Ex Parte Ratron et al

Patent Trial and Appeal Board

Jul 19, 2017

12933873 (P.T.A.B. Jul. 19, 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.
12/933,873 10/26/2010 Yves-Alain Ratron TRNXPY.004NP 2516
20995 7590 07/21/2017
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
PRONE, CHRISTOPHER D
ART UNIT PAPER NUMBER
3738
NOTIFICATION DATE DELIVERY MODE
07/21/2017 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):
jayna.cartee@knobbe.com
efiling @ knobbe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YVES-ALAIN RATRON and MICHEL HASSLER1
Appeal 2016-003149
Application 12/933,873
Technology Center 3700
Before FRANCISCO C. PRATS, RICHARD J. SMITH, and
RYAN H. FLAX, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to an
implant for articular resurfacing. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 According to Appellants, the real party in interest is Tomier Inc. (Appeal
Br. 3.)
Appeal 2016-003149
Application 12/933,873
STATEMENT OF THE CASE
Claims on Appeal
Claims 23, 26, 29-32, 34—37, and 45—53 are on appeal.2 (Claims
Appendix, Appeal Br. 15—17.) Claim 23 is illustrative and reads as follows:
23. An implant for articular resurfacing, the implant
comprising:
a sheet comprising a concave surface and a convex
surface, the convex surface consisting essentially of pyrolytic
carbon, wherein the sheet has a thickness of less than 4 mm;
and
a layer adherent to the sheet, the layer constituted of
adhesive polymer or elastomer material.
Examiner’s Rejections
1. Claims 23, 26, 29-32, 45, 48—50, and 53 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Chibrac3 and Hassler4 or
Sherwood.5 (Ans. 3—5.)6
2. Claims 34—37, 46, 47, 51, and 52 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Chibrac, Hassler, Sherwood, and Pitaru.7 (Id.
at 5—6.)
2 Claims 24, 27, 28, and 33 are withdrawn from consideration. (Final Action
(“Final Act.,” dated Feb. 4, 2015) 2.) Appellants elected Invention 1 and
Species 2 (Figure 2) without traverse. (Id.)
3 Chibrac et al., US 2002/0022889 Al, pub. Feb. 21, 2002 (“Chibrac”).
4 Hassler et al., US 6,090,145, issued July 18, 2000 (“Hassler”).
5 Sherwood et al., US 2003/0114936 Al, pub. June 19, 2003 (“Sherwood”).
6 Subsequent Examiner’s Answer dated Dec. 18, 2015 (“Ans.”).
7 Pitaru et al., US 5,002,583, issued Mar. 26, 1991 (“Pitaru”).
2
Appeal 2016-003149
Application 12/933,873
FINDINGS OF FACT
We adopt the Examiner’s findings regarding the scope and content of,
and motivation to combine, the prior art. The following findings are
included for emphasis and reference purposes.
FF 1. Appellants identify their elected Species 2 by reference to
Figure 2 of the Specification, reproduced below:
According to Appellants, Figure 2 above shows “an adhesive silicone
layer (8) sandwiched between a pyrolytic carbon sheet (1) and a metallic
sheet (4).” (Appeal Br. 5, quoting Spec. 10,11. 4—6.) The Specification
identifies the numeral 3 as cartilage or bone surface. (Spec. 10,1. 6.)
FF 2. The Examiner finds that Chibrac teaches an implant comprising
“a first sheet having an outer concave surface (C) and an inner convex
surface (F) and a layer of adhesive [] shown best in Figure 4h.” (Ans. 3.)
FF 3. Figure 4h of Chibrac is illustrated below:
3
Appeal 2016-003149
Application 12/933,873
Figure 4h above illustrates a prosthesis element. (Chibrac !46.)
Chibrac states that the “layer of sealing or adhesive material is referenced
306 and its thickness has been exaggerated.” {Id. 1 63.)
FF 4. The Examiner finds that “Hassler teaches that it is known in the
art to form bone/cartilage implants out of monolithic pyrolytic carbon.”
(Ans. 4; see also Spec. 2,11. 19-25, regarding Hassler and pyrolytic carbon.)
FF 5. The Examiner finds that “Sherwood teaches that it is known to
use bone/cartilage implants comprising layers of pyrolytic carbon along with
adhesive fillers such as polyurethane for the purpose of providing a durable
implant with enhanced bonding and ingrowth promotion.” (Ans. 4; see, e.g.,
Sherwood^ 110.)
DISCUSSION
We adopt as our own the Examiner’s findings, analysis, and
conclusions as set forth in the Answer (Ans. 3—10), except as otherwise
indicated. We discern no error in the rejections of the claims as obvious.
Issue
Whether a preponderance of evidence of record supports the
Examiner’s rejections under 35 U.S.C. § 103(a).
