Ex Parte Hyon et al

Board of Patent Appeals and Interferences

Nov 29, 2010

10643673 (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.
10/643,673 08/19/2003 Suong-Hyu Hyon 1736-000001/REC 5763
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 2010-006736
Application 10/643,673
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 2010-006736
Application 10/643,673

2
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
104, 109-111, 139, 149-153, and 164-168 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 104 and 139 are illustrative:
104. A method for making an ultra high molecular
weight polyethylene (UHMWPE) article, for subsequent
processing to make an artificial joint, comprising:
(a) crosslinking a raw UHMWPE article slightly with
low dose irradiation: and then
(b) heating said irradiated article to a compression
deformable temperature between 50°C below the melting point
of said article and said melting point;
(c) compression deforming the heated article; and then
(d) cooling the article while maintaining the deformed
state.
139. A method of making a component for an artificial
joint comprising ultra high molecular weight polyethylene
(UHMWPE), comprising:
(a) crosslinking a raw UHMWPE article slightly with
low dose irradiation; and then
(b) heating the irradiated article to a compression
deformable temperature by heating at a temperature from its
melting point minus 50°C to its melting point;
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(c) applying pressure to said irradiated article at a
deformation temperature;
(d) heating said irradiated article to a temperature of from
around 100°C to 130°C for a period of at least 1 hour; and then
(e) cooling the article while maintaining the deformed
state: and then
(f) .processing said article to make said component.

Appellants appeal the following rejections:
1. Claims 104, 109-111, 139, 149-153, and 164-168 are rejected under
35 U.S.C. § 251 as improperly recapturing subject matter surrendered
during prosecution of US Patent 6,168,626.
2. Claims 104, 109-111, 139, 149-153, and 164-168 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Zachariades (US Patent
5,030,402, issued Jul. 9, 1991) in view of Kitamaru (US Patent
3,886,056, issued May 27, 1975).

Appellants argue the claims as a group with their arguments primarily
directed to claims 104 and 139 (App. Br. 5-31). Therefore, we focus on
claims 104 and 139 only in addressing Appellants’ arguments.

Rejection (1): Recapture
ISSUE
Did the Examiner err in determining that Appellants’ broadening
changes in claims 104 and 139 do not avoid the recapture rule by the further
change of claims 104 and 139 to recite that the deformation temperature is
“between 50°C below the melting point of said article and said melting
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point” because such 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 8-13 of the
Answer as our own.

ANALYSIS
Appellants argue that claims 104 and 139 do not recapture
surrendered subject matter (App. Br. 5). With regard to the first step
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summarized by the 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). Appellants contend that
claims 104 and 139 are derived from claims 229 and 264 which were part of
the parent reissue application and were subject to a restriction requirement
by the Examiner (App. Br. 13). 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 (id.).
These arguments are not persuasive because the claims have been
amended to include features that are present in claims 3-6 of patent
6,168,626 as explained by the Examiner (Ans. 9). Indeed, Appellants
concede that the amended reissue claims of the present divisional reissue
application contain limitations not present in the original reissue claims from
which they are derived (App. Br. 16). 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 present claims 104 and 139 are not unrelated to the
claims of patent 6,168,626 as was the case with claims 229 and 264 (Ans. 9).
We agree.
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The Examiner correctly explains that claims 3-6 of patent 6,168,626
contain the subject matter of claims 104 and 139 and that the changes to
claims 104 and 139 include subject matter surrendered during prosecution of
the patented claims (Ans. 3-5, 9). 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 temperature
range for the deformation temperature to be below the melting point of
UHMWPE in claims 104 and 139 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 between 50°C below the melting point and 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. 11).
The Examiner further notes that the deformable temperature range claimed
in reissue claims 104 and 139 is fully encompassed by claim 5 of patent
6,168,626 (Ans. 9). We agree.
Appellants agree that the range claimed in the divisional reissue is
subsumed by the patented claims that recite an overlapping temperature
range (App. Br. 19). Because the broadened claims include a portion of the
deformable temperature range that was previously prosecuted, the claims of
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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. 8). However, we, like the Examiner (Ans. 9), note that the
temperature range claimed in the reissue application is included in the range
claimed in the patented claims 3-6. Therefore, the 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
Hester appears to have construed the meaning of that portion of Clement 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 4-5 of the Answer attempt to recapture
surrendered subject matter and violate § 251 and Appellants’ attempts to
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narrow the reissue claim does not avoid the recapture rule. We affirm the
Examiner’s rejection of claims 104, 109-111, 139, 149-153, and 164-168
under 35 USC § 251 as improperly attempting to recapture surrendered
subject matter.

Rejection (2)
Appellants argue the claims under rejection (2) as a group, of which
we select claims 104 and 139 as representative. 37 C.F.R. § 47.31(c)(1)(vii).

ISSUE
Did the Examiner err in determining that the combined teachings of
Zachariades and Kitamaru would have rendered obvious the claimed subject
matter? We decide this issue in the negative.

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 6-8 and 13-14 as
our own.
ANALYSIS
Appellants argue that there is no apparent rationale for combining
Zachariades with Kitamaru other than impermissible hindsight (App. Br.
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27). 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. 29-30). 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 (App. Br.
30). 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. 30).
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. 7-8). As the Examiner finds, Kitamaru
teaches that cross-linking the UHMWPE prior to extending or shaping
increases the melting point and the dimensional stability at high
temperatures improves (Kitamaru, col. 2, ll. 13-25). 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)
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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. 14).
Appellants do not respond to this finding. Accordingly, Appellants have not
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 139, 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
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UHMWPE can used as a precursor which is machined 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, stamping (Ans. 14; col. 4, ll.
15-18) and thus meet the claimed features. Appellants do not dispute these
findings.
For the above reasons, we affirm the Examiner’s § 103 rejection of
claims 104, 109-111, 139, 149-153, and 164-168 over Zachariades in view
of Kitamaru.

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).

ORDER
AFFIRMED

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