Ex Parte Blay et alDownload PDFPatent Trial and Appeal BoardJun 29, 201613056140 (P.T.A.B. Jun. 29, 2016) Copy Citation 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. 13/056,140 01/27/2011 Alberto Blay A-11660 1389 21884 7590 06/29/2016 WELSH FLAXMAN & GITLER LLC 2000 DUKE STREET, SUITE 100 ALEXANDRIA, VA 22314 EXAMINER GAMI, TEJAL ART UNIT PAPER NUMBER 2127 MAIL DATE DELIVERY MODE 06/29/2016 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) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ALBERTO BLAY, MARCELO BLAY, and TUNCHEL SAMY ____________________ Appeal 2015-003181 Application 13/056,140 Technology Center 2100 ____________________ Before JOHN A. EVANS, HUNG H. BUI, and KARA L. SZPONDOWSKI, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s Final Office Action rejecting claims 1–4. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.1 1 Our Decision refers to Appellants’ Appeal Brief filed October 23, 2014 (“App. Br.”); Examiner’s Answer mailed November 13, 2014 (“Ans.”); Final Office Action mailed February 25, 2014 (“Final Act.”); and original Specification filed January 27, 2011 (“Spec.”). Appeal 2015-003181 Application 13/056,140 2 STATEMENT OF THE CASE Appellants’ Invention Appellants’ invention is directed to a process for producing a prefabricated bone graft for bone tissue formation in the field of medicine, dentistry and veterinary. Spec. ¶ 12 and Abstract. According to Appellants, the process first requires submitting a patient to a computerized tomography scan to obtain images of a site of a defect to be grafted and analyzing the images obtained using specific software. Id. ¶¶ 18–19. After the images are evaluated and are diagnosed, a virtual treatment of the defect is promoted through specific image manipulation software. Id. ¶ 20. The manipulated image is transferred to 3D prototype producing equipment (i.e., 3D printer) and the bone graft is generated in a biomaterial. Id. ¶¶ 21–22. Claim 1 is independent and is illustrative of Appellants’ invention, as reproduced below, with the disputed limitation in italics: 1. A process for producing a bone graft comprising a pre- operatory surgical procedure that comprises the steps of: a) submitting a patient to a computerized tomography scan to obtain images of a site of a defect to be grafted; b) analyzing the images obtained in a specific software; c) after an evaluation and a diagnosis through the images, promoting a virtual treatment of the defect through a specific image manipulation software; d) transferring the manipulated images to 3D prototype producing equipment; and e) generating the bone complement graft in a biomaterial. App. Br. 12 (Claims App’x.) (emphasis added). 2 See Appellants’ corresponding published application 2011/0125306; published on May 26, 2011. Appeal 2015-003181 Application 13/056,140 3 Examiner’s Rejection Claims 1–4 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Marchesi (US 2007/0269769 A1; issued Nov. 22, 2007). Final Act. 2–4. ANALYSIS With respect to independent claim 1, Appellants acknowledge Marchesi discloses a method for the guided regeneration of bone tissues in the medical surgical and dental field including: (1) a first acquisition phase which involves taking one or more images of an area A of bone tissues to be regenerated, for example, by means of a CAT scan or other procedure; and (2) a second processing phase which includes a “software program permit[ting] the determination of a three-dimensional software model of the device” to be grafted in the area A of bone issues and then fabricates the structure of the device. App. Br. 8 (citing Marchesi ¶¶ 42, 44). Appellants, however, argue that Marchesi does not disclose the claimed step (c) of “after an evaluation and a diagnosis through the images, promoting a virtual treatment of the defect through a specific image manipulation software” as recited in claim 1. App. Br. 8–10. According to Appellants, Marchesi describes using a 3D software model of a device to be grafted in the area A of bone tissues, whereas Appellants do not use 3D software modeling but instead use an “image manipulation software to create a virtual model.” Id. at 9. With respect to claim 2, Appellants argue Marchesi discloses “the use of growth factors or modulators, precursor cell groups or other biologically Appeal 2015-003181 Application 13/056,140 4 active factors” as “a treatment of the existing tissue,” but does not disclose the step of “promoting the cellular enrichment of the bone graft” as recited in claim 2. Id. at 10–11. We do not find Appellants’ arguments persuasive. Rather, we find the Examiner has provided a comprehensive response to Appellants’ arguments supported by a preponderance of evidence. Ans. 5–6; see also Final Act. 4– 5. As such, we adopt the Examiner’s findings and explanations provided therein. Id. For additional emphasis, we note that an anticipatory reference need not duplicate, word for word, what is in the claims. Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991). Identity of terminology is not required, for a claim element to be met directly by the prior art. See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Anticipation can occur when a claimed invention is inherent or otherwise implicit in the prior art reference. Id. Moreover, we note claim terms are given their broadest reasonable interpretation consistent with the specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In this appeal, neither the term “promoting a virtual treatment of the defect” nor the term “specific image manipulation software” is defined in Appellants’ Specification. In fact, Appellants’ Specification is silent regarding: (1) any specific type of treatment, real or virtual, of the defect, i.e., area to be bone grafted; or (2) any specific type of propriety image manipulation software. In the absence of any guidance from Appellants’ Specification, the Examiner has interpreted Appellants’ claimed term “promoting a virtual treatment of the defect through a specific image manipulation software” as encompassing the processing of information Appeal 2015-003181 Application 13/056,140 5 based on a 3D software model of a device to be grafted in the area A of bone tissues that is suitable for supporting the regeneration of those bone tissues as disclosed by Marchesi. Ans. 5–6 (citing Marchesi ¶¶ 14–15, 24, 43). Similarly, the Examiner has interpreted Appellants’ claimed term “promoting the cellular enrichment of the bone graft” as encompassing the membranes used to produce bone tissues as described by Marchesi. Ans. 6 (citing Marchesi ¶¶ 4, 18–19, 24). We find the Examiner’s interpretations to be reasonable and consistent with Appellants’ Specification. Processing information of a 3D modeling of a device to be grafted in the area A of bone tissues can also be considered as “promoting a virtual treatment.” Likewise, the use of membranes can be considered as “promoting the cellular enrichment of the bone graft.” For the reasons set forth, we sustain the Examiner’s anticipation rejection of claim 1 and 2 based on Marchesi as well as dependent claims 3– 4, which Appellants do not argue separately. CONCLUSION On the record before us, we conclude Appellants have not demonstrated the Examiner erred in rejecting claims 1–4 under 35 U.S.C. § 102(b). DECISION As such, we AFFIRM the Examiner’s final rejection of claims 1–4. 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). Appeal 2015-003181 Application 13/056,140 6 AFFIRMED Copy with citationCopy as parenthetical citation