Ex Parte Berckmans et al

Patent Trial and Appeal Board

Apr 24, 2017

13934385 (P.T.A.B. Apr. 24, 2017)

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.
13/934,385 07/03/2013 Bruce Berckmans III 5394.C70US2 6905
104326 7590 04/26/2017
Schwegman Lundberg & Woessner / Zimmer
P.O. Box 2938
Minneapolis, MN 55402
EXAMINER
APONTE, MIRAYDA ARLENE
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
04/26/2017 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):
SLW @ blackhillsip.com
USPTO@slwip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUCE BERCKMANS III, ROSS W. TOWSE, and
ROBERT L. MAYFIELD
Appeal 2015-003454
Application 13/934,3851
Technology Center 3700
Before STEFAN STAICOVICI, EDWARD A. BROWN, and
FREDERICK C. LANEY, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Bruce Berckmans III et al. (Appellants) appeals under 35 U.S.C.
§ 134(a) from the Examiner’s final decision rejecting under 35 U.S.C.
§ 103(a) claims 24^43 as being unpatentable over Beaty (US 6,969,474 B2,
iss. Nov. 29, 2005), Bulard (US 7,112,063 B2, iss. Sept. 26, 2006), and Ying
(US 6,013,591, iss. Jan. 11, 2000).2 We have jurisdiction over this appeal
under 35 U.S.C. § 6(b).
1 According to Appellants, Biomet 3i, LLC is the real party in interest.
Appeal Br. 2 (filed Aug. 11, 2014).
2 Claims 1—23 are canceled. Id. at 12.
Appeal 2015-003454
Application 13/934,385
SUMMARY OF DECISION
We REVERSE.
INVENTION
Appellants’ invention relates to a dental implant with discrete
nanoparticles deposited thereon. Spec, para 2.
Claims 24, 31, and 38 are independent. Claim 24 is illustrative of the
claimed invention and reads as follows:
24. A dental implant made of a material comprising titanium
comprising:
a head portion having a non-rotational feature;
a lowermost end opposing the head portion;
a threaded bottom portion for engaging bone between the
head portion and the lowermost end; and
discrete nanocrystals deposited on a roughened surface of
the implant, the roughened surface including at least one of a
grit-blasted surface and an acid-etched surface, wherein a
portion of the roughened surface is exposed between at least
some of the discrete nanocrystals such that the exposed
roughened portion between the discrete nanocrystals is capable
of contacting bone.
ANALYSIS
Independent claims 24, 31, and 38 require, inter alia, a dental implant
having deposited thereon “discrete nanocrystals” (as per claim 24), “discrete
hydroxyapatite nanocrystals” (as per claim 31), or “discrete hydroxyapatite
nanoparticles” (as per claim 38). Appeal Br. 12—14 (Claims App.).
The Examiner finds that Beaty discloses, inter alia, depositing
discrete crystals of hydroxyapatite onto a roughened surface of a dental
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implant, such that “a portion of the roughened surface is exposed between at
least some of the discrete crystals . . . [and] is capable of contacting bone.”
Final Act. 3 (mailed Feb. 19, 2014) (citing Beaty, col. 6,1. 59-7,1. 8).
However, the Examiner finds that the combined teachings of Beaty and
Bulard fail to disclose “crystals being nano-sized . . . hav[ing] dimensions on
the order of about 20 nanometers to about 100 nanometers.” Id. at 4.
Nonetheless, the Examiner finds that “Ying teaches nanocrystals of apatites
(wherein hydroxyapatite is an apatite) sized within the range of 20 to 100
nanometers (Col. 36, lines 12-23).” Id. at 4. The Examiner concludes that
[I]t would be obvious to one of ordinary skill in the art, at the
time the invention was made to modify Beaty/Bulard by using
nanocrystals of the apatite on the order of about 20 nanometers
to about 100 nanometers, as taught by Ying, for the purpose of
creating better microstructural control and design on the
nanometer scale, phase uniformity on the molecular level,
enhanced sintering behavior, and greater mechanical reliability
(Col. 7, lines 63-67, Col. 8, lines 1-6).
