Ex Parte Brendzel et al

Board of Patent Appeals and Interferences

Mar 20, 2009

09460140 (B.P.A.I. Mar. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AVROM M. BRENDZEL, RICHARD RODRIGUEZ,
AND MICHELLE LUND TOY
____________

Appeal 2008-4901
Application 09/460,140
Technology Center 3700
____________

Decided:1 March 20, 2009
____________

Before WILLIAM F. PATE, III, LINDA E. HORNER, and
JOHN C. KERINS, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-4901
Application 09/460,140

STATEMENT OF THE CASE
Avrom Brendzel et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1-11, 13-34, and 37-47.
Claim 12 has been cancelled and claims 35 and 36 have been allowed. We
have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
The Appellants’ claimed invention is a medical device including a
carbon-containing material that has two compositions. Spec. 3:27-30.
Claims 1 and 37, reproduced below, are representative of the subject matter
on appeal.
1. A medical device comprising a carbon-
containing material comprising a first composition
and a second composition,
the first composition comprising at least
about 50 percent by volume pyrolytic carbon and
the second composition comprising greater
than 82 percent by volume of a carbide
composition.

37. A medical device comprising
a prosthesis having a surface,
at least a portion of the surface of the
prosthesis having a carbon-containing material
between greater then [sic.] 10 and about 20 volume
percent carbide and
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at least about 80 volume percent pyrolytic
carbon.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Bokros US 3,969,130 Jul. 13, 1976
Appellants seek our review of the Examiner’s rejection of claims 1-
11, 13-34, and 37-47 under 35 U.S.C. § 103(a) as unpatentable over Bokros.

ISSUES
The Examiner rejected claims 1-11, 13-34, and 40-47 as unpatentable
over Bokros finding that Bokros discloses all of the claimed elements except
for a second composition comprising greater than 82 percent by volume of a
carbide composition. The Examiner determined that the claimed second
composition would have been obvious in view of Bokros’s disclosure of
about 80 percent by volume of a carbide composition, because the claimed
greater than 82 percent by volume of a carbide composition is not a critical
range. Appellants contend: 1) by disclosing not more than 80 percent by
volume of carbide, Bokros teaches away from the claimed composite, and 2)
the claimed composite produces unexpected results.
The first issue before us is:
Have the Appellants shown the Examiner erred in determining that the
claimed composite would have been obvious in view of Bokros because 1)
by disclosing not more than 80 percent by volume of carbide, Bokros
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teaches away from the claimed composite, or 2) the claimed composite
produces unexpected results?
The Examiner rejected claims 37-39 as obvious in view of Bokros.
Appellants assert that Bokros discloses a device with an outer layer that is 10
volume percent carbide, and the claim requires greater than 10 volume
percent so that the ranges do not overlap, making the obviousness rejection
improper.
The second issue before us is:
Have the Appellants shown the Examiner erred in determining that the
claimed composite would have been obvious in view of Bokros because
Bokros discloses a device with an outer layer that is 10 volume percent
carbide, so that the prior art range does not overlap with the claimed range of
greater than 10 volume percent, making the obviousness rejection improper?

