Stale Petter. Lyngstadaas et al.

Patent Trials and Appeals Board

Sep 9, 2019

14610394 - (D) (P.T.A.B. Sep. 9, 2019)

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.
14/610,394 01/30/2015 Stale Petter Lyngstadaas 160-004C 2446
36844 7590 09/09/2019
Cermak Nakajima & McGowan LLP
127 S. Peyton Street, Suite 200
ALEXANDRIA, VA 22314
EXAMINER
YANG, ZHEREN J
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
09/09/2019 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):
ACERMAK@cnmiplaw.com
CGOODE@cnmiplaw.COM
IP@cnmiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STALE PETTER LYNGSTADAAS, HÅRVARD J. HAUGEN,
and JAN EINK ELLINGSEN
____________

Appeal 2018-008134
Application 14/610,394
Technology Center 1700
____________

Before DEBRA L. DENNETT, LILAN REN, and JANE E. INGLESE,
Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 41–622. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant is the Applicant, Corticalis AS, which, according to the Appeal
Brief, is also the real party in interest. Appeal Brief filed May 22, 2017
(“Br.”), 2.
2 Claims 19 and 21 have been withdrawn from consideration. Final Office
Action entered September 22, 2016 (“Final Act.”), 1.
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CLAIMED SUBJECT MATTER
Appellant claims a metal oxide scaffold comprising titanium oxide.
Br. 4. According to the Specification, the metal oxide scaffold is used as a
medical implant, and allows cells to grow into the three-dimensional
structure of the scaffold. Spec. 5, ll. 23–27.
Claim 41 illustrates the subject matter on appeal, and is reproduced
below with contested language italicized:
41. A metal oxide scaffold comprising titanium oxide,
said scaffold having a compression strength of about 0.1–
150 MPa,
wherein the titanium oxide constitutes 40–100 wt% of
the metal oxides present in the scaffold, and
wherein the titanium oxide is formed from titanium oxide
particles comprising less than about 10 ppm of contaminations
of secondary and/or tertiary phosphates on the surface of the
titanium oxide particles.

App. Br. 11 (Claims Appendix) (emphasis and spacing added).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered September 22, 2017 (“Ans.”):
I. Claims 41–52 and 58–62 under 35 U.S.C. § 103(a) as
unpatentable over Haugen3 in view of Sugahara4 and Kogoi5 or Davidson6;
II. Claims 53–55 under 35 U.S.C. § 103(a) as unpatentable over

3 Håvard Haugen et al., Ceramic TiO2-foams: characterization of a potential
scaffold, J. European Ceramic Soc. 24 (2004), 661–668.
4 US 3,582,275, issued June 1, 1971.
5 US 2006/0074173 A1, published April 6, 2006.
6 US 5,169,597, issued December 8, 1992.
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Haugen in view of Sugahara, Kogoi or Davidson, and Hunter7;
III. Claims 56 and 57 under 35 U.S.C. § 103(a) as unpatentable
over Haugen in view of Sugahara, Kogoi or Davidson, and Ellingsen8; and
IV. Claims 41–47, 56, and 58–62 under 35 U.S.C. § 103(a) as
unpatentable over Kim9 in view of Sugahara and Kogoi or Davidson.
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejections of
claims 41–62 under 35 U.S.C. § 103(a), for the reasons set forth in the Final
Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the appellant provides for each issue the appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (Explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections.”)).
Rejection I: claims 41–52 and 58–62 under 35 U.S.C. § 103(a) as
unpatentable over Haugen in view of Sugahara and Kogoi or Davidson
Appellant argues claims 41–52 and 58–62 together on the basis of
subject matter recited in claim 41. Br. 5–8. We accordingly select claim 41
as representative, and decide the appeal as to claims 41–52 and 58–62 based

