Ex Parte Hyon et al

Board of Patent Appeals and Interferences

Nov 29, 2010

10643674 (B.P.A.I. Nov. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/643,674 08/19/2003 Suong-Hyu Hyon 1736-000001/REB 5762
27572 7590 11/29/2010
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
BERMAN, SUSAN W
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
11/29/2010 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 SUONG-HYU HYON
and MASANORI OKA
__________

Appeal 2010-006737
Application 10/643,674
to reissue U.S. Patent 6,168,626
Technology Center 1700
____________

Before ALLEN R. MacDONALD, MICHAEL P. COLAIANNI, and
KEN B. BARRETT, Administrative Patent Judge.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-006737
Application 10/643,674

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Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
40, 41, 43, 45-53, 84, 85, 87, 89-97, and 99-101 in this divisional reissue
application of U.S. Patent 6,168,626 to Suong-Hyu Hyon et al. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellants disclose a method of making ultrahigh molecular weight
polyethylene (UHMWPE) articles (Hyon col. 1, ll. 7-10).
Claims 40 and 84 are illustrative:
40. A method for producing an ultra high molecular
weight polyethylene block, comprising
(a) crosslinking an ultra high molecular weight
polyethylene block having a molecular weight not less than 5
million by irradiating the block with a high energy radiation at a
level of at least 1 MR;
(b) heating said crosslinked block up to a compression
deformable temperature below the melting point of the
UHMWPE;
(c) subjecting said heated block to pressure; and then
(d) cooling said block.
84. A method for producing an ultra high molecular
weight polyethylene artificial joint component for implantation
in a human or other animal, comprising:
(a) crosslinking an ultra high molecular weight
polyethylene block having a molecular weight not less than 5
million by irradiating the block with a high energy radiation at a
level of at least 1 MR,
(b) heating said crosslinked block up to a compression
deformable temperature below the melting point of the
UHMWPE;
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(c) subjecting said heated block to pressure; then
(d) cooling said block; and
(e) processing said cooled block to form said component.
Appellants appeal the following rejections:
1. Claims 40, 41, 43, 45-53, 84, 85, 87, 89-97, and 99-101 are rejected
under 35 U.S.C. § 251 as improperly recapturing subject matter
surrendered during prosecution of US Patent 6,168,626.
2. Claims 40, 41, 43, 45-53, 84, 85, 87, 89-97, 100, and 101 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Zachariades (US
Patent 5,030,402, patented Jul. 9, 1991) in view of Kitamaru (US
Patent 3,886,056, patented May 27, 1975).
3. Claim 99 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Zachariades in view of Kitamaru and Li (US Patent 5,037,928,
patented Aug. 6, 1991).

Appellants argue the claims as a group with their arguments primarily
directed to claims 40 and 84 (App. Br. 5-31). Therefore, we focus on claims
40 and 84 only in addressing Appellants’ arguments regarding rejections (1)
and (2). Appellants advance no further substantive argument regarding
rejection (3) (App. Br. 32-33)

Rejection (1): Recapture
ISSUE
Did the Examiner err in determining that Appellants’ broadening
changes in claims 40 and 84 do not avoid the recapture rule by the further
change of claims 40 and 84 to recite that the deformation temperature is
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“below the melting point of the UHMWPE” because such a limitation is
claimed in 6,168,626 and thus not an additional material limitation directed
to overlooked subject matter? We decide this issue in the negative.

PRINCIPLE OF LAW
Application of the recapture rule is a three-step process. The
first step is to “determine whether and in what ‘aspect’ the
reissue claims are broader than the patent claims.” “The second
step is to determine whether the broader aspects of the reissued
claim related to surrendered subject matter.” Finally, the court
must determine whether the reissued claims were materially
narrowed in other aspects to avoid the recapture rule.
Pannu v. Storz Instruments, Inc., 258 F.3d 1366, 1371 (Fed. Cir. 2001)
(citations omitted).
The recapture rule may be avoided in a reissue application if the
reissue claims are materially narrower than the original claims in other
overlooked aspects of the invention. Hester Indus. Inc. v. Stein Inc., 142
F.3d 1472, 1482-83 (Fed. Cir. 1998) (interpreting the “materially narrowed”
aspect of the recapture rule as cited in e.g., In re Clement, 131 F.3d 1464,
1470 (Fed. Cir. 1997)).

FACTUAL FINDINGS (FF)
We adopt the Examiner’s findings of fact on pages 3-5 and 8-14 of the
Answer as our own.

