Ross Towse et al.

Patent Trials and Appeals Board

Jul 14, 2021

2020003714 (P.T.A.B. Jul. 14, 2021)

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.
12/212,999 09/18/2008 Ross W. Towse 5394.D03US1 1331
104326 7590 07/14/2021
Schwegman Lundberg & Woessner / Zimmer
P.O. Box 2938
Minneapolis, MN 55402
EXAMINER
MORAN, EDWARD JOHN
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
07/14/2021 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 ROSS W. TOWSE and PRABHU GUBBI
Appeal 2020-003714
Application 12/212,999
Technology Center 3700
Before DANIEL S. SONG, MICHAEL L. HOELTER, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection of claims 1, 7, 8, 16, 17, 23, 24, and 26 in the above-
referenced patent application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as BIOMET 3I, LLC.
Appeal Br. 3.
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Application 12/212,999

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CLAIMED SUBJECT MATTER
The claims are directed to a dental implant system having a screw for
providing certain benefits by fastening together an artificial implant and an
abutment. Of particular relevance to the arguments below, the claims require
the screw have a surgical grade 316L stainless steel body and an
electroplated coating of 99.9% pure gold. Claims 1 and 16 are independent.
Claim 1, reproduced below with paragraphing added, is illustrative of the
claimed subject matter:
1. A dental implant system comprising
an artificial implant,
a screw and
an abutment, the artificial implant and the abutment being
fastened together by the screw thereby creating preload on the
screw,
wherein the screw has head portion and threads configured
to engage with corresponding threads on the artificial implant,
wherein the screw has a surgical grade 316L stainless steel
body and a coating on the surgical grade 316L stainless steel
body,
wherein the coating comprises electroplated 99.9% pure
gold and provides a lower coefficient of friction than the surgical
grade 316L stainless steel body, and
wherein a thickness of the coating is limited by a space
between the threads of the screw,
wherein relative to a screw having the surgical grade 316L
stainless steel body without the coating, the screw with the
coating allows greater preloading for an applied torque when
fastening together the artificial implant and the abutment, and
receives a greater bending force before a microgap appears
between the artificial implant and the abutment.

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Application 12/212,999

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REJECTIONS
The Examiner relies on the following references to reject the claims:
Name Reference Date
Shelemay US 2004/0191727 A1 Sept. 30, 2004
Lazzara US 5,879,161 Mar. 9, 1999
Shimura US 4,957,437 Sept. 18, 1990
Sato Palladium with a Thin Gold Layer as a
Sliding Contact Material, CHMT-4 IEEE
TRANSACTION ON COMPONENTS,
HYBRIDS, AND MANUFACTURING
TECHNOLOGY 10–14
Mar. 1981
Fathi In Vitro Corrosion Behavior of Bioceramic,
Metallic, and Bioceramic—Metallic Coated
Stainless Steel Dental Implants, 19 DENTAL
MATERIALS 188–198
2003

The Examiner rejects the claims under pre-AIA 35 U.S.C. § 103(a) for
being unpatentable as follows:
Claims Rejected References
1, 7, 16, 17, 24, 26 Shelemay, Lazzara, Shimura, Sato
8, 23 Shelemay, Lazzara, Shimura, Sato, Fathi

OPINION
As laid out below, we first summarize aspects of the Examiner’s
rejection of representative claim 1 and certain teachings of the references
most relevant to Appellant’s arguments. We then address Appellant’s
arguments that the claims are patentable over the cited references based on
1) a lack of motivation to combine Shimura with Shelemay and Lazzara, and
2) evidence of unexpected results.

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Examiner’s Rejection of claim 1 and Teachings of the Prior Art
It is uncontested that the prior art, as evidenced by both Shelemay and
Lazzara, teaches a dental implant having the basic structure (implant, screw,
abutment, and defined relationship) required by claim 1. Final Act. 2, 5–6;
Shelemay Fig. 1; Lazzara Fig. 1; see generally, Appeal Br. It is further
uncontested, as required by the claim, that Lazzara teaches creating preload
on the screw and “electroplating” a screw with a “substantially pure gold”
coating2. Lazzara 5:10, 15; Final Act. 2, 6; see generally, Appeal Br.; id. at
13 (“Appellant asserts that Lazzara teaches palladium, palladium alloy,
titanium, titanium alloy screws with gold coating.”).
The Examiner finds that “Lazzara discloses that the gold coating can
be applied to any biocompatible metal or alloy that has sufficient strength,
and that the strength of the screw is based on the material thereof.” Final
Act. 6 (citing Lazzara 4:30–38). The Examiner determines that “it would
have been obvious . . . to modify the device of Shelemay to include
Lazzara’s substantially pure gold coating . . . on the screw, as such
modification would increase preload on the screw, and increase resistance to
microgap formation.” Id.
Claim 1 also requires that “the screw has a surgical grade 316L
stainless steel.” It is uncontested that Shelemay teaches a stainless steel
screw. Final Act. 2, 6; Shelemay ¶ 46; see generally, Appeal Br. Neither
Shelemay nor Lazzara appear to discuss particular grades of stainless steel.

