Ex Parte Santilli et al

Patent Trial and Appeal Board

Feb 11, 2016

11746337 (P.T.A.B. Feb. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111746,337 0510912007
77096 7590 02/11/2016
WAYNE D PORTER, JR
LAW OFFICES OF WAYNE D. PORTER, JR.
6200 ROCKSIDE WOODS BOULEVARD NORTH
SUITE 315
INDEPENDENCE, OH 44131
Albert N. Santilli
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.
KSI-15813.002 2490
EXAMINER
LOPEZ, LESLIE ANN
ART UNIT PAPER NUMBER
3774
MAILDATE DELIVERY MODE
02/11/2016 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 ALBERT N. SANTILLI and WILLIAM H. SEITZ JR.
Appeal2013-001155
Application 11/746,337 1
Technology Center 3700
Before ERIC B. GRIMES, CHRISTOPHER G. PAULRAJ, and KENNETH
G. SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1, 2, 4, 6-8, 10, and 13. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real parties in interest are William H. Seitz,
Albert N. Santilli, and Kapp Surgical Instrument, Inc. App. Br. 1.
Appeal2013-001155
Application 11/746,337
STATEivIENT OF THE CASE
Background
According to Appellants, "[t]he present invention relates generally to
orthopedic implants and, more particularly, to orthopedic implants having a
coating of pyrolytic carbon thereon." Spec. i-f 2.
The Claims
Claims 1, 2, 4, 6-8, 10 and 13 are on appeal. Claim 1 is illustrative
and reads as follows.
1. An orthopedic implant, comprising:
a metal substrate selected from the group consisting of
titanium, stainless steel, cobalt chrome steel, and alloys and
mixtures thereof that defines an articulating surface; and
a substantially non-porous coating of pyrolytic carbon
having a thickness within the range of 2-3 mm on the articulating
surface and having a modulus of elasticity similar to that of bone
and articular cartilage.
App. Br. 18.
The Re} ections
1. The Examiner maintains that claims 1, 2, 4, 6, 7, and 13 are
unpatentable under 35 U.S.C. § 112, first paragraph as failing to
comply with the written description requirement.
2. The Examiner maintains that claims 1, 2, 4, 6, 7, and 13 are
unpatentable under 35 U.S.C. § 112, second paragraph as
indefinite.
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Application 11/746,337
3. The Examiner maintains that claims 1, 2, 4, 6-8, 10, and 13 are
unpatentable under 35 U.S.C. § 103(a) over Rathenow2 in view of
Bokros.3
DISCUSSION
1. Written Description
The Examiner rejects claims 1, 2, 4, 6, 7, and 13 for failing to comply
with the written description requirement and finds that the Specification
does not provide support for the claim requirement that the implant have a
substantially non-porous coating of pyrolytic carbon. Final Action 4--5.
Specifically, the Examiner finds that the Specification is silent regarding the
porosity of the coating layer and that Wilde, 4 which is incorporated by
reference into the Specification, is also silent regarding porosity. Id. (citing
Spec. iTiT 19, 20).
Although the Specification does not explicitly disclose the porosity of
the coating, we agree with Appellants that one of ordinary skill in the art
would recognize that the coating in the Specification is substantially non-
porous. In particular, we are persuaded that Wilde discloses a method of
deposition of pyrolytic carbon that one of ordinary skill in the art would
reasonably conclude to be "substantially non-porous" because Wilde
discloses that the deposited pyrolytic carbon coatings are "essentially free of
discontinuities such as minor voids, cracks, and soot bands and have highly
uniform crystallinity." Wilde, col. 3, 11. 48-51. We note that the written
2 Rathenow et al., US 2005/0079200 Al, pub. Apr. 14, 2005.
3 Bokros et al., US 3,707,006, iss. Dec. 26, 1972.
4 Wilde et al., US 6,410,087 Bl, iss. June 25, 2002.
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Application 11/746,337
description required need not recite the claimed invention in haec verba, and
we find this disclosure in Wilde, which is properly incorporated by reference
into the Specification, reasonably conveys that Appellants were in
possession of the invention claimed when the Specification was filed. See
Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541F.3d1115, 1122
(Fed. Cir. 2008) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-
64 (Fed. Cir. 1991)).
Based on the foregoing, we reverse the rejection of claims 1, 2, 4, 6, 7,
and 13 under 35 U.S.C. § 112, first paragraph.
2. Indefiniteness
The Examiner rejects claims 1, 2, 4, 6, 7, and 13 as indefinite based
on the use of the term "substantially" in claims 1, 6, and 13. Final Action 6.
Specifically, the Examiner finds that the term is not defined in the claim; the
Specification does not provide a standard for ascertaining the requisite
degree of non-porosity required by this term; and thus, one of ordinary skill
in the art would not be reasonably apprised of the scope of the invention. Id.
As noted above, the Specification incorporates Wilde, which discloses
a pyrolytic carbon layer that is "essentially free of discontinuities." Wilde
col. 3, 11. 48-51. We find that this disclosure provides a reasonable standard
for ascertaining the level of non-porosity required by the claim such that one
of ordinary skill in the art would be reasonably apprised of the scope of the
claims. For this reason, we reverse the Examiner's rejection of claims 1, 2,
4, 6, 7, and 13 under 35 U.S.C. § 112, second paragraph.
3. Obviousness
With respect to this rejection, Appellants provide only general
arguments and do not raise arguments specific to any particular claims. See
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Application 11/746,337
App. Br. 9-17. Our analysis below pertains specifically to representative
