Ex Parte Mathisen et al

Patent Trial and Appeal Board

Mar 24, 2014

11019534 (P.T.A.B. Mar. 24, 2014)

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.
11/019,534 12/23/2004 Torbjorn Mathisen 097085-0102 7867
22428 7590 03/24/2014
FOLEY AND LARDNER LLP
SUITE 500
3000 K STREET NW
WASHINGTON, DC 20007
EXAMINER
YABUT, DIANE D
ART UNIT PAPER NUMBER
3734
MAIL DATE DELIVERY MODE
03/24/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TORBJORN MATHISEN
and HENRIK MAGNUSSON

___________

Appeal 2011-008878
Application 11/019,534
Technology Center 3700
____________

Before TONI R. SCHEINER, ULRIKE W. JENKS, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.

BRADEN, Administrative Patent Judge

DECISION ON REQUEST FOR REHEARING

Appeal 2011-008878
Application 11/019,534

2
This is a decision on Appellants’ Request for Rehearing of our
Decision on Appeal mailed October 8, 2013, wherein we affirmed the
rejection of claims 1, 2, and 4-23 under 35 U.S.C. § 103(a).
Appellants’ request is denied.

Exemplary Claim
Independent claim 1 is representative of the invention, and is
reproduced below with disputed limitations in italics and some paragraphing
added:
1. A resorbable polymeric mesh implant whose implant
configuration varies over time after implantation for use in
reconstruction of soft tissue defects, wherein the resorbable
polymeric mesh implant comprises:

at least a first material and a second material,

wherein the second material is substantially degraded at a
later point in time than the first material,

wherein a modulus of elasticity of the first material includes
both the modulus of elasticity of the material itself and also
the elasticity due to a present structural configuration of the
first material in said implant configuration,

wherein a modulus of elasticity of the second material
includes both the modulus of elasticity of the material itself
and also the elasticity due to a present structural
configuration of the second material in said implant
configuration, and wherein:

- the modulus of elasticity of the mesh implant is initially
substantially constant and equal to the modulus of
elasticity of the first material following a time of
Appeal 2011-008878
Application 11/019,534

3
implantation and until said first material is substantially
degraded, and wherein:

- the modulus of elasticity of the mesh implant is
substantially equal to the modulus of elasticity of the
second material after the first material is substantially
degraded, wherein the modulus of elasticity of the second
material is lower than the modulus of elasticity of the
first material;

wherein a last substantially degraded material has a modulus of
elasticity in its configuration that is compatible with the
elasticity of a surrounding tissue such that the flexibility of said
tissue is not restricted by the implant.

Appellants’ Contentions
Appellants contend that the claim element “the modulus of elasticity
of the mesh implant is initially substantially constant and equal to the
modulus of elasticity of the first material” was (i) not fully considered or
commented upon by the Examiner, (ii) misapprehended or overlooked by the
Board, and (iii) not addressed in the [Board’s] October 8, 2013 decision.
Request for Rehearing 1-2. According to Appellants, in the initial phase,
when all materials are present, in the claimed invention, the overall modulus
of the mesh implant is not some combination or sum of the moduli of all the
materials, but is instead the modulus of the first material only. Request for
Rehearing 3.
ANALYSIS
Appellants argue that the Board has erred. We disagree with the
Appellants’ contention.
Appeal 2011-008878
Application 11/019,534

4
The Examiner explains that Hinsch recognizes the general relative
elastic behavior of a first and second material. Ans. 9. The Examiner
specifically finds Hinsch discloses both a first material and a second
material, each with an elastic or stretchable behavior. Id. (citing Hinsch,
col. 2, ll. 40-54). According to the Examiner, Hinsch teaches the first
material is a “stiffening material” that is useful for initial handling and
insertion of the implant, but which has an “undesired rigidity” that provides
problematic interaction with the abdominal wall, and therefore, it is
degraded prior to the second material in order to prevent problematic
interactions with the abdominal wall. Id. (citing Hinsch, col. 2, ll. 55-63).
As indicated in Hinsch, the first stiffening material dictates the elastic
behavior of the implant until the first material degrades. After the first
material degrades, the elastic behavior of the implant is dictated by the
second material. Thus, the Examiner concludes,
Hinsch also discloses elastic behavior of the first material
(“synthetic resorbable material”) including both the elasticity of
the material itself and also the elasticity due to a present
structural configuration of the first material in said implant
configuration, as well as elastic behavior of the second material
(“flexible basic structure”) including both the elasticity of the
material itself and also the elasticity due to a present structural
configuration of the second material in said implant
configuration, wherein the elasticity of the implant is initially
substantially constant and equal to the elasticity of the first
material following the time of implantation and until said first
material is substantially degraded, and wherein the elasticity of
the mesh implant is substantially equal to the second material
after the first material is substantially degraded, wherein the
elasticity of the second material is lower than the elasticity of
the first material.
Ans. 4 (emphasis added) (citing Hinsch, col. 1, ll. 41-45; col. 2, ll. 40-63).
Appeal 2011-008878
Application 11/019,534

5
We agree with the Examiner.

DECISION
In view of the foregoing discussion, we grant Appellants’ Request for
Rehearing to the extent of reconsidering our decision, but we deny
Appellants’ request with respect to making any change thereto.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).
REQUEST FOR REHEARING DENIED

msc