10282666 (B.P.A.I. Jul. 1, 2010)

Ex Parte Boyd

Board of Patent Appeals and InterferencesJul 1, 2010

10282666 (B.P.A.I. Jul. 1, 2010)

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. 10/282,666 10/29/2002 Lawrence M. Boyd 1842-0008 6625 28078 7590 07/01/2010 MAGINOT, MOORE & BECK, LLP CHASE TOWER 111 MONUMENT CIRCLE SUITE 3250 INDIANAPOLIS, IN 46204 EXAMINER FORD, ALLISON M ART UNIT PAPER NUMBER 1651 MAIL DATE DELIVERY MODE 07/01/2010 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 LAWRENCE M. BOYD __________ Appeal 2009-013341 Application 10/282,666 Technology Center 1600 __________ Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and JEFFREY N. FREDMAN, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant has requested rehearing (reconsideration) of the decision entered April 1, 2010 (“Decision”). That decision affirmed the Examiner’s rejection of claims 1-8, 10, 11, 17-19, 21, and 23-25 under 35 U.S.C. § 103(a) and claims 1-8, 10, 11, 17, 18, 21, and 23-25 on several grounds of obviousness-type double patenting. That decision also reversed the rejection of claim 19 under 35 U.S.C. § 112, first paragraph and the rejections of claim 22 under 35 U.S.C. § 103(a) and under several grounds of obviousness-type double patenting. Appeal 2009-013341 Application 10/282,666 2 DISCUSSION Claim 19 Appellant requests reconsideration of the rejection of claim 19, arguing that the Decision reversed the rejection over claim 22 and “the same rationale applies to claim 19 as the Board applied in reversing the obviousness rejection of claim 22” (Req. Recons. 2). We agree with Appellant’s reasoning and modify our decision so that the rejection of claim 19 under 35 U.S.C. § 103(a) is reversed. Obviousness rejections Appellant reiterates arguments found in the Appeal Brief. Appellant argues that “an accurate application of Boyer’s teachings to the Felt joint repair would require removal of the vertebral endplates for treatment. As Applicant has stressed, Boyer does not disclose an in situ treatment” (Req. Recons. 3). As we noted at page 16 of the Decision, persons of ordinary skill in the art would have had reason to apply Boyer’s technique to discs exposed during the disc surgery of Felt for two reasons: (1) “to reduce calcification on the vertebral end-plates for the predictable result of restoring, or at least improving, passage of nutrients from the blood to the disc through the end- plates” (Ans. 10) and (2) “demineralization of the end-plates would further expose collagen fibers in the vertebrae and expose BMPs (per teaching of Boyer II et al), both of which would enhance incorporation of the prosthesis subsequently introduced into the intervertebral space” (Ans. 10). Thus, even though Boyer’s technique was performed on removed bones, the Examiner articulated a reason as to why it would have been utilized in situ. Appeal 2009-013341 Application 10/282,666 3 Appellant argues that “Applicant’s use of EDTA in his invention does not establish that a person of skill in the art would either ‘a) take Boyer’s reference to ‘chelating agents’ to include EDTA; or b) know that EDTA can be introduced in situ” (Req. Recons. 3-4). As we noted at page 18 of the Decision, Boyer teaches that decalcification can be performed using chelating agents (FF 13). As the Examiner noted, Boyer “contemplates use of known chelating agents for demineralization of bone” (Ans. 19). Appellant does not dispute that EDTA is a known chelating agent, rather Appellant disputes whether the person of skill in the art would recognize that a teaching of chelating agents includes the known chelating agent, EDTA. We are not persuaded by this argument, since the Examiner cited the Merck Index to demonstrate that EDTA was a pharmaceutically acceptable chelating agent (see Ans. 12). Appellant argues that “Felt does not describe any characteristics of the implanted biomaterials that relies upon the patency of the vertebral endplates in any form” (Req. Recons. 4-5). Appellant argues that “while it may be accepted that Baogan explained the risks of calcification of the endplates to the overall health of the intervertebral disc, there is nothing in Baogan or Felt that would cause the skilled artisan to make the leap from disc health to ‘improved grafting’” (Req. Recons. 5). We are not persuaded for the reasons given in the Decision. In particular, as we noted at page 17 of the Decision, although Felt made no mention of the use of decalcifying agents to improve nutrient passage to the disc and to improve the incorporation of the prosthesis, the Examiner properly took “account of the inferences and creative steps that a person of Appeal 2009-013341 Application 10/282,666 4 ordinary skill in the art would employ,” and reasoned that the skilled worker would have found it obvious to apply Boyer’s technique of decalcifying to the disc surgery of Felt and the claims of the cited patents and patent applications (see Ans. 10). The Examiner’s determination is supported by evidence because Baogan explicitly teaches that “calcification of the cartilage end-plate is a key initiating factor of disc degeneration” (Baogan 311, col. 2; FF 12). Further, Boyer teaches means to demineralize bone for purposes of grafting (FF 13). Persons of ordinary skill in the art therefore would have reasonably extrapolated Boyer teaching to address the calcification concerns raised by Baogan and to improve the grafting desired by Felt. Appeal 2009-013341 Application 10/282,666 5 SUMMARY Appellant’s request for rehearing is granted to the extent that we have modified our earlier decision by reversing the rejection of Claim 19 under 35 U.S.C. § 103(a). However, while the decision has been reconsidered, such request is denied with respect to making any modifications to the decision affirming the Examiner’s remaining rejections under 35 U.S.C. § 103(a). GRANTED-IN-PART alw MAGINOT, MOORE & BECK, LLP CHASE TOWER 111 MONUMENT CIRCLE SUITE 3250 INDIANAPOLIS, IN 46204