Ex Parte Blunn et al

Patent Trial and Appeal Board

Sep 3, 2013

11306584 (P.T.A.B. Sep. 3, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GORDON BLUNN, JUSTIN COBB,
ALLEN GOODSHIP, and PAUL UNWIN
____________________

Appeal 2011-012443
Application 11/306,584
Technology Center 3700
____________________

Before BIBHU R. MOHANTY, MEREDITH C. PETRAVICK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-012443
Application 11/306,584

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-4, 6, 8-11, 15-20, 23-27, 30-34, and 37-41.1, 2 We have jurisdiction
under 35 U.S.C. § 6(b). An oral hearing was held on August 22, 2013.
We REVERSE.
The rejected claims are directed to a transcutaneous prosthesis with an
exterior part having a low surface energy, which according to the
Specification deters bacterial adhesion (Spec., [Para 14]). Claims 1, 16, 23,
30, and 39-41 are the only independent claims on appeal.
EXEMPLARY CLAIM
Claim 1, reproduced below, is indicative of the claims being appealed.
1. A transcutaneous prosthesis which
comprises:
a first component shaped for implantation
into a bone;
a second component adapted for location
between the bone and the skin, the second

1 Although claims 1-42 are pending and finally rejected, (Final Rejection
mailed Mar. 10, 2010, Office Action Summary), the Examiner only indicates
claims 1-4, 6, 8-11, 15-20, 23-27, 30-34, and 37-41 are rejected, and
Appellants only argue against the rejections of these claims (App. Br. 9, et
seq.). Thus, the status of claims 5, 7, 12-14, 21, 22, 28, 29, 35, 36, and 42 is
not clear from the record.
2 Our decision will refer to Appellants’ Specification (“Spec.,” filed January
3, 2006), Appeal Brief (“App. Br.,” filed December 28, 2010), and Reply
Brief (“Reply Br.,” filed June 6, 2011), as well as the Examiner’s Answer
(“Ans.,” mailed April 4, 2011).

Appeal 2011-012443
Application 11/306,584

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component having an outer surface having one or
more surface treatments for stimulation of
fibroblastic cell proliferation and attachment of
epithelial cells, the surface treatments being
porous, being micro-pitted, and/or being coated
with an external coating of a material selected
from hydrated calcium phosphate, adhesion
promoting proteins and alumina oxide ceramics;
and
a third component adapted for location to
extend directly from the skin surface in use, the
third component having an outer surface thereof,
wherein the outer surface of the third component
comprises a non-stick material whereby the surface
has a surface energy that is lower than a surface
energy of the first and second components and
which deters bacterial adhesion,
wherein, in use, a transition from the second
component to the third component is essentially at
the surface of the skin and the third component
extends from the skin surface, such that the non-
stick outer surface of the third component is
adjacent to the surface treated outer surface of the
second component when the first component is
implanted in a bone.
THE REJECTIONS
The following rejections made by the Examiner are the subject of this
appeal:
Claims 1-4, 6, 8, 10, 11, 15-19, 23-26, 30-33, and 37-41 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Hall (US 4,143,426,
iss. Mar. 13, 1979) in view of Meyer (US 4,549,319, iss. Oct. 29, 1985) and
Arenberg (US 5,501,706, iss. Mar. 26, 1996); and
Appeal 2011-012443
Application 11/306,584

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claims 1-4, 6, 8-11, 15-18, 20, 23-25, 27, 30-32, 34, and 37-41 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Hall in view of
Meyer and Davidson (US 5,169,597, iss. Dec. 8, 1992).
ANALYSIS
The Examiner rejects independent claim 1 as unpatentable over
combinations of Hall and Meyer with either Arenberg or Davidson. In the
rejections, the Examiner relies on each of Arenberg and Davidson to teach
the limitation of
the outer surface of the third component
comprises a non-stick material whereby the surface
has a surface energy that is lower than a surface
energy of the first and second components and
which deters bacterial adhesion,
wherein, in use, a transition from the second
component to the third component is essentially at
the surface of the skin and the third component
extends from the skin surface, such that the non-
stick outer surface of the third component is
adjacent to the surface treated outer surface of the
second component when the first component is
implanted in a bone
(Ans. 4-5, 6). In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the
Supreme Court at 418 noted that in an obviousness analysis “rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In this case,
after reviewing the record as a whole, we find the Examiner has not
presented a sufficiently articulated reasoning with rational underpinnings for
providing the claimed non-stick material from either Arenberg or Davidson
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Application 11/306,584

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on a portion of the implant of Hall which extends from the skin surface, and
thus we agree with Appellants that the rejection is in error (App. Br. 9-23,
Reply Br. 1-11). We note, as Appellants point out, that neither Arenberg nor
Davidson teaches coating a portion of a transcutaneous implant, but instead
teach coating transcutaneous implants for reasons different from those
recited in the claim (App. Br. 15-17, 22-23). We also note the apparent
teaching in Hall of the same material extending from the skin surface as is
under the skin (App. Br. 10-15, 17-21). For these reasons, we do not sustain
the rejections of independent claim 1.
Appellants argue the rejections of remaining independent claims 16,
23, 30, and 39-41, as well as each of the dependent claims, are in error for
the same reasons as independent claim 1. Thus, we also do not sustain the
rejections of claims 2-4, 6, 8-11, 15-20, 23-27, 30-34, and 37-41.
DECISION
The Examiner’s rejection of claims 1-4, 6, 8-11, 15-20, 23-27, 30-34,
and 37-41 is REVERSED.
REVERSED

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