FEHR, Daniel

Patent Trials and Appeals Board

May 19, 2020

2018004304 (P.T.A.B. May. 19, 2020)

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.
13/114,617 05/24/2011 Daniel FEHR S0002-7520US0 1852
21127 7590 05/19/2020
POLSINELLI PC
One International Place
Suite 3900
BOSTON, MA 02110
EXAMINER
BRANSON, DANIEL L
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
05/19/2020 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):
mswannichols@polsinelli.com
patentdocketing@polsinelli.com
thendricks@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DANIEL FEHR
____________

Appeal 2018-004304
Application 13/114,617
Technology Center 1600
____________

Before JOHN E. SCHNEIDER, RYAN H. FLAX, and
CYNTHIA M. HARDMAN, Administrative Patent Judges.

FLAX, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims to a conditioning composition. Appellant appeals the Examiner’s
rejection of claims 1, 3, 4, 6–14, and 21–23 under 35 U.S.C. § 103 and for
obviousness-type double patenting.1,2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm; however, we designate our affirmance a new ground of
rejection under 35 U.S.C. § 103(a).

1 “Appellant” herein refers to the “applicant” as defined by 37 C.F.R. § 1.42.
Appellant identifies “Straumann Holding AG” as the real party-in-interest.
Appeal Br. 3.
2 Oral argument was heard on March 2, 2020; a transcript of the hearing
(“Hr’g Tr.”) is a part of the record.
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RELATED MATTERS
Appellant does not identify any appeals, or other matters, directly
related to this proceeding. Appeal Br. 3.
However, Appellant indicates that application 13/114,687 (now US
9,925,397 B2) and its associated Appeal, Case No. 2016-002265, “is directly
relevant to this appeal” because, there, one of the cited prior art references
(Minford––see infra) here was withdrawn by the Examiner during
prosecution as “not relevant” and the Board held the respective claims on
appeal there to be non-obvious over another reference (Lindskog––see infra)
cited by the Examiner in this proceeding. Id.
STATEMENT OF THE CASE
Independent claim 1, reproduced below, is illustrative of the claims on
appeal:
1. A conditioning composition comprising:
ethylenediaminetetraacetic acid (EDTA) at a
concentration in the range of 21-27 % by weight; and
hydrogen peroxide (H2O2) at a concentration of 2-4% by
weight,
said composition having a pH of about 9 to 10,
wherein the conditioning composition is transparent and
increases the hydrophilicity of a metal-containing surface of a
dental implant placed in the oral cavity, wherein the increase in
hydrophilicity comprises a decrease in contact angle of the
metal-containing surface to a median value below 5.5, so as to
accelerate bone and soft tissue regrowth on and around the
implant.
Appeal Br. 28 (Claims Appendix).
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The Specification states that “[t]he present invention is within the
field of compositions for conditioning of mineralized dental surfaces and/or
dental implant surfaces.” Spec. 1:4–5. Further, the Specification states:
The object of the present invention is to provide compositions for
the conditioning of mineralized dental surfaces and/or surfaces
of dental implants and/or for increasing the hydrophilicity of a
dental implant having a metal containing surface.
This object is achieved by the provision of a conditioning
composition comprising ethylenediaminetetraacetic acid
(EDTA) at a concentration in the range of about 21-55 % by
weight and hydrogen peroxide at a concentration of about 2-4%
by weight. The pH of the composition ranges from 6 and above,
in particular 6-11.5.
Id. at 6:20–27.
The Specification expressly defines “conditioning,” which is a claim
term used in each claim, as follows:
By “conditioning” is [sic] in the present context meant [sic] the
cleaning of a surface, such as a mineralized surface or the surface
of an implant having a metal containing surface, in order to
remove e.g. biofilm, bacterial toxins, debris, bacteria, dental
calculus (mineralized bacterial deposits) and/or tissue remnants.
Conditioning of a tooth surface also includes the removal of
hydroxyapatite to expose collagen on the tooth root.
“Conditioning” may thus be seen as a cleaning of a surface to
remove unwanted substances therefrom and/or prepare the
treated surface in order to enable and/or support the
regeneration of the surrounding tissue onto the conditioned
surface. The conditioning of a surface using the composition of
the invention may also include an etching of said surface.