2 Claim 1 requires a gold coating of “99.9% pure gold” for which the
Examiner relies on the teachings of Sato. Final Act. 7. As neither the
teachings of Sato, nor the Examiner’s reason to combine Sato with the other
references is contested by Applicant it is unnecessary to further address this
aspect of the rejection. See generally, Appeal Br.
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Lazzara does teach that “if a metal or alloy is biocompatible and has
sufficient strength, it may be used to make screws for dental implant
systems.” Lazzara 4:36–38. But, Lazzara’s list of example materials
(titanium, titanium alloys, and palladium alloys) does not include grades of
stainless steel. Id. at 4:38–41, 45–57.
The Examiner finds that Shirmura teaches a dental screw “made of
medical/surgical grade 316L stainless steel.” Final Act. 6 (citing Shirmura
4:4–35); Ans. 4. The Examiner also finds that “one of ordinary skill in the
art would recognize that 316L stainless is a particular grade of steel
optimized for surgical use. As such, due to its reduced impurities and other
metals, it provides improved biological response and optimum use in the
human body.” Final Act. 11. The Examiner determines that “[o]ne of
ordinary skill would chose a surgical grade steel for use in a steel surgical
component [of Shelemay].” Id. The Examiner further determines that
compared to the generic stainless steel taught by Shelemay, the use of 316L
stainless steel as taught by Shirmura would be obvious because it “would
aide in reducing impurities and improve biological response to the metal.”
Id. at 7; see also id. at 2–3, 11; Ans. 4.

Reason to Combine Shimura with Shelemay and Lazzara
Appellant argues against the combination of Shimura (i.e., use of
316L stainless steel) with Shelemay and Lazzara because Shimura does not
have the dental implant structure required by claim 1 and as taught by both
Shelemay and Lazzara. Appeal Br. 13–14; see also Reply Br. 3–4. Further,
Appellant argues against the combination because Shimura does not contain
a discussion of preload as taught by Lazzara and required by the claim.
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Appeal Br. 13; see also Reply Br. 3. However, the Examiner does not rely
on Shimura to teach any of these aspects of claim 1, nor do these issues play
any part in the reasons to combine Shimura with Shelemay and Lazzara.3
Ans. 4–5; Final Act. 2, 5–6, 11. For these reasons Appellant’s arguments do
not address the grounds of rejection set forth by the Examiner and do not
identify error in the rejection. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant also provides argument over the Examiner’s reason to
combine, which is similarly unavailing. Appellant argues that it is improper
for the Examiner to identify a reason to combine Shimura with Shelemay
and Lazzara that is different than the reason to combine Shelemay and
Lazzara. Appeal Br. 14–15. However, the Examiner is not limited to
providing one reason to combine for all of the references. It is only required
that “there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)); see also Ans. 5. This also means that the
Examiner is not limited to providing the same reason to combine that
potentially motivated the inventors of the present application.
As discussed above, the Examiner finds that Shelemay teaches the use
of stainless steel for the screw body of a dental implant but does not discuss
any particular type or grade of stainless steel. Final Act. 2, 6; Ans. 5. The
Examiner finds that “one of ordinary skill in the art would recognize that

3 Appellant makes similar arguments about Shelemay for the first time in the
Reply Brief, which similarly are not directed to the rejection as set forth by
the Examiner. Reply Br. 3. We will not consider these new and untimely
arguments. See 37 C.F.R. §§ 41.37(c)(l)(iv), 41.41(b)(2); Ex parte Borden,
93 USPQ2d 1473, 1477 (BPAI 2010) (informative).
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316L stainless is a particular grade of steel optimized for surgical use. As
such, due to its reduced impurities and other metals, it provides improved
biological response and optimum use in the human body.” Final Act. 11.
Appellant provides no evidence or persuasive argument that would show
that these findings are incorrect. Thus, we find no error in the Examiner’s
determinations of obviousness that are based on these findings. See Final
Act. 2–3, 7, 11.
Appellant also argues that the “modification entirely ignores the
strong teachings of Lazzara” concerning the type of materials, coated with
gold, to be used for the screw “particularly screws made of palladium alloy
or of titanium or a titanium alloy.” Appeal Br. 14 (quoting Lazzara
Abstract). However, though Lazzara lists non-exclusive example materials,
the teachings of Lazzara are not limited to be applicable only with these
examples. Lazzara expressly teaches that “if a metal or alloy is
biocompatible and has sufficient strength, it may be used to make screws for
dental implant systems.” Lazzara 4:36–38. There is no evidence to suggest
that stainless steel generally or 316L stainless steel in particular lacks
biocompatibility or sufficient strength. Rather, the teachings of Shelemay
and Shimura provide evidence that they do possess the desired properties for
use as screws in dental implant systems as taught by Lazzara. See, e.g.,
Shirmura 4:4–35; Shelemay ¶ 46; Final Act. 2, 6. Further, Appellant does
not identify any teachings in Lazzara that would suggest that the benefits of
a gold coating to increase preload are limited to palladium or titanium
screws. Though Lazzara states “that palladium alloy screws have advantages
over titanium alloys,” it does not appear to discuss advantages over other
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materials that “may be used to make screws for dental implant systems.”
Lazzara 4:43–45.
We further note that there is no evidence that one of skill in the art
starting with Shelemay’s dental implant system including the stainless steel
screw would necessarily use palladium or titanium over stainless steel, even
based on the teachings of Lazzara. Appellant’s argument, which appears to
be based solely on the teachings of Lazzara, suffers from the fact that
Lazzara does not address any type of stainless steel, even though Shelemay
shows that it was a known material for dental implant screws.
For the above reasons we are not informed of error in the Examiner’s
rejections.

