Ex Parte Mayfield et al

Patent Trials and Appeals Board

Mar 26, 2019

14682826 - (D) (P.T.A.B. Mar. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/682,826 04/09/2015
104326 7590 03/28/2019
Schwegman Lundberg & Woessner/ Zimmer
P.O. Box 2938
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Robert L. Mayfield
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5394.C65US 1 7543
EXAMINER
STICE,PAULAJ
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
03/28/2019 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):
SLW@blackhillsip.com
USPTO@slwip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT L. MAYFIELD, MICHAEL D. SCALISE,
and ZACHARY B. SUTTIN
Appeal2018-002580
Application 14/682,826
Technology Center 3700
Before JILL D. HILL, JEFFREY A. STEPHENS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner's Final Office Action (Jan. 18, 2017) ("Final Act.") rejecting
claims 1-5 and 8-20. 2 The grounds for rejection of dependent claims 6 and
7 are not repeated in the Final Office Action. Cf Non-Final Office Action 6
1 Appellant is the Applicant, BIOMET 3I, LLC, identified in the Appeal
Brief as the real party in interest. Appeal Br. 2.
2 The Final Office Action is supplemented by an Advisory Action (Apr. 3,
2017).
Appeal2018-002580
Application 14/682,826
(Aug. 11, 2016) (rejecting claims 6 and 7 under 35 U.S.C. § 103 as
unpatentable over Valen and Klardie (US 2002/0061494 Al, published May
23, 2002)). We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
Claimed Subject Matter
Claims 1, 14, and 17 are independent. Claims 1 and 14, reproduced
below with selected limitations emphasized, illustrate the claimed subject
matter.
1. A dental implant for implantation into bone tissue having
an exterior surface comprising:
an elongated body having an upper portion configured to
receive a prosthesis, a lower portion for being submerged in said
bone tissue, and an outer surface; and
at least one thread on said outer surface making a plurality
of turns around the elongated body between the lower portion
and the upper portion, the at least one thread including a root, a
flank, and a crest, wherein the root and a segment of the flank
have a roughened portion relative to the crest, the roughened
portion having a greater roughness as compared to the crest.
14. A dental implant for implantation into bone tissue, the
implant having:
at least one thread including a root, a flank, and a crest, the
thread making a plurality of helical turns around the implant; and
a roughened portion adjacent to the root of the thread, the
roughened portion having a greater roughness as compared to
the crest and helically extending along a length of the implant
leaving the crest of the thread relatively smooth.
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Appeal2018-002580
Application 14/682,826
Rejections
I. Claims 1--4, 8-10, 12, 14, 15, and 17-20 stand rejected under
35 U.S.C. § 103 as unpatentable over Valen (US 8,221,119 Bl, issued July
17, 2012) and Sul (US 2006/0204930 Al, published Sept. 14, 2006). Final
Act. 2--4. 3
II. Claims 5 and 16 stand rejected under 35 U.S.C. § 103 as
unpatentable over Valen, Sul, and Hall '554 (US 2003/0158554 Al,
published Aug. 21, 2003). Final Act. 4--5.
III. Claims 11 and 13 stand rejected under 35 U.S.C. § 103 as
unpatentable over Valen, Sul, and Hall '942 (US 2005/0147942 Al,
published July 7, 2005). Final Act. 5.
DISCUSSION
Rejection 1-35 USC§ 103
Claims 1-4, 8-10, 12, and 17-20
In rejecting claim 1, the Examiner finds Valen teaches all elements of
claim 1 except that the crest of Valen's thread shown in Figure 2B is
considered to have more roughness than the flank and the root. Final Act. 3.
The Examiner finds Sul teaches that the crest has very little roughness and
the flank and the root have roughness added. Id. (citing Sul Fig. 2). The
Examiner concludes:
It therefore would have been obvious to one of ordinary skill in
the art at the time the invention was made to modify Valen to
include the roughness on the [root] and flank greater than any
roughness on the crest, as taught by Sul, in order to increase cross
3 Although the summary of the rejection omits claim 17, the claim is
included in the substance of the rejection. See Final Act. 2, 4.
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Appeal2018-002580
Application 14/682,826
sectional area of the implant in the flank and root regions (see
Sul paragraph 0033).
Final Act. 3.
Appellant argues Valen and Sul do not teach "wherein the root and a
segment of the flank have a roughened portion relative to the crest, the
roughened portion having a greater roughness as compared to the crest," as
recited in claim 1 and similarly recited in claim 17. Appeal Br. 9. Appellant
contends Valen teaches the direct opposite of the present claims because
Valen teaches the crest of threads 208 has a pair of helical grooves 212a,
212b formed in it, which increases the roughness of the crest compared to
the root and flank. Id. at 11-12 (citing Valen col. 5, 11. 23-28, Fig. 2b). As
to Sul, Appellant argues only the thread inclines, which correspond to the
