Ex Parte Chang et al

Patent Trial and Appeal Board

Mar 31, 2016

12798660 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121798,660 04/06/2010
29633 7590 03/31/2016
ROGERS TOWERS, P.A.
1301 RIVERPLACE BOULEVARD, SUITE 1500
JACKSONVILLE, FL 32207
Jiang Chang
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.
D0454.10DIV 9530
EXAMINER
KEMMERLE III, RUSSELL J
ART UNIT PAPER NUMBER
1741
MAILDATE DELIVERY MODE
03/31/2016 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 JIANG CHANG, WEIMING GU, and
JIPIN ZHONG
Appeal2014-006881
Application 12/798,660
Technology Center 1700
Before BRADLEY R. GARRIS, CHRISTOPHER M. KAISER, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.
ABRAHAM, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
decision of the Examiner rejecting, for at least the second time, claims 4--9.
We have jurisdiction pursuant to 35 U.S.C. § 6(b ). We affirm.
BACKGROUND
Appellants' claimed invention relates to a method of manufacturing a
bioactive glass scaffold. Abstract.
Independent claim 4 is illustrative, and is reproduced below from the
Claims Appendix (App. Br. 16):
4. A method of manufacturing a resorbable,
macroporous bioactive glass scaffold comprising the
steps of:
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Application 12/798,660
creating a mixture comprising by mass percent
approximately 24-45% CaO, 34-50% Si02, 0-25%
Na20, 5-17% P20s, 0-5% MgO and 0-1 % CaF2;
melting said mixture at a temperature ranging
approximately from 13 80°C to l 480°C;
cooling, crushing and sieving said mixture to
obtain glass powders having granularity of greater
than 100 microns up to 300 microns;
adding into said glass powders by mass percent
approximately 20-70% of at least one pore forming
agent and approximately 1-5% of a 5-10% solution of
polyvinyl alcohol adhesive to form a composition;
pressing said composition of said glass powders,
said at least one pore forming agent and said
polyvinyl alcohol adhesive into dies to produce
shaped pellets under a pressure of approximately 2-
20 MPa; and
sintering the pellets under temperatures ranging
from approximately 750 to 900°C for a period of
approximately 1-5 hours.
Independent claim 7 is substantially similar to claim 4, but
requires "crushing and sieving said mixture to obtain glass powders
having granularity of approximately 150-300 microns." Id. at 17
(Claims Appendix).
The Examiner maintains, and Appellants appeal, the rejection
of claims 4--9 as unpatentable under 35 U.S.C. § 103(a) over Yu 1 in
view of Berger, 2 Dalal, 3 and Apel. 4
1 Yu et al., US 2004/0043053 Al, published Mar. 4, 2004.
2 Berger et al., US 6,767,854 B2, issued July 27, 2004.
3 Dalal et al., US 2003/0180376 Al, published Sept. 25, 2003.
4 Apel et al., US 2004/0167006 Al, published Aug. 26, 2004.
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OPfNION
Appellants provide substantive arguments for the patentability of
claims 4--9 based on independent claims 4 and 7, and specifically based on
the limitations requiring the glass powders to have a granularity of "greater
than 100 microns up to 300 microns" in claim 4 and "approximately 150-
300 microns" in claim 7. App. Br. 9-14; Reply Br. 2--4. We limit our
discussion accordingly. 5 37 C.F.R. § 41.37(c )(1 )(iv).
The Examiner finds that Yu discloses a method of making a bioactive
glass structure by creating a molten mixture of CaO, Si02, and P20 5, along
with other claimed materials. Non-Final Act. 3. The Examiner further finds
that Yu teaches melting the mixture, cooling it to form a glass, crushing and
sizing it to 80 microns, and further pulverizing it to 1-5 microns. Id. The
Examiner finds that Apel discloses a similar method of making a bioactive
glass body, and discloses the use of powder having particle sizes "up to
lOOµm." Id. at 4. The Examiner states that it would have been obvious to a
person of ordinary skill in the art to use the powder sizes disclosed in Apel
instead of the smaller sizes disclosed in Yu because Apel teaches that "such
sizes are effective for forming a body as disclosed, and using a larger
particle size would require less pulverizing, resulting in lower energy and
time requirements." Id. The Examiner finds that Yu does not disclose that a
particle size of 1-5 µmis a critical feature, as "there is nothing in Yu that
would lead one skilled in the art to believe that that is the only particle size
that would work and that any other particle size would be unsuitable." Ans.
2.
5 We refer to the Non-Final Action for a full statement of the rejection based
on Yu, Berger, Dalal, and Apel. Non-Final Act. 2---6.
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The Examiner states that the particle size disclosed by Apel ( 100 nm
to 100 µm) does not overlap with the particle size range recited in claim 4
(greater than 100 µm up to 300 µm), but determines that "the disclosed
ranges are close enough that one skilled in the art would expect the end
points (100 µm and greater than 100 µm) to be close enough that they would
have the same properties." Non-Final Act. 5.
The Examiner further finds that Apel discloses a broad range of
particle sizes (100 nm to 100 µm), is not expressly limited to particle sizes
within this range, and never explains whether it is critical to maintain a
particular particle size value. Id. The Examiner thus determines that Apel's
particle sizes are exemplary and non-limiting, and a person of ordinary skill
in the art would have understood that Apel teaches any particle size may be
used in its process. Id. at 5---6; Ans. 2. Thus, "absent any showing of the
criticality of, or unexpected results resulting from, the currently claimed
range [in claim 7], the use of powder sized 150-300 µm would have been
obvious in view of the broad teachings of Apel." Non-Final Act. 6.
Appellants contend that Yu expressly teaches reducing larger particle
sizes to a size of 1-5 µm, and argue that this narrow range is critical. App.
Br. 10. According to Appellants, Yu uses a particle size of 1-5 µmin each
