Ex Parte Osman

Patent Trials and Appeals Board

Jul 29, 2013

11955684 - (D) (P.T.A.B. Jul. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SAID G. OSMAN
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Appeal 2011-008621
Application 11/955,684
Technology Center 3700
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Before JENNIFER D. BAHR, STEFAN STACOVICI, and
GAY ANN SPAHN, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
rejection of claims 1, 4-9, and 22. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
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Claimed Subject Matter
The claimed subject matter relates to “biologic artificial bone having
mechanical and biological properties such that the artificial bone serves as
an adequate substitute for structural bone.” Spec. 1, para. [0003]. Claim 1,
reproduced below, with emphasis added, is illustrative of the appealed
subject matter.
1. A biologic artificial bone comprising:
an artificial fiber material formed from a
synthetic polymer with mechanical properties
similar to type I collagen, wherein the artificial
fiber material is formed into a cast shaped
corresponding to a human bone or a bone implant,
and wherein the artificial fiber material comprises
fibers formed in a fiber network with fibers
arranged in multiple orientations in a
single sheet;
a biocompatible liquid substance
impregnated in the fiber material, the
biocompatible liquid substance hardening and
stiffening the fiber material;
a bone substitute impregnated in the
hardened and stiffened fiber material forming an
artificial bone composite, wherein the artificial
bone composite has structural characteristics by
virtue of the artificial fiber cast, biocompatible
liquid substance and the bone substitute such that
the artificial bone composite retains its shape after
installation; and
vascular channels formed in the artificial
bone composite prior to installation to facilitate
in-growth of vessels and bone forming cells.

Independent claim 22 is directed to a biologic artificial bone and
recites the same subject matter as claim 1 quoted supra, except that claim 22
does not recite the wherein clause as in the third paragraph of the body of
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claim 1, and claim 22 additionally recites with respect to the vascular
channels that “the channels are coated with angiogenic factors to further
facilitate vascular in-growth.”

Rejections
The following Examiner’s rejections are before us for review:
I. claims 1, 7, and 8 under 35 U.S.C. § 102(b) as anticipated by
Evans (US 2004/0127987 A1, published Jul. 1. 2004);
II. claims 1, 7, and 22 under 35 U.S.C. § 103(a) as unpatentable
over Evans, Biscup (US 2004/0167637 A1, published Aug. 26, 2004), and
Boyce (US 5,899,939, issued May 4, 1999);
III. claims 4-6 under 35 U.S.C. § 103(a) as unpatentable over
Evans, Biscup, Boyce, and Holmes (US 3,769,142, issued Oct. 30, 1973);
and
IV. claim 9 under 35 U.S.C. § 103(a) as unpatentable over Evans,
Biscup, Boyce, Kugel (US 5,769,864, issued Jun. 23, 1998), and Freedland
(US 6,162,234, issued Dec. 19, 2000).

OPINION
Rejection I – Anticipation based on Evans
Appellant argues claims 1, 7, and 8 as a group. See App. Br. 11-12.
Although Appellant appears to argue claim 8 separately, the only argument
provided for claim 8 is based upon an argument for claim 1 and does not
constitute a separate argument. App. Br. 12. Therefore, we select
independent claim 1 as the representative claim and claims 7 and 8 fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
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The Examiner finds that Evans anticipates claim 1 by disclosing a
biologic artificial bone14 in Figure 2A including, inter alia, “fiber formed in
a fiber network with fibers arranged in multiple orientations in a single sheet
(Evans discloses implant materials made of a woven sheet (par[a]. 0131). A
woven sheet inherently has woven fibers that are oriented or arranged in
multiple directions or orientations).” Ans. 4. Appellant argues that “[t]he
Evans device1 has no specific fiber orientation” and “[w]ithout the bias fiber
reinforcement provided by the fibers arranged in multiple orientations as
defined in the claimed invention, the Evans device will fail under
physiological forces.” App. Br. 11.
The Examiner responds that
Evans discloses a conformable bone implant for bone repair
made of ceramic granules, insoluble collagen fibers and soluble
collagen gel that hardens and forms a porous implant . . . in the
shape of a woven sheet . . . having structural integrity . . . ,
where the fibers are arranged in multiple orientations by
definition of a woven sheet since the strands of fibers have to
be interlaced together to form a woven sheet.