Id. at 7:33–8:5 (emphasis added).3

3 We use Appellant’s express definition of the claim term “conditioning”
when considering the meaning and scope of the claims. As noted by the
Specification, conditioning includes etching of an implant’s surface.
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The Specification provides examples of conditioning treatments used
upon titanium disks (which were prepared therefor by sandblasting and acid
etching). Id. at 20:8–21:2 (Examples 3, 4). The treatments included or
omitted each of ~3% H2O2 and 24% EDTA, and the pH varied from 7 to 8 to
9. Id. (Tables 1, 2); see also id. at 19:20–36 (describing the formulations).
The conclusions presented by the Specification regarding these Examples
were that:
The lower the contact angle of a surface is, the higher the
hydrophilicity of the surface is. As can be seen, when a surface
is treated with a composition having both EDTA and hydrogen
peroxide, the contact angle is decrease[d] compared to when
hydrogen peroxide or EDTA are used alone. In Fig. 1 the
different solutions of Examples 3-5 are compared to each other.
The use of a composition comprising both EDTA and hydrogen
peroxide therefore has the effect of increasing the hydrophilicity
of the surface. The composition of the invention therefore also
has an improved conditioning effect.
Id. at 22:5–13. These Examples in the Specification show that when all
other variables are maintained (with or without EDTA or H2O2), increasing
pH from 7 to 8, and again to 9, respectively, decreases the contact angle of
the treated titanium. Id. at 20:8–22:2 (Example 3 (Table 1), Example 4
(Table 2), Example 5 (Table 3)). Also, the combination of EDTA and H2O2
was superior to either H2O2 or EDTA individually in lowering the contact
angle.
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The following rejections are on appeal:
Claims 1, 3, 4, 6–14, and 21–23 stand rejected under 35 U.S.C. § 103
over Minford,4 Lindskog,5 Blomlöf,6 Guéhennec,7 and Buser.8 Final Action
5.
Claims 1, 3, 4, and 6–14 stand provisionally rejected on the ground of
non-statutory obviousness-type double patenting over claims 1–3 and 5–13
of US application 13/114,687 in view of Minford. Final Action 11.
US 13/114,687 issued as US 9,925,397 B2 (“the ’397 patent”) on March 27,
2018; therefore, this rejection is no longer provisional.
DISCUSSION
I. LEGAL STANDARDS
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.
[Once] that burden is met, the burden of coming forward with evidence or
argument shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992). Arguments made by Appellant in the Appeal Brief and properly
presented in the Reply Brief have been considered; arguments not so-
presented are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2017); see also Ex

4 US 4,554,050 (issued Nov. 19, 1985) (“Minford”).
5 WO 96/09029 (published Mar. 28, 1996) (“Lindskog”).
6 Johan Blomlöf et al., Effect of different concentrations of EDTA on smear
removal and collagen exposure in periodontitis-affected root surfaces, 24(8)
J. CLINICAL PERIODONTOLOGY 534–37 (1997) (“Blomlöf”).
7 L. Le Guéhennec et al., Surface treatments of titanium dental implants for
rapid osseointegration, 23 DENTAL MATERIALS 844–54 (2007)
(“Guéhennec”).
8 D. Buser et al., Enhanced Bone Apposition to a Chemically Modified SLA
Titanium Surface, 83(7) J. DENT. RES. 529–33 (2004) (“Buser”).
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parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“Any
bases for asserting error, whether factual or legal, that are not raised in the
principal brief are waived.”).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “[W]hen the
question is whether a patent claiming the combination of elements of prior
art is obvious,” the answer depends on “whether the improvement is more
than the predictable use of prior art elements according to their established
functions.” Id. at 417. “If a person of ordinary skill can implement a
predictable variation [of a known work], § 103 likely bars its patentability.”