example, and "Yu explicitly asserts that a particle size of 80 microns is not
suitable, since Yu first pulverizes glass to create intermediate 80 micron
particles, then pulverizes them again to produce the 1-5 micron size (parags.
0035, 0041)." Reply Br. 2. Appellants thus argue that the combination of
Apel and Yu would result in reducing the larger-sized particles of Apel to a
size of 1-5 µmas taught by Yu. App. Br. 10.
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Appellants further argue that "common sense and ordinary skill in the
art" demonstrate the criticality of Yu's particle size range, because it is well
known in the art that the characteristics of a final product will vary greatly
depending on particle size. Id. In this regard, Appellants state that a glass-
ceramic body formed from smaller particles will be stronger than one
formed from larger particles, as larger particles weaken the body by forming
larger crystals in the glass. Id. According to Appellants, the claimed
invention requires the use of larger particles to achieve the desired pore size,
whereas Yu and Apel require the use of smaller particles to achieve their
respective desired end products, and therefore teach away from the claimed
invention. Id.; Reply Br. 3 (stating that the desired results of Yu and Apel
are "dense, non-porous bodies," whereas Appellants' desired result is to
produce "macroporous bodies of 40-80% porosity.").
After review of the respective positions provided by Appellants and
the Examiner, we sustain the Examiner's rejections based primarily on the
Examiner's findings of fact, conclusions of law, and rebuttals to Appellants'
arguments, as expressed in the Non-Final Action and Answer. The
following comments are added for emphasis.
Appellants do not dispute the Examiner's finding that Yu discloses the
claimed steps of creating a mixture comprising CaO, Si02, Na20, P20s,
MgO and CaF2, as well as melting, cooling, and crushing said mixture.
Non-Final Act. 3. Nor do Appellants dispute the Examiner's finding that (1)
Apel discloses similar steps, (2) Apel discloses that particle sizes up to 100
µm are effective for forming a glass body, and (3) that using larger particle
sizes would require less pulverizing, resulting in lower energy and time
requirements. Id. at 4. We thus determine that the Examiner has articulated
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a reasoning having rational underpinnings for making the proposed
modification of Yu in view of Apel. KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007).
We are not persuaded by Appellants' arguments that Yu's particle size
range of 1-5 µm is a critical feature, such that a person of ordinary skill in
the art, when considering the combination of Apel and Yu, would reduce
Apel's larger particles to a particle size of 1-5 microns. See App. Br. 10.
Appellants have not directed us to sufficient evidence in Yu or provided an
adequate technical explanation to substantiate the argument that this range is
"required to provide an end product possessing the desired characteristics
related to bioactivity and biodegradability" as discussed in paragraph 8 of
Yu. See App. Br. 9; Yu i-f 8; Reply Br. 3 (arguing that "Yu firmly teaches
that particle size of 80 microns is too large."). Although Yu uses the 1-5
µm particle size range in its examples, Yu explicitly states that the examples
are "not to be construed as limiting the scope of the invention." Yu i-f 34. A
reference should be considered in its entirety for what it fairly teaches one
skilled in the art (see In re Wesslau, 353 F.2d 238, 241 (CCPA 1965)), and
Appellants' arguments regarding the general relationship between particle
size, porosity, and strength do not serve to limit Yu's teaching of a
biodegradable and bioactive glass made from a composition of CaO, Si02,
Na20, P20s, MgO and CaF2. See, e.g., Yu i-fi-18-11. Moreover, the claims at
issue on appeal do not include any limitations directed to strength or pore
size.
In addition, contrary to Appellants' arguments that "[t]he desired
results of Yu and Apel are to produce dense, non-porous bodies" (Reply Br.
3), both references refer to the production of porous bodies. See, e.g., Yu
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il 12; Apel il 56. Similarly, contrary to Appellants' arguments that Yu and
Apel "both teach small particle size" (Reply Br. 3), Apel discloses the use of
particle sizes "up to 100 µm" as the Examiner notes, as well as the
production of a shaped body with open pores using a "highly-liquid
dispersion with a particle size of the glass ceramic particles of smaller then
[sic] 300 µm" (Apel i-f 59). This not only contradicts Appellants' arguments
regarding small particle sizes, but also reinforces the Examiner's finding that
a person of ordinary skill in the art would understand from Apel that
particles within the claimed size ranges could be used. Non-Final Act. 5---6.
We are also unpersuaded by Appellants' argument that the
Specification provides evidence that a difference in particle size would result
in a substantially different article. See Reply Br. 3--4 (citing Spec. 11: 10-15,
16: 18-17:5). The "fully densified" bodies of Yu having "few pores" that
Appellants refer to are those made with a glass powder having a particle size
of 1-5 ~im. For the reasons described above, however, we determine that Yu
is not limited to glass powders having particle sizes falling within this range.
Furthermore, Appellants do not address the larger particle sizes disclosed in
Apel. As a result, we find, as did the Examiner, that Appellants have failed
to provide sufficient evidence of a different result or criticality of the particle
size to overcome the Examiner's prima facie case of obviousness.
CONCLUSION
For the reasons set forth above, we affirm the Examiner's rejection of
claims 4--9 under 35 U.S.C. § 103.
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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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