Ans. 9-10 (citing Evans 14, para. [0131] and Evans 19-20, claims 1, 3, 9, 12,
and 29). The Examiner further responds that “[c]laim 1 does not require the

1 Appellant indicates that claims 1, 7, and 8 are rejected under 35 U.S.C.
§ 102(b) based on “U.S. Patent No. 7,235,107 to Evans” (hereinafter “the
Evans ʼ107 patent”) (see App. Br. 11); however, the Evans ʼ107 patent was
not used in the Examiner’s anticipation rejection (see Ans. 4) and does not
appear to be of record in the application file wrapper. Therefore, we are
treating Appellant’s arguments as if based on Evans’s patent application
publication, because Appellant correctly lists the Evans patent application
publication as being used in the anticipation rejection in the Grounds of
Rejection to be Reviewed on Appeal section of the Appeal Brief. App. Br.
10.
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fibers to have a specific orientation,” and Evans’s “woven sheet has fibers
interlaced together where the fibers are arranged in multiple orientations
(such as horizontal or vertical).” Ans. 10.
Appellant replies that “Evans is not designed to withstand
physiological forces,” because “Evans is designed to conform to defects in
bone” and “the subsequent bone ingrowth which replaces the Evans implant
will serve to resist physiological forces.” Reply Br. 2.
As stated by the Examiner, claim 1 does not require that the fibers
have a specific orientation (Ans. 10), but rather “multiple orientations in a
single sheet” (App. Br., Clms. App’x.). The Examiner’s finding that Evans
discloses a woven sheet (Ans. 5 (citing Evans 14, para. [0131])) is sufficient
to meet the claimed “multiple orientations in a single sheet,” because a
woven sheet has fibers extending in at least two directions or orientations.
Moreover, Appellant’s arguments that “Evans is not designed to withstand
physiological forces” (Reply Br. 2-3) are without merit, because claim 1
only requires “that the artificial bone composite retains its shape after
installation.” Although Evans’s implant is conformable, it retains its shape
after installation for some period of time until “the bodily tissues resorb it.”
Evans 14, para. [0131]; see also Evans 14, para [0132]-[0133]. Thus, we are
not persuaded of Examiner error by Appellant’s first argument.
Turning to Appellant’s second argument, Appellant argues that
Evans’s “vascular channels are formed after installation, after some of the
absorbable or [soluble] components of the device have been removed,
thereby creating channels,” in contrast to the claimed invention where “the
vascular channels are created at the time of device manufacture and are
strategically placed.” App. Br. 11. However, the Examiner is not proposing
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that the claimed vascular channels are formed by removal of Evans’s
absorbable components, as Appellant argues. Rather, the Examiner takes the
position, and we agree, that the interconnected voids/openings between the
interlaced fibers of the polymer structure of Evans, which “allow body fluids
and cells to permeate the implant,” constitute the claimed vascular channels.
See Ans. 10-11; see also Evans 13, para. [0128]. Thus, we are not persuaded
of Examiner error by Appellant’s second argument..
Accordingly, we sustain the Examiner’s rejection of independent
claim 1, and claims 7 and 8 which fall therewith, under 35 U.S.C. § 102(b)
as anticipated by Evans.

Rejection II – Obviousness based on Evans, Biscup, and Boyce
Appellant argues claims 1, 7, and 22 as a group. See App. Br. 11-12.
We select independent claim 1 as the representative claim and claims 7 and
22 fall with claim 1.
The Examiner makes the same finding as discussed supra with respect
to Evans disclosing fibers arranged in multiple orientations in a single sheet,
but alternatively finds that Evans fails to disclose the first wherein clause in
the first paragraph of the body of claim 1, the wherein clause in the third
paragraph of the body of claim 1, and the fourth paragraph in the body of
claim 1, which subject matter is taught by Biscup and Boyce. Ans. 6-7.
Appellant sets forth similar arguments with respect to the Evans reference as
discussed supra, and Appellant additionally argues that Biscup “fails to
describe a specific fiber orientation,” and although Boyce “discloses
channels and cavities in its device,” Boyce’s “channels . . . are not suitable
with the structures of Evans or Biscup as such channels are likely to weaken
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a weight-bearing artificial bone and be structurally incompetent.” App. Br.
12.
We are not persuaded by Appellant’s arguments against the Evans
reference for the same reasons as discussed supra with respect to claim 1.
With respect to the Biscup reference, the Examiner did not rely upon Biscup
to teach the claimed fibers “arranged in multiple orientations in a single
sheet.” Rather, the Examiner relied upon Evans for teaching multiple fiber
orientations in a single sheet and thus, Appellant’s argument that Biscup
“fails to describe a specific fiber orientation” is not commensurate with the
Examiner’s rejection. With respect to Appellant’s argument that Boyce’s
channels “are not suitable with the structures of Evans or Biscup,” we note
that Boyce discloses a bone-derived implant for load-supporting applications
(Boyce, Title), wherein “[t]he bone-derived implant can possess one or more
cavities, which, if desired, can communicate with the surface of the implant
through pores, apertures, perforations or channels” (Boyce, col. 4, ll. 53-56).
Appellant does not point to any evidence in Boyce to support their argument
that Boyce’s “channels . . . are not suitable with the structures of Evans or
Biscup as such channels are likely to weaken a weight-bearing artificial bone
and be structurally incompetent.” Thus, we are not persuaded by
Appellant’s argument because an attorney's arguments in a brief cannot take
the place of evidence. See In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974).
Accordingly, we sustain the Examiner’s rejection of independent
claim 1, and claims 7 and 22 which falls therewith, under 35 U.S.C. § 103(a)
as unpatentable over Evans, Biscup, and Boyce.

