Ex Parte Beyar et al

Patent Trial and Appeal Board

Aug 31, 2016

12178747 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/178,747 07/24/2008
21125 7590 09/02/2016
NUTTER MCCLENNEN & FISH LLP
SEAPORT WEST
155 SEAPORT BOULEVARD
BOSTON, MA 02210-2604
FIRST NAMED INVENTOR
Etai Beyar
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.
101896-971 6905
EXAMINER
WOODALL, NICHOLAS W
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
docket@nutter.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex Parte ETAI BEY AR, MORDECHAY BEY AR, OREN GLOBERMAN,
RONEN SHA VIT, and HILA WACHSLER-A VRAHAMI
Appeal 2014-006841 1
Application 12/178,7472
Technology Center 3700
Before HUBERT C. LORIN, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 14, 16, and 18-20. 3 We have jurisdiction under
35 U.S.C. § 6(b).
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed July 8,
2013) and Reply Brief ("Reply Br.," filed May 27, 2014), and the
Examiner's Answer ("Ans.," mailed Mar. 26, 2014) and Final Office Action
("Final Act.," mailed June 19, 2012).
2 Appellants identify DePuy Spine, Inc. as the real party in interest. App.
Br. 1.
3 The Claims Appendix refers to claim 20 as withdrawn; however, this
appears to be an error as Appellants include claim 20 in their arguments
Appeal2014-006841
Application 12/178,747
We AFFIRM.
CLAIMED INVENTION
Appellants' claimed invention "relates to a bone void filler material
characterized by a volumetric change after a mass portion of it was
introduced into [the] body." Spec. 5.
Claim 14, reproduced below, is the sole independent claim and is
representative of the subject matter on appeal:
14. A mixture for filling a void in a bone and restoring
its height comprising:
an acrylic bone cement; and
an expandable filler;
wherein the filler can be expanded to expand the
bone cement to restore the height of the bone having the
void.
REJECTIONS
Claims 14 and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ling (US 3,889,665 Al, iss. June 17, 1975) and
Milbocker (US 2008/0221628 Al, pub. Sept. 11, 2008).
Claims 14, 16, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Farrar (D.F. Farrar, Rheological properties of PMMA
bone cements during curing, 22 BIOMATERIALS 3005 (2001)) and Milbocker.
Claims 19 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ling, Milbocker, and Shadduck (US 2008/0132899 Al,
pub. June 5, 2008).
(see, e.g., App. Br. 1, 2). Thus, we consider claim 20 to be pending in this
appeal.
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ANALYSIS
Independent Claim 14 and Dependent Claims 16, 19, and 20
As outlined below, we find that the Examiner properly rejected claim
14 under§ 103(a) as unpatentable over Farrar and Milbocker. Therefore, we
need not, and do not, address the Examiner's alternative rejection of
claim 14 under§ 103(a) as unpatentable over Ling and Milbocker.
In rejecting claim 14 under 35 U.S.C. § 103(a) as unpatentable over
Farrar and Milbocker, the Examiner finds that Farrar discloses a mixture for
filling a void in a bone and restoring its height that includes an acrylic bone
cement. Final Act. 3 (citing Farrar, col. 1, 11. 5-9). The Examiner
acknowledges that Farrar does not disclose an expandable filler that can be
expanded to expand the bone cement to restore the height of the bone having
the void, as required by claim 14. Id. However, the Examiner reasons that it
would have been obvious to modify Farrar's mixture to include a
hydrophilic filler material based on Milbocker to provide a swelling
adhesive that fills in gaps and provides a controlled amount of local
pressure. Id. (citing Milbocker, i-fi-188, 89, 227).
Appellants argue that the Examiner erred in rejecting claim 14 under
35 U.S.C. § 103(a) because there is no teaching or suggestion for combining
the references to arrive at the claimed invention, as recited in claim 14, and
that Milbocker teaches away from the combination. App. Br. 2-8; see also
Reply Br. 2--4. In particular, Appellants charge that Milbocker "emphasizes
a single component solution, and thus teaches away from [Appellants'] two-
component solution. Id. at 4. We disagree.
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Application 12/178,747
Milbocker admittedly discloses that "[t]he preferred adhesive is a
single-component polyisocyanate based adhesive." Milbocker i-f 37; see also
id. i-f 82. However, Milbocker also describes that "[a] variety of surgical
adhesives are potentially useable in [Milbocker's] invention." Id. i-f 80.
Appellants do not point to any passage in Milbocker that criticizes,
discredits, or otherwise discourages allowing for an expandable filler to be
added to a bone cement, which is required to establish a "teaching away";
instead, Milbocker merely discloses that a single-component adhesive is
"more desirable." See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (A
teaching away occurs when a reference discourages one skilled in the art
from following the claimed path, or when the reference would lead one
skilled in the art in a direction divergent from the path that was taken by the
applicant); see also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (The
prior art's mere disclosure of more than one alternative does not constitute a
teaching away from any of the alternatives when the disclosure does not
criticize, discredit, or otherwise discourage the solution claimed).
Appellants acknowledge that paragraph 227 of Milbocker describes
that the adhesive can be used "in conjunction with" bone cement. App.
Br. 6. But Appellants contend that using the adhesive in conjunction with
bone cement does not suggest mixing the adhesive with bone cement. Id.
To support this contention, Appellants note that "bone cement" is not listed
among the list of exemplary polymers that can be mixed with the adhesive.
Id. (citing Milbocker i-f 228). And Appellants posit that the statement