ANALYSIS
Appellants argue that claims 40 and 84 do not recapture surrendered
subject matter (App. Br. 5). With regard to the first step summarized by the
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court in Pannu for determining if surrendered subject matter has been
recaptured, Appellants either do not contest the Examiner’s finding that the
claims are broadened in the respects noted on pages 4-5 of the Answer, or
Appellants merely concede that the claim limitation rephrases what was
previously claimed (App. Br. 8-11).
With regard to the second step summarized by the Pannu court,
Appellants argue that the broadening or rephrasing of the features is not an
attempt to recapture surrendered subject matter because the claims of the
divisional reissue are directed to an invention distinct from the invention
claimed in the 6,168,626 patent (App. Br. 11-12). Appellants contend that
claims 40 and 84 are derived from claims 40 and 84, respectively, which
were part of the parent reissue application and were subject to a restriction
requirement by the Examiner (App. Br. 16). Appellants contend that the
Examiner’s restriction evinces that the claims of the divisional reissue
application are distinct from the claims of patent 6,168,626 (App. Br. 13-
16).
These arguments are not persuasive because the divisional reissue
claims are of a different scope than the original reissue claims and include
features that are present in claims 3-6 of the patent 6,168,626 as explained
by the Examiner (Ans. 10). In other words, the claims have been amended
so as to cause the Examiner to reevaluate the basis for restriction and to
determine that the divisional reissue claims 40 and 84 are of a different
scope and are related to the claims of patent 6,168,626 unlike claims 40 and
84 of the parent reissue application (Ans. 10). We agree.
The Examiner correctly explains that claims 3-6 of patent 6,168,626
contain the subject matter of claims 40 and 84 and that claims 40 and 84
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include subject matter surrendered during prosecution of the patented claims
(Ans. 4-5, 9-10). Therefore, it appears that Appellants are attempting to
recapture subject matter surrendered during prosecution of the application
that issued as patent 6,168,626.
Regarding the third step of the recapture analysis recited in Pannu,
Appellants argue that even if the claims are broadened in certain respects,
the claims are materially narrowed in other respects so as to avoid the
recapture rule (App. Br. 17). Appellants argue that limiting the deformation
temperature range to below the melting point of UHMWPE in claims 40 and
84 materially narrows the claims so as to avoid the recapture rule (App. Br.
17-21).
The Examiner responds that adding the limitation that the deformable
temperature is below the melting point does not materially limit the scope of
the reissue claims relative to patent claim 5 that recites the deformable
temperature is in a range between 50°C lower than the melting temperature
of the crosslinked ultra high molecular weight polyethylene to 80°C higher
than the melting temperature (Ans. 10-13). The Examiner further notes that
the deformable temperature range claimed in divisional reissue claims 40
and 84 is encompassed by claim 5 of patent 6,168,626 (Id.). We agree.
Appellants argue that limiting the deformable temperature to below
the melting point of the UHMWPE removes more than half of the range of
suitable temperatures encompassed by the original method claims canceled
during prosecution (App. Br. 21; Reply Br. 8). In other words, Appellants
agree that the range claimed in the divisional reissue is subsumed by the
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patented claims that recite an overlapping temperature range.2 Because the
broadened claims include a portion of the deformable temperature range that
was previously prosecuted, the claims of the divisional application are not
directed to an overlooked subject matter and thus, fail to materially narrow
the claims relative to the patent claims with regard to an overlooked aspect
of Appellants’ invention. Hester Indus. Inc. v. Stein Inc., 142 F.3d 1472,
1482-83 (Fed. Cir. 1998). See also, Manual of Patent Examining
Procedures (MPEP), § 1412.02(V) (8th ed. July 2010) (PTO interpreting
Hester states, “A limitation that had been prosecuted in the original patent
application is not directed to “overlooked aspects” of the disclosed invention
and will not overcome the recapture rejection.”).
Appellants argue that the temperature range in the reissue claims was
neither presented nor prosecuted and thus constitutes an overlooked aspect
(Reply Br. 10). However, we note, like the Examiner (Ans. 10-11), that the
temperature range claimed in the reissue application is included in the range
claimed in the patented claims 3-6. Therefore, the temperature range
claimed in the reissue application was prosecuted as part of the range in the
patented claims.
Appellants’ arguments regarding whether the temperature range of the
reissue claims is “narrower in an aspect unrelated to the rejection” as stated
by the court in Clement is not necessary for us to reach because the court in

2 We further note that the claim limitation that the deformable temperature is
“below the melting point of the UHMWPE” appears to be broader than the
original claims with respect to the lower limit on the temperature range. The
original patented claim 5 included a lower limit of 50°C below the melting
point on the temperature range (claim 5 of 6,168,626 patent). The claims
now include deformable temperatures that are greater than 50°C below the
melting point.
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Hester appears to have construed the meaning of that portion of the Clement
decision regarding narrow aspects as requiring the reissue claims be
“materially narrower in . . . overlooked aspects of the invention.” Hester,
142 F.3d at 1482-83. Therefore, our analysis above regarding Hester
addresses these arguments.
For the above reasons, we agree with the Examiner that the changes to
the claims enumerated on pages 3-5 of the Answer attempt to recapture
surrendered subject matter and violate § 251 and Appellants’ attempts to
narrow the reissue claims does not avoid the recapture rule. We affirm the
Examiner’s rejection of claims 40, 41, 43, 45-53, 84, 85, 87, 89-97, and 99-
101 under 35 USC § 251 as improperly attempting to recapture surrendered
subject matter.

