Vivek Pawar et al.

Patent Trials and Appeals Board

Dec 30, 2019

12811672 - (D) (P.T.A.B. Dec. 30, 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.
12/811,672 09/28/2010 Vivek Pawar 8178.3407 9823
96878 7590 12/30/2019
Smith & Nephew, Inc. - KDB
1450 Brooks Road
Memphis, TN 38116
EXAMINER
SCHALL, MATTHEW WAYNE
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
12/30/2019 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):
docketing@kdbfirm.com
mbotnaru@kdbfirm.com
smith-nephew_pair@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VIVEK PAWAR, DONALD E. KRAMER,
CAROYLN L. WEAVER, and SHILESH C. JANI
Appeal 2018-003451
Application 12/811,672
Technology Center 3700
Before DANIEL S. SONG, ANNETTE R. REIMERS, and JILL D. HILL,
Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 11–19 and 31–38. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

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 Smith & Nephew,
Inc. Appeal Br. 2.
Appeal 2018-003451
Application 12/811,672
2
CLAIMED SUBJECT MATTER
The claims are directed to a surface alloyed medical implant. Claim
11, reproduced below, is illustrative of the claimed subject matter:
11. A medical implant substrate comprising:
a first biocompatible metal;
a surface alloyed zone, wherein said surface alloyed zone
is formed by diffusing at least a second biocompatible metal
into said first biocompatible metal, the diffusion occurring at
least at the surface of said substrate;
a hardened zone, wherein at least a portion of said
hardened zone is within at least a portion of said surface alloyed
zone;
wherein said surface alloyed zone has a thickness that
ranges from about 5 microns to about 100 microns.
Appeal Br. 39, Claims App.
REJECTION
The Examiner rejects claims 11–19 and 31–38 under 35 U.S.C.
§ 103(a) (pre-AIA) as unpatentable over Popoola (US 2006/0233944 A1,
pub. Oct. 19, 2006) in view of Pawar (US 2007/0137734 A1, pub. June 21,
2007). Final Act. 3.
OPINION
In rejecting the claims as unpatentable over the combination of
Popoola in view of Pawar, the Examiner finds that Popoola discloses “a
substrate comprising a first biocompatible metal (paragraph [0028]) with
zirconium (the second biocompatible metal) deposited onto the surface in a
mixed phase/alloy phase (figure 5),” and that “at least a portion of the
zirconium is converted into a zirconia surface layer (a hardened zone).”
Final Act. 3. The Examiner concedes that “Popoola does not specifically
Appeal 2018-003451
Application 12/811,672
3
disclose the surface alloyed zone has a thickness between 5 to 100 microns,”
but relies on Pawar for teaching “a diffusion hardened medical implant with
a surface alloyed zone having a thickness of between 5-100 microns
(paragraph [0016]) . . . for the purpose of improving strength and reducing
wear (paragraphs [0003]-[0004]).” Final Act. 3. Based on these findings,
the Examiner concludes that it would have been obvious to a person of
ordinary skill in the art to have modified the substrate “to have the thickness
of Pawar in order to improve the strength and reduce the wear on the
device.” Final Act. 3.
The Appellant argues, inter alia, 2 that the Examiner has failed to
establish a prima facie case of obviousness in rejecting independent claims
11, 31, and 32. Appeal Br. 6. Specifically, as to claim 11, the Appellant
argues that neither Pawar nor Popoola discloses “a surface alloyed zone that
is formed by diffusion of at least a second biocompatible metal into a first
biocompatible metal of the substrate, the diffusion occurring at least at the
surface of the substrate” and having a thickness from about 5-100 microns as
recited. Appeal Br. 6–7. We generally agree with the Appellant.

2 Initially, the Appellant argues that the rejection is deficient because the
Final Office Action “did not even include an acknowledgement of the
Declaration [of Pawar], let alone provide any explanation regarding the
sufficiency of the Declaration.” Appeal Br. 5, citing MPEP § 716.01(b); see
also Reply Br. 2. However, as the Appellant concedes, the Advisory Action
of record states “[a]dditionally, the Affidavit filed 7/25/2016 has been
considered.” Advisory Act. 2. Although the Examiner does not discuss the
Declaration of Pawar, this is not dispositive because we ultimately agree
with the Appellant that the rejection is deficient for the reasons discussed in
this Decision.

Appeal 2018-003451
Application 12/811,672
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The Examiner’s finding with respect to Popoola is correct, and as the
Appellant acknowledges, Popoola discloses an intermix zone in which Zr is
diffused into the substrate alloy that corresponds to the recited surface
alloyed zone, albeit being only “‘about 1000 Å thick,’ which equates to only
0.1 microns.” Appeal Br. 10 (citing Popoola ¶¶ 9, 16, 28, Abstract).
Although the Examiner relies on Pawar as disclosing a thickness of a surface
alloyed zone in the claimed range, as the Appellant correctly points out, the
portion of Pawar relied upon pertains to an oxidized layer of the core alloy.
Appeal Br. 7 (citing Pawar ¶ 16). Thus, the Appellant is correct, and we
agree, that “merely oxidizing a core alloy in such a manner [as disclosed in
Pawar] neither teaches nor suggests features relating to forming a surface
alloyed zone by diffusing, at least at the surface of the substrate, a second
biocompatible metal into a first biocompatible metal.” Appeal Br. 7
(emphasis added); see also Appeal Br. 8–9 (the thickness cited “is with
regard to the thickness of a diffusion hardened zone formed by the diffusion
of oxygen into an alloy . . . [and] neither teaches nor suggests features
relating to diffusing at least one biocompatible metal into another
biocompatible metal so as to form a surface alloyed zone.”); Reply Br. 5–6.
The Examiner responds that Pawar “is used for the teaching of
altering the thickness,” and that “the claims of the present invention actually
require altering the zones from between 1-100 microns (a difference of 100
times larger), and actually supports this obviousness rejection. Therefore the
prior art ranges fall within the scope of the claims and thus can be
considered obvious.” Ans. 2. However, we agree with the Appellant that
the Examiner Answer appears to improperly rely on the Appellant’s own
claims, rather than the prior art. To any extent this is a response to the
Appellant’s arguments at all, it is unpersuasive.
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Application 12/811,672
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We further find persuasive, the Appellant’s arguments that the
necessary modification of the 0.1 micron thick intermix zone of Popoola to
have a thickness in the recited range appears to be based on impermissible
hindsight. Appeal Br. 25. The Examiner does not provide any reason with
rational underpinnings as to why a person of ordinary skill would have
sought to modify the intermix zone of Popoola to have a thickness in the
recited range. Although the Examiner has relied upon Pawar for this
thickness, this reliance on Pawar is misplaced for the reasons discussed
above.
Therefore, we reverse the Examiner’s rejection of independent claim
11 and claims 12–19 that depend therefrom. The Appellant’s further
arguments that the references teach away from the combination suggested by
the Examiner (Appeal Br. 21–22), and that the suggested combination lacks
reasonable expectation of success (Appeal Br. 23–24), are moot. The
Appellant also submits substantially the same arguments in support of
patentability of independent claims 31, 32, and claims 33–38 that ultimately
depend from claim 32. Appeal Br. 11–20, 26–37. Accordingly, the
Examiner’s rejection of these claims is reversed as well.
CONCLUSION
The Examiner’s rejection is REVERSED.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Basis Affirmed Reversed
11–19, 31–
38
103(a) Popoola,
Pawer
11–19, 31–
38
Appeal 2018-003451
Application 12/811,672
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Overall
Outcome
11–19, 31–
38

REVERSED