11385688 (B.P.A.I. Jan. 20, 2011)

Ex Parte Posnick et al

Board of Patent Appeals and InterferencesJan 20, 2011

11385688 (B.P.A.I. Jan. 20, 2011)

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. 11/385,688 03/22/2006 Jeffrey C. Posnick 15330.0008 4052 27890 7590 01/20/2011 STEPTOE & JOHNSON LLP 1330 CONNECTICUT AVENUE, N.W. WASHINGTON, DC 20036 EXAMINER WOLF, MEGAN YARNALL ART UNIT PAPER NUMBER 3738 MAIL DATE DELIVERY MODE 01/20/2011 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 JEFFREY C. POSNICK and ALMA L. COATS ____________________ Appeal 2009-009519 Application 11/385,688 Technology Center 3700 ____________________ Before: WILLIAM F. PATE III, STEVEN D.A. MCCARTHY, and MICHAEL W. O’NEILL, Administrative Patent Judges. PATE III, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-009519 Application 11/385,688 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 37, 38 and 47-63. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to polymeric materials for facial implants. Spec. 1, l. 6. Claim 37, reproduced below, is illustrative of the claimed subject matter: 37. A method of placing a facial implant into a mammal comprising: selecting a polypropylene cranio-maxillofacial implant comprising spherical pellets, and placing the implant into a cranio-maxillofacial area. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Crawley US 6,277,150 B1 Aug. 21, 2001 Mao Swords US 2003/0134100 A1 US 2006/0224242 A1 Jul. 17, 2003 Oct. 5, 2006 REJECTIONS Claims 37 and 38 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Mao, and Crawley. Ans. 3. Claims 37, 38 and 47-63 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Swords. Ans. 3. Appeal 2009-009519 Application 11/385,688 3 OPINION Appellants argue each of the above rejections as two separate groups. Br. 2, 5. In each case we select claim 37 as the representative claim, and the other claims will stand or fall with claim 37. 37 C.F.R. § 41.37(c)(1)(vii). We adopt the Examiner’s factual findings and conclusion of law regarding the rejection of claim 37 as being unpatentable over Mao and Crawley as our own. See Ans. 3. Crawly shows the implant structure with a porous polymer portion (ePTFE) and suggests using alternate polymers. Col. 3, ll. 2-10. Mao demonstrates that polypropylene may be used in implants having a porous polymer portion as an alternative to PTFE. P. 1, paras. [0002], [0008]. The claimed subject matter amounts to implementing Crawly’s suggestion to use alternate materials by using a material Mao demonstrates was known in the art. Such a combination would yield predictable results and therefore would have been obvious to one having ordinary skill in the art at the time of Appellants’ invention. Appellants point out that Mao does not expressly discuss why polypropylene specifically should be selected from Mao’s list of acceptable materials. Br. 3-4. However, a person of ordinary skill in the art would have known how determine if polypropylene exhibited characteristics making it suitable for a specific application without Mao’s guidance. Appellants’ argument that a person of ordinary skill would not have combined Mao and Crawly because they are from different fields is unpersuasive. Mao relates to porous polymeric materials, specifically those that may be used in “implants and other biomedical devices” (P. 1, para. [0002]) and is therefore reasonably related to the problem of selecting a material for a cranio-maxillofacial implant. The fact that the Examiner determined that Appellants were not entitled to claim both a method of using Appeal 2009-009519 Application 11/385,688 4 a facial implant and a method of manufacturing polypropylene in a single application (Br. 5) does not show that one of ordinary skill in the art concerned with using a facial implant would not look to Mao, which is concerned with suitable materials for implants, for material suggestions. We also adopt the Examiner’s factual findings regarding the rejection of claim 37 as being unpatentable over Swords. See Ans. 3-4. Appellants apparently misinterpreted either the Examiner or Swords. Paragraph 56 of Swords, cited by the Examiner (Ans. 5, Fin. Rej. 3), expressly states that polypropylene, the element Appellants contend would not have commended itself to an inventor’s attention based upon Swords (Br. 5-6), can be used in the alternative. As noted above, a person of ordinary skill in the art would have known how determine if polypropylene exhibited characteristics making it suitable for a specific application without Swords expressly teaching the advantages and disadvantages of each polymer suggested. DECISION For the above reasons, the Examiner’s rejections 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED nlk STEPTOE & JOHNSON LLP 1330 CONNECTICUT AVENUE, N.W. WASHINGTON DC 20036