Id. “In considering motivation in the obviousness analysis, the problem
examined is not the specific problem solved by the invention but the general
problem that confronted the inventor before the invention was made.” In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
The doctrine of obviousness-type double patenting is designed to
prevent an inventor from securing a second, later-expiring patent for the
same invention (and obvious variants thereof) claimed in an earlier,
commonly-owned patent. AbbVie Inc. v. Mathilda and Terrence Kennedy
Inst. of Rheumatology Trust, 764 F.3d 1366, 1373 (Fed. Cir. 2014). The
obviousness-type double patenting analysis is comparable to that under
35 U.S.C. § 103, and requires consideration of whether one of ordinary skill
would have considered the examined claims merely an obvious variation of
an invention claimed in an earlier patent. See In re Braat, 937 F.2d 589,
592–93 (Fed. Cir. 1991).
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With these standards in mind, we address the Examiner’s rejections
and Appellant’s arguments thereover.
II. FINDINGS OF FACT
We generally agree with the Examiner’s findings of fact and rationale
for obviousness as set forth in the Final Action and Answer, except as to the
propriety of combining Lindskog’s or Blomlöf’s disclosures with that of the
other cited art. See Final Action 5–11; Answer 3–57. The following
findings of fact (FF) highlight certain evidence of record:
FF1. Guéhennec is directed to and discloses various “[s]urface
treatments of titanium dental implants for rapid osseointegration”
(integration into bone), by producing “[r]ough-surfaced implants,”
which “favor both bone anchoring and biomechanical stability”; the
discussed surface treatments include “titanium plasma-spraying, grit-
blasting, acid-etching, [and] anodization or calcium phosphate
coatings.” Guéhennec 844 (Title, Abstract); see also Buser 529, 531–
32 (confirming these statements of Guéhennec).
FF2. Guéhennec discloses that “[t]he surface chemical
composition of titanium implants also affects the hydrophilicity of the
surface. Highly hydrophilic surfaces seem more desirable than
hydrophobic ones in view of their interactions with biological fluids,
cells and tissues,” and that surface contact angle indicates whether it is
hydrophilic or hydrophobic, where “[c]ontact angle measurements
give values ranging from 0° (hydrophilic) to 140° (hydrophobic) for
titanium implant surfaces.” Guéhennec 845; see also Buser 529, 531–
32 (confirming these statements of Guéhennec).
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FF3. Guéhennec teaches that etching a titanium dental implant
surface using acid (by immersing the implant) roughens the surface
and “has been shown to greatly enhance osseointegration . . . through
the attachment of fibrin and osteogenic cells, resulting in bone
formation directly on the surface of the implant.” Guéhennec 848; see
also Buser 529 (confirming such a process and its results; also
disclosing sandblasting and acid etching together).
FF4. Guéhennec teaches, regarding this acid etching of titanium
implant surfaces, that:
The wettability of the surface has also been proposed to promote
fibrin adhesion. This fibrin adhesion provides contact guidance
for the osteoblasts migrating along the surface. An experimental
study has demonstrated that a hydrophilic surface greatly
improved the bone/implant contact . . . .
Guéhennec 848; see also Buser 529 (confirming such results).
FF5. Guéhennec states:
Nevertheless, chemical treatments might reduce the
mechanical properties of titanium. For instance, acid-etching can
lead to hydrogen embrittlement of the titanium, creating micro
cracks on its surface that could reduce the fatigue resistance of
the implants. Indeed, experimental studies have reported the
absorption of hydrogen by titanium in a biological environment.
This hydrogen embrittlement of titanium is also associated with
the formation of a brittle hybrid phase, leading to a reduction in
the ductility of the titanium. This phenomenon is related to the
occurrence of fracture mechanisms in dental implants.
Guéhennec 848. Thus, Guéhennec teaches that the advantages offered
by acid etching of titanium implants also come with disadvantages,
which suggests finding an alternative to this etching technique.
FF6. Minford offers a solution to the identified drawbacks of
Guéhennec’s acid etching while providing its titanium-modifying
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advantages. Minford teaches “a technique for [controllably] etching
titanium using EDTA compounds,” using a solution of EDTA, water,
and hydrogen peroxide, with pH control, and identifies “these findings
as technologically significant because they allow this process to be
used effectively for selective removal of metal in a wide variety of
commercially important processes.” Minford, Abstract, 1:35–2:6.