4
Appeal 2016-003149
Application 12/933,873
Analysis
Rejection No. 1
The Examiner concludes that:
It would have been obvious to one having ordinary skill in the
art at the time the invention was made to form the outer layer of
the implant of Chibrac out of monolithic pyrolytic carbon as
taught by Hassler and to use the polyurethane adhesive taught
by Sherwood in order to provide a stronger more biocompatible
implant that can be implanted in a thinner/smaller profile.
(Ans. 4.) The Examiner further concludes that the claimed thickness (e.g.,
“a thickness of less than 4 mm”) is “no more than optimization of a range”
and that “it would have been obvious to one of ordinary skill in the art of
cartilage/bone implants to provide the layers within the claimed thickness
ranges.” (Id.)
Appellants advance several arguments in response to Rejection No. 1.
We address Appellants’ arguments below, and limit our consideration to
claim 23 because the claims were not argued separately.8
Teaching Away
Appellants argue that Chibrac and Hassler teach away from the
claimed thickness range (i.e., a pyrolytic carbon sheet having “a thickness of
less than 4 mm”), and that “[t]he references emphasize the importance of the
use of thicknesses greater than 4 mm.” (Appeal Br. 9—10; see also Reply Br.
4—6.) Appellants point to the statements in Chibrac that “it is desirable for
the major portion of the prosthesis to have a thickness that is greater than 6
8 We note Appellants’ references to certain limitations in claims 45, 50, and
53, but mere reference to limitations in claims does not constitute a separate
argument for patentability of those claims. See In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011).
5
Appeal 2016-003149
Application 12/933,873
mm so as to avoid creep of its material" and that “[t]ests have shown that
given the material used for making prosthesis elements, it is necessary for
the substantially constant thickness [e]9 of the prosthesis element to be
greater than 6 mm.'” (Appeal Br. 9, citing Chibrac 67 and 56,
respectively, emphasis by Appellants.) Appellants also point to Table 1 in
Hassler as showing that “standard” prosthesis dimensions are greater than 4
mm. (Appeal Br. 9, citing Hassler col. 5,11. 62—67 and Table 1 at col. 6.)
A reference may teach away if it criticizes, discredits, or otherwise
discourages the claimed invention. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). Notably, a mere description of an embodiment as
somewhat inferior or not preferred does not constitute a teaching away. Id.
at 1199-1200; In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
We are not persuaded by Appellants’ arguments, and find that neither
Chibrac nor Hassler teaches away.10 (See Ans. 6—7.) As an initial matter,
we note that claim 23 recites that the claimed sheet has “a thickness of less
than 4 mm,” which is interpreted to mean a thickness at any point in the
structure of the sheet that is less than 4 mm, rather than requiring that the
entirety of the sheet be thinner than 4 mm, which is not claimed.
Chibrac states that it is “desirable” for the “major portion” of the
prosthesis to have a thickness that is greater than 6 mm to avoid creep of its
material, and that “any increase in the contact area causes the prosthesis to
be thinner in its peripheral zone.” (Chibrac 1 67, emphasis added.) Thus,
9 Chibrac states in the preceding sentence that “[t]he main part of the
prosthesis element is of substantially constant thickness e.” (Chibrac | 56.)
10 We do not rely on the Examiner’s interpretation of paragraph 20 of the
Specification (Spec. 3,1. 35—4,1. 10.) for purpose of our Decision.
6
Appeal 2016-003149
Application 12/933,873
Chibrac expresses a desirability for a thickness greater than 6 mm for the
major portion of the prosthesis, while also acknowledging that the prosthesis
may be thinner in its peripheral zone (P). (Id.; see also ¥¥ 3.) Moreover,
even if one assumes from Chibrac that a prosthesis having a thickness of less
than 4 mm would be inferior (i.e., less desirable), that would not constitute a
teaching away. See Gurley, 27 F.3d at 553.
Hassler refers to several examples of dimensions of “standard”
prostheses that are “suitable for treating the vast majority of ailments of the
scaphoid.” (Hassler col. 5,11. 64—67 and Table 1.) However, claim 23
recites an implant for articular resurfacing and is not limited to a particular
usage, such as ailments of the scaphoid. See Catalina Marketing Int 7, Inc.
v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002) (patentability
of an apparatus claim “depends on the claimed structure, not on the use or
purpose of that structure.”). Moreover, Hassler refers to a “standard”
prosthesis for the vast majority of scaphoid ailments (fractures), suggesting
that a prosthesis for a given patient or condition may have different
dimensions than the examples provided. (Hassler col. 5,11. 62—67.) Thus,
Hassler does not criticize, discredit, or otherwise discourage the use of an
implant sheet that has a thickness of less than 4 mm. See Fulton, 391 F.3d at
1201.
Optimization of Thickness
Appellants contest the Examiner’s characterization of the claimed
thickness as “a mere optimization,” and argue that “the Examiner has failed
[to] articulate the recognized result that would be achieved by such
‘optimization’ of the thickness of the sheet within the claimed range.”
(Appeal Br. 10; see also Reply Br. 6.)
