Ex Parte Gevaert et al

Board of Patent Appeals and Interferences

Jul 26, 2012

11051992 (B.P.A.I. Jul. 26, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/051,992 02/04/2005 Matthew R. Gevaert CXU-401 9832
22827 7590 07/27/2012
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
SERGENT, RABON A
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
07/27/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
_________________

Ex parte MATTHEW R. GEVAERT, MARTINE LABERGE, and
JIANRONG FENG
_________________

Appeal 2010-007282
Application 11/051,992
Technology Center 1700
_________________

Before CHUNG K. PAK, KAREN M. HASTINGS, and
DEBORAH KATZ, Administrative Patent Judges.

KATZ, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-007282
Application 11/051,992

2
Appellants1 seek our review, under 35 U.S.C. § 134(a), of the
Examiner’s decision to reject claims 1-18, 31-46, 48, and 49. (App. Br. 2.)
Claims 19-30 and 47 have been cancelled. (Id.) We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
Appellants’ claims are directed to implantable biomedical devices that
include biocompatible, elastomeric polyurethanes. (Spec., ¶ [0014].)
Appellants’ claim 1 recites:
A device comprising:
a polyurethane polymer portion, the polyurethane
polymer comprising the reaction product of:
a) a di-isocyanate monomer,
b) a soft segment monomer comprising terminal acidic
hydrogens, and
c) a chain extender comprising a terminal group
including a reactive atom of tri- or higher valency, wherein the
terminal group is capable of side reactions, the chain extender
further comprising an electron withdrawing group immediately
adjacent the reactive atom of tri- or higher valency;
wherein every backbone component of the polyurethane
polymer includes reactive endgroups that form either no
branches from the polyurethane backbone or a single branch on
the polyurethane polymer backbone, the polyurethane portion
having a Shore D hardness greater than about 60D and a tensile
strength equal to or greater than 38 MPa; and
wherein the device is an implantable, biocompatible
device.

(App. Br. 23, Claims App’x.)

1 The real party in interest is said to be Clemson University and Thordon
Bearings, Inc. (App. Br. 1.)
Appeal 2010-007282
Application 11/051,992

3
Rejection of claims 1-13, 16, 31-36, 42, 44-46 and 48 under
35 U.S.C. § 102(b) over Presswood2 (Ans. 3)

Appellants argue that Presswood does not anticipate the device recited
in Appellants’ claims because Presswood does not teach a polyurethane
polymer with a tensile strength of 38 mPa or a Shore D hardness greater than
about 60D, as claimed. (App. Br. 6-7.) Appellants argue that the Examiner
has not established that the tensile strength would be inherent to the
polyurethane of Presswood because one would have had to select a
multitude of components from the teaching of Presswood to meet the tensile
claimed limitation. (Id.)
We agree with Appellants that the Examiner erred in finding that the
tensile strength and Shore D hardness are inherent properties for a
polyurethane polymer with the claimed components. The Examiner relied
on the examples of Presswood, which teach a tensile strength of only 32.8
MPa, to find that a relationship between diamine content and tensile strength
was taught. (Ans. 9.) Even if such a relationship exists and those of skill in
the art would have been able to determine a diamine content that would
produce a polyurethane with the claimed tensile strength and Shore D
hardness, Presswood does not teach a device made of such a polyurethane.
Accordingly, we do not sustain the Examiner’s rejection under 35 U.S.C.
§ 102(b).

2 Presswood, U.S. Patent No. 4,631,298, which issued December 23, 1986.
Appeal 2010-007282
Application 11/051,992

4
Rejections of claims 1-13, 15, 31-36, 38-41, 46, and 48 under
35 U.S.C. § 103(a) Townley3 in view of Presswood (Ans. 3-4)

The Examiner cited Townley as teaching an implantable,
biocompatible polyurethane device made of the reaction product of all the
claimed components, including a diamine chain extender, except its chain
extender does not meet the claimed limitations. (Ans. 4.) The Examiner
cited Presswood for the teaching an aromatic diamine chain extender, such
as dimethylthioltoluene diamine, which Appellants do not dispute meets the
claimed limitations. (Id., see Presswood, e.g., col. 1, ll. 46-56, and col. 3, ll.
14-18.) The Examiner finds that Presswood teaches that these chain
extenders provide improved processing and physical properties of the
resulting polyurethane. (Ans. 4, citing Presswood, col. 1, ll. 55-61.)
Appellants argue that the materials of Presswood have different
mechanical properties than those of Townley and that those in the art would
not have combined their teachings because of these differences. (App. Br. 8-
9; Reply Br. 6.) Appellants cite to the “best” polyurethanes of Townley,
which have reportedly greater hardness, tensile strength, and elongation
break characteristics compared with the characteristics of the polyurethanes
taught in Presswood. (App. Br. 10.) Appellants argue that this difference
would have taught away from the combination of references. (Id. at 11.)
Appellants also argue that Townley teaches curing the polyurethane
for one hour, while Presswood teaches a gel time of seconds. (Id. at 12;
Reply Br. 6.) According to Appellants, those of skill in the art would not