FF7. Minford teaches that the aforementioned pH control
maintains pH at “approximately 10.” Id. at 2:51.
FF8. Minford teaches an embodiment where its etching
formulation includes 0.5–27% EDTA (the solubility limit), 1–50%
hydrogen peroxide, and ammonium hydroxide as a pH control agent,
and has a pH of 9 or above. Id. at 3:1–15. Minford teaches that such
solutions give “desirable results[,] [but] it is obvious that the specific
ingredients and concentration of ingredients can be varied over
substantial ranges to give comparable or acceptable results.” Id. at
2:51–55.
FF9. Blomlöf is directed to “an acceptable smear-removing and
collagen-exposing effect following EDTA etching with concentrations
lower than super saturation (24%). A flat dentin surface was created
on human teeth extracted due to severe periodontitis. The teeth were
etched with . . . EDTA for 2 min.” Blomlöf, Abstract. Thus, Blomlöf
teaches that a 24% EDTA solution can remove tooth smear and
expose tooth collagen on an extracted tooth. Blomlöf does not
identify other components of its EDTA formulation or using its
formulation in a patient’s mouth.
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FF10. Lindskog is directed to “[a] composition for use in
biological, mineralized surface conditioning, especially tooth root
conditioning, by selective removal of parts of an exposed tooth root
surface so as to improve subsequent attachment of the tooth in
conjunction with periodontal surgery.” Lindskog, Abstract, 1:3–8,
6:5–25.
FF11. Further to the preceding finding of fact, Lindskog discloses
compositions including, inter alia, EDTA at a concentration of 22–
27% in an aqueous matrix or carrier, a pH-controlling agent (e.g.,
sodium hydroxide) to set the pH at about 6–8, and a viscosity-
increasing agent to ease application of the aqueous-natured
composition. Id. at 7:2–10:20. Lindskog does not mention the
inclusion of hydrogen peroxide. See generally id.
III. ANALYSIS
OBVIOUSNESS OVER GUÉHENNEC, BUSER, AND MINFORD ––NEW GROUND
As discussed below, we affirm the Examiner’s obviousness rejection
as to claims 1, 3, 4, 6, 10, 11, and 21–23, and we reverse it as to claims 7–9
and 12–14. We agree with the Examiner’s pertinent determinations on the
teachings and the combining of Minford, Guéhennec, and Buser, but
disagree as to the addition of Lindskog and Blomlöf.
Although we now focus on Guéhennec as the starting point for the
person of ordinary skill in the art, rather than Minford, “where a rejection is
predicated on two [or more] references each containing pertinent
disclosure . . . we deem it to be of no significance, but merely a matter of
exposition, that the rejection is stated to be on A in view of B instead of on
B in view of A, or to term one reference primary and the other secondary.”
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In re Bush, 296 F.2d 491, 496 (CCPA 1961). Our rationale for finding the
above-identified claims obvious over the combined references differs
somewhat from the Examiner’s and we disagree with enough of the
Examiner’s determinations that we designate this affirmance to be a new
ground of rejection.
As discussed further below, we conclude the person of ordinary skill
in the art, beginning with Guéhennec, as its teachings are confirmed by
Buser, would have understood there was a need for Minford’s etching
compositions to prepare titanium implants for use in a patient’s mouth. See
FF1–FF8. Thus, we conclude claims 1, 3, 4, 6, 10, 11, and 21–23 would
have been obvious over Guéhennec, Buser, and Minford. We do not require
Lindskog or Blomlöf in finding these claims obvious; however, in affirming
an obviousness rejection, the Board may rely upon fewer than all the
references cited by the Examiner. See In re May, 574 F.2d 1082, 1090
(CCPA 1978); In re Kronig, 539 F.2d 1300, 1304 (CCPA 1976). As
discussed further below, we disagree with the Examiner’s rationale for
combining Lindskog and Blomlöf with the other cited prior art references.
Therefore, as discussed further below, we reverse the Examiner’s rejection
as to claims 7–9 and 12–14, which require the claimed composition include
a viscosity increasing agent or be a medicament, and do not include these
claims under our new ground of rejection.
