KYUNGPOOK NATIONAL UNIVERSITY INDUSTRY-ACADEMIC COOPERATION FOUNDATION

Patent Trials and Appeals Board

Sep 15, 2021

2020004351 (P.T.A.B. Sep. 15, 2021)

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.
15/128,735 09/23/2016 Kyo Han Kim 697-0051 1084
145742 7590 09/15/2021
Paratus Law Group, PLLC
1765 Greensboro Station Place
Suite 320
Tysons Corner, VA 22102
EXAMINER
TRAN, BINH X
ART UNIT PAPER NUMBER
1713
MAIL DATE DELIVERY MODE
09/15/2021 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 PATENT TRIAL AND APPEAL BOARD
Ex parte KYO HAN KIM,
TAE YUB KWON, and JUN SIK SON
Appeal 2020-004351
Application 15/128,735
Technology Center 1700
Before JEFFREY T. SMITH, GEORGE C. BEST, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5–7, 30, and 31. Final Act. 2, 3, 5,
9. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a).
Appellant identifies the real party in interest as “Kyungpook National
University Industry-Academic Cooperation Foundation, of Daegu, Republic
of Korea.” Appeal Br. 4.
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Application 15/128,735

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CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of preparing a titanium or titanium alloy
implant, the surface of which has various hierarchical surface
structures comprising (a) micrometer-sized sponge-like network
structures of at least 1 micrometer and (b) continuous or
discontinuous line-shaped open channel-shaped nanometer-sized
bumps less than 100 nanometers formed on the micrometer-sized
structures above, in such a way that a surface hydrophilicity and
wettability of the surface of the titanium or titanium alloy implant
has been increased by further imposing the hierarchical surface
structures on the titanium or titanium alloy implant, said method
comprising:
preparing a mixed etching composition with a pH of 7 to
8, comprising hydrogen peroxide, a base, and water; and
oxidatively etching an implant made of titanium or a
titanium alloy by immersing the same in the etching composition
in such way that the hierarchical surface structures of the
titanium or titanium alloy implant is defined by the oxidatively
etching,
wherein the hierarchical surface structures of the titanium
or titanium alloy implant lead to increasing the contact and/or
binding areas with cells and increasing the titanium or titanium
alloy implant’s surface adsorption of protein or growth factor
present in a body fluid, as well as promoting adhesion,
proliferation or differentiation of cells as compared to an implant
without said hierarchical surface structures.
Claims Appendix (Appeal Br. 16).
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Application 15/128,735

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REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Liao US 2009/0204213 Al Aug. 13, 2009
Mayfield US 2011/0233169 Al Sept. 29, 2011
Ok H. Ryu et al., Gingival Epithelial Cell Expression of Macrophage
Inflammatory Protein-la Induced by lnterleukin-1β, and
Lipopolysaccharide, 78 J Periodontal, August 2007
Bone-Wikipedia, www.wikipedia.org/wiki/bone
Ti6Ai-4V ELI, www.fwmetals.com/services/resource-library/ti-6al-4v-
eli/
REJECTIONS
Claims Rejected 35 U.S.C. § Reference(s)/Basis
1–3, 5–7, 30, 31 112(a) or first paragraph Written description
1–3, 5–7, 30, 31 112(b) or second paragraph Indefiniteness
1, 2, 5, 7, 31 102 Mayfield
3, 6, 30 103 Mayfield, Liao
OPINION
Written Description
The Examiner rejects claims 1–3, 5–7, 30, and 31 for failing to meet
the written description requirement, finding that the claim language
“micrometer-sized sponge-like network structure[s] of at least 1
micrometer” is unsupported. Final Act. 3. The Examiner reasons that the
claim term may broadly encompass “any value greater [or] equal to 1
micrometer” which is not supported by the Specification. Id.
“Adequate written description means that, in the specification, the
applicant must convey with reasonable clarity to those skilled in the art that,
as of the filing date sought, he or she was in possession of the [claimed]
invention.” Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007) (alteration
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in original) (citation and internal quotation marks omitted). “In the context
of the written description requirement, an adequate prima facie case must . . .
sufficiently explain to the applicant what, in the examiner’s view, is missing
from the written description.” Id.
In this case, the Specification provides an SLA (sandblasted, large-
grit, acid etched) method having the characteristic that “various sizes of
micrometer-sized pores form sponge-like network structures[.]” Spec. pg. 2.2
The Examiner also acknowledges that Application Figure 1A shows a
“micrometer size sponge-like network structure having a dimension
approximately 1 micrometer.” Ans. 12. Compliance with the written
description requirement is not determined based on whether the
Specification uses the specific term “at least 1 micrometer” or whether the
Specification provides examples for every possible embodiment of the
recited broad range of sizes. “[T]o satisfy the written description
requirement, the disclosure as originally filed does not have to provide in
haec verba support for the claimed subject matter at issue.” Purdue Pharma
L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000).
“[T]he PTO has the initial burden of presenting evidence or reasons
why persons skilled in the art would not recognize in the disclosure a
description of the invention defined by the claims.” In re Wertheim, 541
F.2d 257, 263 (CCPA 1976). In this case, the rejection lacks adequate
analysis as to why the Specification which describes a method for producing
a structure of approximately 1 micrometer (Ans. 12) does not support the