FINDINGS OF FACT
We find that the following enumerated facts are supported by at least
a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Appellants do not contest the Examiner’s finding that Bokros
discloses the first composition of claim 1 of at least about 50 percent
by volume pyrolytic carbon. Ans. 3, App. Br. passim.
2. Bokros discloses a method for coating articles with pyrolytic carbon
and products made by such a method. Bokros, col. 1, ll. 5-8.
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3. Bokros discloses objects of the invention including providing
articles having improved wear resistance, improved resistance to
concentrated wear, and good structural strength. Bokros, col. 1, ll.
28-35; col. 3, ll. 65-66.
4. Bokros discloses the effective life of an article may be markedly
extended with an outer coating of pyrolytic carbon over a thin wear
resistant layer. Bokros, col. 3, ll. 54-64.
5. The outer pyrolytic carbon layer is an alloy comprised of about 85 to
90 weight percent pyrolytic carbon (about 10 to 15 weight percent
additive carbide-forming element). Bokros, col. 2, ll. 13-25.
6. The wear resistant layer is an alloy with “between 25 and about 80
volume percent of carbide, and preferably not more than about 50
volume percent.” Bokros, col. 2, ll. 32-36.
7. Bokros discloses that in the wear resistant layer, optimum amounts
of carbide “may vary slightly depending upon the element chosen
and even with regard to the ultimate use of the coated article;
however, such amounts can readily be determined by empirical
methods.” Bokros, col. 2, ll. 37-40.
8. Bokros does not contain any disclosure that could discourage one of
ordinary skill from using a volume percent greater than 80. Bokros,
col. 2, ll. 32-36.
9. Appellants have not submitted a declaration related to unexpected
results based on a composite with a percent by volume of carbide of
greater than 82. App. Br. passim.
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10. Appellants disclose the second composition of claim 1 comprises a
carbide layer including “greater than about 50 volume percent
metal/metalloid carbide. The carbide layers can be essentially pure
carbides. Preferably, the carbide layers are at least about 75 volume
percent carbide, more preferably at least about 85 volume percent
carbide and even more preferably at least about 90 volume percent
carbide.” Spec. 28:9-15.
11. Appellants’ disclosures related to strength and other characteristics
of the second composition and the claimed composite as a whole
(the combined first and second compositions) are tied only to the
general disclosure of percent by volume of carbide as recited in fact
10 above, and the disclosures are not tied to any more specific
percent by volume of carbide and do not provide evidence of
unexpected results of using greater than 82 percent by volume of
carbide in the second composition as compared to the about 80
percent by volume of carbide in the second composition of the prior
art. See e.g., Spec. 7:3-12; Spec. 9:28-32; Spec. 11:23-12:5; Spec.
31:32-34; and Spec. 37:16-38:5.
12. Appellants do not disclose any testing comparing the claimed
composite to a composite with Bokros’s disclosed percent by
volume of carbide. Spec. passim; App. Br. passim.