7 US 6,974,625 B2, issued December 13, 2005.
8 US 2005/0161440 A1, published July 28, 2005.
9 US 2005/0113934 A1, published May 26, 2005.
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on claim 41 alone. 37 C.F.R. § 41.37(c)(1)(iv).
Claim 41 requires the recited metal oxide scaffold to comprise
titanium oxide formed from titanium oxide particles comprising less than
about 10 ppm of contaminations of secondary and/or tertiary phosphates on
the surface of the titanium oxide particles.
Haugen discloses a ceramic foam comprised of titanium oxide, which
is used as a scaffold on which cells are grown to produce a tissue or organ
for transplantation (a metal oxide scaffold comprising titanium oxide).
Haugen pp. 661–662. The Examiner finds that Haugen does not disclose
that the titanium oxide used to form the scaffold contains less than about 10
ppm of surface contaminations of secondary and/or tertiary phosphates, and
the Examiner relies on Sugahara and Kogoi or Davidson for suggesting use
of such a titanium oxide to form a scaffold as disclosed in Haugen. Final
Act. 4–5.
Sugahara discloses a highly pure titanium oxide that is “substantially
free of metallic impurities such as Fe, Mo, V, and Cr.” Sugahara col. 2, ll.
45–47; col. 3, ll. 57–65. Sugahara exemplifies producing such titanium
oxide by mixing titanium phosphate with sodium hydroxide at a ratio of 6
moles of sodium hydroxide per mole of titanium phosphate, and drying or
calcining the mixture to form titanium oxide and sodium phosphate.
Sugahara col. 13, l. 65–col. 14, l. 13. Sugahara discloses determining the
quantity of sodium phosphate present in the reaction product, and using this
information to calculate the percentage of phosphate displaced from the
titanium phosphate starting material, as an indication of the level of titanium
present in the reaction product as titanium oxide. Sugahara col. 14, ll. 18–
23, 35–50. Sugahara discloses that the results of this procedure showed that
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100% of the phosphate from the starting material was bound to sodium as
sodium phosphate in the reaction product—indicating that 100% of the
phosphate was displaced from the titanium phosphate starting material—
which the Examiner finds shows that the titanium oxide produced was “free
of any phosphate” (Sugahara col. 14, ll. 35–50; Ans. 18). The Examiner
finds that this disclosure in Sugahara is consistent with the disclosure in
Appellant’s Specification of using sodium hydroxide treatment “for the
removal of phosphate impurities from titanium oxide.” Final Act. 4 (citing
Spec. 11, ll. 11–13).
The Examiner finds that “Sugahara does not provide motivation for
why such a titanium oxide material substantially free of Fe, Mo, V, and Cr
should be used in the porous ceramic of Haugen,” and the Examiner relies
on Kogoi’s disclosure that using “pure titanium oxide material containing
low levels of iron and chromium for ceramic articles is well known in the art
of ceramic materials.” Final Act. 4–5 (citing Kogoi ¶¶ 19, 20, 23). The
Examiner finds that because the scaffold disclosed in Haugen is a titanium
oxide ceramic material, one of ordinary skill in the art would have been led
by Kogoi’s disclosure of using titanium oxide containing low levels of iron
and chromium to form ceramic articles to use the titanium oxide of Sugahara
to make the titanium oxide ceramic of Haugen. Final Act. 5.
In the alternative, the Examiner relies on Davidson’s disclosure that
“it is well-known in the art of medical implants that impurities such as V,
Mo, and Cr can result in adverse health effects,” and the Examiner finds that
because “the titanium oxide material of Sugahara is expressly taught to be
substantially free of Mo, V, and Cr,” one of ordinary skill in the art would
have been led “to use the titanium oxide of Sugahara for the titanium oxide
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ceramic of Haugen as the material of Sugahara is substantially free of
impurities known to be dangerous to human patients.” Final Act. 5 (citing
Davidson col. 1, l. 46; col. 2, ll. 6–9).
Appellant argues that the Examiner essentially takes the position that
Sugahara inherently teaches titanium oxide having a phosphate
contamination level as recited in claim 41, and, therefore, “the claimed
limitation (less than 10 ppm of secondary and/or tertiary phosphate surface
contamination) must be necessarily present in the Sugahara material, in a
way that would be recognized by a person of skill in the art.” Br. 5–6.
Appellant argues that Sugahara, however, “fails this test,” because the
method described in Appellant’s Specification for producing titanium oxide
that “meets the claim limitations . . . is not the method described by
Sugahara.” Id. Appellant argues that the Specification describes washing
titanium oxide starting material with 1.0 M NaOH “to remove surface
contamination with phosphtes,” while “Sugahara describes treating titanium
phosphate with 6M NaOH to produce TiO2.” Id. Appellant argues that
Sugahara does not teach or suggest washing titanium oxide “with relatively
dilute NaOH, or any other dilute base, to remove phosphates from the
surface of the material.” Id.
Appellant’s arguments are unpersuasive of reversible error in the
Examiner’s rejection, however, for reasons that follow. Appellant’s
Specification indicates that titanium oxide containing less than about 10 ppm
surface contaminations of secondary and/or tertiary phosphates may be
obtained by washing titanium oxide “such as with NaOH (e.g. 1 M) in order
to remove the phosphate contaminations.” Spec. 11, ll. 4–13. The
Specification thus indicates that use of sodium hydroxide at a concentration
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of 1 M is not critical, or strictly required, for removing phosphate surface
contaminants from titanium oxide to produce titanium oxide having a
surface contamination level as recited in claim 41, because these conditions
are described as merely exemplary.
As the Examiner explains, mixing titanium phosphate with sodium
hydroxide at a ratio of 6 moles of sodium hydroxide per mole of titanium
phosphate as disclosed in Sugahara would result in the presence of excess
sodium hydroxide in the titanium oxide and sodium phosphate reaction
product mixture. Ans. 18–19. Appellant does not dispute the Examiner’s
finding that this excess sodium hydroxide in Sugahara’s product mixture
would have a concentration of 2 M. Ans. 1810. Nor does Appellant dispute
the Examiner’s finding that the titanium oxide in Sugahara’s product
mixture would, therefore, be mixed (or washed) with sodium hydroxide
having a concentration comparable to the exemplary 1 M sodium hydroxide
concentration described in Appellant’s Specification as suitable for
removing surface phosphate contaminants from titanium oxide to a level
recited in claim 41. Ans. 18–1911.
In view of the similarity between this aspect of Sugahara’s process
and the process described in Appellant’s Specification for surface phosphate
contaminant removal, and in view of Sugahara’s disclosure that 100% of the
phosphate was displaced from the titanium phosphate starting material
described in the reference, leaving the titanium oxide produced from the
process 100% free of phosphate, the Examiner has a reasonable basis for
finding that titanium oxide produced as disclosed in Sugahara would have