2 The Specification lacks pagination and we therefore provide our own.
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claim term “micrometer-sized sponge-like network structures of at least 1
micrometer.”
We do not sustain the written description rejection.
Indefiniteness
The Examiner rejects claims 1–3, 5–7, 30 and 31 for failing to meet
the definiteness requirement finding that the claim language “micrometer-
sized sponge-like network structure of at least 1 micrometer” broadly
encompasses any size larger than 1 micrometer ambiguous. Final Act. 4
(emphasis omitted).
The use of terms of degree does not automatically render a patent
claim indefinite. When a term of degree is employed in a claim there should
be some indication in the Specification or extrinsic evidence available to
demonstrate that the term provides the claim with “objective boundaries” for
those skilled in the art. See, e.g., Interval Licensing LLC v. AOL, Inc., 766
F.3d 1364, 1371 (Fed. Cir. 2014) (citing Nautilus, Inc. v. Biosig Instruments,
Inc., 134 S. Ct. 2120, 2130 & n.8 (2014) (additional citation omitted).
The Specification states:
The implant according to the present invention is characterized
in that it has micrometer-sized irregular bumps and channel-shaped
nanometer-sized bumps on the surface thereof. As described above,
the complex bump structures in micrometer and nanometer levels
formed on the surface of the implant significantly increase the surface
area and surface energy, increasing hydrophilicity and at the same
time, increasing the surface adsorption of cell adhesion-mediated
proteins including fibronectin and various growth factors present in
the body fluid, thereby promoting adhesion, proliferation, and
differentiation of osteogenic cells, and osseointegration of the implant.
Spec. paragraph bridging 11–12.
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One having ordinary skill preparing dental implants would have
understood this claim limitation “micrometer-sized sponge-like network
structure of at least 1 micrometer” to encompass structures of about a
micrometer size. Accordingly, we conclude that the Examiner’s
indefiniteness rejection is not well-founded.
The Examiner rejects claims 1–3, 5–7, 30 and 31 for failing to meet
the definiteness requirement for the additional reason that the claim
language “in such a way that a surface hydrophilicity and wettability of the
surface of the titanium or titanium alloy implant has been increased by
further imposing the hierarchical surface structures on the titanium or
titanium alloy implant” is ambiguous. Final Act. 4. The Examiner finds that
“it is unclear from the claim what is the base line or initial value that the
surface hydrophilicity and wettability has been increased from.” Id.
(emphasis removed).
Appellant, on the other hand, argues that the claim language is clear
for stating that the increase in value is based on a comparison to the structure
without the recited “hierarchical surface structures.” Appeal Br. 9.
“The claims, when read in light of the specification and the
prosecution history, must provide objective boundaries for those of skill in
the art.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir.
2014). In this case, the mere fact that the claim language does not specify a
base line or initial surface hydrophilicity and wettability values does not
render the scope of the claim language ambiguous. A skilled artisan reading
the plain language of the claim would understand that the recited “increase”
is based on a comparison before and after the recited “hierarchical surface
structures” has been “further impos[ed]” onto the recited titanium or
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titanium alloy implant. Moreover, the Specification provides various
descriptions of such an increase in surface hydrophilicity and wettability
values. See Spec. 12 (“As described above, the complex bump structures in
micrometer and nanometer levels formed on the surface of the implant
significantly increase the surface area and surface energy, increasing
hydrophilicity and at the same time, increasing the surface adsorption of cell
adhesion-mediated proteins including fibronectin and various growth factors
present in the body fluid, thereby promoting adhesion, proliferation, and
differentiation of osteogenic cells, and osseointegration of the implant.”), 5–
6 (“The surface of a titanium alloy treated with the mixed etching
composition including hydrogen peroxide and a carbonate compound or the
etching composition containing hydrogen peroxide and a basic solution of
the present invention includes micrometer-sized bumps and channel-shaped
nanometer-sized bumps, and thus has an increased surface area, and can not
only improve wettability, but also effectively promote cell proliferation and
osteocyte differentiation.”). We accordingly do not sustain the indefiniteness
rejection for this additional reason.
Anticipation
We review the appealed rejection for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 2010 WL 889747, *4 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After having considered
the evidence presented in this Appeal and each of Appellant’s contentions,
we are not persuaded that reversible error has been identified, and we affirm
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the Examiner’s § 102 and § 103 rejection for the reasons expressed in the
Final Office Action and the Answer. We add the following primarily for
emphasis.
In rejecting claim 13 over Mayfield, the Examiner finds that Mayfield
discloses both recited steps, namely the “preparing” and “oxidatively
etching” steps. Final Act. 5–6. Because Mayfield discloses an identical
process, the Examiner finds that the product of Mayfield’s process would
have identical properties as that recited. Id. at 7.
Appellant argues that the Examiner reversibly erred because Mayfield
“does not teach forming the micrometer-sized structures using an etching
composition having a pH of 7 to 8 (i.e., neutral to basic).” Appeal Br. 10.
We are not persuaded by the argument because it is unsupported by the
record. As Appellant acknowledges, Mayfield discloses “a mixed etching
composition having a pH of 7 to about 14.” Appeal Br. 10 (citing Mayfield
¶¶ 36–39, 46); see Final Act. 6. Appellant’s argument that the etching
composition in Mayfield “refers only to the nanopitting portion of the
process (i.e., the second step)” (Appeal Br. 9 (emphasis omitted)) is
unpersuasive because it does not adequately explain why the recited
“preparing” and “oxidatively etching” steps are distinguished from the prior
art. As the Examiner points out, claim 1, reciting a method “comprising” the
“preparing” and “oxidatively etching” steps, is open-ended and may include
additional steps. Ans. 17.

