Ex Parte Hawkins et al

Patent Trials and Appeals Board

Jun 11, 2019

14943262 - (D) (P.T.A.B. Jun. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/943,262 11/17/2015
53443 7590 06/13/2019
Baker Hostetler
Cira Centre, 12th Floor
2929 Arch Street
Philadelphia, PA 19104-2891
FIRST NAMED INVENTOR
John Riley Hawkins
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
104525.006972 3522
EXAMINER
LAWSON, MATTHEW JAMES
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
06/13/2019 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN RILEY HAWKINS, ANWAR M. UP AL,
MICHAEL J. O'NEIL, MICHAEL ANDREW SLIVKA,
and MICHAEL FISHER 1
Appeal2018-007965
Application 14/943,262
Technology Center 3700
Before MICHAEL L. HOELTER, MICHAEL J. FITZPATRICK, and
JEREMY M. PLENZLER, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's Final rejection of claims 2-13 and 32--49, which constitute all
the claims pending in this application. App. Br. 3. We have jurisdiction
1 "DePuy Synthes Products, Inc., a Johnson & Johnson company, is the real
party in interest." App. Br. 1. Accordingly, we proceed on the basis that,
for the purposes of this appeal, DePuy Synthes Products, Inc. is the
"Appellant."
Appeal2018-007965
Application 14/943,262
under 35 U.S.C. § 6(b ). For the reasons explained below, we AFFIRM the
Examiner's rejections of these claims under 35 U.S.C. § I03(a).
CLAIMED SUBJECT MATTER
The disclosed subject matter "is directed to a two-piece intervertebral
fusion cage." Spec. ,r 9. Apparatus claims 2 and 44 are independent. Claim
2 is illustrative of the claims on appeal and is reproduced below.
2. An intervertebral fusion device comprising:
a polymeric component defining i) an upper outside
surface configured to grip an upper endplate, ii) a lower outside
surface that is opposite the upper outside surface and is
configured to grip a lower endplate, and iii) a throughhole that
extends from the upper outside surface to the lower outside
surface,
wherein each of the upper outside surface and the lower
outside surface is coated with a porous titanium coating that is a
pure titanium coating.
REFERENCES RELIED ON BY THE EXAMINER
Long
Savage et al.
Bagga et al.
US 2004/0193277 Al Sept. 30, 2004
US 2008/0161927 Al July 3, 2008
US 2010/0076559 Al Mar. 25, 2010
THE REJECTIONS ON APPEAL
Claims 2-13 and 32--41 are rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Savage and Bagga.
Claims 2-13 and 32--49 are rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Savage and Long.
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Application 14/943,262
ANALYSIS
The rejection of claims 2-13 and 32--41
as unpatentable over Savage and Bagga
Appellant argues claims 2-13 and 32--41 together. See App. Br. 10-
1 7. We select independent claim 2 for review with the remaining claims
standing or falling with claim 2. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner relies primarily on Savage for disclosing the recited
base polymeric component having a porous titanium coating, but
acknowledges that "Savage et al. fail[ s] to expressly teach or disclose that
the porous titanium coating is a pure titanium coating." Final Act. 4
( emphasis added). The Examiner relies on Bagga for disclosing the use of
"pure titanium (i1107)." Final Act. 4. Paragraph 107 of Bagga discusses
"[t]itanium and its alloys" stating, "[s]uch materials give the implant 101
suitable strength, biocompatibility, and structural integrity and may better
resist fracture during implantation by impact." The Examiner finds that it
would have been obvious "to have constructed the coating of Savage et al. to
be a pure titanium coating," as Bagga teaches, because "pure titanium and
titanium alloys are desirable" for the reasons Bagga discloses above. Final
Act. 4--5.
Appellant initially contends that if a skilled person were to combine
Bagga into Savage, "it is Bagga' s titanium plates, and not a titanium coating,
that would be incorporated into the implant of Savage." App. Br. 12; see
also Reply Br. 1, 2. Appellant argues, "the Examiner has failed to establish
that the titanium or its alloys of Bagga ... is, in fact, a coating," and that
"transforming Bagga's titanium plates into a coating ... would negate the
stated advantage of Bagga's plates." App. Br. 12, 13; see also Reply Br. 2.
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Application 14/943,262
Appellant appears to be misunderstanding the Examiner's rejection.
The Examiner explains, "Bagga was used solely to teach that titanium
coatings formed of pure titanium on exterior surfaces of implants are known
in the art." Ans. 2. "The rejection was simpl[y] to modify the titanium
coatings of Savage to be constructed of a specific titanium material, pure
titanium." Ans. 3. We agree with the Examiner on this point, and Appellant
is not persuasive of Examiner error in this regard.
Second, Appellant contends, "the replacement of Savage's coating
with Bagga's titanium is improper because the stated properties of the
titanium of Bagga are inconsistent with the stated property of the coating of
Savage." App. Br. 12; see also Reply Br. 2. Appellant contends that Bagga
"teaches away from modifying the titanium from the form of [Bagga's]
plates 112 and 114 to the form of a coating." App. Br. 14.
Appellant fails to indicate where Bagga criticizes or discourages the
use of titanium in the form of a coating as compared to being in the form of
a plate. Appellant also fails to explain how or why the intrinsic properties of
titanium would change if made thinner. 2 Further, the Examiner is not
replacing Savage's coating with Bagga's plates. Instead, as expressed
above, the Examiner is constructing "the coating of Savage et al. to be a pure
titanium coating" in view of the teachings of Bagga. Final Act. 4; see also
Ans. 3. The Examiner reiterates, "Bagga was only relied upon for the
showing/teaching that pure titanium is a known material used on exterior
2 Appellant argues, "the Examiner has failed to establish that the titanium of
Bagga would even continue to provide the stated properties of strength and
resistance to impaction forces if it were changed from the form of the plates
112 and 114 to a coating." App. Br. 14.
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Application 14/943,262
surfaces of orthopedic implants for the purpose of providing a material with
suitable strength and biocompatibility to the implants['] bone contacting
surfaces." Ans. 3. Accordingly, Appellant is not persuasive of Examiner
error on this point.
Third, Appellant contends that if one skilled in the art "were to
incorporate the titanium of Bagga into the implant of Savage ... [this]
combination would fail to produce a polymeric component as recited in
claim 2." App. Br. 12; see also Reply Br. 3. According to Appellant, "the
solid layer 528 of Savage [would have] to be made from Bagga's titanium"
(and hence no longer be a polymeric component). App. Br. 15. Appellant's
arguments are counter to the Examiner's rejection. The Examiner is not
modifying or altering Savage's underlying solid component 528. See, e.g.,
Reply Br. 3 ("substitute Savage's solid layer 528 with Bagga's titanium
plates"). Instead, the Examiner is modifying the coating that is applied to
the outside surfaces of base component 528. See Final Act. 4, Savage Fig.
38. 3 Hence, Appellant's arguments regarding a change in or a substitution
of Savage's underlying component 528, rather than a change in or a
substitution of the coating applied to this component's exterior surfaces, is
not consistent with the Examiner's rejection.
Fourth, Appellant contends that "the rejection of claim 2 is necessarily
based on impermissible hindsight." App. Br. 12. Appellant contends, "the
Examiner has not identified any teaching or suggestion in Bagga and Savage
3 "The Examiner stands by the[] position that substituting one known
form/ composition of a titanium porous coating in for another
form/composition of titanium is known and obvious ... even if one is to a
more plate-like substrate and the other a coating." Ans. 4.
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Application 14/943,262
that would" have prompted this combination and, instead, the Examiner
relies on "knowledge that could only have been gleaned only from
Appellant's claimed invention." App. Br. 16. First, it must be noted that the
reason for the rejection need not arise from the references themselves, so
long as the Examiner provides articulated reasoning with rational
underpinning to support the legal conclusion of obviousness. See KSR Int'!
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Second, the Examiner's
stated reason for the combination is based on the "strength, biocompatibility,
and structural integrity" of titanium, which is desirable. Final Act. 5. Both
Savage and Bagga address these characteristics of titanium, with Bagga
specifically addressing these characteristics also with respect to pure
titanium. See Savage ,r,r 77, 125; Bagga ,r 107; see also Ans. 4. As such, we
are not persuaded the Examiner failed to provide support for the
combination of these references, nor are we persuaded that this knowledge
could only have been gleaned from Appellant's invention.
Accordingly, and based on the record presented, we sustain the
Examiner's rejection of claims 2-13 and 32--41 as being unpatentable over
Savage and Bagga.
The rejection of claims 2-13 and 32--49
as unpatentable over Savage and Long
Appellant only presents arguments regarding claim 2. 4 See App. Br.
17-27. We select claim 2 for review, with the remaining claims standing or
falling therewith.
4 Regarding independent claim 44, Appellant states, "the rejection of claim
44 is improper for the same reasons as discussed above in support of the
patentability of claim 2." App. Br. 27.
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The Examiner relies on Savage in a similar manner discussed above
(see Final Act. 6-7), and again acknowledges that "Savage et al. fail[s] to
expressly teach or disclose that the porous titanium coating is pure titanium
coating." Final Act. 7. The Examiner relies on Long for such teachings, and
finds that it would have been obvious "to have constructed the coating of
Savage et al. to be a pure titanium coating" in view of Long's teaching
regarding the "strength and stability" of such material. Final Act. 7
(referencing Long ,r 65).
Appellant initially contends, "Long is non-analogous to the presently
claimed invention" because Long addresses a shoulder and, "the shoulder is
a completely different anatomy than the spine." App. Br. 19-20; see also
Reply Br. 3 ("[ n Jot all bones behave the same way"). Appellant also
contends that Long's device "is designed to permit relative movement"
whereas Appellant's device "is designed to prevent relative movement"
between adjacent bones. App. Br. 20. Further, Appellant argues that one
skilled in the art "looking to provide bony affixation to one bone would not,
in fact, consult any prosthetic for any other bone in the human body for
guidance."5 Reply Br. 3.
The Examiner states that Long is in the same field of endeavor as is
Appellant's device, i.e., "prosthetics" and also that Long is "reasonably
pertinent to the problem faced by" Appellant, i.e., "proper fixation and
5 This last assertion by Appellant appears to characterize a skilled person as
lacking inquisitiveness, or as an automaton; traits which, we have been
informed, a skilled person does not have. See KSR, 550 U.S. at 418 ("a
court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ"), 421 ("not an automaton").
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Application 14/943,262
boney adherence." Ans. 5. The Examiner further explains, "[i]t is common
and routine for one of ordinary skill in the art to look to other areas of
prosthetics for teachings of improving fixation and boney adherence." Ans.
5.
"Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed, and (2) if the reference is not within the field of
the inventor's endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved." In re Clay, 966
F.2d 656, 658-59, 23 USPQ2d 1058, 1060 (Fed. Cir. 1992).
Appellant acknowledges that "both Long and the present invention are
prosthetic implants," but Appellant seeks to differentiate their respective
field of endeavor based on a different anatomical location into which each
prosthetic is implanted, and how each is to perform. App. Br. 19, 20.
However, even if Long were not from the same field of endeavor, Long
would nonetheless be analogous art under the second test set forth in Clay.
This is because Long is reasonably pertinent to bone fixation and adherence,
which were problems with which the named inventors were involved.
Notably, Appellant does not contend that bone fixation and adherence was
not of concern to the named inventors. 6 See Spec. ,r 72 ( addressing
"materials that are designed to encourage bony regeneration"); see also
Spec. ,r 73 (addressing material strength); see also Ans. 5-6. Further, we are
not persuaded that one skilled in the art, seeking further information
6 Appellant contends, "Long's principles of anchoring the humeral
prosthesis to the humerus are different than that of the present invention."
Reply Br. 4.
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Application 14/943,262
regarding prosthetics, would elect to not consider a reference simply because
that particular prosthetic differs from Appellant's device. 7 Hence, we are
not persuaded by Appellant's contention that Long is non-analogous art.
Appellant also contends that the Examiner "fails to offer any credible
motivation" for the combination, and that the Examiner's rejection "is
necessarily based on impermissible hindsight." App. Br. 19. However,
neither such argument is persuasive for reasons similar to those previously
addressed above. See also Ans. 7. To be clear, Long teaches a porous
coating "under the trade name POROCOAT®." Long ,r 65; see also Final
Act. 7 (referencing both this paragraph and POROCOAT® coating).
Promotional material for POROCOAT® coating (presumably published by
Appellant, i.e., "published by DePuy Synthes Companies") states that
POROCOAT coating "is composed of commercially pure titanium." See
Appellant's Information Disclosure Statement dated July 5, 2016 which
identifies the webpage. In other words, it is not disputed that Long states:
"One particular porous coating is provided by the assignee of the instant
application under the trade name POROCOAT®." Long ,r 65.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claims 2-13 and 32--49 as being
unpatentable over Savage and Long.
7 We agree with the Examiner's assessment that a skilled person would
"look to other areas of prosthetics" for teachings directed to bone fixation
and adherence. Ans. 5.
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Appeal2018-007965
Application 14/943,262
DECISION
The Examiner's rejections of claims 2-13 and 32--49 under 35 U.S.C.
§ 103(a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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