10627114 (B.P.A.I. Jul. 17, 2012)

Ex Parte Zilla et al

Board of Patent Appeals and InterferencesJul 17, 2012

10627114 (B.P.A.I. Jul. 17, 2012)

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. 10/627,114 07/25/2003 Peter Paul Zilla P-8794.05 Continutation 2 3869 7590 07/18/2012 JAMES H. ACKLEY Medtronic, Inc. 710 Medtronic Parkway N.E. Minneapolis, MN 55432 EXAMINER WILLSE, DAVID H ART UNIT PAPER NUMBER 3738 MAIL DATE DELIVERY MODE 07/18/2012 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 PETER PAUL ZILLA, DEON BEZUIDENHOUT, and THERESA YVONNE DOWER ____________________ Appeal 2010-004257 Application 10/627,114 Technology Center 3700 ____________________ Before: JENNIFER D. BAHR, WILLIAM V. SAINDON, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. SAINDON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004257 Application 10/627,114 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 71-87 and 103-105. We have jurisdiction under 35 U.S.C. § 6(b). The Claimed Subject Matter Claim 71, reproduced below, is illustrative of the claimed subject matter. 71. A prosthetic material comprising: a scaffold having interconnecting, uniformly shaped pores; and an ingrowth matrix within the pores, wherein the ingrowth matrix comprises a concentration gradient of a material, and is adapted to promote ingrowth of tissue in the scaffold and wherein varying concentrations within the ingrowth matrix are designed to perform specific functions. Rejections I. Claims 71, 72, 74, 77, 78, 84, and 103-105 are rejected under 35 U.S.C. § 102(a) as anticipated by Starling (WO 98/43558 A1, pub. Oct. 8, 1998). II. Claims 71-87 and 103-105 are rejected under 35 U.S.C. § 103(a) as unpatentable over Starling. SUMMARY OF DECISION We AFFIRM-IN-PART. Appeal 2010-004257 Application 10/627,114 3 OPINION Rejection I – Anticipation by Starling Appellants argue the claims of this rejection as a group. We select claim 1 as representative. In relevant part, claim 71 requires a prosthetic material with an ingrowth matrix that has a concentration gradient of a material designed to perform specific functions. The Examiner found that Starling describes a prosthetic material having an ingrowth matrix (citing Starling, p. 13, ll. 26-61) designed to perform specific functions (citing id., p. 13, ll. 11-13, 15-17, p. 16, ll. 28-30 (discussing growth factors and anti-inflammatory and anti-tumor agents)). Ans. 3; see also Ans. 4-5 (discussing the citations). The Examiner also finds that a concentration gradient is necessarily present because otherwise “diffusion of the agent would not be possible.” Ans. 4. The Examiner finds that growth factor concentrations sustain the ingrowth of cells, and that the concentration, itself, drives release of the growth factor (via diffusion). Id. Appellants argue, “the cited passages from Starling do not disclose concentration gradients of materials.” App. Br. 4. Appellants likewise argue that the ingrowth matrix in Starling does not have varying concentrations designed to perform specific functions. Id. Appellants’ arguments do not address the Examiner’s positions that the concentration gradient is necessarily present or that the various concentrations of, for example, the growth factor perform the functions of driving the release of the substance as well as the ingrowth of cells. The Examiner does not find that Starling directly describes the concentration gradient but rather indirectly describes it. Ans. 4-5. A reference need not teach a limitation in haec verba. In re Bode, 550 F.2d 656, 660 (CCPA Appeal 2010-004257 Application 10/627,114 4 1977). Accordingly, we are not apprised of error in the Examiner’s finding and are constrained to affirm the Examiner’s rejection of claim 71 as anticipated by Starling. Claims 72, 74, 77, 78, 84, and 103-105 fall therewith. Rejection II – Obviousness in view of Starling Appellants argue claims 71-81, 83-87, and 103-105 as a group and separately argue dependent claim 82. We select claim 71 as representative of claims 72-81, 83-87, and 103-105 and address claim 82 separately. Appellants’ first argument regarding an ingrowth matrix (App. Br. 5- 6), fails to address the Examiner’s articulated rejection for the reasons set forth above and is likewise unpersuasive. Appellants next argue that Starling is “not intended to create ingrowth of different or varying materials by design of an ingrowth matrix.” App. Br. 6. However, this argument does not serve to identify an error in the Examiner’s rejection. The Examiner found that Starling describes the requisite features of claim 71, as explained at Ans. 3-5. Accordingly, we are not apprised of error in the Examiner’s rejection of claim 71 as obvious in view of Starling. Claims 72-81, 83-87, and 103-105 fall therewith. With respect to dependent claim 82, Appellants argue that the claim requires a scaffold having interconnecting, helically oriented channels within the scaffold. App. Br. 6. The Examiner found that Sterling describes hollow microspheres forming the helical threads. Ans. 4 (citing Starling p. 5, ll. 7- 8). Appellants argue that the screw thread of Starling does not have the claimed channels within the scaffold but rather a single feature on the outer surface of the device. App. Br. 7. Appeal 2010-004257 Application 10/627,114 5 At the cited portion of page 5 of Starling, we do not find any discussion of hollow microspheres forming the helical threads. Instead, Starling merely discloses that the implant may comprise a microbead, without mentioning threads at all. It is not necessarily the case that the threads of the screw are formed of the same material as the body of the screw. The Examiner provides no further explanation as to microspheres in Sterling forming the threads of the screw. Accordingly, the Examiner’s finding is not supported by a preponderance of the evidence and we cannot sustain the rejection of claim 82, which relies on this unsupported finding. DECISION We affirm the Examiner’s decision regarding the anticipation rejection of claims 71, 72, 74, 77, 78, 84, and 103-105. We affirm the Examiner’s decision regarding the obviousness rejection of claims 71-81, 83-87, and 103-105. We reverse the Examiner’s decision regarding the obviousness rejection of claim 82. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART Klh