Ex Parte Edwards

Patent Trial and Appeal Board

Dec 17, 2015

12345133 (P.T.A.B. Dec. 17, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/345, 133 12/29/2008 Jon M. Edwards
23643 7590 12/21/2015
Barnes & Thornburg LLP (IN)
11 S. Meridian Street
Indianapolis, IN 46204
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.
265280-207781 7299
EXAMINER
MATTHEWS, WILLIAM H
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
12/21/2015 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):
INDocket@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JON M. EDWARDS
Appeal2013-003801
Application 12/345, 133
Technology Center 3700
Before WILLIAM A. CAPP, BRANDON J. WARNER, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-3, 7, and 9-13 as unpatentable under 35 U.S.C.
§ 103(a) over Howmedica (EP 1 611 854 Al, pub. Jan 4, 2006) and Jahng
(US 2007 /0225710 Al, pub. Sept. 27, 2007). We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
Appeal2013-003801
Application 12/345, 133
THE INVENTION
Appellant's invention relates to an orthopaedic cutting tool with a
metallic cutting insert. Spec. i-f 2. Claim 1, reproduced below, is illustrative
of the subject matter on appeal.
1. An orthopaedic cutting tool, comprising:
a metallic cutting insert having a plurality of chemically
etched holes, the cutting insert being configured to remove
portions of a patient's bone; and
a body molded to the cutting insert such that each of the
plurality of chemically etched holes is at least partially filled by
a portion of the body.
OPINION
Claims 1-3, 7, and 9-11
Appellant argues claims 1-3, 7, and 9-11 as a group. Appeal Br. 5.
We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Howmedica discloses an orthopaedic cutting
tool comprising metallic cutting inserts. Final Action 3. The Examiner
further finds that Howmedica's cutting tool has an injection molded polymer
body that is molded to the metallic cutting inserts. Id. In addition, the
Examiner finds that holes 40a, 40b, and 42b in the metallic cutting inserts
are at least partially filled with polymeric material during the molding
process. Id. These findings of fact are supported by the record and are not
disputed by Appellant. Appeal Br. 5-8.
The Examiner observes that Howmedica is silent as to the holes being
chemically etched. Final Action 4. However, the Examiner notes that
Howmedica teaches that the holes may be constructed from any known
process. Id. (citing Howmedica i-f 19). The Examiner treats the "chemically
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Application 12/345, 133
etched" limitation as a product-by-process limitation. Id. The Examiner
finds that Jahng teaches that chemical etching is well known for use with
metallic orthopaedic instruments. Id. The Examiner concludes that it would
have been obvious to a person of ordinary skill in the art at the time the
invention was made to form Howmedica's holes 40a, 40b, and 42b using the
known technique of chemical etching. Id.
In traversing the rejection, Appellant concedes that Howmedica
teaches that cutting components 13a and 13b can be manufactured from any
process known to one of ordinary skill in the art. Appeal Br. 6. Appellant
argues that Howmedica does not specifically teach the use of chemical
etching to form apertures 40a, 40b, and 42b, a position already conceded by
the Examiner. Id. Appellant argues that Howmedica's apertures lack the
distinctive structural characteristics that would have been imparted by
chemical etching. Id.
Appellant argues that Jahng fails to teach forming holes using a
chemical etching process. Id. Appellant argues that Jahng merely teaches
using chemical etching to form a roughened surface on an article. Id.
Appellant argues that a person of ordinary skill in the art would not have
modified the teachings of Jahng to use chemical etching to form a hole
extending through a metallic cutting insert. Id. Appellant argues that just
because chemical etching is advantageous for forming a roughened surface
on a metallic insert, such does not suggest that the same process would be
advantageous for forming holes extending through a metallic insert. Id. at 7.
In response, the Examiner reiterates that the obviousness rejection is
based on the combined teachings of Howmedica and Jahng. Ans. 5. He
observes that Appellant's Specification describes chemically etched holes as
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Application 12/345, 133
consisting of a variety of shapes. Id. He further states that Howmedica
teaches that alternative techniques are suitable for forming the holes. Id. He
states that Jahng teaches that chemical etching is a well-known alternative
process to machining or stamping. Id. Thus, according to the Examiner, the
applied art suggests the use of chemical etching as an obvious alternative to
stamping or other machining techniques. Id.
In reply, Appellant argues that the Examiner essentially reads the
language "chemically etched" out of the claims. Reply Br. 3. Appellant
argues that the chemically etched holes in Appellant's Specification identify
distinctive structural characteristics provided by the chemical etching
process. Id. (citing Spec. i-f 38). Appellant reiterates its previous argument
from the Appeal Brief that Jahng teaches the use of chemical etching only
for roughening a surface and not for forming holes. Id.
Historically, the practice of allowing subject matter to be claimed
using product-by-process language has developed in response to a need to
enable an applicant to claim an otherwise patentable product that resists
definition by other than the process by which it is made. See In re Thorpe,
777 F.2d 695, 697 (Fed. Cir. 1985). However, even though product-by-
process claims are defined by the process, determination of patentability is
based on the product itself. Id. Thus, the patentability of a product does not
depend on its method of production. Id. "If the product in a product-by-
process claim is the same as or obvious from a product of the prior art, the
claim is unpatentable even though the prior product was made by a different
process." Id.
The instant case deals with the use of holes in connection with a
molding process. The claimed cutting tool has a molded body and a metallic
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Application 12/345, 133
cutting insert. Claims App., Claim 1. The Specification recites that
chemically etched holes have distinctive structural characteristics that create
adhesion between the metallic inserts and the body. Spec. i-f 32. The
Specification discloses that chemically etched holes have a variety of shapes
