Ex Parte Adilstam et al

Patent Trial and Appeal Board

Feb 22, 2016

10573534 (P.T.A.B. Feb. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/573,534 04/15/2008
20995 7590 02/24/2016
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
FIRST NAMED INVENTOR
Fredrik Adilstam
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.
NOBELB.230NP 5459
EXAMINER
SELLMAN, CACHET I
ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
02/24/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDRIK ADILST AM and MATTIAS IVERHED
Appeal2014-001863
Application 10/573,5341
Technology Center 1700
Before TERRY J. OWENS, PETER F. KRATZ, and JULIA HEANEY,
Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1, 3-11, and 14. 2 We have jurisdiction
pursuant to 35 U.S.C. § 6. Oral argument was presented at a hearing
conducted on February 11, 2016.
1 According to Appellants, the real party in interest is Nobel Biocare
Services AG. App. Br. 3.
2 Appellants have identified claim 2 as a cancelled claim and maintain the
appeal only as to claims 1, 3-11, and 14 (App. Br. 3; Claims Appendix;
Reply Br. 1 ). Consequently, the previously maintained rejections pertaining
to claim 2 are moot and are not before us for review on appeal.
Appeal2014-001863
Application 10/573,534
Appellants' claimed invention is directed to a method of providing a
porous surface layer on a ceramic substrate. The substrate can form part of a
dental installation, such as an implant, spacer, crown, etc. (Spec. 1 ).
Claim 1 is illustrative and reproduced below:
1. A method for providing a porous surface layer on a
ceramic substrate which forms a part of a dental installation,
compnsmg:
providing the ceramic substrate with a surface with a first
porosity;
forming a ceramic layer with a second porosity having
larger pores than in the first porosity; the step of forming the
ceramic layer, comprising:
applying a dispersion with a viscous liquid to the
surface, said viscous liquid having the ability to be sucked by
capillary force into a first pore formation in the ceramic
substrate to retain on the surface first ceramic particles and
second material particles and/or liquid particles of the
,.r . t. . . . t. .c: u1spers1on uavmg a size to not penetrate mto tue 1lfst pore
formation and which contribute to the construction of the
ceramic layer, and
sintering the dispersion to form the ceramic layer
in which the first particles finally forming the ceramic layer are
held together with intermediate spaces which are included in
the second porosity, the intermediate spaces being formed by
the second material particles and/or liquid particles separate
from the first particles finally forming the layer, wherein the
second material particles and/ or liquid particles are pore
formers that are driven off during the sintering along with the
viscous liquid.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Bryan et al. ("Bryan") US 4,073,999 Feb. 14, 1978
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Application 10/573,534
Kijima et al. ("Kijima") US 4,983, 182
Apte et al. ("Apte") US 5,902,429
Stucki-McCormick US 5,961,329
Jan. 8, 1991
May 11, 1999
Oct. 5, 1999
The Examiner maintains the following grounds of rejection as to the
appealed claims:
Claims 1, 3-8, 10, 11, and 14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kijima in view of Bryan and Apte. Claim 9
stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Kijima
in view of Bryan, Apte, and Stucki-McCormick.
After consideration of the evidence of record brought to bear on the
rejections before us in this appeal and the opposing positions of Appellants
and the Examiner, we determine that Appellants' arguments fail to expose
reversible error in the Examiner's obviousness rejections, which rejections
are supported, on balance, by the weight of the evidence. We affirm the
stated rejections for substantially the reasons set forth by the Examiner in the
Non-final Rejection3 and the Answer. We offer the following for emphasis.
Appellants argue the claims subject to the Examiner's first stated
obviousness rejection over Kijima in view of Bryan and Apte together as a
group and rely on the arguments presented for the latter rejection in
contesting the Examiner's separate rejection of dependent claim 9 (App. Br.
10). Accordingly, we select claim 1 as the representative claim on which we
focus in deciding this appeal.
Kijima is directed to a ceramic implant and method for its production,
wherein a coating layer, which layer may comprise hydroxyapatite (HAP)
3 Electronically delivered January 18, 2013.
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Application 10/573,534
and zirconia, is formed on the surface of a sintered ceramic body comprising
zirconia (col. 1, 11. 5-12, 42---65). A shaped product of zirconia can be
immersed in a slurry comprising water, HAP, and zirconia to form the
surface coating on the shaped product (Kijima, col. 5, 11. 22-35; see, e.g.,
Example 12).
Bryan is directed to a method for preparing porous ceramic or metallic
coatings on a ceramic or metallic substrate by dipping the substrate in the
coating composition, which composition includes, for instance, a ceramic
powder, solvent, and a binder (col. 1, 11. 5-10; col. 3, 11. 4--15; col. 3, 1. 63-
col. 4, 1. 42.). Bryan teaches or suggests that the particle size of the particles
in the coating powder can have an effect on strength of adhesion of the
coating and the coating porosity and that a proper choice of particle size can
appropriately balance these properties of the coating (col. 3, 11. 26-37).
Appellants do not dispute the Examiner's determination that the
ceramic substrate employed by Kijima is porous (has a "pore formation")
(Non-final Act. 3; Kijima, col. 5, 11. 26-35; see generally App. Br.). Nor do
Appellants specifically contest the Examiner's determination that Kijima
teaches or suggests forming a relatively more porous coating layer because
coating layers that are more porous would be expected to affect or have
greater biological activity and less crack formation than a coating layer that
is less porous, as evinced by Kijima' s teaching that using formation
conditions that result in smaller porosity of the coating layer is accompanied
by small biological activity and the formation of cracks at the coating layer
surface (Non-final Act. 3; Kijima, col. 5, 11. 4--21; see generally App. Br.).
Nor do Appellants specifically contest the Examiner's determination that
Bryan teaches or suggests that using larger particle sizes for a ceramic