3 Townley et al., U.S. Patent No. 6,302,916 B1, which issued October 16,
2001.
Appeal 2010-007282
Application 11/051,992

5
have looked to the teachings of Presswood to improve the polyurethane of
Townley because of this difference. (App. Br. 13.)
We are not persuaded by Appellants’ arguments. Appellants have not
provided evidence sufficient to persuade us that those of skill in the art
would not have been led to substitute the chain extender of Presswood for
the chain extender of Townley, given that the chain extender of Presswood
was taught to improve physical properties of polyurethanes.
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Appellants’
arguments show only that the polyurethanes of Townley and Presswood
differ. It is reasonable that knowing the advantages of the chain extenders of
Presswood would have given those in the art a reason to use them in the
polyurethane of the devices of Townley.
Accordingly, the Examiner did not err in rejecting the claims over the
combination of Townley and Presswood. Appellants do not argue for the
separate patentability of the other claims rejected over Townley and
Presswood. Thus the Examiner did not err in rejecting those claims over
these references as well. See 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2010-007282
Application 11/051,992

6
Rejection of claims 1-12, 14, 15, 31-35, 37-41, 46, and 48 under
35 U.S.C. § 103(a) over Townley in view of Oechsle4 (Ans. 4-5)

The Examiner cited Oechsle, which teaches luting agents for filling
cavities and spaces in bones (Oechsle, abstract) as teaching a diamine chain
extender, preferably a trimethylene bis para amino benzoate. (Oechsle, col.
7, ll. 30-41; Ans. 5.) The Examiner found that would have been obvious to
add the diamine chain-extender of Oechsle to polyurethane of Townley
because the polyurethane of Townley is analogous to that of Oechsle and
both are useful as bioimplants. (Ans. 5.)
As in their arguments against the rejection over Townley and
Presswood, Appellants argue that the polyurethanes of Oechsle and Townley
are very different and that there would not have been a reason to combine
the elements of each. (App. Br. 15-19.) Appellants argue that Townley
teaches polyurethanes for load bearing surfaces of replacement joints, while
the material taught in Oechsle is softer and can be an adhesive. (Id. at 16-
19.)
Appellants have not provided evidence sufficient to persuade us that
those of skill in the art would not have looked to Oechsle, which teaches an
implantable, biocompatible device, to improve the devices of Townley and
would not have considered it obvious to use the chain extenders taught
therein. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. at 421.

4 Oechsle, U.S. Patent No. 4,570,270, which issued February 18, 1986.
Appeal 2010-007282
Application 11/051,992

7
Rejections of dependent claims under 35 U.S.C. § 103(a) over
Townley in view of Presswood and Bauman5 (Ans. 5-6) or over Townley
in view of Oechsle and Bauman (Ans. 6-7)

Appellants put forth the same arguments against these rejections as
argued against the rejections over Townley and Presswood or Townley and
Oechsle. (App. Br. 20.) For the reasons provided above, the Examiner did
not err in making these rejections.

Rejection of dependent claim 49 under 35 U.S.C. § 103(a) over
Townley in view of Presswood and Felt6 or over Townley in view of
Oechsle and Felt (Ans. 7-9)

Claim 49 recites the device of claim 31, which is an artificial
intervertebral disc. (App. Br. 27.) Claim 31 recites a device with limitations
similar to those of the device of claim 1. (Id. at 25-26.) The Examiner cited
Felt as teaching a polyurethane composition used in intervertebral disc
replacements. (Ans. 7-8.)
Appellants argue that the polyurethane of Felt is not analogous to the
polyurethane of Townley because it has very different characteristics. (App.
Br. 20-21.) Appellants argue that the polyurethane of Felt is for delivery by
minimally invasive means and curing once inside the body, so is much less
hard than the polyurethane of Townley. (Id.) According to Appellants,
those of skill in the art would not have combined the teachings of Felt with
those of Townley. (Id.)

5 BERNARD D. BAUMAN, SURFACE-MODIFIED POLYMER PARTICLES:
PERFORMANCE ADDITIVES FOR EPOXY AND CAST PU (2002).
6 Felt et al., U.S. Patent No. 6,140,452, which issued October 31, 2000.
Appeal 2010-007282
Application 11/051,992

8
Appellants have not provided evidence sufficient to persuade us that
those of skill in the art would not have used the polyurethane of Townley, as
modified by the chain extenders of either Presswood or Oechsle, in an
intervertebral disc. It is reasonable that such a polyurethane would have
been considered to be a candidate for intervertebral discs.
Accordingly, we are not persuaded that the Examiner erred.

Conclusion
Upon consideration of the record and for the reasons given, the
rejections of the claims under 35 U.S.C. § 103(a) is sustained.
Therefore, we affirm the decision of the Examiner.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED
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