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PRINCIPLES OF LAW
Teaching Away
Whether a reference teaches away from a claimed invention is a
question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005).
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference would be led in a direction divergent from
the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327,
1335 (Fed. Cir. 2001). “[W]hen the prior art teaches away from combining
certain known elements, discovery of a successful means of combining them
is more likely to be nonobvious.” KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, ___, 127 S. Ct. 1727, 1740 (2007) (citing United States v. Adams, 383
U.S. 39, 51-52 (1966)). “When a piece of prior art ‘suggests that the line of
development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant’ the piece of prior art is said
to ‘teach away’ from the claimed invention.” Medichem, S.A. v. Rolabo,
S.L.¸437 F.3d 1157, 1165 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d
551, 53 (Fed. Cir. 1994)).
Ranges and Prima Facie Case of Obviousness
“A prima facie case of obviousness may be made when the only
difference from the prior art is a difference in the range or value of a
particular variable. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); In
re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).” In re Kumar, 418 F.3d
1361, 1366 (Fed. Cir. 2005). Where “the difference between the
claimed invention and the prior art is some range or other variable within the
claims … , the applicant must show that the particular range is critical,
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generally by showing that the claimed range achieves unexpected results
relative to the prior art range.” In re Woodruff, 919 F.2d at 1578 (citations
omitted) (emphasis in original). “[A] prima facie case of obviousness exists
when the claimed range and the prior art range do not overlap but are close
enough such that one skilled in the art would have expected them to have the
same properties.” In re Peterson, 315 F.3d at 1329 (citing Titanium Metals
Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985) (concluding that a
claim directed to an alloy containing “0.8% nickel, 0.3% molybdenum, up to
0.1% maximum iron, balance titanium” would have been prima facie
obvious in view of a reference disclosing alloys containing 0.75% nickel,
0.25% molybdenum, balance titanium and 0.94% nickel, 0.31%
molybdenum, balance titanium)).
Proof of Unexpected Results
“An applicant cannot prove unexpected results with attorney argument
and bare statements without objective evidentiary support.” CFMT, Inc. v.
Yieldup International Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing In
re Lindner, 457 F.2d 506, 508 (CCPA 1972)); In re Geisler, 116 F.3d 1465
(Fed. Cir. 1997) (“attorney argument [is] not the kind of factual evidence
that is required to rebut a prima facie case of obviousness”); and In re Soni,
54 F.3d 746, 750 (Fed. Cir. 1995) (“It is well settled that unexpected results
must be established by factual evidence. Mere argument or conclusory
statements ... [do] not suffice.”) (quoting In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984)). “During prosecution, an applicant may submit
objective factual evidence to the PTO in the form of patents, technical
literature, and declarations under 37 C.F.R. § 1.132 … submitting expert
testimony and, at times, test data.” CFMT, 349 F.3d at 1342.
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ANALYSIS
Claims 1-11 and 13-24
The Appellants argue claims 1-11 and 13-24 as a group. App. Br. 9.
As such, we select claim 1 as the representative claim, and claims 2-11 and
13-24 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2008).
Claim 1 is for a device with two compositions of carbon containing
material.
The first composition comprises at least 50 percent by volume
pyrolytic carbon. The Examiner found that Bokros discloses a first
composition of at least 50 percent by volume of pryloytic carbon. Ans. 3.
The Examiner is correct; Bokros discloses a method to improve wear of
devices that includes an outer layer (first composition) of 85 to 90 percent by
volume pyrolytic carbon (Facts 2-5). Appellants do not contest the
Examiner’s finding that Bokros discloses the first composition of claim 1
(Fact 1).
The second composition comprises “greater than 82 percent by
volume of a carbide composition.” The Examiner found that Bokros
discloses a second composition of “about 80” percent by volume of a
carbide composition. Ans. 3. The Examiner concluded that modification of
Bokros from about 80 percent by volume to meet the claim’s limitation of
greater than 82 percent by volume would have been obvious to a person of
ordinary skill in the art as discovery of the optimum range. Ans. 3-4.
Bokros discloses a thin wear resistant layer (second composition)
comprising “about 80” percent by volume of carbide and teaches that
optimum amounts may vary slightly depending upon the element chosen and
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the ultimate use of the coated article and that such amounts can readily be
determined by empirical methods (Facts 6, 7).
The only difference between Bokros (about 80) and the claim (greater
than 82) is the percent by volume of carbide of the second composition.
First, quite possibly these ranges overlap. In Woodruff, the court agreed
with the Board’s finding that the disclosure in the prior art of a concentration
of “about 1-5%” allowed for concentrations slightly above 5%. In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Quite similarly here, a
disclosure of “about 80 percent by volume” and the teaching that optimum
amounts may vary slightly and can be readily determined by empirical
methods, allows for concentrations slightly above 80 percent. Second, even
if the ranges do not overlap, they are close enough so that a person of
ordinary skill in the art would expect the properties of an article coated with
the compositions of Bokros and an article coated with the claimed
compositions to be the same. Titanium Metals Corp. v Banner, 778 F.2d
775, 783 (Fed. Cir. 1985). Because the only difference from the prior art is
a slight difference in the range or value of a particular variable (the percent
by volume of carbide), the Examiner has made a prima facie case of
obviousness. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Appellants contend the Examiner failed to make a prima facie case of
obviousness because, “Bokros teaches away from a layer of an article having
a carbide composition of greater than about 82 percent by volume, as
claimed.” App. Br. 10. More specifically, Appellants contend Bokros
discloses a carbide composition of “not more than about 80 volume
percent,” and that “[a] reference that states that a range is to be ‘not more
than’ a number teaches away from a value above that number.” Id.
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Additionally, Appellants contend that Bokros’s teaching of a preferred
concentration of carbide of not more than 50 volume percent also teaches
away from the claim’s recitation of greater than 82 volume percent. App.
Br. 12.
Appellants’ teaching away argument does not persuade us of error in
the Examiner’s determination of obviousness. First, Bokros discloses a
volume percent of carbide of up to “about 80 percent by volume” of carbide
(Fact 6), quite close to, or perhaps overlapping the claimed range of greater
than 82 percent by volume. Appellants’ arguments rely on Bokros’s claim
language of “not more than about 80 volume percent” (App. Br. 10 citing to
Bokros, col. 6, l. 63) and overlook the broader teaching in Bokros that the
carbide can be present in an amount of “about 80 volume percent” (Bokros,
col. 2, l. 35). Claims may be narrower than a patent’s disclosure. The prior
art is relevant for all that it discloses, and is not limited to only what is
claimed.
Second, while Bokros discloses a carbide percent by volume of
“between 25 and about 80 volume percent of carbide,” Bokros does not
contain any disclosure that would discourage one of ordinary skill from
using a volume percent greater than 80 (Fact 8). On the contrary, Bokros
suggests experimentation to achieve optimum amounts of carbide depending
upon the element chosen or the ultimate use of the coated article (Fact 7).
Bokros’s disclosure would not cause a person of ordinary skill in the art to
be led in a direction divergent from that taken by Appellants. In re Haruna,
249 F.3d 1327, 1335 (Fed. Cir. 2001). Nor does Bokros’s disclosure suggest
a carbide percent by volume greater than 82 is unlikely to be productive of
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the result sought by the Appellants. Medichem, S.A. v. Rolabo, S.L.¸ 437
F.3d 1157, 1165 (Fed. Cir. 2006).
Given that the difference between the claimed invention and the prior
art is only a slight difference in some range or other variable within the
claims, and that Appellants’ attack on the prima facie case of obviousness is
unconvincing, Appellants must show that the particular range is critical,
generally by showing that the claimed range achieves unexpected results. In
re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). In determining whether
Appellants’ composition produces unexpected results, we are mindful that
Appellants’ arguments are not proof of unexpected results, and that
Appellants must provide objective evidentiary support. CFMT, Inc. v.
Yieldup International Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003). We
consider the entire record in making our determination of obviousness.
Appellants argue the claimed second composition achieves
unexpected results relative to the prior art range. App. Br. 12. More
specifically, Appellants assert: 1) the composition provides increased
performance of the mechanical device by providing “structural support
resulting in a thinner composite material which can be used while
maintaining mechanical strength and durability,” and 2) “increases in
stiffness and fracture toughness while maintaining a thin cross section of a
medical device.” Id. We examine these contentions in light of Appellants’
disclosures.
Appellants’ disclosure provides support for the contention that a
majority of carbide in the second composition increases strength, fracture
toughness, and stiffness (as measured by higher Young’s modulus of
elasticity), allowing for improved, thinner medical devices. Spec. 7:3-12;
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9:28-32; 31:32-34; 37:16 to 38:5. This disclosure does not establish the
result is unexpected, particularly given that Bokros’s composite, which
includes a majority of carbide in the second composition as well, discloses
good structural strength and extension of the article’s useful life (Facts 3-4).
Appellants’ disclosure states that the claimed composite material (the
combined first and second composition) is stiffer, has a higher fracture
toughness, and consequently can be made into thinner devices than materials
made of pyrolytic carbon material alone. Spec. 11:23 to 12:5. This
disclosure only establishes a comparison to materials made of pyrolytic
carbon alone, and establishes no comparison of Appellants’ claimed
composite material having greater than 82 percent by volume of carbide to
Bokros’s disclosure of a composite material having about 80 percent by
volume of carbide (Facts 6 and 11). Appellants’ disclosures do not establish
unexpected results, or even provide a distinction from the prior art.
Appellants’ disclosure is most notable for what is lacking. While the
second composition is described as 50 to 90 percent by volume of carbide
(Fact 10), nothing in the Specification points to any evidence that a percent
by volume of carbide greater than 82 provides results that are unexpectedly
good (Fact 11). In fact, Appellants’ Specification does not recite any
unexpected results, and points to no results, expected or unexpected,
specifically related to a percent by volume of carbide greater than 82 (Fact
11). Further, Appellants point to no testing that compares a percent by
volume of carbide greater than 82 to the prior art range (Fact 12). Finally,
Appellants had the opportunity to submit declarations and other proof and
chose not to (Fact 9). We conclude by a preponderance of the evidence that
Appellants have not proven the claimed device produces unexpected results.
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Appellants fail to demonstrate error in the Examiner’s decision to
reject claim 1. Claims 2-11 and 13-24 fall with claim 1.
Claims 25-34 and 40-472
Claims 25-34 and 40-47 each contain the limitation that the second
composition comprises greater than 82 percent by volume of a carbide
composition. Appellants simply repeat the arguments applied to claim 1.
For the reasons outlined in the analysis of the rejection of claim 1, supra, we
also affirm the Examiner’s decision to reject claims 25-34 and 40-47.
Claims 37-39
The Appellants argue claims 37-39 as a group. App. Br. 14-15. As
such, we select claim 37 as the representative claim, and claims 38 and 39
stand or fall with claim 37. 37 C.F.R. § 41.37(c)(1)(vii) (2008).
Claim 37 is for a medical device that includes a surface with at least a
portion having a carbon-containing material greater than 10 and about 20
volume percent carbide and at least about 80 volume percent pyrolytic
carbon.
Bokros discloses an outer layer that is an alloy comprised of about 85
to 90 weight percent pyrolytic carbon and 10 to 15 weight percent an
additive of a carbide-forming element (Fact 5). Based on this, Appellants
contend that 15 weight percent carbide is equivalent to 10 volume percent
carbide. App. Br. 14-15. Appellants assert that Bokros discloses a device

