim 1. Appellant does not argue
claims 2 and 3 separately from claim 1. Given this record, therefore, we
sustain the Examiner’s obviousness rejection of claims 1–3.
Claims 4–6
Claim 4 depends from claim 1 and further requires that the step of
securing the shell to the core includes sintering.
Claim 5 depends from claim 1 and further requires that the shell is
produced by compressing the metallic foam material around the stem core,
and machining the metallic foam material to form the shell.
Claim 6 depends from claim 1 and further requires that the shell is
produced by compressing the metallic foam material to form the outer
geometry of the shell, and machining a channel in the metallic foam material
sized to receive the stem core.
For each of these claims, the Examiner found that the recited
manufacturing steps were old and well known in the art and that the skilled
artisan would have found it obvious to use such a process to produce the
shell and secure it to the stem body. Ans. 4–5. The Examiner stated that the
“Examiner took Official Notice that the limitations of claims 4–6 were
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known in the art.” Id. at 9. In addition, the Examiner found that Andersen
teaches sintering the metallic foam material to the stem core. Id. at 4.
Appellant argues because Andersen does not teach a “metallic foam
material,” Andersen cannot teach sintering a metallic foam material to the
stem core as recited in claim 4, or compressing and machining a metallic
foam material as recited in claims 5 and 6. Appeal Br. 14; Reply Br. 6.
However, as discussed above, we are not persuaded that the Examiner erred
in finding that Andersen teaches a metallic foam material. We, therefore, are
not persuaded of reversible error in the Examiner’s finding that Andersen
teaches sintering the metallic foam material to the stem core, or that it would
have been obvious to compress and machine a metallic foam material to
produce Andersen’s shell given that such steps were old and well known in
the art.
As to claims 5 and 6, Appellant further argues that the Examiner fails
to cite a single reference teaching the compressing and machining steps of
these claims. Appeal Br. 14, 15. However, Appellant failed to challenge the
Examiner’s Official Notice that such compressing and machining steps were
old and well known in the art. It is well settled that there are situations in
which it is permissible to “take notice of facts beyond the record which,
while not generally notorious, are capable of such instant and unquestionable
demonstration as to defy dispute.” In re Ahlert, 424 F.2d 1088, 1091–92
(CCPA 1970). According to MPEP § 2144.03(C) (8th ed., Rev. 9, Aug.
2012), “[t]o adequately traverse such a finding, an applicant must
specifically point out the supposed errors in the examiner’s action, which
would include stating why the noticed fact is not considered to be common
knowledge or well-known in the art.” To the contrary, it appears that
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Appellant concedes the Examiner’s Official Notice. See Reply Br. 6–7
(“regardless of whether it was generally known to compress and machine
metallic foam”). Therefore, we are not persuaded of reversible error in the
Examiner’s obviousness conclusion as to claims 5 and 6.
Accordingly, we sustain the Examiner’s obviousness rejection of
claims 4–6.
CONCLUSION
Upon consideration of the record, and for the reasons given above and
in the Examiner’s Answer, the decision of the Examiner rejecting claims 1–6
under 35 U.S.C. § 103(a) as unpatentable over Andersen in view of
Dickerson or Vargas is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
References Affirmed Reversed
1–6 103(a) Andersen,
Dickerson,
Vargas
1–6

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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MCGEE, Administrative Patent Judge, dissenting.