Id.
Appellants argue that because Beaty’s ‘discrete particles’ and Ying’s
“coatings” ‘are very different from one another and are used for very
different purpose,” a person having ordinary skill in the art “would not be
motivated to use the nanocrystalline apatites used for coatings in Ying to
form the ‘discrete particles’ of Beaty.” Appeal Br. 6 (emphasis omitted).
According to Appellants, “Ying actually teaches away from the proposed
combination” because “Ying repeatedly states that minimizing particle size
(e.g., nanoscale particles) enhances packing and densification.” Id. at 6—7.
Thus, Appellants contend that “one skilled in the art would not have found it
obvious to use Ying’s nanoparticles to deposit discrete
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nanoparticles/nanocrystals, as in Beaty.” Id (emphasis omitted). In other
words, Appellants take the position that because “the crux of Ying’s
teaching is to use nanoparticles to form packed coatings and/or dense
materials,” a person of ordinary skill in the art “would be taught away from
using Ying to arrive at the present invention’s discrete deposition or
nanoparticles/nanocrystals.” Id. at 8. Appellants thus conclude that “without
applying improper hindsight, one skilled in the art would not be motivated to
combine Beaty, Bulard, and Ying.” Id. at 9.
In response, the Examiner states that “Ying is cited for the sole
purpose of teaching the use of nano-sized apatites in place of micron-sized
apatites” and furthermore, “Ying teaches a variety of benefits to using nano­
sized apatites in place of micron-sized apatites.” Ans. 6 (mailed Oct. 23,
2014). According to the Examiner, “Ying discloses that nanocrystalline
apatites provide better microstructural control and design on the nanometer
scale, phase uniformity on the molecular level, and exceptional
microstructural control resulting in reduced flaw sizes and greater
mechanical reliability.” Id. at 5—6 (citing Ying, col. 4,1. 65—col. 5,1. 1, col.
7,1. 62—col. 8,1. 6, col. 8,11. 7—11, and col. 10,11. 35—40). Thus, the
Examiner takes the position that “[a]t least some of said benefits would be
the same regardless of whether the apatites are used as a dense layer or a
layer with more spread apart particles.” Id. at 6.
It is undisputed that although Beaty discloses applying a material as
discrete particles to the surface of an implant, Beaty fails to disclose that the
particles are nano-sized. See Final Act. 4; see also Beaty, col. 7,11. 5—8. It
is also undisputed that Ying is directed towards using nano-sized particles.
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See Ying, col. 8,11. 35—41, col. 10,11. 36-41, col. 12,11. 18—19. However,
we find the Examiner’s reasoning does not support the conclusion of
obviousness because the Examiner has not shown the relevance of that
rationale in the context of applying Ying’s nano-sized particles as discrete
particles on the surface of Beaty’s implant. In other words, the Examiner
does not provide adequate support that applying Ying’s nano-sized particles
as discrete particles to the surface of Beaty’s implant “creat[es] better
microstructural control and design on the nanometer scale, phase uniformity
on the molecular level, enhanced sintering behavior, and greater mechanical
reliability.” See Final Act. 4.
The Examiner’s position that “[a]t least some of said benefits would
be the same regardless of whether the apatites are used as a dense layer or a
layer with more spread apart particles” requires speculation on the part of
the Examiner. Ans. 6; see also id. at 8. Even though Ying discloses that by
minimizing particle size, defect size is reduced and ductility is improved,
Ying states that such benefits provide for better packing and densification of
the particles when sintering articles (in the shape of a prosthesis) or forming
coatings. See, e.g., Ying, col. 5,11. 49-65, col. 6,11. 32—37, col. 7,1. 65—col.
8,1. 11 and 11. 35—41, col. 10,11. 36-41. The Examiner does not explain
which of the benefits disclosed by Yang would apply when depositing its
nano-sized particles as discrete particles on the surface of Beaty’s implant
such that a person of ordinary skill in the art would modify Beaty with
Ying’s nano-sized particles, as the Examiner contends. The mere fact that
elements can be combined is not, in itself, a reason to combine them.
