Ex Parte Kenealy et al

Board of Patent Appeals and Interferences

Jan 5, 2012

11820831 (B.P.A.I. Jan. 5, 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.
11/820,831 06/21/2007 James Kenealy 247168-000347USPT 5167
70001 7590 01/06/2012
NIXON PEABODY, LLP
300 S. Riverside Plaza, 16th Floor
CHICAGO, IL 60606-6613
EXAMINER
SINGH, SUNIL K
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
01/06/2012 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 JAMES KENEALY, BRUCE BERCKMANS III,
and T. TAIT ROBB
__________

Appeal 2010-008397
Application 11/820,831
Technology Center 3700
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and
FRANCISCO C. PRATS, Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-18, directed to a dental implant and a method of inhibiting
microbial growth within the implant. The claims have been rejected as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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Application 11/820,831

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STATEMENT OF THE CASE
Claims 1-18 are pending and on appeal. Appellants do not present
separate arguments for the claims. Therefore, we select claim 1 as
representative of the subject matter on appeal, and the remaining claims will
stand or fall accordingly. 37 C.F.R § 41.37(c)(1)(vii).
Claim 1 reads as follows:
1. A dental implant assembly comprising:
an implant;
an abutment coupled to a top portion of the implant;
a screw for securing the abutment to the implant; and
silver nanoparticles positioned on at least one interior surface of at
least one of the implant and the abutment.
Claims 1-4, 6-12, 15, 16, and 18 stand rejected under 35 U.S.C. §
103(a) as unpatentable over Lustig (US 6,287,115 B1, September 11, 2001)
and Karandikar (US 2007/0003603 A1, January 4, 2007);
claims 5, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lustig, Karandikar, and Beaty (US 5,876,453, March 2,
1999); and
claim 17 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Lustig, Karandikar, and Ishizawa (US 5,478,237, December 26, 1995).
ISSUE
There are three rejections of the claims, but the dispositive issue in all
three is the propriety of the Examiner’s proposed combination of Lustig and
Karandikar, so we will discuss the rejections together.
The Examiner finds, and Appellants do not dispute, that Lustig
discloses a multi-component dental implant assembly comprising an
implant, an abutment, and a screw that meets all the limitations of claim 1,
with the exception of silver nanoparticles positioned on an interior portion of
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Application 11/820,831

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the implant or the abutment (Ans. 3-4). The Examiner cites Karandikar as
evidence that it is conventional to coat a wide variety of medical and dental
devices and products with antimicrobial silver nanoparticles, and concludes
that it would have been obvious for one of ordinary skill in the art to coat the
components of Lustig’s dental implant with silver nanoparticles in order to
render the components antimicrobial.
Appellants contend that “Karandikar lists a large number of uses and
applications for its silver compositions covering vastly different fields of
use” (App. Br. 12), and “it would not have been obvious in view of this
incredibly broad disclosure to position the silver nanoparticles of Karandikar
on a dental implant and/or abutment, much less on an interior surface of the
dental implant assembly’ (id. at 14-15).
The issue raised by this appeal is whether the Examiner has
established that it would have been obvious for one of ordinary skill in the
art to coat the components of Lustig’s dental implant assembly, including
any internal surfaces, with silver nanoparticles, given the teachings of
Karandikar.
PRINCIPLES OF LAW
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). It is proper to “take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” Id. at 418. See also id. at 421 (“A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”).

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FINDINGS OF FACT
1. Claim 1 is directed to a multi-component dental implant
assembly comprising an implant, an abutment, and a screw, wherein silver
nanoparticles are positioned on the implant and/or the abutment. Claim 2
specifies that the implant is made of metal, and claim 3 specifies that the
implant is made from a material including a ceramic material.
2. Lustig discloses dental implant 10, reproduced immediately
below:

Figure 36 depicts Lustig’s dental implant 10, which “generally comprises an
implant fixture assembly 800 and an abutment 900” (Lustig, col. 8, ll. 50-
51), and “[f]ixation screw 1000 [which] is used to attach abutment 900 to
implant fixture assembly 800” (id. at col. 10, ll. 16-17).
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3. The components of Lustig’s dental implant 10 are deployed
sequentially as follows:
[A] hole is formed in the patient’s jaw bone. . . . Then implant
fixture assembly 800 is screwed, distal end first, into the jaw
bone. Next, the distal end of abutment 900 is brought into
engagement with the proximal end . . . of implant fixture
assembly 800, and fixation screw 1000 is used to loosely secure
the two members together. . . . Once the proper orientation of
abutment 900 has been established, fixation screw 1000 is
tightened all the way down, . . . whereby subsequent slippage of
abutment 900 relative to implant fixture assembly 800 will be
prevented. If it is thereafter determined that the alignment of
abutment 900 needs to be adjusted, fixation screw 1000 is
loosened and the process repeated.
(Lustig, col. 10, l. 36 - col. 11, l. 2.)
4. Karandikar discloses devices coated with “antimicrobial
compositions comprising stabilized silver nanoparticles that are formed in a
fluid environment” (Karandikar ¶ 9). The antimicrobial compositions “can
be applied directly to surfaces [of the devices] regardless of the shape and
contours of the devices” (id. at ¶ 8), and “surfaces treated with them . . .
possess antimicrobial action, including difficult to reach surfaces, such as
those of medical devices” (id.). The reference teaches that:
Silver nanoparticles may be formed in situ on a surface,
such as the surface of a medical device. For instance, a method
comprises providing a suspension comprising finely dispersed
particles of a silver compound in which the device is immersed
and the[n] treating the composition with a reducing agent . . .
until all of the silver compound is reduced to silver
nanoparticles that are predominantly mono-disperse so that they
can firmly attach to the surface of the device.
(Id. at ¶17.)