10 Appellant declined to file a Reply Brief.
11 See Footnote 10.
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less than about 10 ppm secondary and/or tertiary phosphate surface
contaminants, as recited in claim 41, and the burden shifts to Appellant to
demonstrate otherwise. In re Best, 562 F.2d 1252, 1255 (CCPA 1977)
(“Where . . . the claimed and prior art products are identical or substantially
identical, or are produced by identical or substantially identical processes,
the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product.
Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on
‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or alternatively, the
burden of proof is the same, and its fairness is evidenced by the PTO’s
inability to manufacture products or to obtain and compare prior art
products.’). On the record before us Appellant does not meet this burden
because Appellant does not demonstrate that titanium oxide produced as
described in Sugihara would not have less than about 10 ppm of surface
contaminations of secondary and/or tertiary phosphates as required by claim
41. Br. 5–8.
Appellant argues that although Sugahara teaches 100% recovery of
phosphoric acid, “it is not clear from Sugahara that their measurements are
accurate enough to detect the extremely low levels of contamination
permitted in the present claims.” Br. 6
As the Examiner explains (Ans. 18), however, a prior art reference
presumptively enables the subject matter disclosed in the reference, and an
appellant has the burden of demonstrating otherwise. In re Antor Media
Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012) (A prior art printed publication,
like a prior art patent, “is presumptively enabling barring any showing to the
contrary by a patent applicant or patentee.”). On the record before us,
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Appellant does not meet this burden because Appellant does not provide
objective evidence demonstrating that the measurements and calculations
performed in Sugahara for determining the percentage of phosphate
displaced from the titanium phosphate starting material to form titanium
dioxide free of phosphate are not accurate. Br. 5–8; In re Morsa, 713 F.3d
104, 110 (Fed. Cir. 2013) (“[A]n applicant must generally do more than state
an unsupported belief that a reference is not enabling.”).
Appellant argues that the Declaration of inventor Håvard Haugen filed
February 21, 2017 presents the results of experiments demonstrating that
surface contamination of titanium oxide bears no relationship to the relative
purity of the material. Br. 7. Appellant argues that, therefore, “in the
absence of some measurement of surface contamination, it is impossible to
conclude with the requisite certainty that the Sugahara material, even if it is
otherwise extremely pure, meets the limitations of the rejected claims.” Id.
Although surface contamination of titanium oxide may bear no
relationship to the relative purity of the material as Appellant asserts, the
Haugen Declaration does not describe experiments in which the level of
phosphate surface contaminants on titanium oxide produced as described in
Sugahara was determined. The Haugen Declaration, therefore, does not
demonstrate that titanium oxide produced as disclosed in Sugahara would
not have less than about 10 ppm secondary and/or tertiary phosphate surface
contaminants, as recited in claim 41, the showing necessary to rebut the
Examiner’s finding to the contrary. Best, 562 F.2d at 1255.
Appellant argues that “the Examiner does not argue that Kogoi
teaches TiO2 material with less than 10 ppm of secondary and/or tertiary
phosphate impurities on the surface of the particles, as required by the
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present claims,” and, according to Appellant, “[a]t most, Kogoi provides
motivation to use a ceramic containing 20 ppm or less of Fe and Cr.” Br. 7.
As discussed above, however, the Examiner relies on Sugahara—
rather than Kogoi—for disclosure of titanium oxide having a level of
phosphate surface contaminants as recited in claim 41. The Examiner relies
on Kogoi’s disclosure that using “pure titanium oxide material containing
low levels of iron and chromium for ceramic articles is well known in the art
of ceramic materials.” Final Act. 4–5 (citing Kogoi ¶¶ 19, 20, 23). The
Examiner finds that this disclosure in Kogoi would have suggested using the
highly pure titanium oxide of Sugahara, which is substantially free of iron
and chromium, to make the titanium oxide ceramic scaffold disclosed in
Haugen. Final Act. 4–5. Because Appellant’s arguments do not dispute the
basis for the Examiner’s reliance on Kogoi (Br. 7), Appellant’s arguments
are unpersuasive of reversible error in the Examiner’s rejection.
Appellant argues that the “Examiner does not explain why the skilled
person who wanted to avoid V, Mo, and Cr as taught by Davidson, would
not simply use the alloy of Davidson, rather than switching to the Sugahara
alloy.” Br. 8.
Although Davidson’s disclosure, discussed above, indicating that
impurities such as V, Mo, and Cr present in alloys used to form medical
implants can result in adverse health effects, may have suggested using an
alloy as disclosed in Davidson to produce a medical implant, this disclosure
nonetheless would also have more broadly suggested avoiding the use of
alloys that contain V, Mo, and Cr impurities to form medical implants.
Davidson col. 1, ll. 37–39; 46–54; col. 2, ll. 6–9. Sugahara’s disclosure of a
titanium oxide material substantially free of Mo, V, and Cr (col. 2, ll. 45–47;
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col. 3, ll. 57–65), combined with this suggestion stemming from Davidson’s
disclosures, would have suggested use of Sugahara’s titanium oxide material
for forming a ceramic scaffold on which cells are grown to produce a tissue
or organ for transplantation, as disclosed in Haugen.
Appellant argues that “the presently claimed invention provides a
scaffold which may comprise up to 60% of a second metal oxide, including
oxides of V,” as recited in claim 53, “which are specifically excluded from
Sugahara.” Br. 8. Appellant argues that the “Examiner does not explain
why the skilled artisan would look to Sugahara for its TiO2 material, when
Sugahara teaches to exclude ingredients which are not only permitted, but
are explicitly claimed, in the present application.” Id.
As the Examiner points out (Ans. 21), however, claim 53 is not
included in the present rejection, and claim 41 does not require inclusion of
oxides of vanadium in the claimed metal oxide scaffold. Appellant’s
arguments are, therefore, based on limitations that do not appear in claim 41,
and, accordingly, are unpersuasive of reversible error in the Examiner’s
rejection of this claim. In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(“[A]ppellant’s arguments fail from the outset because . . . they are not based
on limitations appearing in the claims.”).
Considering the totality of the evidence relied upon in this appeal, a
preponderance of the evidence weighs in favor of the Examiner’s conclusion
of obviousness. We, accordingly, sustain the Examiner’s rejection of claim
41, and claims 42–52 and 58–62, which each depend from claim 41, under
35 U.S.C. § 103(a) as unpatentable over Haugen in view of Sugahara and
Kogoi or Davidson.

