Ex Parte Kasahara et al

Patent Trial and Appeal Board

Sep 21, 2017

12864781 (P.T.A.B. Sep. 21, 2017)

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.
12/864,781 09/20/2010 Shinjiro Kasahara Q119917 7931
23373 7590 09/25/2017
SUGHRUE MION, PLLC
2100 PENNSYLVANIA AVENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
EXAMINER
GOLDEN, CHINESSA T
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
09/25/2017 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHINJIRO KASAHARA and
TAKENORI SAWAMURA
Appeal 2017-000362
Application 12/864,781
Technology Center 1700
Before TERRY J. OWENS, JAMES C. HOUSEL, and
JEFFREY R. SNAY 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 1-6, 19, and 21-25.1 We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim an article with a foamed surface which, the
Appellants state, can be useful as an implant for a living organism (Spec. 1).
Claim 1 is illustrative:
1 Claim 20, which the Appellants include in the claims on appeal
(App. Br. 35), stands withdrawn from consideration by the Examiner
(10/26/2012 Final Rejection, p. 2).
Appeal 2017-000362
Application 12/864,781
1. An article with a foamed surface comprising a body and a
superficial layer formed in a surface of the body, the superficial
layer including small pores with small diameters and large
pores with large diameters,
wherein the article is made of a plastic; a part of the
small and large pores are open pores which are formed in the
surface of the superficial layer and are open to the outside; the
open pores comprise small open pores with an average diameter
of 5 pm or less and large open pores with an average diameter
from 10 to 200 pm; the large open pores that are in the surface
of the superficial layer have an inner wall with passages
connected with the small pores and the large pores; a distance
between adjacent large open pores is 5 pm or larger; and the
superficial layer comprises a plastic and the body consists of
(a) the plastic; optionally (b) additives selected from the group
consisting of an antistatic agent, an antioxidant, a light
stabilizer, a lubricant, an antiblocking agent, an ultraviolet
absorber, an inorganic filler, and a colorant; and, optionally,
(c) at least one fiber selected from the group consisting of
carbon fiber, glass fiber, ceramic fiber, metal fiber and organic
fiber.
Frauchiger
Erbe
Wallick
Devine
Morrissette
The References
US 2005/0019365 A1
US 2005/0169956 A1
US 2007/0111165 A1
WO 02/00275 A1
WO 2007/051307 A2
The Rejections
Jan. 27, 2005
Aug. 4, 2005
May 17, 2007
Jan. 3, 2002
May 10, 2007
The claims stand rejected as follows: claims 1-6, 19, and 21-25 over
Devine in view of Erbe, claims 1—4, 19, and 21-24 over Morrissette in view
of Erbe, claims 5 and 25 over Morrissette in view of Erbe and Wallick, and
claim 6 over Morrissette in view of Erbe and Frauchiger.
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Appeal 2017-000362
Application 12/864,781
OPINION
We reverse the rejections. We need address only the independent
claims (1, 22, and 23).2 Those claims require an article comprising a body
having thereon a superficial layer with small open pores having an average
diameter of 5 pm or less and large open pores having an average diameter
from 10 to 200 pm.
Devine discloses an article comprising a support having thereon a
polymeric porous layer with surface pores having a diameter of at least
10 pm, especially at least 100 pm, where “a surface may include pores
having diameters which are larger or smaller than those mentioned” (p. 4,
11. 2-6; p. 5,11. 15-24). The polymer can be polyetheretherketone (PEEK)
(p. 13,11. 26-33).
Morrissette discloses a porous PEEK material comprising a nonporous
layer (14) and a porous layer (12), where the porous layer is made by mixing
flakes or powder of a first material (which can be PEEK) with a second
material (which can be salt), where the first material has a melting point
lower than that of the second material, heating the mixture under pressure to
a temperature between those melting points, cooling the mixture until it
hardens, and removing the second material from the first material (by, e.g.,
dissolving the second material) (p. 2,11. 4-11; p. 3,1. 30 - p. 4,1. 23).
Erbe discloses “biocompatible bone graft materials that comprise a
biocompatible, resorbable polymer [which can be a structural protein such as
collagen] and the oxidation-reduction reaction product of at least one metal
2 The Examiner does not rely upon Wallick or Frauchiger for any disclosure
that remedies the deficiency in Morrissette and Erbe as to the independent
claims (Ans. 19-21).
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Appeal 2017-000362
Application 12/864,781
cation, at least one oxidizing agent, and at least one oxidizable precursor
anion” (]f 17). The reaction product has macroporosity (pore diameters
greater than about 100 pm), mesoporosity (pore diameters between about
10 pm and 100 pm) and microporosity (pore diameters below about 10 pm)
“which allow the graft material to have extraordinary imbibition and
absorption properties” (]fl| 18, 45). In applications requiring load bearing
capabilities the graft materials may have affixed thereto meshes or plates
made of a material which can be PEEK, where “the mesh may be affixed in
the body using sutures, staples, screws, cerclage wire or the like” fl[ 60).
The Examiner finds that Erbe’s “superficial layer of the article is
made of polyetheretherketone (page 5, paragraph [0060])” and that,
therefore, one of ordinary skill in the art would have made Devine’s and
Morrissette’s porous layers such that they have Erbe’s pore sizes “to provide
an implant which is able to wick/soak/imbibe materials very quickly and is
capable of retaining them (Erbe, page 2, paragraph [0018], page 3, paragraph
[0043])” (Ans. 3-4, 17, 19, 23).
The portion of Erbe relied upon by the Examiner does not disclose
that the porous graft material can be made of PEEK but, rather, discloses
that if the graft material needs load bearing capabilities it can be affixed to a
mesh or plate which can be made of PEEK (]f 60). The Examiner does not
establish that Erbe discloses, or would have suggested to one of ordinary
skill in the art, that the PEEK can have the graft material’s pore sizes.
Thus, the Examiner has not set forth a factual basis which is sufficient
to support a conclusion of obviousness of the Appellants’ claimed invention.
See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on
section 103 clearly must rest on a factual basis, and these facts must be
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Appeal 2017-000362
Application 12/864,781
interpreted without hindsight reconstruction of the invention from the prior
art”). Accordingly, we reverse the rejections.
DECISION/ORDER
The rejections of claims 1-6, 19, and 21-25 over Devine in view of
Erbe, claims 1—4, 19, and 21-24 over Morrissette in view of Erbe, claims 5
and 25 over Morrissette in view of Erbe and Wallick, and claim 6 over
Morrissette in view of Erbe and Frauchiger are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED
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