The Examiner determined that claims 1, 3, 4, 6–14, and 21–23 would
have been obvious over the combination of Minford, Lindskog, Blomlöf,
Guéhennec, and Buser. Final Action 5. More specifically, the Examiner
determined that Minford taught the same conditioning solution of the claims,
but
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fail[s] to specifically exemplify a composition with the claimed
concentrations of the EDTA and hydrogen peroxide and a pH of
9. Minford et al. also fails to specifically teach adding the
viscosifying agent carboxymethyl cellulose to the composition
or that the composition is transparent and increases the
hydrophilicity of a metal-containing surface of a dental implant.
The teachings of Lindskog et al., Blomlöf et al. and Guéhennec
et al. help to cure these deficits.
Final Action 5–6. The Examiner subsequently (and correctly) withdrew the
portion of this statement regarding Minford’s failing to teach the EDTA and
H2O2 concentrations and pH limitations of the claims. Id. at 7. The
Examiner cited Lindskog as teaching an EDTA formulation with 22–27%
EDTA, and Blomlöf as teaching 24% EDTA in another etching composition,
each for conditioning teeth, e.g., by removing smear. Id. at 6. The
Examiner specifically cited Lindskog as teaching a viscosity increasing
agent to “increase the ease of applying the composition to a substrate,” and
for applying the formulation in the oral cavity. Id. at 6, 8. The Examiner
cited Guéhennec and Buser as teaching chemical etching (and sand-blasting)
titanium implants to roughen the surface to increase the hydrophilicity and
improve the bone/implant contact. Id. at 6–9.
We agree with the Examiner’s determinations as to the combined
teachings of Guahennec, Buser, and Minford.
Guéhennec teaches that rough-surfaced titanium dental implants are
desirable for anchoring and biomedical stability, and that acid and chemical
etching of titanium implant (that can be prepped by sandblasting) achieve
such roughening. FF1–FF4. Guéhennec teaches that this roughening
promotes good bone growth and connection to the implant (osseointegration)
by increasing the wettability of the titanium surface by reducing the contact
angle (potentially to 0°), thereby making the titanium surface more
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hydrophilic. FF1–FF4. Buser supports Guéhennec’s teachings that
roughened titanium dental implants (by acid etching/sandblasting) provide
advantages for osseointegration by causing such chemical changes at the
titanium surface. FF1–FF4. Guéhennec, however, expresses concerns over
changing the mechanical properties (e.g., embrittlement, micro-cracking,
reduction in ductility) of titanium implants using such chemical treatments,
which would have motivated a person of ordinary skill in the art to seek an
alternative means of etching to achieve the advantages of roughening
discussed by Guéhennec. FF5.
A person of ordinary skill in the art would have looked to Minford for
such an alternative etchant, because Minford teaches a non-acid-based
etchant for controllably etching titanium. FF6. Minford teaches
controllably etching titanium with a composition of water with 0.5–27%
EDTA, 1–50% H2O2, a pH control agent, having a preferred pH of 9 or
above, such as pH 10. FF7, FF8. Minford teaches that such a formulation
“allow[s] this process to be used effectively for selective removal of metal in
a wide variety of commercially important processes.” FF6. Thus, although
Minford is most focused on titanium etching relating to titanium of
waveguides, Minford expressly identifies that the advantages of its
controllable etching extend beyond this specific use. Id.
Minford is reasonably pertinent to a particular problem identified by
Guéhennec, i.e., a need for a titanium etchant other than acid, and a
particular problem identified by the Appellant, i.e., “a need for a
composition allowing the cleaning of an implant [titanium] surface in order
to enhance and/or enable osseointegration of the implant,” and a need for
“conditioning of a surface using [a] composition . . . includ[ing] an etching
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of said surface.” Spec. 6:9–12, 8:4–5; see also id. at 5:11–20 (titanium
implants are typical). A prior art reference is analogous and thus can be
used in an obviousness combination if it “is from the same field of endeavor,
regardless of the problem addressed” or “is reasonably pertinent to the
particular problem with which the inventor is involved,” even if it is not
within the inventor’s field of endeavor. Unwired Planet, LLC v. Google
Inc., 841 F.3d 995, 1000–01 (Fed. Cir. 2016) (quoting In re Clay, 966 F.2d
656, 658–59 (Fed. Cir. 1992)). Thus, Guéhennec and Minford are analogous
prior art to the claimed “conditioning composition.”