claim 1, but is nonetheless applicable to all of the claims rejected under 35
U.S.C. § 103(a).
With respect to claim 1, the Examiner finds that Rathenow discloses
an orthopedic implant including a metal substrate of stainless steel that
defines an articulating surface and a coating of pyrolytic carbon having a
thickness of 2-3mm on the articulating surface and having modulus of
elasticity similar to bone or articular cartilage. Final Action 7-8 (citing
Rathenow i-fi-133, 66, 69, 140). The Examiner acknowledges that Rathenow
does not disclose that the coating is substantially non-porous, for which the
Examiner relies on Bokros. Id. at 8. The Examiner finds that Bokros
discloses a substantially non-porous coating of pyrolytic carbon on the
articulating surface of an implant that is deposited by vapor deposition. Id.
(citing Bokros Fig. 5, col. 12, 11. 1-12). The Examiner concludes that it
would have been obvious to modify Rathenow's coating "to be a
substantially non-porous coating and deposited by vapor deposition as taught
by Bokros in order to provide an exceptional wear surface and reduce
friction." Id. at 8-9. We agree with the Examiner's fact-finding and
reasonmg.
Appellants raise several arguments regarding this rejection, which we
have considered and find unpersuasive, as discussed below.
First, Appellants contend that Rathenow does not disclose a 2-3mm
coating as part of an orthopedic implant having an articulating surface, as
claimed. App. Br. 11. However, Rathenow discloses orthopedic implants
with pyrolytic carbon layers as well as the use of coatings "in the millimeter
range to the centimeter range." See Rathenow i-fi-133, 66, 69. Although
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Application 11/746,337
Rathenow discloses that using a coating in the millimeter to centimeter range
is preferred for implants of full carbon materials (Rathenow i-f 69), Rathenow
does not preclude their use on implants with metal substrates as claimed.
Moreover, in the absence of showing any criticality associated with the
claimed thickness we agree with the Examiner that one of ordinary skill in
the art would have found it obvious to use a 2-3mm thick coating on an
implant with a metal substrate in light of Rathenow's disclosure. See Final
Rejection 8; In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Next, Appellants argue that one of ordinary skill in the art would not
have found it obvious to combine Rathenow and Bokros as proposed. App.
Br. 14--17. In support, Appellants assert that Rathenow is concerned with
creating a coating with large pores to facilitate impregnation with additives
and that replacing Rathenow's coating with Bokros's coating would render
Rathenow ineffective for its intended purpose. Id. at 14--16. Further,
Appellants assert that the Examiner's conclusion is unsupported by
evidence. Reply Br. 8. We disagree. Bokros discloses:
The pyrolytic carbon surface of the prosthetic device may
be fabricated with different physical properties at different
surface locations, for example a dense, polished wear surface
may be employed at the articulating end of a joint prosthesis
while a surface having a rough, more porous surface may be
employed at the surfaces at which the prosthesis is joined with
natural bone to facilitate bone growth thereto.
Bokros col. 8, 11. 26-33. Further, Rathenow discloses that the porosity of the
surface used on the implant "allows and promotes the ingrowth of body
tissue." Rathenow i-f 103. We find that these disclosures provide adequate
support for the combination proposed by the Examiner by suggesting that
the implant surface may include a non-porous coating as best suited for the
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Application 11/746,337
wear surface at the articulating portion of the implant and that a more porous
coating may be used at other surfaces for other purposes, including
facilitation of bone growth, which was specifically identified as related to
the porosity by Rathenow.
Finally, we are unpersuaded by Appellants' intimation that Rathenow
teaches away from the use of vapor deposition to apply the pyrolytic coating
(as recited in claim 8, for example). See App. Br. 15. In particular, we
disagree that Rathenow "expressly disclaims the direct vapor deposition of
pyrolytic carbon onto an articulating surface of a strong metal substrate such
as titanium or stainless steel." Reply Br. 7. Rathenow discloses certain
disadvantages of applying a coating with chemical vapor deposition. See
Rathenow ,-r 14. However, Rathenow also discloses an example in which
chemical vapor deposition is used to coat stainless steel with pyrolytic
carbon and that it may be necessary to apply a carbon vapor deposition
process to a carbonizing layer in certain circumstances. Id. at i-fi-1 86, 140.
Based on these disclosures, we disagree that using a chemical vapor
deposition process would render Rathenow's product inoperative, as
Appellants assert. See App. Br. 15.
Based on the foregoing, we determine that the Examiner established a
prima facie showing of obviousness with respect to claim 1, which
Appellants fail to rebut. Accordingly, we affirm the rejection of claim 1.
For the same reasons, we affirm the rejection of the other independent
claims. The dependent claims fall with the independent claims.
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Application 11/746,337
CONCLUSION
For the reasons set forth above, we reverse the rejections under 35
U.S.C. § 112 and we affirm the rejection of claims 1, 2, 4, 6-8, 10, and 13
under 35 U.S.C. § 103(a).
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
KRH
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