Ex Parte Manuel et al

Patent Trials and Appeals Board

Jul 9, 2019

15381163 - (D) (P.T.A.B. Jul. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/381,163 12/16/2016
154717 7590 07/11/2019
THOMASIHORSTEMEYER, LLP - UF
University of Florida (UF)
3200 WINDY HILL ROAD, SE
SUITE 1600E
ATLANTA, GA 30339
FIRST NAMED INVENTOR
Michele Viola Manuel
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.
UF#-16444 (222109-1231) 4257
EXAMINER
BROWN, COURTNEY A
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
07/11/2019 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):
uspatents@thomashorstemeyer.com
ozzie. liggins@thomashors temeyer .com
docketing@thomashorstemeyer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHELE VIOLA MANUEL, IDA E. SVENSSON BERGLUND,
BENJAMIN G. KESELOWSKY, MALISA SARNTINORANONT,
HARPREET SINGH BRAR, and HUNTER B. HENDERSON 1
Appeal2018-008210
Application 15/3 81,163
Technology Center 1600
Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party-in-interest as University of Florida
Research Foundation, Inc. App. Br. 2.
Appeal2018-008210
Application 15/3 81, 163
SUMMARY
Appellants file this appeal under 35 U.S.C. § I34(a) from the
Examiner's Final Rejection of claims 1-10 and 12-16 as unpatentable under
35 U.S.C. § I03(a) over Yang et al. (US 2010/0075162 Al, March 25, 2010)
("Yang"), Rathenow et al. (US 2005/0079200 Al, April 14, 2005)
("Rathenow"), and Boyden et al. (US 2010/0262239 Al, October 14, 2010)
("Boyden"). 2
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to structures including an alloy of
calcium, strontium, and magnesium. See Spec. Abstr.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A structure comprising an alloy having:
App. Br. 10.
about 0.3 to 2 weight percent calcium;
about 0.3 to 2 weight percent strontium; and
about 96 to 99 .4 weight percent magnesium.
2 Claim 11 was inadvertently omitted during prosecution and therefore only
claims 1-10 and 12-16 are pending. App. Br. 2.
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Application 15/3 81, 163
ISSUES AND ANALYSIS
We agree with, and expressly adopt, the Examiner's findings,
reasoning, and conclusion that the claims are obvious over the prior art. We
address below the arguments raised by Appellants.
Issue 1
Appellants argue that it would not have been obvious to one of
ordinary skill in the art to select the specific metal combination and ranges
of molar ratios to arrive at the claimed alloys. See App. Br. 4.
Analysis
The Examiner finds Yang teaches "an implant consisting of a
biodegradable magnesium-based alloy .... " Final Act. 6 ( citing Yang,
Abstr. ). The Examiner finds Yang teaches the "alloy is represented by
Formula MgaCabXc wherein X comprises one or more selected from the
group consisting of zirconium (Zr), molybdenum (Mo), niobium (Nb),
tantalum (Ta), titanium (Ti), strontium (Sr), chromium (Cr), manganese
(Mn), zinc (Zn), silicon (Si), phosphorus (P), nickel (Ni) and iron (Fe) .... "
Id. ( citing Yang ,r 10) ( emphasis in original). The Examiner finds that Yang
teaches the molar ratio of each component, a, b, and c, "satisfy[y] the
following conditions: a.) is 50-100% and band care between 0-40% .... "
Id. The Examiner concludes that: "it would have been obvious to one of
ordinary skill in the art at the time of the invention to select any of the
disclosed X elements as well as any point within the ranges taught by Yang"
with a reasonable expectation of success in producing the claimed invention.
Id. at 7.
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Appellants argue that: "[t]he fact that the claimed subgenus is
encompassed by the broad genus of Yang is not sufficient by itself to
establish a prima facie case of obviousness." App. Br. 5 ( citing In re Baird,
16 F.3d 380,382 (Fed. Cir. 1994) (emphasis in original). Appellants argue
the Examiner applies an "obvious to try" standard, without the requisite
showing that: (1) there is a design need or market pressure to solve a
particular problem; (2) there are a finite number of foreseeable solutions to
the problem; and (3) the result obtained is reasonably predictable. Id. ( citing
KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007).
With respect to the cited prior art, Appellants argue that: "Yang
provides virtually no guidance regarding the selection of X or the
[percentage] of X. Instead, Yang ... teaches that X is an impurity and only
tested these impurities to determine if less expensive magnesium could be
used." App. Br. 7 (citing Yang ,r 49). With respect to strontium, Appellants
argue: "Yang did not test strontium (Sr) as the trace element in any of the
examples, but instead tested only nickel (Ni) and iron (Fe)." Reply Br. 3.
Appellants argue that, in applying the choice of metal and molar ratios as
variables: "Yang's formula covers over a billion combinations of alloys and
their respective molar ratios." See id. at 2 ( emphasis in original).
Accordingly, Appellants argue that: "the claimed compounds are not prima
facie obvious." Id. at 2-3 ( emphasis in original).
We are not persuaded. With respect to Appellants' argument that
Yang teaches a specific metal X in the alloy, Yang teaches a: "biodegradable
magnesium-based alloy represented by Formula MgCaX," wherein X: "is
added on manufacturing an implant in the related art." Yang ,r 10. Yang