3 Appellant does not separately argue any other claims. See Appeal Br. 9–15.
All claims stand or fall together with claim 1. See id.; see also 37 C.F.R.
§ 41.37(c)(1)(iv).
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Appellant next argues that Mayfield does not disclose the structure of
“line-shaped open channel-shaped nanometer-sized bumps [less than 100
nanometers formed on the micrometer-sized structures].” Appeal Br. 10.
From the outset, Appellant’s argument is unpersuasive because it does not
dispute the Examiner’s finding that both recited steps are disclosed in
Mayfield and the argument is therefore incommensurate in scope with the
method claim.4
Moreover, Appellant’s argument that the process of Mayfield may
include acid etching whereas “the one-step oxidative etching process . . .
simultaneously forms the micro-sized and nano-sized structures” (Appeal
Br. 12) is unpersuasive. The argument is incommensurate in scope with the
open-ended language of claim 1 which does not recite the simultaneously
formation of the structures as Appellant argues, nor does it exclude an
additional acid etching step as the process in Mayfield.
Appellant’s argument that Mayfield’s product would not have the
increased hydrophilicity and wettability is unpersuasive. The Examiner has
established a reasonable belief that such properties would have been inherent
to the prior art product produced by an identical prior art process, the burden
of proof therefore shifts to Appellant to show that this characteristic or
property is not possessed by the prior art. See In re Best, 562 F.2d 1252,
1255 (CCPA 1977). Appellant does not distinguish the recited process steps,
nor does Appellant provide evidence showing that the prior art product

4 Appellant’s argument is unpersuasive also because it does not address the
Examiner’s finding that Figures 9A and 9B of Mayfield disclose such
structures. Compare Appeal Br. 10 (arguing that Figure 9C of Mayfield does
not disclose the structure), with Final Act. 6 (citing various portions of
Mayfield including Figures 9A–9C).
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would not exhibit such properties. Appeal Br. 13 (citing Wikipedia for an
explanation of the Lotus effect which is described neither in Mayfield nor
the pending application). “Attorneys’ argument is no substitute for
evidence.” Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989).
CONCLUSION
The Examiner’s anticipation and obviousness rejections are affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5–7,
30, 31
112(a) or
first
paragraph
Written description 1–3, 5–7,
30, 31
1–3, 5–7,
30, 31
112(b) or
second
paragraph
Indefiniteness 1–3, 5–7,
30, 31
1, 2, 5, 7,
31
102 Mayfield 1, 2, 5, 7, 31
3, 6, 30 103 Mayfield, Liao 3, 6, 30
Overall
Outcome
1–3, 5–7,
30, 31

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED