Ex Parte FEHR

Patent Trial and Appeal Board

Oct 30, 2017

13114687 (P.T.A.B. Oct. 30, 2017)

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.
13/114,687 05/24/2011 Daniel FEHR S002-7519US0 2001
21127 7590 11/01/2017
POT STNFT T T PC
EXAMINER
100 Cambridge Street
Suite 2101
KIM, JENNIFER M
BOSTON, MA 02114 ART UNIT PAPER NUMBER
1628
NOTIFICATION DATE DELIVERY MODE
11/01/2017 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):
thendricks @polsinelli. com
athumann @polsinelli. com
DC-IPDocketing@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL FEHR1
Appeal 2016-002265
Application 13/114,687
Technology Center 1600
Before FRANCISCO C. PRATS, JEFFREY N. FREDMAN, and
TAWEN CHANG, Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
conditioning composition, which have been rejected as obvious and as
unpatentable on the ground of nonstatutory obviousness-type double
patenting. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
According to the Specification, the object of the invention is “to
provide compositions for the conditioning of mineralized dental surfaces
1 Appellant identifies the Real Party in Interest as Straumann Holding AG.
(Appeal Br. 3.)
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Appeal 2016-002265
Application 13/114,687
and/or surfaces of dental implants and/or for increasing the hydrophilicity of
a dental implant having a metal containing surface.” (Spec. 6:13—15.) The
Specification explains that “[a] high hydrophilicity of an implant surface is
desirable ... as this has the effect of accelerating bone and soft tissue
regrowth on and around the implant.” {Id. at 13:37—14:2.)
The Specification states that “[t]he object [of the invention] is
achieved by the provision of a conditioning composition comprising
ethylenediaminetetraacetic acid (EDTA) at a concentration in the range of
21—55% by weight and having a pH of at least 9.0.” {Id. at 6:17—19.)
Further according to the Specification, the advantages of the higher pH of its
composition include a higher concentration of dissolved EDTA, an increase
in the hydrophilicity of a titanium surface such as that in a dental implant,
and a lessening of “the negative effect on bone regeneration that may be
caused by the use of conditioning compositions having a low pH.” {Id. at
8:22-9:10.)
Claims 1—3, 5—13, and 19 are on appeal.2 Claim 1 is illustrative and
reproduced below:
I. A conditioning composition comprising
ethylenediaminetetraacetic acid (EDTA) at a concentration in the
range of 21—55 % by weight and having a pH from about 9.0 to about
II. 5, wherein the conditioning composition increases the
hydrophilicity of a metal-containing surface of a dental implant in an
oral cavity, and wherein the conditioning composition is transparent.
(Appeal Br. 18 (Claims App.).)
2 Claim 4 has been cancelled and claims 14—18 have been withdrawn.
(Appeal Br. 18—20 (Claims App.).)
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Appeal 2016-002265
Application 13/114,687
The Examiner rejects claims 1—3, 5—13, and 19 under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Lindskog.3,4 (Ans. 2.)
The Examiner provisionally rejects claims 1—3, 5—13, and 19 on the
ground of nonstatutory obviousness-type double patenting over claims 1—13
of copending Application No. 13/114,617.3 4 5 (Id.)
I.
Issue
The Examiner has rejected claims 1—3, 5—13, and 19 under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Lindskog. The Examiner
finds that Lindskog teaches all of the required elements of the claims except
that Lindskog’s composition has a pH of about 6 to about 8, while the claims
recite a pH of from about 9.0 to 11.5. (Ans. 3.) The Examiner finds that the
pH range taught by Lindskog “is [in] close proximity and overlaps with [the
claimed] pH of ‘about 9’ or ‘9,’” and concludes that it would have been
obvious to a skilled artisan to modify the pH of Lindskog’s conditioning
composition because “discovering the optimum pH involves only routine
skill in the art” and “[t]here is no evidence . . . that the Appellant’s claimed
pH is unexpectedly superior to the prior art pH taught by [Lindskog].” (Id.)
Appellant contends among other things that Lindskog does not teach
or suggest a composition with the claimed pH. (Appeal Br. 16.) Appellant
likewise argues that it would not have been obvious for a skilled artisan to
optimize the pH of Lindskog’s composition to arrive at the claimed
3 Lindskog et al., WO 96/09029, published Mar. 28, 1996.
4 The Examiner has withdrawn Minford et al., US Patent No. 4,554,050 A,
as a reference. (Ans. 2.)
5 See supra note 4.
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Application 13/114,687
invention through routine experimentation, because “[a] particular parameter
must first be recognized as a result-effective variable before a determination
of the optimum or workable ranges of said variable might be characterized
as routine experimentation.” (Id. at 3.)
The issue with respect to this rejection is whether a preponderance of
evidence of record supports the Examiner’s conclusion that it would have
been obvious for a skilled artisan to modify Lindskog’s composition by
increasing its pH to a range of about 9.0 to about 11.5.
Analysis
We agree with Appellant that the Examiner has not shown it would be
obvious for a skilled artisan to modify Lindskog’s composition by increasing
its pH to the claimed range of about 9.0 to about 11.5.
As an initial matter, while the use of the term “about” by both the
claims and the prior art in describing the pH range of the composition may
indicate some flexibility in the range, the Examiner has not adequately
shown that a skilled artisan would interpret a pH of “about 9.0” to
encompass a pH of “about 8.0,” or find a pH range of “about 6 to about 8” to
be in close proximity to a pH range of “about 9.0 to 11.5.” Thus, we
disagree with the Examiner’s apparent finding that the pH range taught by
Lindskog “is [in] close proximity and overlaps with [the claimed] pH of
‘about 9’ or ‘9.’” (Ans. 3.)
The Examiner further reasons that it would have been obvious to a
skilled artisan to modify the pH of Lindskog’s conditioning composition to
arrive at the claimed composition because “discovering the optimum pH
involves only routine skill in the art” and “[t]here is no evidence . . . that the
Appellant’s claimed pH is unexpectedly superior to the prior art pH taught
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Application 13/114,687
by [Lindskog].” (Id.) Routine optimization, however, applies to values that
are within the “general conditions” disclosed in the prior art. See In re Aller,
220 F.2d 454, 456 (CCPA 1955) (“[W]here the general conditions of a claim
are disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.”). The Examiner has not
shown that a skilled artisan would have recognized the
range required by the claims (i.e., about 9.0 to 11.5) to be within the general
conditions of the “about 6 to about 8” pH range disclosed by Lindskog,
especially where Lindskog suggests that a neutral pH is particularly
preferred for its composition. (Lindskog 7:25—27 (“A particularly preferred
range is from about 6.5 to about 7.5, i.e., around neutral, pH 7.”).)
Accordingly, we reverse the Examiner’s rejection of claims 1—3,
5—13, and 19 as obvious over Lindskog.
II.
The Examiner provisionally rejects claims 1—3, 5—13, and 19 on the
ground of nonstatutory obviousness-type double patenting over claims 1—13
of copending Application No. 13/114,617. Appellant has stated that he will
submit a terminal disclaimer when allowable subject matter is found. (Reply
Br. 1). Since Appellant has not disputed the merits of the provisional
obviousness-type double patenting rejection, we summarily affirm it.
SUMMARY
For the reasons above, we reverse the Examiner’s rejection of claims
1—3, 5—13, and 19 as obvious over Lindskog and summarily affirm the
Examiner’s rejection of claims 1—3, 5—13, and 19 on the ground of
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Application 13/114,687
nonstatutory obviousness-type double patenting over claims 1—13 of
copending Application No. 13/114,617.
TIME PERIOD FOR RESPONSE
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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