Ex Parte Dixon et al

Board of Patent Appeals and Interferences

Jan 25, 2012

10419011 (B.P.A.I. Jan. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ROBERT A. DIXON and DONALD J. HACKMAN
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Appeal 2010-000866
Application 10/419,011
Technology Center 3700
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Before STEFAN STAICOVICI, KEN B. BARRETT and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a), from a
rejection of claims 8, 10, 16-18 and 21-32. Claims 1-7, 9, 11-15, 19 and 20
are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

The Claimed Subject Matter
The claimed subject matter is directed to a biodegradable bone
stabilizer that is rigid under both tensile and compressive forces in the length
direction. Independent claim 21 is illustrative of the claims on appeal and is
reproduced below:
21. An arrangement for stabilizing a space in a bone column
between a pair of adjacent bones, comprising:
an implant body, sized and adapted for insertion into the
space; and
a biodegradable, non-bone, fixation plate, having a length
and rigidity under both tensile and compressive forces in the
length direction for secure affixation to each of the adjacent
bones, retention of the implant in the space and maintenance of
a desired distance, geometry and continuity of the space for a
sufficient time to allow bone healing.

References Relied on by the Examiner
Benezech US 6,235,059 B1 May 22, 2001
Serhan US 2002/0143329 A1 Oct. 3, 2002

The Rejections on Appeal
1. Claims 8, 16, 18, 21, 22, 23 and 29-32 are rejected under 35 U.S.C.
§ 102(e) as being anticipated by Serhan (Ans. 3).
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2. Claims 10, 171, 24 and 28 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Serhan (Ans. 4).
3. Claims 21, 22 and 24-27 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Benezech and Serhan (Ans. 5).

ISSUE
1. Has the Examiner provided sufficient evidence and technical reason to
show that Serhan discloses, in accordance with 35 U.S.C. § 102(e), a
biodegradable member having rigidity under both tensile and compressive
forces in the length direction?
2. Has the Examiner provided sufficient evidence and technical reason to
show that the combination of Benezech and Serhan teach, in accordance
with 35 U.S.C. § 103(a), a biodegradable rigid member?

ANALYSIS
The rejections of claims 8, 16, 18, 21, 22, 23 and 29-32
as anticipated by Serhan
Appellants argue the two independent claims, i.e., apparatus claim 21
and method claim 32, together (Br. 10). We select claim 21 for review. The
remaining dependent claims (i.e., claims 8, 16, 18, 22, 23 and 29-31) will
stand or fall with these independent claims.
Claim 21 requires an elongated “biodegradable” plate having “rigidity
under both tensile and compressive forces in the length direction.” The
Examiner identifies Serhan’s plate 5 as having such rigidity and states that

