Ex Parte Shim

Patent Trial and Appeal Board

Jan 26, 2017

13142338 (P.T.A.B. Jan. 26, 2017)

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.
13/142,338 06/27/2011 Jae Bum Shim P14012IM 1934
89340 7590
The PL Law Group, PLLC
5875 Trinity Parkway
Suite 110
Centerville, VA 20120
EXAMINER
PEPITONE, MICHAEL F
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
01/30/2017 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):
mail @ thepllaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAE BUM SHIM1
Appeal 2015-000705
Application 13/142,338
Technology Center 1700
Before CHUNG K. PAK, MARKNAGUMO, and JEFFREY R. SNAY,
Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision2 finally rejecting claims 1-11 and 20, which are all of the
claims pending in the above-identified application. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies the real party in interest as “INJECTA INC.” Appeal Brief
filed March 24, 2014 (“App. Br.”) at 3.
2 Final Action entered October 22, 2013 (“Final Act.”) at 2-10 and the Examiner’s
Answer entered August 4, 2014 (“Ans.”) at 2-10.
Appeal 2015-000705
Application 13/142,338
STATEMENT OF THE CASE
The subject matter on appeal is directed to “a paste-powder bone cement
used in arthroplasty or vertebroplasty” and, “more particularly, to a paste-powder
binary polymer bone cement which can be directly used at a site to be treated
without additional^ waiting time ...” Spec. 1,11. 5-9. The paste-powder binary
bone cement is defined as a doughy bone cement prepared by mixing a paste
component formed from dissolving a first powdered composition in a liquid
component with a powder component comprising a second powder composition.
Spec. 8,1. 25-9,1. 5. For example, “the first powdered component includes an
acrylic polymer, a radiopaque agent, and an antibiotic.. .and the second powdered
component includes an acrylic polymer, a free radical initiator and antibiotic.”
Spec. 9,11. 15-20.
Details of the appealed subject matter are recited in illustrative claim 1,
which is reproduced below from the Claims Appendix of the Appeal Brief (with
disputed limitations in italicized form):
1. A paste-powder binary bone cement, comprising:
a paste component prepared by preliminarily dissolving a first
powdered composition in a liquid composition; and
a powder component including a second powdered
composition, wherein the paste component is mixed with the powder
component to immediately form a doughy bone cement without
additional waiting time.
App. Br. 18, Claims Appendix.
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Appeal 2015-000705
Application 13/142,338
Appellant seeks review of the following grounds of rejection maintained by
the Examiner in the Final Action and the Answer:
1. Claims 1 and 20 under 35 U.S.C. § 102(b) as anticipated by the
disclosure of Li (US 6,593,394 B1 issued to Li et al. on July 15, 2003);
2. Claims 1, 2, and 20 under 35 U.S.C. § 102(b) as anticipated by the
disclosure of Vogt (US 2009/0105366 Al published in the name of Vogt et al. on
April 23, 2009);
3. Claims 3-5 and 7-9 under 35 U.S.C. § 103(a) as unpatentable over
the disclosure of Vogt;
4. Claim 6 under 35 U.S.C. § 103(a) as unpatentable over the combined
disclosures of Vogt and Hasenwinkel (US 2008/0039586 Al published in the name
of Hasenwinkel et al. on February 14, 2008);
5. Claim 10 under 35 U.S.C. § 103(a) as unpatentable over the combined
disclosures of Vogt and Lavergne (US 2008/0044374 Al published in the name of
Lavergne et al. on February 21, 2008); and
6. Claim 11 under 35 U.S.C. § 103(a) as unpatentable over the combined
disclosures of Vogt and Kuhn (US 2006/0292199 Al published in the name of
Kuhn et al. on December 28, 2006). See App. Br. 5; Final Act. 2-10; Ans. 2-10.
DISCUSSION
Upon consideration of the evidence on this appeal record in light of the
respective positions advanced by the Examiner and Appellant, we find no
reversible error in the Examiner’s rejections of claims 1, 2, and 20 under 35 U.S.C.
§ 102(b) and claims 3-11 under 35 U.S.C. § 103(a). Accordingly, we sustain the
Examiner’s §§ 102(b) and 103(a) rejections of the above claims for the reasons set
forth in the Final Action and the Answer. We add the following primarily for
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Appeal 2015-000705
Application 13/142,338
emphasis and completeness.
I. Rejection of Claims 1, 2, and 20 under 35 U.S.C. § 102(b)3
Independent claims 1 and 20 are written in a product-by-process format.
Claim 1 and 20 recite a paste-powder binary bone cement which is prepared by
mixing a paste component with a powder component. The paste component is
initially formed by dissolving a first unspecified powdered composition in an
unspecified liquid composition while the powder component is defined as
including an unspedified second powdered composition. See claims 1 and 20.
According to claim 1, mixing the paste and powdered components results in “a
doughy bone cement without additional waiting time.” Claims 1 and 20 do not
specify the contents of their paste and powder components or the content of their
paste-powder binary bone cement.
“If the product in a product-by-process claim is the same as or obvious from
a product of the prior art, the claim is unpatentable even though the prior product
was made by a different process.” In re Thorpe, 111 F.2d 695, 697 (Fed. Cir.
1985). “[E]ven though product-by-process claims are limited by and defined by the
process, determination of patentability is based on the product itself.” Thorpe, 111
F.2d at 697. Once the Examiner establishes a prima facie case that the prior art
