Ex Parte Mathisen et al

Patent Trial and Appeal Board

Oct 8, 2013

11019534 (P.T.A.B. Oct. 8, 2013)

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.
11/019,534 12/23/2004 Torbjorn Mathisen 097085-0102 7867
22428 7590 10/08/2013
FOLEY AND LARDNER LLP
SUITE 500
3000 K STREET NW
WASHINGTON, DC 20007
EXAMINER
YABUT, DIANE D
ART UNIT PAPER NUMBER
3734
MAIL DATE DELIVERY MODE
10/08/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TORBJORN MATHISEN
and HENRIK MAGNUSSON

___________

Appeal 2011-008878
Application 11/019,534
Technology Center 3700
____________

Before TONI R. SCHEINER, ULRIKE W. JENKS, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.

BRADEN, Administrative Patent Judge

DECISION ON APPEAL

Appeal 2011-008878
Application 11/019,534

2
This is an appeal
1
under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 2, and 4-23.
2
An oral argument was held on May 30, 2013. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ invention relates to a resorbable polymeric mesh implant
with at least two types of material. One material degrades after the other
material. Spec. [0001]. Additionally, each material may have a different
modulus of elasticity. Spec. [0024]-[0025]. Therefore, the modulus of
elasticity of the implant changes over time as one material degrades faster
than the other. Spec. [0016].

Exemplary Claim
Independent claim 1 is representative of the invention, and is
reproduced below with disputed limitations in italics:
1. A resorbable polymeric mesh implant whose implant configuration
varies over time after implantation for use in reconstruction of soft
tissue defects, wherein the resorbable polymeric mesh implant
comprises:

at least a first material and a second material,

wherein the second material is substantially degraded at a later
point in time than the first material,

1
Appellants represent that the Real Party-in-Interest is Novus Scientific PTE
LTD. App. Br. 1.
2
Claim 3 was cancelled.
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wherein a modulus of elasticity of the first material includes both
the modulus of elasticity of the material itself and also the
elasticity due to a present structural configuration of the first
material in said implant configuration,

wherein a modulus of elasticity of the second material includes
both the modulus of elasticity of the material itself and also the
elasticity due to a present structural configuration of the second
material in said implant configuration, and wherein:

- the modulus of elasticity of the mesh implant is initially
substantially constant and equal to the modulus of elasticity of
the first material following a time of implantation and until said
first material is substantially degraded, and wherein:

- the modulus of elasticity of the mesh implant is substantially
equal to the modulus of elasticity of the second material after
the first material is substantially degraded, wherein the modulus
of elasticity of the second material is lower than the modulus of
elasticity of the first material;

wherein a last substantially degraded material has a modulus of
elasticity in its configuration that is compatible with the elasticity of a
surrounding tissue such that the flexibility of said tissue is not
restricted by the implant.

Examiner’s Rejections
1. Claims 1, 2, 4-9, 11, 12, and 14-23 stand rejected under 35 U.S.C. 1 03(a)
as being unpatentable over Hinsch et al., hereinafter “Hinsch” (U.S.
Patent No. 6,162,962; Dec. 19, 2000) in view of Schilder et al.
hereinafter “Schilder” (U.S. Patent No. 5,686,090; Nov. 11, 1997).
Ans. 4.

2. Claim 10 stands rejected under 35 U.S.C. 1 03(a) as being unpatentable
over Hinsch and Schilder, and further in view of Carr, Jr. et al. (U.S.
Patent No. 5,733,337; Mar. 31, 1998). Ans. 7.

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3. Claim 13 stands rejected under 35 U.S.C. 1 03(a) as being unpatentable
over Hinsch and Schilder, and further in view of Bowlin et al. (U.S. Pub.
No. 2002/0042128 A1; Apr. 11, 2002). Ans. 8.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We are unpersuaded by Appellants’
argument.
Appellants first contend (App. Br. 5; Reply Br. 2) that the
combination of Hinsch and Schilder does not disclose all of the features of
claim 1, because Hinsch did not consider the modulus of elasticity of a
stiffening material and instead discusses the bending resistance and tear
strength of a stiffening material. Appellants specifically contend that Hinsch
only indicates that an additional material can be used to enhance the stiffness
and rigidity of the implant, and that this enhancement is not due to the elastic
modulus of the additional material. App. Br. 7. In support of Appellants’
contention, Appellants submitted a declaration from Professor Martin King
3

of the College of Textiles at North Carolina State University. Id. Professor
King testifies that one of skill in the art with knowledge of modulus of
elasticity and bending modulus would understand that these two properties
are different. Id.
The Examiner agrees that Hinsch does not explicitly disclose modulus
of elasticity values for both a first material and second material in a mesh
implant, but finds that Hinsch does recognizes the general relative elastic
behavior of a first and second material. Ans. 9. The Examiner specifically
finds Hinsch discloses that a second material (“flexible basic structure”) has