Unexpected Results
Appellant argues that the evidence of record shows unexpected results
sufficient to establish that the claims are nonobvious. Appeal Br. 11–13. In
particular, Appellant argues that “what the Appellant realized is that the
substrate (here 316L stainless steel) affects both the UTS [ultimate tensile
strength], as expected, and the preload, which would not have been
anticipated by one of skill in the art.” Id. at 12 (emphasis omitted). However,
the evidence of unexpected results is not based on a comparison with the
closest prior art and is therefore insufficient to show unexpected results to
render the claims nonobvious. In re Fracalossi, 681 F.2d 792, 794 (CCPA
1982); In re Fenn, 639 F.2d 762, 763 (CCPA 1981).
Neither Appellant nor Appellant’s declarant address how a gold
coated 316L stainless steel screw compares to a stainless steel screw taught
by Shelemay, or a gold coated stainless steel screw as taught by the
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combination of Shelemay and Lazzara. See generally Appeal Br. 11–13;
Reply Br. 2–3; May 28, 2019 Suttin Declaration; Spec. ¶¶ 22–26, Table 1.
Rather, Appellant’s argument is based on a comparison of 316L stainless
steel to titanium. See, e.g., Appeal Br. 12 (“using 316L stainless steel as the
substrate results in a 5% to 7% additional increase in preload relative to a
comparable titanium screw”) (emphasis omitted).4 Similarly, Appellant’s
Specification compares a 316L stainless steel screw electroplated with gold
to 1) an uncoated 316L stainless steel screw, 2) a 8010 Palladium Alloy
screw electroplated with gold, and 3) a Titanium 6AL-4 V ELI screw
sputtered with gold. Spec. ¶¶ 22–26, Table 1. Appellant’s declarant makes
similar comparisons, but focuses primarily on comparing 316L stainless
steel screws with titanium screws. May 28, 2019 Suttin Declaration ¶¶ 9–11;
see also id. Ex. 1 (Table listing the tested properties of different types of
screws). As correctly noted by the Examiner:
the base reference already provides a stainless steel screw, and
the secondary reference provides explicit teachings and
motivations for coating it with gold (see above). Regarding any
potential unexpected results in regards to the instant
combination, there is no evidence showing grade 316L stainless

4 In addition to the Suttin Declarations, Appellant cites “the substantial
number of exhibits submitted throughout prosecution of this matter” for
evidentiary support. Appeal Br. 11. However, it is Appellant’s burden to
identify Examiner error and the relevant evidence the Board should consider.
Citing to “the substantial number of exhibits submitted throughout
prosecution of this matter” does not identify what exhibits are relevant or
how they are relevant to the issues currently before us. Id. Accordingly, we
have not and do not consider these unidentified exhibits. We similarly note
that statements such as “Appellant respectfully requests that the Office
consider such declarations and exhibits for the evidence they offer in terms
of the nonobviousness of the claims” (id.) without further discussion are
insufficient to identify Examiner error.
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steel provides an unexpected benefit over another grade or
generic stainless steel, which would be applicable to the
combination herein.
Final Act. 3; see also Ans. 3.
Thus, we are not informed of error in the Examiner’s rejections.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 7, 16,
17, 24, 26
103(a) Shelemay, Lazzara,
Shimura, Sato
1, 7, 16, 17,
24, 26

8, 23 103(a) Shelemay, Lazzara,
Shimura, Sato, Fathi
8, 23
Overall
Outcome
1, 7, 8, 16,
17, 23, 24, 26

TIME PERIOD FOR RESPONSE
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