Guéhennec and Minford, as evidenced by Buser, teach or suggest each
limitation of claims 1, 3, 4, 6, and 21–23, e.g., water (aqueous solvent),
EDTA at a concentration of 21–27%, H2O2 at a concentration of 2–4%, a pH
buffer, and a pH of about 9–10. Compare Appeal Br. 28–31, with FF1–FF8.
The wherein clause of, e.g., claim 1 is directed to an intended result of
using the claimed composition. “A ‘whereby’ clause that merely states the
result of the limitations in the claim adds nothing to the patentability or
substance of the claim.” Texas Instruments, Inc. v. United States Int’l Trade
Comm., 988 F.2d 1165, 1172 (Fed. Cir. 1993). This is the case here, where
the claimed wherein clause expresses only an intended result of using the
claimed composition.
Even if the wherein clause were given weight, the recited results are
inherent to the composition and its application to titanium. “[I]nherency
may supply a missing claim limitation in an obviousness analysis.” PAR
Pharm., Inc. v. TWI Pharms. Inc., 773 F.3d 1186, 1194–95 (Fed. Cir. 2014);
see also Endo Pharms. Sols., Inc. v. Custopharm Inc., 894 F.3d 1374, 1381
(Fed. Cir. 2018) (“An inherent characteristic of a formulation can be part of
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the prior art in an obviousness analysis even if the inherent characteristic
was unrecognized or unappreciated by a skilled artisan.”); see also In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (choosing to define an
element functionally, i.e., by what it does, carries with it the risk that the
critical functional limitation is an inherent characteristic of the prior art,
requiring the applicant to prove that the subject matter of the prior art does
not possess the relied upon characteristic). The claimed conditioning
composition is transparent because its pH of 9–10, which is taught by
Minford, enhances the solubility of EDTA. Spec. 7:5–7, 10:17–24, 19:29–
21:21 (Examples 2, 3); see also Minford 3:2–3 (providing EDTA to the
“solubility limit”); Answer 5–6 (transparency necessarily results from
entirely soluble EDTA component). The claimed composition increases the
hydrophilicity and decreases the contact angle of the treated metal (e.g.,
titanium) of a dental implant because that is the direct result of roughening
by etching, as explained by Guéhennec (teaching a contact angle as low as
0° –– at page 846 (citing Buser (reference 3 therein))). FF2, FF4; see also
FF6–FF8 (Minford teaching controllable etching, i.e., conditioning, of
titanium); Answer 6.
Thus, even were the wherein clause a limitation, “the patentability of
apparatus or composition claims depends on the claimed structure, not on
the use or purpose of that structure.” Catalina Mktg. Int’l, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). Here, the
claimed formulation is taught by Minford and its use is taught by
Guéhennec. It is long settled that in the context of obviousness, the “mere
recitation of a newly discovered function or property, inherently possessed
by things in the prior art, does not distinguish a claim drawn to those things
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from the prior art.” In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (citation
omitted); see also In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (The
“discovery that a claimed composition possesses a property not disclosed for
the prior art subject matter, does not by itself defeat a prima facie case.”).
Appellant has merely discovered that Minford’s composition produces the
claimed results when used in Guéhennec’s method.
A person of ordinary skill in the art would have had a reasonable
expectation of successfully using Minford’s composition in a process of
roughening a titanium dental implant as taught in Guéhennec. Minford
discloses the entire claimed formulation and that it predictably controls
etching titanium surfaces. FF6–FF8. Guéhennec teaches that etching a
titanium dental implant to roughen it, e.g., by acid-etching, to improve its
surface for osseointegration, is known and predictable. FF1–FF6. Thus, the
combination of Guéhennec and Minford, as evidenced by Buser, is merely
the combination of familiar elements according to known methods to yield
predictable results. KSR, 550 U.S. at 416. Furthermore, although Minford
discloses ranges of its EDTA and H2O2 components that overlap the claimed
concentration ranges, which is sufficient to establish obviousness, Minford
further explicitly suggests varying the ingredient’s concentrations to achieve
desired results. FF8; In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)
(“A prima facie case of obviousness typically exists when the ranges of a
claimed composition overlap the ranges disclosed in the prior art.”); In re
Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum value
of a result effective variable in a known process is ordinarily within the skill
of the art.”). Thus, claims 1, 3, 4, 6, 10, 11, and 21–23 would have been
obvious.
