11178056 (B.P.A.I. Sep. 24, 2010)

Ex Parte Schnittgrund

Board of Patent Appeals and InterferencesSep 24, 2010

11178056 (B.P.A.I. Sep. 24, 2010)

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. 11/178,056 07/07/2005 Gary D. Schnittgrund A368-CIP 8966 24677 7590 09/24/2010 ALFRED E. MANN FOUNDATION FOR SCIENTIFIC RESEARCH PO BOX 905 SANTA CLARITA, CA 91380 EXAMINER SAVAGE, JASON L ART UNIT PAPER NUMBER 1784 MAIL DATE DELIVERY MODE 09/24/2010 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 GARY D. SCHNITTGRUND ____________ Appeal 2010-009030 Application 11/178,056 Technology Center 1700 ____________ Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and CHARLES F. WARREN, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL1 This is an appeal from the final rejection of claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b). Claim 1 is illustrative: 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-009030 Application 11/178,056 1. A component assembly for use in living tissue comprising: a ceramic part; a metal part; and a compact interlayer material comprised of at least two sets of metal particles, each set comprised of a metal selected from a group of metals that form a eutectic composition, for bonding said ceramic part to said metal part. The Examiner relies upon the following references as evidence of obviousness (Ans. 3): Mizuhara 4,606,981 Aug. 19, 1986 Hunt 5,013,612 May 07, 1991 Lasater 6,221,513 B1 Apr. 24, 2001 Chang 2004/013,4966 July 15, 2004 Shimizu EP 0 456 481 A2 Nov. 13, 1991 Appellant’s claimed invention is directed to a component assembly comprising a compact interlayer between ceramic and metal parts. The interlayer comprises at least two sets of metal particles, e.g., nickel and titanium. The interlayer bonds the ceramic and metal parts. The assembly finds utility in living tissue. Appealed claims 1-11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lasater in view of either Hunt, Mizuhara, Chang, or Shimizu. Appellant submits that “[w]hile the main thrust of the arguments will be directed to independent claim 1, the dependent claims add limitations that should be considered on their own merits” (Br. 5, last sentence). However, Appellant has not presented separate, substantive arguments for any 2 Appeal 2010-009030 Application 11/178,056 particular claim on appeal. Accordingly, all the appealed claims stand or fall together with claim 1. We have thoroughly reviewed each of Appellant’s arguments for patentability. However, we are in complete agreement with the Examiner that the claimed subject matter would have been obvious to one of ordinary skill in the art within the meaning of § 103 in view of the applied prior art. Accordingly, we will sustain the Examiner’s rejection for essentially those reasons set forth in the Answer, and we add the following primarily for emphasis. Appellant does not dispute the Examiner’s factual determination that Lasater, like Appellant, “teaches an assembly for living tissue which comprises a ceramic part bonded to a metal part using a titanium-nickel interlayer to join the parts”, and that “Lasater further teaches the interlayer material may be provided in the form of metal powders or beads” (Ans. 4, third para.). It is Appellant’s contention that although the filler material of Lasater is analogous to Appellant’s compact interlayer material, “Lasater is exclusively directed to metallic alloys and does not teach that the powders or beads may be comprised of distinct metals” (Br. 7, penultimate para.). However, while Appellant maintains that the Examiner does not explain why it would have been obvious to have the powders comprised of distinct metals, Appellant does not address the Examiner’s reliance on Hunt, Mizuhara, Chang, or Shimizu for the obviousness of using a mixture of titanium and nickel powders as a substitute for the titanium/nickel alloy powders of Lasater.2 Significantly, Hunt specifically teaches that the braze 2 Although the Examiner cited Hunt, Mizuhara, Chang, and Shimizu in the Final Rejection, the references appeared in the statement of the rejection for 3 Appeal 2010-009030 Application 11/178,056 material may comprise a powdered mixture comprising titanium and nickel (see Abstract). Appellant maintains in the Request For Rehearing that the Examiner did not discuss or analyze Hunt, Mizuhara, Chang and Shimizu(p.4). However, we refer Appellant to pages 7 and 8 of the Answer. On the other hand, Appellant has not set forth an argument rebutting the Examiner’s rationale that, based on the collective teachings of the cited prior art, it would have been obvious for one of ordinary skill in the art to substitute a mixture of metal particles for the alloy of Lasater with a reasonble expectation of success. Appellant has advanced no reason why the skilled artisan would have been dissuaded from making such a substitution based on the teachings of Hunt, Mizuhara, Chang and Shimizu. Appellant also contends in the Request that claims 2, 4 and 11 are argued separately. However, the asserted arguments only point out that Lasater does not teach the claim limitations. Such statements are not tantamount to substantive arguments for why the claimed subject matter would have been unobvious to one of ordinary skill in the art, particularly in light of the collective teachings of the prior art. Accordingly, since Appellant has not demonstrated error in the Examiner’s rejection based on the collective teachings of Lasater and either of Hunt, Mizuhara, Chang, or Shimizu, the Examiner’s rejection stands un- rebutted. the first time in the Examiner’s Answer. Appellant, however, has not made the argument that this constituted a new ground of rejection. Indeed, in the Request For Rehearing of October 16, 2009, Appellant states that no argument has been made that the Examiner entered a new ground of rejection. 4 Appeal 2010-009030 Application 11/178,056 As a final point, we note that Appellant bases no argument upon objective evidence of non-obviousness, such as unexpected results. In conclusion, based on the foregoing and the reasons well stated by the Examiner, the Examiner’s decision rejecting the appealed claims 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) (2008). AFFIRMED ssl ALFRED E. MANN FOUNDATION FOR SCIENTIFIC RESEARCH PO BOX 905 SANTA CLARITA, CA 91380 5