Ex Parte Wijlaars et al

Board of Patent Appeals and Interferences

Mar 20, 2012

10564674 (B.P.A.I. Mar. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARCEL WIJLAARS,
JACQUES MARIE RENE JAN HUYGHE, and
CORRINUS CORNELIS VAN DONKELAAR
____________

Appeal 2011-009618
Application 10/564,674
Technology Center 1600
____________

Before DONALD E. ADAMS, ERIC GRIMES, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants request a rehearing under 37 C.F.R. § 41.52(a)(1) of the
Board's decision entered February 16, 2012 affirming the rejections of the
appealed claims under 35 U.S.C. § 103. The request for rehearing is denied.
Appellants present three issues for our consideration (Req. Reh‟g 2).
We take each in turn.

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ISSUE 1
Is the evidence of record limited to Pissis‟ suggestion of a hydrogel
comprising 10% Nylon nanoparticles?
ANALYSIS
Appellants contend that “[i]ndependent claims 8 and 15 each recite
„wherein the length of the fibres is at least a millimeter.‟” (Req. Reh‟g. 3).
We agree.
Appellants contend that “Examiner argued that this element is met by
the teachings of Slivka” (id.). We agree (Decision 3: FF 7; see also id. at FF
5 (“Slivka suggests „a fiber reinforced gel structure for articular cartilage
repair‟”) and id. at FF 8 (“Slivka suggest that the „10% fiber loading . . . [is]
particularly good for its slightly higher stiffness as compared to native
tissue‟”)).
Appellants contend that “the Board acknowledged that Pissis only
teaches using Nylon nanometers” (Req. Reh‟g. 3). Because Appellants‟
contention lacks precision, we disagree. “Pissis suggests a hydrogel „with a
dispersion of Nylon particles in the scale of nanometers‟ to improve the
mechanical properties of the hydrogel” (Decision 3: FF 9 (emphasis added);
see also id. at 3-4: FF 10 (Pissis adds “Nylon nanoparticles to a hydrogel at a
maximum weight percentage of [] 10%”)).
Appellants contend that the Decision fails to “resolve[] the issue of
why one would reasonably expect that using 10% Nylon nanoparticles in a
hydrogel would have a similar effect as using 10% Nylon milliparticles”
(Req. Reh‟g. 3). We disagree (see Decision 6: 10-19; see also id. at 6: 1-9).

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ISSUE 2
Does the evidence of record support a conclusion that Young‟s nylon
and elastic spandex fiber mesh will suck up at least one monomer solution?
ANALYSIS
Appellants contend that “Young was cited for teaching that Nylon
nanoparticles reinforce mechanical properties of a hydrogel . . . and that
Nylon nanoparticles „suck up monomer solutions‟” (Req. Reh‟g. 4
(emphasis added)). We disagree. Examiner cited “Young‟s figure 2(c) and
(d) to suggest fibers „longer than one millimeter‟” (Decision 4: FF 12).
However, “Young‟s figure 2(a) provides a length marker, which suggests
that each panel of Young‟s figure 2 is approximately 800 x 600
micrometers” (id.). Thus, notwithstanding Appellants‟ contention to the
contrary, Young‟s mesh is not a nanoparticle. Instead, it is at least 0.8 x 0.6
millimeters (800 x 600 micrometers) in length, which is larger than a
nanoparticle, but does not expressly suggest a fiber longer than one
millimeter as proffered by Examiner (id.). For the foregoing reasons we
disagree with Appellants‟ contention that “[l]ike Pissis, the Board also
agreed that Young only taught Nylon nanoparticles” (Req. Reh‟g. 4
(emphasis added)).
Appellants contend that they “disputed that Young teaches or suggests
that Nylon milliparticles suck up monomer solutions because Young is only
directed to Nylon nanoparticles” (Req. Reh‟g. 4 (emphasis added); see also
id. at 5 (“Young does not teach Nylon milliparticles. Thus, Young does not
teach or suggest anything with respect to Nylon milliparticles”) (emphasis
added)). In this regard, Appellants contend that “Examiner had to provide
extrinsic evidence that a Nylon nanoparticle and a Nylon milliparticle would
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behave the same” (Req. Reh‟g. 6). We disagree. Appellants‟ focus on a
“nanoparticle” is misplaced. Appellants‟ claimed invention requires a fiber
of at least a millimeter in length. Young suggests a fiberous mesh of at least
0.8 x 0.6 millimeters in length. Contrary to Appellants‟ contentions
Young‟s mesh is not a nanoparticle. “While Young does not expressly
suggest the length of the Nylon fiber utilized in the mesh, Slivka suggests
that fibers having „an average length of about 2.5 mm‟ can be utilized to
reinforce a gel” (Decision 6: 4-7).
Therefore, at a minimum, the question is whether a fiberous mesh of
at least 0.8 x 0.6 millimeters in length will exhibit its intrinsic property of
sucking up at least one monomer solution that differs in an unexpected way
from a fiberous mesh of at least a millimeter in length? “Appellants fail to
provide persuasive evidence or argument to support a conclusion that
Young‟s nylon and elastic spandex fibers would not exhibit their inherent
property when utilized according to the combination of Malmonge, Slivka,
Pissis, and Young to prepare an articular cartilage repair material” (Decision
7: 18-22). Accordingly, we are not persuaded by Appellants‟ contentions
regarding Young‟s suggestion of a nanoparticle.
We are also not persuaded by Appellants‟ contention regarding the
intrinsic property of Young‟s fiberous mesh (Req. Reh‟g 6-7). “Examiner
finds that the ability to „“suck[ ] up” monomer solutions‟ is a property of
spandex fibers, such as those suggested by Young” (Decision 4: FF 14,
citing Ans. 9, which cites Spec. 1: 18-21; 2: 1-2; and 3: 1-3). See In re
Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (“Even if no prior art of record
explicitly discusses the [limitation], [Appellants‟] application itself instructs
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that [the limitation] is . . . a property necessarily present in [the material
itself]”).
ISSUE 3
Did the Board overlook or misapprehend Appellants‟ evidence of
unexpected results?
ANALYSIS
Appellants contend that “it is not the Appellants‟ burden to persuade
an examiner that the results are unexpected. The mere statement by the
Appellants is sufficient. . . . Instead, it is the Examiner who must provide
evidence to the contrary.” (Req. Reh‟g. 8.) In this regard, Appellants
contend that the evidentiary burden was improperly shifted to Appellants
(id.). We are not persuaded (Decision 5: 7-18). Simply stated, as the
Decision makes clear, it was not unexpected that a fiber reinforced material
would exhibit superior properties relative to a non-reinforced material. In re
Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (“In order for a showing of
„unexpected results‟ to be probative evidence of non-obviousness, it falls
upon the applicant to at least establish . . . that the difference actually
obtained would not have been expected by one skilled in the art at the time
of invention”).

In sum, Appellants failed to identify any points that we overlooked or
misunderstood. Accordingly, we deny the request for rehearing.
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REHEARING DENIED

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