regarding bone cement at paragraph 227 could mean that the adhesive is
used after bone cement is cured in order to fill any remaining space. Id.
Appellants conclude that the person of ordinary skill is left without a
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Application 12/178,747
suggestion in Milbocker as to how to use the swellable adhesive and bone
cement at the same time. Id.
Appellants also argue that the motivation "fails as a matter of law"
because the motivation to combine was "directly copied from [Milbocker ],
which describes the advantages of the [Milbocker] adhesive alone." Id. at
6-7. Appellants assert that the combination would result in a hydrophilic
bone cement, not a bone cement with an expandable filler to restore the
height of the bone. Id. at 8.
Appellants' arguments are not persuasive. Here, claim 14 recites a
mixture comprising two separate elements: a bone cement and an
expandable filler. Appellants' Specification describes that one embodiment
of the mixture includes bone cement and an expandable gas, such as air.
Spec. 8. The expandable gas may be mixed with the cement or could be
"present in the region in which the bone cement is injected." Id. at 13.
When the cement is introduced "in the presence of air or another expandable
gas (or when the bone cement has been mixed with such a gas), gas pockets
will remain in the bone cement that can be expanded in subsequent steps."
Id. at 14.
In another embodiment, the mixture includes a water swellable solute
that is injected as a filler after injection of the bone cement. Id. at 17. The
water swellable solute expands when it absorbs fluids from its surroundings
within the body, from an aqueous cement mixture or from water added
specifically for the purpose of expanding the filler material. Id. at 16-17. In
our view, one of ordinary skill would understand, in view of the
Specification, that the mixture recited in claim 14 requires combining an
expandable filler and cement before the cement cures, but does not
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Application 12/178,747
otherwise restrict when or how the cement and filler are combined. For
example, the filler need not be combined with the bone cement before or
even at the same time the bone cement is injected to fill a void in a bone.
We are not persuaded that the Examiner erred in rejecting claim 14
under 35 U.S.C. § 103(a). Instead, we find that modifying Farrar in view of
Milbocker, as the Examiner proposes, is no more than an obvious
combination of known elements and yields a predictable result. See KSR
Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) ("The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results").
In view of the foregoing, we sustain the Examiner's rejection of
claim 14 under 35 U.S.C. § 103(a). For the same reasons, we also sustain
the Examiner's rejections of claims 16, 19, and 20, which are not argued
separately.
Dependent claim 18
Claim 18 depends from claim 14 and recites that the acrylic bone
cement has substantially no liquid phase and remains in a stable high
viscosity state after mixing and before becoming substantially set.
Appellants argue that neither Milbocker nor Farrar disclose cement having
substantially no liquid phase and a stable high viscosity, as required by claim
18. App. Br. 8-10. Referring to the Milbocker reference, Appellants assert
it "teaches the exact opposite of what the rejection explains." App. Br. 9.
Appellants' argument is not persuasive, at least because the Examiner relies
on Farrar as modified by Milbocker for describing the argued limitation. See
Final Act. 3--4.
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Appellants also argue that Farrar does not disclose the argued
limitation because Farrar does not disclose a cement having a three-part
viscosity curve characterized by a rapidly rising viscosity phase, a stable
high viscosity phase, and a substantially set phase. App. Br. 10. Appellants
argument is not persuasive, at least because it is not commensurate in scope
with claim 18.
During examination, claims are to be given their broadest reasonable
interpretation consistent with the Specification, and the language should be
read in light of the Specification as it would be interpreted by one of
ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). Moreover, "[a]bsent claim language carrying a
narrow meaning, the PTO should only limit the claim based on the
specification or prosecution history when those sources expressly disclaim
the broader definition." In re Bigio, 381F.3d1320, 1325 (Fed Cir. 2004).
Thus, "while it is true that claims are to be interpreted in light of the
specification and with a view to ascertaining the invention, it does not follow
that limitations from the specification may be read into the claims." Sjolund
v. Musland, 847 F.2d 1573, 1581 (Fed. Cir. 1988).
Here, claim 18 broadly recites that the acrylic bone cement has
substantially no liquid phase and remains in a stable high viscosity state after
mixing and before becoming substantially set. Appellants' Specification,
including parent application 11/461,072 incorporated by reference, does not
define any of the phrases "liquid phase," "stable," or "high viscosity" or
otherwise given these phrases meanings different from their ordinary and
customary meanings.
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We agree with the Examiner that bone cement that achieves a
viscosity of about 300 Pa-s in approximately 100 seconds and slowly
changes viscosity, as disclosed by Farrar, discloses the argued limitation,
when as broadly construed as reasonable.
Therefore, we will sustain the Examiner's rejection of claim 18 under
35 U.S.C. § 103(a).
DECISION
The Examiner's rejections of claims 14, 16, and 18-20 under
35 U.S.C. § 103(a) are 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)(l )(iv).
AFFIRMED
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