1 The Examiner identifies claim 18, but the subject matter addressed in the
rejection pertains to claim 17, not 18 (Ans. 4). Appellants address claim 17
in the Appeal Brief (Br. 12).
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“the manner in which a device is intended to be employed does not
differentiate the claimed apparatus from prior art apparatus satisfying the
claimed structural limitations” (Ans. 3-4). “The examiner argues that
Serhan teaches an element (5) capable of acting as a plate” because “this
element is disclosed as being constructed of metals or other materials
(paragraph 0085), it is the Examiner’s position that it would have some
resistance to compression as required by the term ‘rigidity’” (Ans. 6-7).
Appellants dispute that Serhan’s member possesses “rigidity under
both tensile and compressive forces” (Br. 11, 12). Appellants, however,
acknowledge that “the Examiner is correct that some metals may be rigid”
but contend that it “is undisputed that the metals are not ‘biodegradable’” as
also claimed (Br. 12).
As indicated by the Examiner, Serhan expressly teaches the use of
metals as well as “non-metallic materials such as permanent or
bioresorbable materials such as carbon fiber materials, resins, plastics and
ceramics” (Serhan ¶ [0085]; Ans. 7). The Examiner addresses Serhan’s use
of ceramics and finds that ceramics “have rigidity under both compressive
and tensile forces” and “are bioresorbable” (Ans. 7).
Appellants do not address the Examiner’s recitation to ceramics, and
thus do not point to error in the Examiner’s finding that such ceramics are
biodegradable and have rigidity under both compressive and tensile forces.
Instead, Appellants address Serhan’s use of metal contending that “woven
metal cloth or mail lacks compressive strength in at least one direction” (Br.
12). Appellants’ contention is not persuasive as it does not explain how
Serhan’s element 5 is incapable of acting as a plate nor does Appellants’
contention address the Examiner’s explicit finding that bioresorbable
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ceramics have the requisite rigidity for member 5 as indicated by Serhan
(Ans. 6-7; Serhan ¶ [0085]). We also disagree with Appellants’ assertion
that the Examiner has applied an impermissibly broad construction (Br. 12).
Based on the record presented, we are not persuaded by Appellant’s
contentions that “the above arguments are sufficient to establish that Serhan
‘329 does not anticipate claim 21” (Br. 12). Accordingly, we sustain the
Examiner’s rejection of claims 8, 16, 18, 21, 22, 23 and 29-32 as anticipated
by Serhan.
The rejections of claims 10, 17, 24 and 28
as being unpatentable over Serhan
Claims 10, 17, 24 and 28 each depend either directly or indirectly
from claim 21, the rejection of which was have sustained. These dependent
claims are directed to the strength or the material of the plate (claims 10 and
17) or the implant’ manner of fixation to the plate (claims 24 and 28). In
addressing each of these dependent claims, the Examiner relies on Serhan to
conclude that the claimed subject matter is obvious (Ans. 5).
Appellants contend that “claims 10, 17, 24 and 28 are all allowable as
proper dependent claims of independent claim 21” and rely on arguments
previously presented with respect to claim 21 (Br. 13). Further, and
specifically with respect to claims 24 and 28, Appellants reiterate the
Examiner’s finding that “the implant of Serhan et al. is capable of being
affixed/integrally formed with the fixation plate” (Br. 13, Ans. 5).
Appellants contend that because Serhan’s implant 2 is “part of the prior art
and does not provide it with a reference numeral, it is the applicant’s
position that it would be entirely speculative to suggest that Serhan would
ever have considered this” (Br. 13). The test for obviousness is not that
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which is stated by Appellants (i.e., whether “Serhan would ever have
considered this”) but instead the test is that which is stated by the Examiner,
i.e., whether one skilled in the art at the time of the invention would have
considered this (Br. 13; Ans. 5). Appellants do not address the Examiner’s
position that one skilled in the art at the time of the invention would have
considered it obvious to “affix/integrally form the implant with the fixation
plate” (Ans. 5). Therefore, Appellants have not persuaded us of err in the
Examiner’s rejection of claims 24 and 28. As Appellants present no
additional arguments that remedy the discrepancies noted supra, and based
on the record presented, we sustain the Examiner’s rejection of dependent
claims 10, 17, 24 and 28.
The rejections of claims 21, 22 and 24-27 as being unpatentable over
Benezech and Serhan
Appellants argue these claims together and we select independent
claim 21 for review (Br. 13). In this rejection, the Examiner relies on
Benezech for teaching all the limitations of claim 21 (including “fixation
plate, 12”) “except for the plate and the screw being biodegradable” (Ans.
6). The Examiner relies on Serhan for disclosing “a biodegradable plate and
fasteners” and further finds that Serhan teaches “the use of biodegradable
materials to allow for movement of the implant see paragraph 0076)” (Ans.
6).
Appellants do not dispute Benezech’s teaching of a rigid plate nor do
Appellants dispute Serhan’s uses of biodegradable material (Br. 13-14).
Instead, Appellants object to the Examiner’s combination of the two because
Serhan fails to teach a biodegradable material “having the rigidity under
both tensile and compressive forces” (Br. 14). "Non-obviousness cannot be
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established by attacking references individually where the rejection is based
upon the teachings of a combination of references." In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986). Accordingly, Appellants’ contention is
not persuasive.
Appellants also dispute the Examiner’s reference to Serhan’s
paragraph 0076 stating that its teaching of flexibility “is exactly contrary to
the rigidity required by claim 21” (Br. 14). Claim 21 does not identify the
degree of rigidity required, only that the plate have “rigidity under both
tensile and compressive forces”. Appellants’ Specification does not require
absolute rigidity but instead states that the claimed implant is “desirably
preloaded to maintain compression…during motion of the body” (Spec. ¶¶
[0013] see also [0023]). As Appellants’ Specification accommodates some
bone movement, Appellants’ contention that Serhan’s flexibility is contrary
to the claimed rigidity is not persuasive. Accordingly, we sustain the
Examiner’s rejection of claims 21, 22 and 24-27 as being unpatentable over
Benezech and Serhan.

CONCLUSION
1. The Examiner has provided sufficient evidence and technical reason
to show that Serhan discloses, in accordance with 35 U.S.C. § 102(e), a
biodegradable member having rigidity under both tensile and compressive
forces in the length direction.
2. The Examiner has provided sufficient evidence and technical reason
to show that the combination of Benezech and Serhan teach, in accordance
with 35 U.S.C. § 103(a), a biodegradable rigid member.

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DECISION
The rejections of claims 8, 10, 16-18 and 21-32 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).

AFFIRMED

MP