Rather, an obviousness rejection must explain the reasoning by which those
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findings support the Examiner’s conclusion of obviousness. Perfect Web
Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328-30 (Fed. Cir. 2009).
Here, Appellants are correct that, although Ying discloses benefits for using
nano-sized particles rather than micro-sized particles, Ying’s benefits apply
in the context of packing and densification of particles when sintering
articles (in the shape of a prosthesis) or forming coatings. See Reply Br. 4
(filed Dec. 22, 2014). The Examiner has not pointed to any portion of Ying
that discloses benefits relevant to depositing nano-sized particles as discrete
particles on the surface of an implant, such as the implant of Beaty.
Furthermore, although we appreciate the Examiner’s finding that Ying
discloses using nano-sized particles to make porous articles (75% dense) and
coatings, this does not adequately explain why a person having ordinary skill
in the art would modify Beaty with Ying’s nano-sized particles, as the
Examiner contends. See Ans. 6 (citing col. 11,11. 33—37, 45—50, and 64—
65); see also id. at 8. Neither does the Examiner’s finding that “both Beaty
and Ying teach applying apatite in the form of discrete particles that form a
coating/layer with gaps between at least some of the particles.” See id. at 7
(citing Beaty, claims 1, 12).
The portions of Ying cited by the Examiner also disclose that even
when making such a porous article or coating, it is the result of a
“densification step” (see Ying, col. 11,1. 36), or a “consolidation” process
(see id., col. 11,1. 60) where nano-sized particles are compressed in a press
(see id., col. 11,11. 62—64). In contrast, in Beaty, the discrete hydroxyapatite
nanoparticles are merely deposited onto a roughened surface to form a
“layer.” See Beaty, col. 7,11. 5—8, col. 8,11. 59-60, col. 9,11. 20—22. What a
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reference teaches a person of ordinary skill in the art is not limited to what a
reference specifically “talks about” or what is specifically “mentioned” or
“written” in the reference. Syntex (U.S.A.) LLC v. Apotex, Inc. 407 F.3d
1371, 1380 (Fed. Cir. 2005). In this case, a person of ordinary skill in the art
would have readily recognized that the particles of Beaty are retained by
surface asperities to form a “layer.” See Beaty, col. 8,11. 59-60, col. 9,11.
20-22. Hence, because Ying’s nano-sized particles require a “densification
step” or a “consolidation” process to form a “coating,” whereas Beaty’s
“layer” is formed by merely depositing particles onto a roughened surface,
the same person would recognize that the structure of Ying’s “coating” is
different from that of Beaty’s “layer.”
The Examiner’s reasoning for applying Ying’s nano-sized particles as
discrete particles to the surface of Beaty’s implant lacks rational
underpinning because the Examiner fails to provide any persuasive technical
reasoning or evidence that would explain whether Ying’s nano-sized
particles would be retained by the surface asperities of the roughened surface
of Beaty’s implant. Therefore, for the foregoing reasons, we agree with
Appellants that the Examiner’s rejection appears to be the result of hindsight
analysis. See Appeal Br. 8; see also In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398,418 (2007)).
In conclusion, as the Examiner’s articulated reasoning for combining
the teachings of Beaty and Ying is not supported by a preponderance of the
evidence of the record before us, the Examiner’s legal conclusion of
obviousness cannot stand. See In re Warner, 379 F.2d 1011, 1017 (CCPA
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1967). The Examiner’s use of the Bulard disclosure does not remedy the
deficiency of the Beaty and Ying combination. See Final Act. 4.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claims 24-43 under 35 U.S.C. § 103(a) as unpatentable over Beaty,
Bulard, and Ying.3
SUMMARY
The Examiner’s decision to reject claims 24-43 is reversed.
REVERSED
3 Because we have determined that the Examiner failed to articulate an
adequate reasoning with rational underpinnings to support the combination
of the teachings of Beaty, Bulard, and Ying in the manner claimed, we do
not need to reach the evidence presented in the “Declaration of Ross W.
Towse under 37 C.F.R. 1.132” dated September 28, 2010, and filed in the
instant application on February 4, 2014.
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