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Although the Guéhennec-Buser-Minford combination teaches or
suggests the conditioning composition defined by claims 1, 3, 4, 6, 10, 11,
and 21–23, as well as its use, we conclude that claims 7–9 and 12–14 would
not have been obvious over this prior art combination and that there would
not have been motivation to include Lindskog’s teachings. Claims 7–9, 12,
and 13 each require “a viscosity increasing agent” as a component of the
conditioning composition, and claim 14 requires that the conditioning
“composition is a medicament.” Appeal Br. 29–30. For such subject matter
the Examiner cites Lindskog and Blomlöf because they teach using an
EDTA composition with a viscosity-increasing agent to treat human teeth.
Final Action 7–8; Answer 8–9. The Examiner asserts that “[t]he ease of
application taught by Lindskog et al. [by adding a viscosity increasing agent]
is an enhancement that would have been applicable to any etching
composition regardless of which dental surface within the oral cavity it is
applied, whether that be a tooth or a metal surface of an implant.” Answer
8–9. We are unconvinced that a person of ordinary skill in the art would
have been motivated to combine Lindskog and Blomlöf with Guéhennec,
Buser, and Minford.
Guéhennec, Buser, and Minford relate to treating titanium dental
implants (or simply titanium) outside of a patient’s mouth. FF1–FF8.
Guéhennec teaches applying its etchant by simply immersing the implant in
the etchant. FF3. This combination of prior art teaches or suggests
preparing an implant for implantation in a patient’s mouth, which is
sufficient to render the subject matter of, for example, claim 1 obvious
because claim 1 is directed to a composition, and does not require a method
step of placing the implant in a patient’s mouth. There is no suggestion in
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18
Guéhennec, Buser, or Minford, or even Blomlöf (which teaches applying
EDTA to an extracted tooth), to provide Minford’s conditioning composition
inside a patient’s mouth, e.g., as a medicament, or to apply Guéhennec’s
methods to teeth in a patient’s mouth, e.g., so as to require a viscosity
increasing agent. FF1–FF9.
Lindskog, on the other hand, is directed to formulations for treating
human teeth in the patient’s mouth, e.g., during periodontal surgery, by
applying its EDTA-comprising composition to a tooth. FF10, FF11. The
purpose of Lindskog’s disclosed “viscosity-increasing agent” is to ease
application in such an environment. Id. (Lindskog 8:1–9). A viscous
composition, e.g., a gel, would be advantageous under Lindskog’s
circumstances because the composition would be applied to a tooth in a
mouth, rather than the tooth being immersed in the composition. Because
Guéhennec, Buser, and Minford are unconcerned with applying a
conditioning composition in such an environment, it is not apparent that
enhanced viscosity would have been an advantage, or that a person of skill
in the art would have been motivated to use the conditioning composition as
a medicament. Therefore, we conclude there would have been no
motivation to combine Lindskog (or Blomlöf) with Guéhennec, Buser, and
Minford. For this reason, we do not include claims 7–9 and 12–14 in this
new ground of rejection and reverse the Examiner’s rejection as it relates to
these claims.
Appellant presents several arguments over the Examiner’s rejection.
We address these arguments below.
Appellant argues that Minford is not analogous art and cannot,
therefore, be combined with the other references. Appeal Br. 13–14. This
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argument is not persuasive. We have addressed this argument above in
discussing that Minford addresses a problem common to that addressed by
the invention and identified in the other cited prior art.
Appellant argues that it would not have been obvious from Lindskog’s
disclosure to increase the pH of a composition to the claimed about 9 to 10.
Appeal Br. 15–16. Neither the Examiner nor we rely on Lindskog for such a
disclosure because Minford expressly discloses a pH of 9 or above as
preferred. FF8. Thus, this argument is not persuasive.