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Rejection III – Obviousness based on Evans, Biscup, Boyce, and Holmes
Each of claims 4-6 depend from claim 1 and each of claims 4-6 call
for fibers formed in a fiber network with fibers arranged in horizontal,
vertical, and oblique or spiral orientations. App. Br., Clms. App’x.
The Examiner finds that “Evans in view of Biscup and Boyce
discloses a fibrous sheet rolled into a multilayer cylinder . . . [,] except for
fibers formed in a fiber network with fibers arranged in horizontal, vertical
and spiral orientations. Ans. 8 (citing Evans 14, para. [0037] and fig. 2E).
The Examiner turns to Holmes to teach “a similar reference comprising a
fiber network with fibers arranged in horizontal, vertical and spiral
orientations. Id. (citing Holmes, fig. 2). The Examiner concludes that it
would have been obvious to one of ordinary skill in the art “to modify the
device of Evans to include a fiber network with fibers arranged in horizontal,
vertical and spiral orientations, for the purpose of providing a uniform
directional strength.” Id. (citing Holmes, col. 4, ll. 9-10).
Appellant notes that “[t]he Holmes device . . . is made of plies of
fibers, with the orientation of the fibers in each layer being different from
that of the adjacent plies,” and “[t]he adjacent plies are tied together by
fasteners.” App. Br. 13. Appellant argues that “[i]n order to incorporate
fibers oriented in horizontal, vertical and oblique directions (e.g., as defined
in claim 4), at least three plies of fibers are required in the Evans device,”
but the claimed invention calls for “fibers that are weaved in the multiple
directions in a single ply (single sheet).” Id.
We are persuaded by Appellant’s argument. Holmes discloses a non-
woven locked ply composite structure (Holmes, Title), wherein “the
fabrication of a locked ply integral composite structure . . . improve[s the]
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structural strength between plies.” Holmes, col. 2, ll. 54-56. Emphasis
added. Because Holmes’s horizontal fibers are in one ply, vertical fibers are
in another ply, and oblique/spiral fibers are in yet another ply, Holmes
would not teach a person of ordinary skill in the art to modify the
combination of Evans, Biscup, and Boyce to have horizontal, vertical, and
oblique/spiral fibers in a single sheet as suggested by the Examiner (Ans.
12).
Accordingly, we do not sustain the Examiner’s rejection of claims 4-6
under 35 U.S.C. § 103(a) as unpatentable over Evans, Biscup, Boyce, and
Holmes.

Rejection IV – Obviousness based on
Evans, Biscup, Boyce, Kugel, and Freedland
For claim 9, Appellant relies upon the arguments set forth supra for
claim 1 and also argues that the addition of Kugel and Freedland do not
remedy the deficiencies of the combination of Evans, Biscup, and Freedland.
App. Br. 13. As we found no deficiencies with respect to the rejection of
claim 1 based on Evans, Biscup, and Boyce for the reasons discussed supra,
we sustain the Examiner’s rejection of claim 9 under 35 U.S.C. § 103(a) as
unpatentable over Evans, Biscup, Boyce, Kugel, and Freedland.

DECISION
We affirm the Examiner’s rejections of: claims 1, 7, and 8 under 35
U.S.C. § 102(b) as anticipated by Evans; claims 1, 7, and 22 under 35 U.S.C.
§ 103(a) as unpatentable over Evans, Biscup, and Boyce; and claim 9 under
35 U.S.C. § 103(a) as unpatentable over Evans, Biscup, Boyce, Kugel, and
Freedland.
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We reverse the Examiner’s decision to reject claims 4-6 under 35
U.S.C. § 103(a) as unpatentable over Evans, Biscup, Boyce, and Holmes.
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)(1)(iv).

AFFIRMED-IN-PART

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