Ex Parte Longo

Patent Trial and Appeal Board

Apr 27, 2017

11289591 (P.T.A.B. Apr. 27, 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.
11/289,591 11/16/2005 Marc N. Longo LON-1001-US 5259
24923 7590 05/01/2017
PAUL S MAD AN
MAD AN & SRIRAM, PC
2603 AUGUSTA DRIVE, SUITE 700
HOUSTON, TX 77057-5662
EXAMINER
SCHILLINGER, ANN M
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
05/01/2017 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):
docket@madanlaw.com
US PTOPatentM ail @ CantorColburn .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC N. LONGO
Appeal 2015-004080
Application 11/289,591
Technology Center 3700
Before: LINDA E. HORNER, MICHELLE R. OSINSKI, and
GORDON D. KINDER, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a rejection of claims
1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 We are informed that the Appellant, Mark N. Longo, is the real party in
interest. Appeal Br. 2.
Appeal 2015-004080
Application 11/289,591
CLAIMED SUBJECT MATTER
The claims are directed to a surgical implant and methods of making
the same. Claims 1,13, and 19 are independent. Claim 1 illustrates the
claimed subject matter and is reproduced below:
1. An implant, comprising:
(a) a metallic base member configured for placement
on floor of an eye orbit to provide a structural support to the floor
of the eye orbit when the base member is placed on the floor of
the eye orbit; and
(b) a porous volume member attached to a surface of
the base member in a manner that prevents the porous volume
member from migrating from the surface of the base member
after implanting the implant in the eye, wherein the porous
volume member has an upper contoured surface and is
configured to provide a predetermined volume to the eye over
the base member.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Tilghman US 5,139,497 Aug. 18, 1992
Jacob-LaBarre US 5,282,851 Feb. 1, 1994
Ringeisen US 2005/0085817 A1 Apr. 21,2005
REJECTIONS
I. Claims 1—4, 6, 9, 10, 12—14, 16, 17, and 19 are rejected under 35
U.S.C. § 102(b) as being anticipated by Ringeisen.
II. Claims 5,11, and 20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ringeisen and Tilghman.
III. Claims 7, 8, 15, and 18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ringeisen, Tilghman, and Jacob-LaBarre.
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Appeal 2015-004080
Application 11/289,591
OPINION
Rejection I
In the Final Action, the Examiner finds that Ringeisen identically
discloses all limitations of claim 1. Final Act. 2—3. In his Appeal Brief
Appellant identifies four limitations from claim 1 and simply states that
Ringeisen does not disclose them. Appeal Br. 6. Aside from denying that
Ringeisen discloses these four limitations of claim 1, Appellant’s entire
argument consists of:
For a prior art reference to anticipate a claim, each and every
element of [sic] step must be disclosed in such reference as in the
claim, which is clearly lacking in the case.
Id. Where, as here, the Examiner has made detailed findings of fact showing
how each limitation of a claim is met by a reference and the Appellant does
not present any arguments to explain why the Examiner’s explicit fact
finding is in error, when we weigh the Appellants’ arguments, which are not
supported by further explanation, that the elements are missing and the
Examiner’s specific and detailed findings, we reach a conclusion that
Appellant has not shown error in the Examiner’s rejection of the claim. See
Ex parte Belinne, 2009-004693, slip op. at 7, 8 (BPAI Aug. 10, 2009)
(designated as “Informative Opinion”),
http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf (last visited
April 25, 2017) (citing 37 C.F.R. § 41.37 (c)(l)(vii) (now 37 C.F.R.
§ 41.37(c)(l)(iv)); see also In re Lovin, 652 F.3d 1349 (Fed. Cir. 2011).
Accordingly, we sustain the Examiner’s rejection of claim 1.
Appellant asserts that claims 2—4, 6, 9, 10, 12—14, 16, 17, and 19 are
all not anticipated by Ringeisen for at least the same reasons that claim 1 is
not anticipated by Ringeisen. Appeal Br. 6—7. Because we are not
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Appeal 2015-004080
Application 11/289,591
persuaded of error in the rejection of claim 1, we likewise are not persuaded
of error in the rejection of claims 2—4, 6, 9, 10, 12—14, 16, 17, and 19.
Rejection II
Appellant argues claims 5,11, and 20 as a group (Appeal Br. 7), and
we select claim 5 as representative. Claims 11 and 20 stand or fall with
claim 5. 37 C.F.R. § 41.37(c)(l)(iv). Claim 5 depends from claim 1 adding
that “the metallic base member is made from titanium.” Appeal Br. 9
(Claims App’x). Appellant does not mention the substance of the Tilghman
reference and merely argues that the combination of Ringeisen and
Tilghman does not meet the limitations of claim 1. Appeal Br. 7. Because
we have already found that Ringeisen teaches all limitations of claim 1, and
Appellant does not contest the Examiner’s finding that it would have been
obvious to combine the teachings of Ringeisen and Tilghman, we are not
persuaded that the Examiner erred in rejecting claim 5. Accordingly, after
weighing all the arguments, we find no error in the rejection of claims 5, 11,
and 20.
Rejection III
Appellant argues claims 7, 8, 15, and 18 together (Appeal Br. 7), and
we select claim 7 as representative. Claims 8, 15, and 18 stand or fall with
claim 7. 37 C.F.R. § 41.37(c)(l)(iv). Claim 7 depends from claim 1, adding
that “the volume member is attached to the base member by a biocompatible
material.” Appeal Br. 9 (Claims App’x).
The Examiner relies on Ringeisen and Tilghman as in Rejection II,
adding Jacob-LaBarre for its teaching of “an adhesive material to fuse/bond
to the upper volume member to the lower base member ... for the purpose
of insuring the base volume member are securely attached to each other.”
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Appeal 2015-004080
Application 11/289,591
Final Act. 5 (citing Jacob-LaBarre, col. 17,1. 33 - col. 18,1. 5). Appellant’s
argument does not directly address the combination proposed by the
Examiner, instead arguing that one of ordinary skill would not combine the
entire Jacob-LaBarre device with a metallic base member because Jacob-
LaBarre already includes a base member. Appeal Br. 7.
This argument is not persuasive. “The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference. . . . Rather, the test is what the
combined teachings of those references would have suggested to those of
ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Here the Examiner has proposed using the adhesive of Jacob-LaBarre with
the components of Ringeisen and Tilghman. Appellant has not persuaded us
that the proposed combination would not have been obvious at the time of
the invention because Appellant has not addressed the Examiner’s findings.
Accordingly, after weighing all the arguments, we are not persuaded of error
in the Examiner’s rejection of claims 7, 8, 15, and 18.
DECISION
The Examiner’s rejection of claims 1—20 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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