product appears to be identical to the claimed product, the burden shifts to the
Appellants to prove the prior art products do not necessarily or inherently possess
the characteristics of the claimed product. Thorpe, 111 F.2d at 698; see also In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“[W]hen the PTO shows sound basis
3 Appellant focuses on common limitations in claims 1 and 20 and does not
separately argue claim 2. App. Br. 6-12. Therefore, for purposes of this appeal,
we limit our discussion to claims 1 and 20. 37 C.F.R. § 41.37(c)(l)(iv) (2012).
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Appeal 2015-000705
Application 13/142,338
for believing that the products of the applicant and the prior art are the same, the
applicant has the burden of showing that they are not.”).
Here, there is no dispute that Li and Vogt individually teach a doughy bone
cement prepared by mixing a first paste containing a first powdered composition
with a second paste containing a second powdered composition. Compare Final
Act. 2-5 and Ans. 2-5 and 10-14 with App. Br. 6-12. Nor is there any dispute
that the inorganic filler blend (strontium-hydroxyapatite and fumed silica) used in
the second paste taught by Li or the mixture of zirconium dioxide and copper
carbonate in Paste A taught by Vogt corresponds to the powder component
containing a second powdered composition recited in claims 1 and 20. Compare
Final Act. 2-5 and Ans. 2-5 and 10-14 with App. Br. 6-12. Thus, there is a
reasonable basis for the Examiner to believe that the bone cement containing paste
and powder components taught by either Li or Vogt corresponds to the paste-
powder binary bone cement recited in claims 1 and 20 within the meaning of 35
U.S.C. § 102(b). Thorpe, 111 F.2d at 698; Spada, 911 F.2d at 708.
Appellant contends that neither Li nor Vogt teaches preparing a paste-
powder binary bone cement by mixing a paste component with a powder
component as recited in claims 1 and 20. App. Br. 6-12. In so arguing, Appellant
ignores that claims 1 and 20 are directed to a paste-powder binary cement, not a
process by which such cement is made. Id. Even if the claimed paste-powder
binary cement is formed by a process different from that taught by Li or Vogt, the
fact remains that the doughy bone cement taught by Li or Vogt, like the claimed
paste-powder binary cement, constitutes a paste containing first and second
powdered compositions. On this record, Appellant does not identity any
compositional difference between the paste-powder binary cement (paste
containing first and second powdered compositions) recited in claims 1 and 20 and
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Appeal 2015-000705
Application 13/142,338
the bone cement (paste containing first and second powdered compositions) taught
by Li or Vogt. App. Br. 6-12.
Appellant emphasizes the importance of the preamble “paste-powder binary
bone cement” and/or the process limitation relating to mixing a paste with a
powder component in claims 1 and 20. Id. at 8-10 and 12. Appellant contends
that such limitation in claims 1 and 20 imparts a structure different from that
disclosed in Li or Vogt. Id. at 9-10. In support of this contention, Appellant refers
to the Background Art section of the above-identified application relating to a
doughy bone cement formed from a powder and liquid of unstated compositions
having an unstated predetermined viscosity that does not adhere to surgical gloves
(powder-free latex gloves) unlike the claimed paste-powder binary cement of
unspecified compositions. Id. However, Appellants do not proffer sufficient
evidence to show that such structure of the doughy bone cement made of unstated
compositions and viscosity in the Background Art section of the above-identified
application can be attributed to Li’s or Vogt’s bone cement formed of a specific
composition in the form of a paste containing first and second powdered
compositions. Id. As indicated supra, the doughy bone cement taught by Li or
Vogt, like the claimed paste-powder binary cement, is made of a paste containing
first and second powdered compositions. On this record, Appellant provides no
credible evidence to show that the doughy bone cement taught by Li or Vogt has a
structure and/or composition different from all of paste-powder binary bone
cements encompassed by claims 1 and 20. App. Br. 6-12.
Accordingly, we find no reversible error in the Examiner’s finding that Li or
Vogt describes the paste-powder binary doughy bone cement recited in claims 1
and 20 within the meaning of 35 U.S.C. § 102(b).
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Appeal 2015-000705
Application 13/142,338
II. Rejection of Claims 3-11 under 35 U.S.C. § 103(a)4
Appellants contend that Vogt does not teach or suggest a paste-powder
binary cement and that Hasenwinkel, Lavergne, or Kuhn does not remedy the
deficiency of Vogt. App. Br. 13-16. Thus, based on the same reasons stated
supra, we find no reversible error in the Examiner’s decision rejecting claims 3-11
under 35 U.S.C. § 103(a).
ORDER
In view of the foregoing, the decision of the Examiner to reject claims 1-11
and 20 is 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
4 Appellants refer to claims 3-11 as being dependent on claim 1 and rely on the
same arguments raised in connection with claim 1 to impart patentability to the
subject matter recited in claims 3-11. App. Br. 13-16. Therefore, for purposes of
this appeal, we limit our discussion to such arguments raised by Appellants in
determining the patentability of the subject matter recited in claims 3-11.
37 C.F.R. §41.37(c)(l)(iv).
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