and can be circular in shape and approximately 1/50 of an inch in diameter.
Id. i-f 37. The Specification further teaches that, as the chemical bath
dissolves metal in a vertical direction, it also dissolves the metal in a
horizontal direction at approximately 20-25 percent of the rate in the vertical
direction. Id. f 3 8. In an alternative embodiment, holes are etched by
exposing areas on only one side of a metallic component with a chemical
bath, but for a longer period of time. Id. i-f 41. This alternative embodiment
features holes with a tapered sidewall. Id. i-fi-141, 72. The body is formed of
an injection-molded polymer. Spec. i-f 6. The body is molded to the cutting
insert such that holes in the cutting insert are at least partially filled by a
portion of the body. Id. i-fi-17, 40, 55, 59, 66, 67.
Howmedica discloses apertures (i.e., holes) on a metallic cutting
instrument. Howmedica i-f 19. The apertures allow polymer material to flow
from one side of the cutting instrument to the other during injection molding
of the polymeric body. Id. Howmedica teaches that any number or any
shaped holes can be included on the cutting sections. Id. It further teaches
that the apertures are not required, but rather improve the connection
between the cutting portion and the body portion. Id. This is essentially the
same purpose that we understand the chemically etched holes in Appellant's
invention are used for.
Jahng discloses a number of means by which elastomer cladding may
be attached to the surface of a rigid element. Jahng i-f 182. In one
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Appeal2013-003801
Application 12/34S, 133
embodiment, elastomer cladding is molded through holes in the rigid
element. Id., Fig. SOC. In another embodiment, the surface of the rigid
element at the interface with the elastomer cladding is roughened by
chemical etching. Id., Fig. SOD. Jahng further teaches that the features
illustrated in Figures SOC and SOD may be used in combination with each
other. Id. i-f 182. Thus, as we understand and interpret the combination of
the Figure SOC and SOD embodiments explicitly disclosed by Jahng, even if
the holes in the Figure SOC embodiment were made by a machining process,
the subsequent roughening of the surface of the machined holes by chemical
etching as taught in the Figure SOD embodiment, would result in the creation
of holes that are "chemically etched," as broadly, but reasonably, construed.
In like manner, roughening the stamped/machined apertures of Howmedica
with chemical etching as taught in paragraph 182 of Jahng would result in
holes that are chemically etched.
Furthermore, even though Jahng specifically discloses using chemical
etching as a technique to roughen a metallic surface, a person of ordinary
skill in the art would understand that such roughening results from chemical
erosion or corrosion. We think the Examiner is correct in finding that
chemical etching processes were well known at the time of the invention.
Ans. 4. We also think that a person of ordinary skill in the art would have
considered it obvious to use a corrosive process, such as chemical etching, to
not only roughen a surface, but also to form a hole.
In view of the foregoing, we are persuaded that the Examiner's
position is supported by a preponderance of the evidence and that the
Examiner's conclusion of obviousness is sound. We sustain the rejection of
claims 1-3, 7, and 9-11.
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Application 12/345, 133
Claims 12 and 13
Claims 12 and 13 depend, directly or indirectly, from claim 10, and
add limitations directed to the body including a plurality of cutting flutes
arranged radially outwardly around a longitudinal axis of the cutting tool.
Claims App. Claim 12 also adds a limitation that each of the cutting inserts
is disposed on one of the cutting flutes. Id. Appellants argue claims 12
and 13 together. Appeal Br. 8-11. We select claim 12 as representative.
The Examiner finds that Howmedica discloses a polymer portion that
fills the space between and along each cutting surface. Final Action 3. The
Examiner finds that such polymer portion comprises a plurality of
longitudinal structures that may be considered cutting flutes having leading
edges aligned with the cutting inserts. Id.
Appellant argues that the Examiner misconstrues the meaning of
"disposed on." Appeal Br. 8-11. Appellant argues that Howmedica's
cutting inserts are "encased within" and not "disposed on" the polymer
body. Id.
In response, the Examiner states that "disposed on" is analogous to
contacting, connected/attached to, or positioned on. Ans. 6. The Examiner
states that Howmedica, at Figure 7, shows three cutting inserts 12 and three
body portions, or flutes, 14, all of which extend radially outward from a
central longitudinal axis of the reamer. Id. The Examiner finds that each
body portion or flute is disposed on a cutting insert since they are in intimate
contact with each other. Id.
In reply, Appellant argues that Howmedica teaches that the body
portion is molded to create a substantially circular cross-section. Reply
Br. 4. Appellant argues that Howmedica, Figure 7, fails to disclose any
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Application 12/345, 133
portions that extend radially outward with channels situated between the
portions. Id.
Howmedica Figure 7 shows a cross section of reamer 10. Figure 7
shows three cutting inserts 12 extending radially outwardly from the
approximate center of the cross-section. Figure 7 also shows body
portions 14 between each of the cutting inserts and extending radially
outwardly. This dispositional relationship between the cutting inserts and
flutes is consistent with the plain and ordinary meaning of "disposed on."
Appellant's reply directs us to language in the Specification that
discloses the presence of a channel 318 that is situated between each pair of
adjacent cutting flutes. Reply Br. 4. However, claim 12 does not include a
limitation directed to a channel disposed between the flutes, and we are not
inclined to import such a limitation from the Specification into the claim.
See Arlington Ind., Inc. v. Bridgeport Fittings, Inc., 345 F.3d 1318, 1327
(Fed. Cir. 2003).
The Examiner's findings are supported by a preponderance of the
evidence and the accompanying legal conclusion of unpatentability is well
founded. We sustain the unpatentability rejection of claims 12 and 13.
DECISION
The decision of the Examiner to reject claims 1-3, 7, and 9-13 is
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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