Ex Parte Thorwarth et al

Patent Trial and Appeal Board

Jun 22, 2016

13177179 (P.T.A.B. Jun. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/177, 179 07/06/2011 Goetz THORWARTH
76960 7590 06/23/2016
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
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.
10139/22402 (T01375US1) 5950
EXAMINER
DUKERT, BRIAN AINSLEY
ART UNIT PAPER NUMBER
3738
MAILDATE DELIVERY MODE
06/23/2016 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)
U-NITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GOETZ THORWARTH and CYRIL VOISARD
Appeal2014-006737
Application 13/177,179 1
Technology Center 3700
Before MICHAEL L. HOELTER, LISA M. GUIJT, and
JASON W. MELVIN, Administrative Patent Judges.
MELVIN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal arises under 35 U.S.C. § 134(a), from a rejection of
claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Depuy Synthes Products, LLC, and parent corporation
Johnson & Johnson, Inc., as the real parties in interest. Br. 2.
Appeal2014-006737
Application 13/177,179
BACKGROUND
The claims are directed to a device to facilitate removing a bone
implant from a bone-a self-detaching layer for easy implant removal.
Spec. 1, ,-i,-i 1-2. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A bone implant, comprising:
a first layer provided over a first outer surface of the bone
implant and including a first material which is one of
water-soluble and degradable in body fluids, the first
layer having a first thickness; and
a second layer provided over an outer surface of the first
layer and formed of a second, biocompatible material, the
second layer having a second thickness smaller than the
first thickness.
REJECTIONS
Appellants seek our review of the following rejections:
1. Claims 1--4, 7, and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Calhoun (US 2004/0115241 Al, pub. June 17,
2004). Final Act. 3--4.
2. Claims 5, 6, 8, 10, and 14-17 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Calhoun and Miller (US
2009/0186068 Al, pub. July 23, 2009). Final Act. 4-7.
3. Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Calhoun and Yu (US 2008/0208313 Al, pub. Aug. 28, 2008).
Final Act. 7-8.
2
Appeal2014-006737
Application 13/177,179
4. Claims 11 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Calhoun and Zimmerman (US 200710016307
Al, pub. Jan. 18, 2007). Final Act. 8-9.
DISCUSSION
For independent claim 1, the Examiner finds that Calhoun teaches
most elements of the claim but "does not specifically disclose the second
thickness smaller than the first thickness." Final Act. 3. The Examiner
finds, however, that "Calhoun does teach that the coating/layers need not
have a uniform thickness [0031] and that providing multiple coatings with
varying thicknesses may facilitate selective control and resorption rates
[0031]." Id. Thus, according to the Examiner, "it would have been obvious
to one having ordinary skill in the art at the time the invention was made to
make the second thickness smaller than the first in order to regulate and
control the release/resorption rate of the implant." Id.
Appellants argue that Calhoun teaches "applying multiple coatings of
a single solution" but does not teach "a second layer having a thickness
smaller than a thickness of the first layer" or "a second layer formed of a
second material." Br. 4.
Regarding whether a second layer may be a smaller thickness than a
first layer, Appellants argue that Calhoun "does not provide any teaching
which would allow a second coating to be applied at a smaller thickness than
a first coating." Br. 5. We do not agree. Nothing about Calhoun precludes
such an arrangement, and as the Examiner explains (Final Act. 3), Calhoun
expressly instructs that it may be useful to provide "multiple coatings with
varying thicknesses." Calhoun ,-i 31. According to Appellants, "Calhoun
3
Appeal2014-006737
Application 13/177,179
merely teaches that each of the coatings may not have a uniform thickness,"
as distinct from coatings varying in thickness from each other. Br. 4. We do
not agree, and view Calhoun's language as encompassing both single
coatings of a variable thickness and also multiple coatings that vary in
thickness between them. Appellants improperly attempt to limit the scope of
Calhoun's teachings. Additionally, the Examiner rejects claim 1 under
§ 103, not§ 102, and provides a reason that a person of skill would have
implemented multiple coatings of different thicknesses. Final Act. 3.
Appellants do not challenge that reasoning. Thus, Appellants have not
apprised us of error with the Examiner's conclusion that it would have been
obvious to make a second coating thickness smaller than the first coating
thickness.
Regarding Appellants' second argument, that Calhoun does not teach
multiple coatings of multiple materials, we also do not agree. Calhoun states
that "multiple layers of the polymeric materials may be formed in one
membrane" and that such"[ m ]ultilayer membranes may provide improved
benefits and advantages especially when more than one resorbable material
is used." Calhoun ,-i 26. Thus, we agree with the Examiner that Calhoun
teaches the application of two layers, each of a different material, as
claimed. Final Act. 3 (citing Calhoun ,-i 26).
Accordingly, we sustain the rejection of claim 1, and dependent
claims 2--4, 7, and 9, which depend from claim 1 and which Appellants
argue together with claim 1 (Br. 6). We also sustain the rejections of claims
5, 6, 8, and 10-17, for which Appellants rely on the arguments made for
claim 1. See Br. 6-7.
4
Appeal2014-006737
Application 13/177,179
DECISION
For the above reasons, the Examiner's rejections of claims 1-17 are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
5