Ex Parte Shen et al

Patent Trial and Appeal Board

Nov 17, 2016

12621552 (P.T.A.B. Nov. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/621,552 11/19/2009
104326 7590 11/21/2016
Schwegman Lundberg & Woessner I Zimmer
P.O. Box 2938
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Ming C. Shen
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.
4394.045US 1 2682
EXAMINER
CAI,WENWEN
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
11/21/2016 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):
SLW@blackhillsip.com
USPTO@slwip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MING C. SHEN and WERNER SCHNEIDER
Appeal2015-005262
Application 12/621,552
Technology Center 1700
Before CATHERINE Q. TIMM, JULIA HEANEY, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a rejection2 of
claims 1-7, 15, and 19-22. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 The real party in interest is identified as ZIMMER GMBH. (Appeal Brief,
filed December 12, 2014 ("App. Br."), 2.)
2 Final Office Action mailed July 16, 2014 ("Final Act.").
Appeal2015-005262
Application 12/621,552
CLAIMED SUBJECT MATTER
The claims are directed to "a composition comprising an ultra high
molecular weight polyethylene material and a cross-linked polymeric
material that has a different average molecular weight than an average
molecular weight of the ultra high molecular weight polyethylene material."
Spec. ,-i 4.3 Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A composition comprising:
one or more crystalline and one or more amorphous
regions, the crystalline regions together comprising at least 62%
by volume of the composition, the crystalline and amorphous
regions together comprising an irradiation cross-linked form of a
blend comprising
a first ultra high molecular weight polyethylene and
a cross-linked polymeric material, the cross-linked polymeric
material comprising a cross-linked form of a blend of a second
antioxidant and a second ultra high molecular weight
polyethylene material; and
a first antioxidant, at least some of the first
antioxidant present in the blend of the first ultra high molecular
weight polyethylene material and the cross-linked polymeric
material prior to the irradiation;
wherein the second ultra high molecular weight
polyethylene material has a different average molecular weight
than the first ultra high molecular weight polyethylene material,
and wherein the irradiation cross-linked form of the blend is free
of annealing with melting after the cross-linking of the blend
comprising the first ultra high molecular weight polyethylene,
the cross-linked polymeric material, and the first antioxidant.
(Claim Appendix, App. Br. 13 (emphasis added).)
3 Application 12/621,552, Polyethylene Materials, filed November 19, 2009.
We refer to the '"552 Specification," which we cite as "Spec."
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Application 12/621,552
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wang
Abt
US 6,414,086 Bl
US 2007 /0059334 Al
REJECTIONS
July 2, 2002
Mar. 15, 2007
Claims 1 and 15 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. (Final Act. 2.)
Claims 1-7, 15, and 19-22 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wang in view of Abt. (Final Act. 3.)
OPINION
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Indefiniteness4
The Examiner rejects claim 1 under 35 U.S.C. § 112, second
paragraph, as being indefinite. In particular, the Examiner finds that the
term "annealing with melting" recited in claim 1 is indefinite because it is
unclear what it entails. (Final Act. 3.)
Appellants, on the other hand, argue that the claim term "annealing
with melting" is clear because the '552 Specification "recites 'melt
annealing' throughout[.]" (App. Br. 7.) Appellants argue that "melt-
annealing" and "melt annealed" "are terms that readily indicate on their own
4 Because Appellants do not make separate arguments for claim 15 for the
indefiniteness rejection, claim 15 stands or falls with claim 1 with respect to
the indefiniteness rejection. (See App. Br. 7.)
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Application 12/621,552
to one of ordinary skill in the art annealing at a temperature sufficient to
induce melting." (Reply 3. )5
35 U.S.C. § 112, second paragraph "puts the burden of precise claim
drafting squarely on the applicant." In re Morris, 127 F.3d 1048, 1056 (Fed.
Cir. 1997). Therefore, when an examiner advances a reasonable basis to
believe that those of ordinary skill in the art would not be able to determine
the scope of the claim, the burden shifts to the applicant to show otherwise.
Id. at 1054 ("Once the PTO has made an initial determination that specified
claims are not patentable ... , the burden of production falls upon the
applicant to establish entitlement to a patent.") (citations omitted).
The specification informs the meaning of the claims. "[I]f a claim is
amenable to two or more plausible claim constructions, the USPTO is
justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim unpatentable under 35
U.S.C. § 112, second paragraph, as indefinite." Ex parte Miyazaki, 2008
WL 5105055, at *5 (BPAI 2008) (precedential). Claims may be indefinite
when a conflict between the claimed subject matter and the specification
disclosure renders the scope of the claims uncertain. See In re Cohn, 438
F.2d 989, 993 (CCPA 1971) (reading the claims in light of the disclosure
results in "an inexplicable inconsistency ... requiring that the rejection under
35 U.S.C. 112 on the grounds of indefiniteness be sustained").
In this case, the '552 Specification discloses:
In certain embodiments, the methods described herein can be
used to produce a composition without subjecting the
composition to post-cross-linking melt annealing. In particular,
desirable properties can be achieved in the absence of post-
5 Reply Brief filed April 14, 2015 ("Reply").
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Appeal2015-005262
Application 12/621,552
cross-linking melt annealing. Further, melt-annealing can alter
the desired level of crystallinity in a non-desired manner. In
certain embodiments where no post-cross-linking melt
annealing is performed, the compositions described herein may
be referred to as non-annealed compositions.