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Application 10/573,534
substrate coating layer will increase porosity of the layer as evinced by
Bryan's teaching that porosity tends to decrease with a decreasing particle
size (Non-final Act. 3; see generally App. Br.).
Rather, Appellants argue that "the cited portions of Kijima and Bryan
fail to disclose the relative porosity sizes in a coating compared to the
underlying substrate" (App. Br. 8).
As essentially observed by Appellants (id.), there are few available
choices for the relative porosities of the coating layer and the underlying
ceramic substrate of Kijima in that they are either substantially the same or
the coating layer porosity is different (larger or smaller) than the porosity of
the underlying ceramic substrate.
We concur with the Examiner's determination that it would have been
prima facie obvious to one of ordinary skill in the art to form the porous
coating layer of Kijima on the underlying ceramic body (substrate) such that
the porous coating layer has sufficient porosity, such as by using larger
particles as taught by Bryan, so as to avoid crack formation and for the layer
to possess a desired biological activity as taught by Kijima, and in so doing
arrive at a coating layer that has a porosity that is greater than the porosity of
the underlying layer/ceramic body (Non-final Act. 3--4). After all, there are
only three available choices for the relative porosity of the coating and the
underlying substrate/ceramic body and choosing any of the three would have
been within the skill of the art based on the combined teachings of the
references, so long as the porosity of the coating and the strength and other
desired characteristics of the underlying substrate/ceramic body are
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sufficient for the purposes of the ceramic implant of Kijima (col. 4, 11. 23-
52; col. 5, 11. 4--35).4
Appellants fail to articulate why one of ordinary skill in the art would
not have been led to select a relative coating layer porosity that is greater
than the porosity of the underlying substrate/ceramic body for the product of
Kijima. Consequently, Appellants' argument that the cited applied prior art
does not disclose the relative porosity of the coating and the substrate as
required by claim 1 lacks substantive merit (App. Br. 8; Reply Br. 3).
In addition, Appellants urge that the applied references, including
Kijima and Bryan as combined by the Examiner, would not have led one of
ordinary skill in the art to "necessarily modify" Kijima to employ larger
particle sizes to increase porosity and to provide for particles "having a size
to not penetrate into the first pore formation" (App. Br. 9). This argument is
not persuasive of reversible error in the Examiner's obviousness rejection.
As discussed above, Kijima would have led one of ordinary skill in
the art to provide for sufficient porosity for the coating layer for the purpose
of achieving desired biological activity and to avoid or diminish crack
formation. In so doing, one of ordinary skill in the art would have employed
particle sizes adequate to achieve the desired porosity in Kijima given that
Bryan teaches that particle size is a result effective variable for porosity. As
for the claim 1 requirement "to retain on the surface first ceramic particles
and second material particles and/or liquid particles of the dispersion having
4 Appellants do not contest the Examiner's additional reliance on Apte for
teaching the inclusion of pore formers, such as graphite or starch, in a
ceramic layer for forming/controlling the pore sizes and porosity (Non-final
Act. 4--5; see generally App. Br.).
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Application 10/573,534
a size to not penetrate into the first pore formation," the Examiner has
reasonably determined that Kijima teaches or suggest that "the particles
remain on the surface to form the porous ceramic layer (see col. 5, lines 26-
35" (Non-final Act 3). Appellants' arguments fail to indicate that this
teaching of Kijima coupled with the teachings of Bryan suggesting that
larger particle sizes tend to increase porosity would have directed one of
ordinary skill in the art to employ particles only having a size that would
penetrate the surface as opposed to employing at least some particles for the
coating layer of Kijima that have a size that do not penetrate so as to be
retained on the surface and form the porous ceramic layer taught to be
formed by Kijima.
Appellants' contention that "persons of ordinary skill might modify
the particle sizes of Kijima to be smaller to increase the adhesion strength"
in light of the teachings of Bryan concerning adhesion strength increasing
with a decrease in particle size and that porosity can be affected by factors
other than particle size is not persuasive of reversible error in the Examiner's
obviousness rejection (Reply Br. 3). This is because these arguments do not
fairly take into account Bryan's further teaching indicating that using
smaller particle size would tend to decrease porosity and Kijima's teaching
of retaining particles on the surface to form the porous ceramic layer, which
latter teachings would have at least suggested employing some particles
having a size that do not penetrate, as required by representative claim 1, as
an obvious option available to one of ordinary skill in the art in forming the
porous layer taught and suggested by Kijima (Bryan, col. 3, 11. 26-37;
Kijima, col. 5, 11. 26-35). In other words, because Kijima stresses the
importance of having a sufficiently large porosity for the coating layer for
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purposes of sufficient biological activity and lower crack formation, it would
have been obvious for one of ordinary skill in the art to emphasize factors
that would contribute to increasing the coating layer porosity, including
using larger particle sizes in the coating composition that are part of the
coating layer material that does not penetrate into the pore formation of the
underlying ceramic substrate so as to provide for such porosity (Ans. 5;
Kijima, col. 5, 11. 4--21 ).
It follows that, on this record, a preponderance of the evidence
supports the Examiner's obviousness determinations.
Therefore, we sustain the Examiner's obviousness rejections.
CONCLUSION/ORDER
The Examiner's decision to reject the claims on appeal 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).
AFFIRMED
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