I respectfully dissent from my colleagues’ affirmance of the
Examiner’s obviousness rejection.
The propriety of shifting the burden of proof to a patent applicant is
governed by the circumstances of a given case. Relevant to this appeal, the
Examiner finds that Andersen discloses a “metallic foam material” because
Andersen teaches a “porous, sintered metal.”4 I agree with Appellant,
however, that the Examiner fails to provide sufficient evidence or technical
rationale supporting the finding that Andersen’s “porous, sintered metal” is,
in fact, a “metallic foam material” as recited in sole independent claim 1.
Appeal Br. 4–5; Reply Br. 2–3.
Although the Examiner provides a dictionary definition of a “foam,”
the Examiner fails to adequately explain––or provide evidence to support––
how that extrinsic definition applies to the specifics of this case. Ans. 5. For
example, the Examiner states that a “foam” is defined as “a material in
lightweight cellular form resulting from introduction of gas bubbles during
manufacturing.” Id. The Examiner, however, neither asserts, nor establishes
with evidence, that gas bubbles are actually introduced during the
manufacture of Andersen’s sintered structures. Rather, the Examiner at best
implies that gas bubbles would be present in Andersen’s process due to
evaporation of a sacrificial binder.5 The Examiner furthermore fails to

4 See Notice of Panel Decision from Pre-Appeal Brief Review dated April
18, 2017, p. 2.
5 The Examiner fails to provide evidence to support the assertion that “[i]t is
known in the art that the ‘sacrificial binder’ evaporates during the sintering
process and escapes from the structure” which results in a porous structure.
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address, much less explain, how Andersen’s sintered structure meets the
“material in a lightweight cellular form” portion of the proffered definition.
When “the claimed and prior art products are identical or substantially
identical, or are produced by identical or substantially identical processes,
the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product.”
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (emphasis added). In my
view, the Examiner has not shown that is the case here. Without a further
developed record on this point, I do not agree with my colleagues that
Appellant has the burden of proving the differences between the claimed and
prior art materials. Maj. Op. 5, 9.
As I see it, the only burden Appellant has with respect to this
particular finding is to identify it as reversible error on the part of the
Examiner, which––contrary to the majority’s view––Appellant repeatedly
satisfied. Appeal Br. 4–5 (asserting three times how the Examiner failed to
put forth sufficient evidence or analysis to support this finding); Reply Br.
2–3 (asserting three times how sufficient evidence and analysis is lacking);
see In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“it has long been the
Board’s practice to require an applicant to identify the alleged error in the
examiner’s rejections”).

Ans. 5. Although Appellant does not directly contest the Examiner’s
assertion regarding evaporation, the Examiner does not establish that such
evaporation of a sacrificial filler or binder necessarily generates “gas
bubbles.” Moreover, Appellant points out, again, that the Examiner’s
resulting conclusion––that porous sintered metals are inherently metallic
foam––is unsupported by sufficient evidence or analysis. Reply Br. 2.
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I do not view Appellant’s repeated arguments regarding the
Examiner’s lack of evidence and analysis as “simply . . . expressing
disagreement with an Examiner’s finding of fact.” Maj. Op. 8. Rather,
Appellant’s multiple assertions on this point are, to me, more than sufficient
to identify the alleged error as harmful and, as such, ripe for our review.
Appeal Br. 4–5; Reply Br. 2–3. Indeed, in the Shinseki case the majority
cites, the Supreme Court explained that “showing an error was harmful” is
not “a particularly onerous requirement.” Shinseki, 129 S.Ct. at 1706. “Often
the circumstances of the case will make clear . . . that the ruling, if
erroneous, was harmful and nothing further need be said.” Id. “[I]f not, then
the party seeking reversal normally must explain why the erroneous ruling
caused harm.” Id.
Here, by pointing out the lack of evidence and analysis that it is
incumbent on the Examiner to provide in the first instance, Appellant has
satisfied its obligation to identify reversible error in the rejection, and need
not provide the additional information the majority faults it for not
producing. Maj. Op. 5, 9.
Therefore, under the circumstances of this particular case, I disagree
with my colleagues that more is legally required of Appellant, and would
reverse the rejection as lacking evidentiary support. See In re Warner, 379
F.2d 1011, 1017 (CCPA 1967) (explaining that “[t]he Patent Office has the
initial duty of supplying the factual basis for its rejection” and “[w]here the
legal conclusion [of obviousness] is not supported by facts it cannot stand”).
For these reasons, I dissent, with respect.