2 Claims 40-44 were rejected based on an additional finding by the Examiner
that it would have been obvious to reverse the layers of Bokros to meet the
claims’ related limitation. Appellants recite that finding, but only challenge
the rejection based on the arguments put forth in traversing the rejection of
claim 1. App. Br. 15-16.
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with an outer layer that is 10 volume percent carbide, and the claim requires
greater than 10 volume percent so that the ranges do not overlap, making the
obviousness rejection improper.
The analysis here mirrors the analysis of claim 1. Taking Appellants
contention regarding weight versus volume percent as true, arguendo,
Bokros discloses “about 10 percent” by volume of carbide and the claim
recites “greater then [sic] 10” volume percent carbide. Because the only
difference is a slight difference in range or value of a particular variable and
one having ordinary skill in the art would have expected the compositions to
have the same properties, the burden shifts to the Appellants to prove
unexpected results. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
As we concluded in the analysis of claim 1, Appellants have not
shown unexpected results. In particular, the Appellants have not pointed to
any description in the Specification or any objective evidence to demonstrate
an unexpected result with an outer layer that is greater than 10 volume
percent carbide when compared with an outer layer that is 10 volume
percent carbide. Appellants have not demonstrated error in the Examiner’s
decision to reject claim 37, and claims 38 and 39 fall with claim 37.

CONCLUSION
Appellants failed to show the Examiner erred in determining that the
composite of claim 1 would have been obvious in view of Bokros.
Appellants failed to show the Examiner erred in determining that the
medical device of claim 37 would have been obvious in view of Bokros.

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DECISION
We affirm the Examiner's rejection of claims 1-11, 13-34, and 37-47.
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) (2007).

AFFIRMED

JRG

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