3
Declaration of Martin King under 35 U.S.C. § 1.132, signed May 25, 2010.
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an elastic or stretchable behavior that provides desirable interaction with the
abdominal wall into which it is inserted “without problems to the usual
movements of the tissue.” Id., citing Hinsch at col. 2, lines 40-54.
According to the Examiner, Hinsch contrasts this to the first material
(“stiffening material”) is useful for initial handling and insertion of the
implant, but which has an “undesired rigidity” that provides problematic
interaction with the abdominal wall, and therefore, it is degraded prior to the
second material in order to prevent problematic interactions with the
abdominal wall. Id., citing Hinsch at col. 2, lines 55-63.
The Examiner concludes that although the modulus of elasticity is not
expressly disclosed in Hinsch, it would have been obvious to one of ordinary
skill in the art at the time of invention to provide a lower modulus of
elasticity of the second material relative to the first material in Hinsch,
considering the implant’s acknowledged desirable interaction with “usual
movements of the tissue,” which may reasonably include tensile loads.
Ans. 10. The Examiner specifically finds that it would also be within the
general skill of a worker in the art to select mechanical properties that suit
the intended use -- in this case, Hinsch recognizes the benefit of having a
more rigid implant during delivery for easy handling and insertion, and a
more elastic implant to match the tissue into which it is inserted after
delivery in order to ensure proper healing. Ans. 9-10, citing Hinsch at col. 2,
lines 56-63. We agree with the Examiner.
Appellants next contend that Hinsch does not describe a last
substantially degraded material that has a modulus of elasticity in its
configuration that is compatible with the elasticity of a surrounding tissue
such that the flexibility of said tissue is not restricted by the implant. App.
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Br. 14. According to Appellants, Hinsch teaches that the long term implant
material, the knitted fabric of Hinsch, is “matched” such that the long term
implant material stretches more than the surrounding tissue below a critical
stress and less than the surrounding tissue above the critical stress so that
long term implant material absorbs forces and prevents injury to tissue, as
shown in Figure 8 of Hinsch. App. Br. 15. Appellants note that Figure 8 of
Hinsch illustrates the results of a plunger test for only the basic structure, or
long term material, of Hinsch without the stiffening material. Id. at 10,
citing Hinsch at col. 7, lines 35-38.
In contrast to Appellants’ position, the Examiner finds that Hinsch
discloses the basic structure of the implant material stretches more than the
surrounding tissue below a critical stress and less than the surrounding tissue
above the critical stress, and, therefore, is governed by the tissue and is not
force-independent like the claimed invention implant. Ans. 10, citing
Hinsch at col. 2, lines 40-54. However, as indicated by the Examiner, the
disputed limitation in claim 1 does not specify at what point a flexibility of
tissue is “not restricted,” and also depending on the tissue, the disclosed
implant of Hinsch may not restrict its flexibility. Therefore, the Examiner
concludes that because Hinsch discloses that the basic structure does not
inhibit the flexibility of the surrounding tissue at least below a critical stress,
it meets the claim limitation. Ans. 10. We agree with the Examiner’s
conclusion.
The Examiner has established a prima facie case of obviousness.
Appellants has failed to rebut the prima facie case by providing sufficient
evidence that shows the combination of Hinsch and Schilder does not
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disclose one or more elements of the claimed invention. Accordingly, we
affirm the rejection of claim 1.
Appellants has not presented any substantially different arguments for
claims 2 and 4-23, which require the same disputed claim limitations as
representative claim 1, thus, these claims fall together. 37 C.F.R.
§ 41.37(c)(1)(vii). Accordingly, we affirm the rejection of claims 1, 2, and
4-23 under 35 U.S.C. § 103.

DECISION
The Examiner’s decision to reject claims 1, 2, and 4-23 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

ELD