flank of the thread in Sul, are provided with micro-patterns, which Appellant
acknowledges may increase the roughness of those portions of the thread.
Appeal Br. 14 ( citing Sul Abstract, ,r 11, Fig. 2). Thus, Appellant argues,
neither Valen nor Sul teaches a portion of the root having a greater
roughness than the crest, and that, even if the references were combined, the
combination would not meet the disputed limitations of claim 1 because
"Valen roughens the crest and Sul roughens the thread incline (flank)." Id.
The Examiner responds that Sul is relied on "to demonstrate that it is
known in the art to roughen different areas of the body." Ans. 3. The
Examiner provides an annotated Figure 2 of Sul showing that the Examiner
considers the crest to be the straight line at the tip of the thread profile and
the root to include a portion of the inclined wall on either side of the flat
portion of the root. See Ans. 3--4.
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Appeal2018-002580
Application 14/682,826
We agree with Appellant that Sul does not teach that the root of the
thread has a roughened portion with greater roughness than the crest. Sul
describes smoothness of the thread incline as a problem, Sul ,r 11, and,
therefore, teaches forming the implant "with a micro-pattern on thread
inclines of the helical implant, so that a contact area and a[ n] engaging force
between the implant and the jaw bone can be increased, and so that stress
concentration can be restricted, thereby dispersing a physiological load," id.
,r 13. We agree with Appellant that Sul' s thread incline corresponds to the
flank, and that Sul shows a micro-pattern only on the flank because the root
and crest are unchanged when comparing the left thread shown in Figure 2
with the threads having micro-patterns on the right. See Appeal Br. 14.
Accordingly, we do not sustain the Examiner's rejection of claim 1
under 35 U.S.C. § 103 as unpatentable over Valen and Sul. The rejection of
independent claim 17 suffers from the same deficiency as the rejection of
claim 1 discussed herein. Thus, for the same reasons, we do not sustain the
rejection of claim 17, or the rejection of dependent claims 2--4, 8-10, 12, and
18-20.
Claims 14 and 15
Unlike claim 1, claim 14 recites that the roughened portion is
"adjacent to the root of the thread." Appellant does not appear to dispute
that Sul teaches a roughened portion adjacent to the root of the thread.
Rather, Appellant argues Valen teaches away from leaving the crest of the
thread relatively smooth, and one skilled in the art would not modify Valen
to leave the crest relatively smooth as shown in Sul. Appeal Br. 15-16.
Appellant contends that modifying Valen to have a smooth crest as in Sul
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Appeal2018-002580
Application 14/682,826
would destroy the stated purpose of Valen. Reply Br. 5. Appellant notes
Valen teaches that the helical grooves of the crest facilitate collection of
bone and promote immediate stabilization and osseointegration of the
implant. Id.; see Valen Abstract. Appellant suggests that removal of the
helical grooves from the crest would destroy Valen's purpose of providing a
dental implant having a unique thread configuration that increases the total
load bearing area to maximize support values of a successful implant for the
same osteotomy when compared to other implant designs. Reply Br. 5; see
Valen Abstract.
We agree with Appellant that modifying Valen to remove the helical
grooves from the crest of the thread would diminish the stated advantages of
Valen's design, for the reasons given by Appellant. The Examiner's stated
reason why one of ordinary skill in the art would nonetheless make the
modification-in order to increase cross-sectional area of the implant in the
flank and root regions, Final Act. 3 ( citing Sul ,r 33}-is not sufficient to
overcome the apparent disadvantages of modifying Valen' s design. Sul' s
reference to increasing the cross-sectional area of the implant relates to using
hydroxyapatite to form the implant device, and does not relate to
modifications of specific areas of the threads. Accordingly, the Examiner
has not shown persuasively that a person of ordinary skill in the art would
have modified Valen's disclosed implant to include a smooth crest, as taught
be Sul.
In view of the foregoing, we do not sustain the rejection of claim 14,
or the rejection of dependent claim 15.
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Appeal2018-002580
Application 14/682,826
Rejections 11-111
Rejections II and III suffer from the same deficiency as the rejection
of claims 1 and 14 discussed supra. Accordingly, we do not sustain the
Examiner's decision rejecting claims 5 and 16, as set forth in Rejection II, or
claims 11 and 13, as set forth in Rejection III, for the same reasons that we
do not sustain the Examiner's decision rejecting claims 1 and 14.
DECISION
We reverse the Examiner's decision to reject claims 1-5 and 8-20.
REVERSED
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