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5. According to Karandikar:
Medical devices which may be made antimicrobial
using the methods and compositions herein include, but are
not limited to, catheters (venous, urinary, Foley or pain
management or variations thereof), stents, abdominal plugs,
feeding tubes, cotton gauzes, fibrous wound dressings (sheet
and rope made of alginates, CMC or mixtures thereof,
crosslinked or non-crosslinked cellulose), foam materials,
collagen or protein matrices, hemostatic materials, adhesive
films, contact lenses, lens cases, bandages, sutures, hernia
meshes, mesh based wound coverings, ostemy and other wound
products, hydrogels, creams, lotions, gels (water based or oil
based), emulsions, liposomes, microspheres, ointments,
adhesives, porous inorganic supports such as titania and those
described in U.S. Pat. No. 4,906,466, chitosan or chitin
powders, metal based orthopedic implants, metal screws and
plates, synthetic fabrics, nylon fabrics or its blends with other
fabric making materials (silk, rayon, wool, polyester, acrylic,
acetate), and fabrics impregnated with silver nanoparticles are
contemplated by the present invention. Other devices,
including dental and veterinary products, and non-medical
devices, made of silicone, polyurethanes, polyamides, acrylates,
ceramics and other thermoplastic materials may be treated with
the nanoparticles compositions of present invention.
(Karandikar ¶ 12 (emphases added).)
DISCUSSION
We agree with the Examiner that it would have been obvious for one
of ordinary skill in the art to coat the separate components of Lustig’s dental
implant, including any internal surfaces, with silver nanoparticles, given the
teachings of Karandikar.
We are not persuaded by Appellants’ contention that “[i]t appears
evident from Karandikar’s very broad listing of over one hundred potential
uses . . . that Karandikar’s inventors intended to list every possible use for its
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antimicrobial compositions that they could dream of” and “dental implants
[were] not included in Karandikar’s myriad of contemplated uses” (App. Br.
13-14). Nor are we persuaded by Appellants’ characterization of
Karandikar’s failure to specifically disclose dental implants as “Karandikar’s
exclusion of dental implants” (Reply Br. 2). Karandikar expressly teaches
that “[m]edical devices which may be made antimicrobial . . . include, but
are not limited to” those listed, and that “[o]ther devices, including dental
and veterinary products . . . may be treated with the nanoparticles
compositions” as well (Karandikar ¶ 12; FF4). In our view, the very fact
that Karandikar is so broad would have suggested to one of ordinary skill in
the art that virtually any medical or dental device, including dental implant
assemblies, could be made antimicrobial by coating with silver
nanoparticles.
Moreover, we disagree with Appellants’ assertion that “Karandikar
does not provide any reason why one skilled in the art . . . would consider
applying its antimicrobial composition to an interior surface (which does not
contact humans, the environment, or the like) anything but unnecessary and
wasteful” (Reply Br. 3). Karandikar teaches that its silver nanoparticles
“may be formed in situ on a surface, such as the surface of a medical device
. . . [by] providing a suspension comprising finely dispersed particles of a
silver compound in which the device is immersed” (Karandikar ¶ 17; FF4).
Clearly, one of ordinary skill in the art, wishing to give any device
antimicrobial properties by coating it with Karandikar’s silver nanoparticles,
would do so before using it on or in a patient, whatever the device. Lustig’s
dental implant is implanted in stages (FF3) (sometimes separated by “a
certain healing period (weeks or months)”) (Reply Br. 4). Thus, the
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components of Lustig’s implant are not joined together prior to implantation,
and surfaces that will ultimately become “interior surfaces” would be
exposed to silver nanoparticles in an immersion bath.
SUMMARY
The Examiner has established that it would have been obvious for one
of ordinary skill in the art to coat the components of Lustig’s dental implant
assembly, including any internal surfaces, with silver nanoparticles, given
the teachings of Karandikar.
The rejections of the claims as unpatentable over the prior art are
affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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