Appellant argues its claimed conditioning composition “is not for
removal of metal,” and, therefore, the cited prior art is misapplied. Appeal
Br. 16–19. Appellant’s argument is not persuasive. Appellant overlooks the
fact that its Specification defines “conditioning composition” such that
“[t]he conditioning of a surface using the composition of the invention may
also include an etching of said surface.” Spec. 7:33–8:5. Thus, a
conditioning composition, as claimed, includes within its scope an etching
composition as disclosed by Guéhennec, Buser, and Minford. FF1–FF8.
Appellant argues Minford does not disclose the use of its composition
in an oral cavity, thus it is from a different technical field. Appeal Br. 19–
20. We have addressed above why Minford is analogous art and why the
rejected claims do not require using a conditioning composition in an oral
cavity. Thus, this argument is not persuasive.
Appellant argues that Lindskog and Blomlöf relate to treatment of
natural teeth, not a metal surface, and for this reason they do not teach the
claimed conditioning composition intended to condition a metal surface.
Appeal Br. 20–22. This argument is not persuasive. We do not rely on
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these references for such a teaching; Guéhennec, Buser, and Minford teach
conditioning a metal surface.
Appellant argues Guéhennec and Buser teach roughening a titanium
implant surface by removing metal, not conditioning a surface by increasing
hydrophilicity. Appeal Br. 22–23. This argument is not persuasive. As
discussed above, Guéhennec and Buser teach or suggest that titanium
roughening by etching inherently increases hydrophilicity, improves
wettability, and reduces the contact angle of titanium implant surfaces. See
FF1–FF4. The use of Minford’s composition for Guéhennec’s and Buser’s
methods would inherently have such results. FF6–FF8.
Appellant argues there would have been no motivation to combine
Minford and Lindskog. Appeal Br. 23. We agree for the reasons discussed
above; however, Lindskog is not required for the new ground of rejection.
This argument is not persuasive.
Appellant argues there would have been no reasonable expectation of
success to raise the pH of Lindskog. Appeal Br. 24–25. As addressed
above, Lindskog is not required for the new ground of rejection and there
would have been a reasonable expectation of successfully using Minford’s
composition in Guéhennec’s methods. This argument is not persuasive.
OBVIOUSNESS-TYPE DOUBLE PATENTING
Appellant states:
the Examiner makes a provisional obviousness-type double
patenting rejection based on related application 13/114,687.
This is the subject of the Board’s recent decision (Appendix E)
and presumably will be allowed. Once allowable subject matter
is found in that application, Applicant will file a terminal
disclaimer to overcome the obviousness-type double patenting
rejection.
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21
Appeal Br. 27. As predicted by Appellant, the ’397 patent has issued.
Appellant presents no argument over this rejection and, to the contrary,
indicates that a terminal disclaimer will be filed in relation thereto. We
therefore summarily affirm the rejection.
CONCLUSION
In summary:

Claims
Rejected
35 U.S.C.
Section
Basis /
Reference Aff’d Rev’d
New
Ground
1, 3, 4, 6–
14, 21–23 103
Minford,
Lindskog,
Blomlöf,
Guéhennec,
Buser
1, 3, 4, 6,
10, 11,
21–23
7–9, 12–
14
1, 3, 4, 6,
10, 11,
21–23
1, 3, 4, 6–
14
Non-
statutory
obviousness-
type double
patenting
’397 patent,
Minford
1, 3, 4, 6–
14
Overall
Outcome
1, 3, 4, 6–
14, 21–23
1, 3, 4, 6,
10, 11,
21–23

TIME PERIOD FOR RESPONSE
This Decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b), which provides, “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.” 37 C.F.R.
§ 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
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22
(1) Reopen prosecution. Submit an appropriate amend-
ment of the claims so rejected or new Evidence relating to the
claims so rejected, or both, and have the matter reconsidered by
the examiner, in which event the prosecution will be remanded
to the examiner. The new ground of rejection is binding upon
the examiner unless an amendment or new Evidence not
previously of Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection designated in
the decision. Should the examiner reject the claims, appellant
may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in MPEP § 1214.01.
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)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)