11653654 (B.P.A.I. May. 24, 2012)

Ex Parte He et al

Board of Patent Appeals and InterferencesMay 24, 2012

11653654 (B.P.A.I. May. 24, 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. 11/653,654 01/16/2007 Shulin He OSTEONICS 3.0-532 CIP 6942 530 7590 05/24/2012 LERNER, DAVID, LITTENBERG, KRUMHOLZ & MENTLIK 600 SOUTH AVENUE WEST WESTFIELD, NJ 07090 EXAMINER PEPITONE, MICHAEL F ART UNIT PAPER NUMBER 1767 MAIL DATE DELIVERY MODE 05/24/2012 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 SHULIN HE and MATTHEW P. POGGIE ________________ Appeal 2011-001636 Application 11/653,654 Technology Center 1700 ________________ Before CHUNG K. PAK, TERRY J. OWENS, and JEFFREY T. SMITH, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-24, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a bone cement and a method for determining the setting time of a bone cement. Claim 13 is illustrative: Appeal 2011-001636 Application 11/653,654 2 13. A bone cement comprising: a liquid component comprising a monomer of an acrylic ester; a powdered component comprises a methyl methacrylate polymer which when mixed with said liquid component polymerizes and sets to form a hardened bone cement and a first and second color additives which impart a first color upon mixing with said liquid and powdered component and a second color upon setting of said bone cement. The References References relied upon by the Examiner Kemper US 4,261,879 Apr. 14, 1981 Kindt-Larsen US 4,910,259 Mar. 20, 1990 Todo US 6,756,421 B1 Jun. 29, 2004 Reference relied upon by the Appellants Lee US 4,150,485 Apr. 24, 1979 The Rejections Claims 1-24 stand rejected under 35 U.S.C. § 103 over Kindt-Larsen in view of Kemper and Todo. OPINION We reverse the rejection. Kindt-Larsen discloses an acrylic bone cement which is especially useful for orthopedic implants (col. 1, ll. 7-8). Kemper discloses a composition for sealing pits and fissures in tooth surfaces to prevent tooth decay (col. 1, ll. 4-6). The composition contains a colorant which indicates the location and quantity of the applied composition and changes color when the composition gels, thereby Appeal 2011-001636 Application 11/653,654 3 indicating the composition’s gel time (col. 1, ll. 14-21; col. 2, ll. 3-8 and 15- 21; Examples 1 and 2).1 The Examiner argues that it would have been obvious to one of ordinary skill in the art to include Kemper’s colorant in Kindt-Larsen’s bone cement to provide a visual gel time indicator (Ans. 4). The Examiner argues that there would be “polymeric network formation via free radical polymerization of multifunctional (meth)acrylate monomers with subsequent crosslinking (curing) and solidification past the gel point” (Ans. 15). The Appellants argue that “one of ordinary skill in the art at the time of the invention would not have been motivated to combine Kemper with Kindt-Larsen. In particular, there is no teaching in the cited art that the colorants can provide an indication of setting, but instead the art merely teaches that a color change is indicative of a ‘gel time’” (Br. 18). The Appellants rely upon Lee (col. 14, ll. 18-24) as evidence that a dental restorative composition takes longer to set than to gel (Br. 19-20). Establishing a prima facie case of obviousness of an invention comprising a combination of known elements requires “an apparent reason to combine the known elements in the fashion claimed.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The evidence relied upon by the Examiner shows that gel time indication is a useful property of a composition for sealing pits and fissures in teeth, but the Examiner has not established that gel time indication is a desirable property of a bone cement. Kindt-Larsen’s examples appear to report properties of a set bone cement, whereas both the Lee reference relied 1 Kemper’s term “solidifies” pointed out by the Examiner (Ans. 15) refers to a gel (col. 3, ll. 61-64). Appeal 2011-001636 Application 11/653,654 4 upon by the Appellants and the Examiner’s discussion of the meaning of “gel point” (Ans. 15) indicate that a cement’s gel point occurs before the cement sets. Thus, the Examiner has not provided the required apparent reason to combine Kemper’s colorant with Kindt-Larsen’s bone cement. Accordingly, we do not sustain the Examiner’s rejection. DECISION/ORDER The rejection of claims 1-24 under 35 U.S.C. § 103 over Kindt-Larsen in view of Kemper and Todo is reversed. It is ordered that the Examiner’s decision is reversed. REVERSED sld