Appeal No. 2003-1732 Page 2
Application No. 09/646,703
BACKGROUND
The appellants’ invention relates to a joint prosthesis (claims 1 and 3-7) and to a
method of forming a joint prosthesis (claims 8-10). An understanding of the invention
can be derived from a reading of exemplary claim 1, which appears in the appendix to
the Brief.
The single prior art reference of record applied by the examiner in the rejection
of the claims is:
Doerre et al. (Doerre) 4,058,856 Nov. 22, 19771
Claims 1 and 3-10 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Doerre.
The examiner's reasoning in support of the rejection can be found in the Answer
(Paper No. 16), and the appellants’ arguments in opposition thereto in the Brief (Paper
No. 15) and the Reply Brief.2
1On page 5 of the Answer, in responding to arguments raised by the appellants on page 9 of the
Brief regarding the lack of disclosure or suggestion in Doerre of applying a coating by means of plasma
spray, the examiner cited Taylor U.S. Patent No. 6,008,432 and Broemer et al. U.S. Patent No. 4,365,356
in support of her position that such a technique was well known in the art of prosthetic devices at the time
of the appellants’ invention. However, these references were not applied against the claims in the
statement of the rejection and therefore we have not considered them. See Section 706.02(k) of the
Manual Of Patent Examining Procedure.
2A reply brief was filed on May 30, 2003, along with a request for oral hearing (Paper No. 17).
While the request for oral hearing was entered in the file, there is no indication that the reply brief was
entered, considered, or acknowledged by the examiner. However, in the interest of judicial economy, we
have considered this document in the course of making our decision. Upon return of the file to the
examiner, the reply brief should formally be entered into the record.
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