(Spec. ii 70.) Based on the disclosure of the '552 Specification, Appellants
thus argue that "annealing can be performed at temperatures above the
melting point and can include melting." (Reply 4.)
Whether "annealing can be performed at temperatures above the
melting point and can include melting" (id.), however, does not necessarily
show that the statutory requirement for precision and definiteness of claim
language has been satisfied in this case. See In re Hammack, 427 F.2d 1378,
1382 (1970) (the definiteness "requirement is that the language of the claims
must make it clear what subject matter they encompass").
Claim 1, as currently written, is not clear whether the prepositional
phrase is "with melting" or "with melting after the cross-linking of the blend
.... " It is also unclear which term the prepositional phrase modifies.
Moreover, the difference in the language between the '552
Specification and the claim heightens the ambiguity. The '552 Specification
discloses methods "to produce a composition without subjecting the
composition to post-cross-linking melt annealing" (Spec. ii 70) indicating
that "post-cross-linking melt annealing" is referring to a method of
annealing. The claim language "free of annealing with melting after the
cross-linking of the blend" is not a clear reference to the annealing step
recited in the '552 Specification. Thus, the claim language is not as
reasonably precise as the circumstances permit and the Examiner's rejection
has given Appellants an opportunity to bring the necessary clarity to the
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Application 12/621,552
claim language. Thus, the rejection is proper. See Jn re Packard, 751 F.3d
1307, 1314 (Fed. Cir. 2014) (Affirming an indefiniteness rejection because
Packard had been given the opportunity to bring clarity to his claim
language stating that "[i]n some cases it is difficult enough for courts to
construe claims when the draftsperson has made every effort to be clear and
concise, let alone when the claims have readily observable ambiguities or
incoherencies within them.").
On this record, Appellants have not identified error in the
Examiner's determination that claim 1, when read in light of the '552
Specification, fails to "set out and circumscribe a particular area with a
reasonable degree of precision and particularity." In re Moore, 439 F.2d
1232, 1235 (CCPA 1971). We also decline to attempt to harmonize
Appellants' interpretation with the '552 Specification. "Such an approach
puts the burden in the wrong place. It is the applicants' burden to precisely
define the invention, not the PTO's. See 35 U.S.C. § 112, ,-i 2 .... [T]his
section puts the burden of precise claim drafting squarely on the applicant."
In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
In further support of the contention that "the term 'melt annealing' is
commonly used in the art," Appellants provide two articles: one entitled
"The Effect of Aging on Mechanical Properties of Melt-Annealed Highly
Crosslinked UHMWPE" by Bhambri and another entitled "Evaluation of
oxidation and fatigue damage of retrieved crossfire polyethylene acetabular
cups" by Currier. (App. Br. 7.)
Appellants, however, acknowledge the Examiner's finding that the
Bhambri article uses a different term - "melt-annealed" which is not recited
in claim 1. Appellants nonetheless urge that such "slight differences ...
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Application 12/621,552
do[] not mean that Bhambri fails to give any meaning to 'annealing with
melting[.]" (Compare Ans. 2 with Reply 2.)6 Without citation to Bhambri
or any other factual evidence, Appellants assert: "It would be readily
apparent to one of ordinary skill in the art that Bhambri's usage of 'melt-
annealed' indicates a material that has been annealed in a way that the
material has melted; therefore, Bhambri evidences that, contrary to the
Examiner's position, annealing can occur above melting temperature."
(Reply 2.)
With regard to the Currier article, Appellants also acknowledge the
Examiner's finding that it does not use the term "annealing with melting" as
recited in claim 1. (Compare Ans. 2 with Reply 3). Appellants instead
argue that while the Currier article provides that "a below-melt anneal does
not quench all of the free radicals," it nonetheless shows that "annealing can
occur above the melting temperature as well." (Reply 3.)
From the outset, Appellants do not indicate - and we do not find -
that these articles were entered into the record during prosecution. We
therefore do not consider these articles as Appellants' reliance on new
evidence submitted with the Appeal Brief is improper. 3 7 CPR
§ 41.33(d)(2).
Even if the articles were properly entered into the prosecution record,
Appellants have not identified reversible error in the Examiner's findings
that these articles do not show the recited "annealing with melting" is a term
commonly used in the art.
For these reasons, we sustain the rejection of claim 1 under 35 U.S.C.
§ 112, second paragraph.
6 Examiner's Answer mailed March 11 2015 ("Ans.").
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Application 12/621,552
Obviousness 7
Because we sustain the Examiner's indefiniteness rejection, we
procedurally reverse the rejections under 35 U.S.C. § 103(a) of claims 1-7,
15, and 19-22 because the claims are indefinite or depend from claims that
are indefinite. In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA
1962) (analysis of prior art rejection would require considerable speculation
as to meaning of the terms employed and assumptions as to the scope of
such claims). Because a review of the prior art rejection would require
speculation, we are unable to decide whether the Examiner erred, and we are
unable to reach the merits. Thus, our reversal is on procedural grounds only.
DECISION
The Examiner's rejection of claims 1 and 15 under 35 U.S.C. § 112,
second paragraph is sustained.
The Examiner's rejection of claims 1-7, 15, and 19-22 under 35
U.S.C. § 103(a) is reversed proforma.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED-IN-PART
7 Because Appellants do not make separate arguments for claims 2-7, 15,
and 19-22 for the obviousness rejection, these claims stand or fall with
claim 1 with respect to the obviousness rejection. (See App. Br. 8-11.)
8