teaches X may be one of 13 metals, including strontium. Id. Contrary to
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Application 15/3 81, 163
Appellants' argument, Yang provides specific guidance that the choice of
alloy is one that is suitable for a biodegradable implant. That Yang teaches
multiple alloy combinations does not render any specific alloy combination
less obvious, particularly because the claimed alloy is used for the identical
purpose taught by the prior art. See Merck & Co., Inc. v. Biocraft
Laboratories, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that: "the
prior art instructs the artisan that any of the 1200 disclosed combinations
will produce a formulation with the desired properties"). Moreover, the fact
that the prior art did not specifically test strontium in the examples "is not
controlling since all disclosures of the prior art, including unpreferred
embodiments, must be considered." Id. (quoting In re Lamberti, 545 F.2d
747, 750 (C.C.P.A. 1976)). Therefore, we are not persuaded that the
Examiner erred in finding Yang teaches an MgCaSr alloy.
With respect to Appellants' argument regarding the molar ratios of
each component of the alloy, our reviewing court has stated that "[a] prima
facie case of obviousness typically exists when the ranges of a claimed
composition overlap the ranges disclosed in the prior art." In re Peterson,
315 F.3d 1325, 1329 (Fed. Cir. 2003). Moreover, if "the claimed ranges are
completely encompassed by the prior art, the conclusion is even more
compelling than in cases of mere overlap." Id. at 1330. Yang teaches a
biodegradable alloy for use in a surgical implant with molar ratios of
magnesium (50-100%), calcium (0-40%), and strontium (0-40%) that
encompass the ranges recited in the claims. Therefore, we agree with the
Examiner that claim 1 is prima facie obvious over the prior art.
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Issue 2
Appellants argue that the claimed alloys have superior and unexpected
properties. Reply Br. 3.
Analysis
Appellants argue that Examples 1-9 demonstrate "that ternary Mg-I
%Ca-0.5%Sr alloy had a significantly improved degradation rate over that of
the binary Mg-I %Ca alloy." Reply Br. 3--4 (citing Spec. p. 17, 11. 20-23).
Appellants also argue that the Examples demonstrate "that adding 0.5 wt%
strontium improves compressive strength compared to binary Mg-Ca alloys
with similar calcium content." Id. ( citing Spec. p. 18, 11. 28-31 ).
We are not persuaded. "When unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected
compared with the closest prior art." In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991) (emphasis added). Appellants have not compared
their claimed alloys to the prior art, and particularly to those alloys taught by
Yang, to demonstrate that the superior properties argued by Appellants are,
indeed, unexpected. Furthermore, unexpected results must be
"commensurate in scope with the degree of protection sought by the claimed
subject matter." In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).
Results for an alloy with 0.5% Sr is not commensurate to the recitation in
claim 1 of "about 0.3 to 2 weight percent strontium."
Just as importantly, Appellants have not shown that the properties that
Appellants claim are "unexpected" are not inherently present in the alloys of
Yang. Appellants argue merely that certain alloys within the claimed range
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have different properties compared to others outside of that range.
However:
[ w ]here, as here, 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 .... Whether the rejection is based on 'inherency' under
35 U.S.C. § 102, on 'prima facie obviousness' under 35 U.S.C.
§ 103, jointly or alternatively, the burden of proof is the same,
and its fairness is evidenced by the PTO' s inability to
manufacture products or to obtain and compare prior art
products.
In re Best, 562 F.2d 1252, 1255 (C.C.P.A. 1977). Appellants have not
demonstrated that the alloys taught by Yang do not possess these allegedly
unexpected properties and Appellants cannot, therefore, overcome the
Examiner's primafacie conclusion of obviousness.
Finally, Appellants argue that the claimed alloys possess "a
significantly improved degradation rate" and an "improved compressive
strength," compared to related alloys outside the claimed range. However,
unexpected results that are probative of nonobviousness are those that are:
"different in kind and not merely in degree from the results of the prior art."
Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir.
2004) ( citation omitted). Appellants have adduced no evidence to persuade
us that the differences between the properties of the claimed alloys and those
of the alloys taught by Yang are differences in kind, rather than merely of
degree.
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We are consequently not persuaded that the Examiner erred in
concluding the claims are obvious over Yang, Rathenow, and Boyden, and
we affirm the Examiner's rejection of the claims.
DECISION
The Examiner's rejection of claims 1-10 and 12-16 under 35 U.S.C.
§ 103(a) is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § l .136(a)(l)(IV).
AFFIRMED
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