Rejections (2) & (3)
Appellants argue the claims under rejection (2) as a group, of which
we select claims 40 and 84 as representative. 37 C.F.R. § 47.31(c)(1)(vii).
Appellants provide no further argument regarding the rejection of claim 99
under rejection (3) (App. Br. 32-33). Therefore, claim 99 stands or falls
with claim 84.
ISSUE
Did the Examiner err in determining that the combined teachings of
Zachariades and Kitamaru would have rendered obvious the subject matter
of claims 40 and 84? We decide this issue in the negative.

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PRINCIPLES OF LAW
When assessing the obviousness of claimed subject matter, a court
must ask whether the improvement is more than the predictable use of prior
art elements according to their established function. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007).

ADDITIONAL FACTUAL FINDINGS
We adopt the Examiner’s findings of fact on pages 5-8 and 14-16 as
our own.
ANALYSIS
Appellants argue that there is no apparent rationale for combining
Zachariades with Kitamaru other than impermissible hindsight (App. Br.
29). Appellants contend that Zachariades’ invention is directed to forming
prosthetic materials which are different materials than Kitamaru’s films or
sheets such that an ordinarily skilled artisan would not have any reason to
look to Kitamaru (App. Br. 30). Appellants argue that Zachariades teaches
to cross-link after molding such that one skilled in the art would not have
modified Zachariades process to cross-link before molding (id.). Appellants
contend that the Examiner has provided no rationale regarding why just one
of Kitamaru’s features would have been selected to be combined with
Zachariades (App. Br. 31).
Contrary to Appellants’ arguments, the Examiner’s rationale is based
on the fact that both Zachariades and Kitamaru teach the same material
(UHMWPE) and Kitamaru teaches benefits of improved transparency and
excellent dimensional stability at high temperatures by cross-linking before
deformation of the UHMWPE (Ans. 6-7). As the Examiner finds, Kitamaru
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teaches that cross-linking the UHMWPE prior to extending or shaping
increases the melting point and the dimensional stability at high
temperatures improves (Kitamura, col. 2, ll. 13-25; Ans. 7). Indeed,
Kitamaru focuses on cross-linking prior to extending as the reason for
providing the improved properties. Accordingly, the art provides the focus
on using the cross-linking step prior to molding.
Based on the art’s focus on cross-linking prior to molding to improve
the properties of the material, using such a technique appears to be nothing
more than the predictable use of a prior art element (i.e., cross-linking prior
to molding) according to its established function (i.e., to improve material
properties such as increase the melting point). KSR, 550 U.S. at 417.
Appellants disclose that that the oriented (i.e., irradiated to crosslink)
UHMWPE has improved thermal properties such as increased melting point
(Hyon, col. 2, ll. 47-55; col. 3, ll. 10-15; col. 7, ll. 4-5). Because Appellants
have not shown any error in the Examiner’s stated rationale, we are
unpersuaded by the argument.
We are unpersuaded by Appellants’ argument that Zachariades
(artificial joints) and Kitamaru (i.e., films, sheets, fibers) are directed to
different products such that one skilled in the art would not have looked to
the other reference. As noted, the Examiner relies on the fact that both
references teach using UHMWPE as a reason for combining the teachings.
Moreover, Zachariades teaches forming UHMWPE structures with “reduced
thicknesses” or a “thinner load” having enhanced mechanical properties (col.
2, ll. 39-68; col. 3, ll. 45-49). The Examiner finds that Zachariades’
acetabular cup is a thin structure such as a film or sheet (Ans. 15).
Appellants do not respond to this finding. Accordingly, Appellants have not
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shown error in the Examiner’s finding that the structures of Zachariades and
Kitamaru are structurally similar.
Appellants’ argument that there is no reason to modify Zachariades’
process that teaches cross-linking after molding to use Kitamaru’s teachings
improperly attacks the references individually instead of looking at the
teachings of the references as a whole. For the reasons noted above,
Kitamaru provides the reason for modifying Zachariades to cross-link before
extending: to provide UHMWPE articles with improved dimensional
stability and transparency at high temperatures.
Regarding claim 84, Appellants argue that the prior art fails to teach
further processing to make a final product after deforming and cooling the
UHMWPE (App. Br. 31). However, Zachariades teaches that the deformed
UHMWPE can used as a precursor for its machining into a final product as
explained by the Examiner and that post-processing (i.e., after molding)
includes cutting off the excess by, for example, by stamping (Ans. 16; col. 4,
ll. 15-18). Appellants do not dispute these findings.
For the above reasons, we affirm the Examiner’s § 103 rejections of
claims 40, 41, 43, 45-53, 84, 85, 87, 89-97, 100, and 101 over Zachariades in
view of Kitamaru and of claim 99 over Zachariades in view of Kitamaru and
Li.

DECISION
The Examiner’s decision 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)(1)(2010).

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ORDER
AFFIRMED

bar

HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303