7
Appeal 2016-003149
Application 12/933,873
We are not persuaded. The portions of Chibrac and Hassler that
Appellants rely on for their teaching away argument show that the thickness
of a prosthetic is a result-effective variable. (See discussion above.) For
example, Chibrac addresses the “compromise” between the advantage in
increasing contact area and the desirability for the major portion of the
prosthesis to have a thickness greater than 6 mm, noting that “any increase
in the contact area causes the prosthesis to be thinner in its peripheral zone.”
(Chibrac | 67.) Hassler provides three examples of dimensions in the
context of “standard” prostheses suitable for treating the vast majority of
scaphoid ailments, thereby indicating the result-effective nature of prosthesis
dimensions. (Hassler col. 5,11. 62—67 and Table 1.) The prior art thus
reasonably recognized prosthesis thickness as a result-effective variable.
The Examiner explains that Chibrac and Hassler show that the
claimed implant structure and materials are known in the art, including the
strength and properties of pyrolytic carbon. (Ans. 7—8.) See In re Aller, 220
F.2d 454, 456 (CCPA 1955) (“[Wjhere the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.”).11
The Examiner further explains that
a person of ordinary skill in the art, through routine
experimentation, would have modified the implant of the
proposed combination to have a thickness within the claimed
range. Such a modification would permit the operator to
remove less natural cartilage/bone while restoring the structural
11 Here, contrary to Appellants’ arguments (Appeal Br. 10; Reply Br. 6), the
“general conditions” of the claim include prosthesis thickness, as reflected in
the prior art, and an express teaching of the claimed thickness is not required
in the present obviousness analysis. See Alter, 220 F.2d at 456.
8
Appeal 2016-003149
Application 12/933,873
integrity and functionality to the implant site. This would
further result in reduced trauma to the implant site and a
reduction in healing time.
(Ans. 8.)
Accordingly, we find that the claimed range of “a thickness of less
than 4 mm” would have been obvious in the absence of specific proof by
Appellants of criticality of this range. See Aller, 220 F.2d at 456.
Motivation to Combine
Appellants contend that the Examiner has not established a motivation
to combine the references because the modification would make Hassler
unacceptable for its intended use. (Appeal Br. 12—13; see also Reply Br. 7.)
In particular, Appellants focus on Sherwood’s disclosure of a porous
bioerodible matrix for use as a medical device, and argue that
there would be no motivation to modify a brittle material like
monolithic pyrolytic carbon as disclosed in Hassler to include
pores as required by Sherwood. Pores are known to function as
crack initiation sites in brittle materials. This change would
seriously weaken the material of Hassler and make it
unacceptable for its intended use.
(Appeal Br. 12.)
We are not persuaded. As the Examiner explains, “the prior art
rejection is not incorporating any porosity into the device of Chibrac or
relying on any teachings with respect to other [] porous materials of
Sherwood.” (Ans. 9.) Rather, Sherwood is only relied on for its teaching
“of bone/cartilage implants comprising layers of pyrolytic carbon to include
adhesive fillers such as polyurethane.” (Id.) Thus, “the prior art
combination will not require a porous surface to be polished or be prone to
cracking.” (Id.) Accordingly, the combination as applied by the Examiner
would not make Hassler unacceptable for its intended use because it relies
9
Appeal 2016-003149
Application 12/933,873
on Hassler for monolithic pyrolytic carbon (FF 4) and Sherwood for
polyurethane adhesive (FF 5), and does not rely on any porosity teachings.
(Ans. 4.)
Layer of Adhesive
Appellants argue that the Examiner has not established that the prior
art discloses a layer of adhesive because “Sherwood would not form a layer
distinct from the layer of pyrocarbon, but rather the polyurethane binder
would be infused within the porosity of the pyrocarbon.” (Appeal Br. 13;
see also Reply Br. 7.) We are not persuaded. Again, the proposed
combination does not include a porous surface. (See Ans. 10.) Rather, the
proposed combination includes the adhesive polymer of Sherwood and the
Chibrac implant, whereby a layer adherent to the sheet is formed. (See FF 2,
3, and 5.)
Rejection No. 2
Appellants advance no substantive arguments in response to Rejection
No. 2. (See Appeal Br. 14; Reply Br. 8.) Accordingly, the rejection of
claims 34—37, 46, 47, 51, and 52 is affirmed. See 37 C.F.R.
§ 41.37(c)(l)(iv); Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008).
Conclusions of Law
A preponderance of evidence of record supports the Examiner’s
rejection of claim 23 under 35 U.S.C. § 103(a). Claims 26, 29-32, 45, 48—
50, and 53 were not argued separately and fall with claim 23.
A preponderance of evidence of record supports the Examiner’s
rejection of claims 34—37, 46, 47, 51, and 52 under 35 U.S.C. § 103(a).
10
Appeal 2016-003149
Application 12/933,873
SUMMARY
We affirm the rejections of all claims on appeal.
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
11