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Rejection II: claims 53–55 under 35 U.S.C. § 103(a) as unpatentable over
Haugen in view of Sugahara, either Kogoi or Davidson, and Hunter
To address this rejection, Appellant presents arguments directed to
claim 53 only, to which we accordingly limit our discussion. Br. 8–9; 37
C.F.R. § 41.37(c)(1)(iv).
Claim 53 recites that the metal oxide scaffold of claim 41 further
comprises a least one oxide of Zr, Hf, V, Nb, Ta and/or Al.
Hunter discloses a composite material comprising a porous,
reticulated, open cell network having at least part of its surface coated with a
film of oxidized zirconium. Hunter col. 3, ll. 13–18. Hunter discloses that
the oxidized zirconium film exhibits great strength and provides support for
mechanical loads placed on the porous substrate. Hunter col. 9, ll. 21–29.
Hunter discloses that the composite material is lightweight and strong, and
mimics the microstructure of natural bone, and, therefore, can serve as a
matrix for the incorporation of bone or reception of cells and tissue. Hunter
col. 9, ll. 34–41.
In view of these disclosures in Hunter, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art at the time of
Appellant’s invention to apply a surface coating of zirconium oxide to the
porous ceramic titanium oxide scaffold disclosed in Haugen as modified by
Sugahara, to increase the mechanical strength of the scaffold, and provide
support for mechanical loads placed on the scaffold. Final Act. 8.
Appellant argues that “the rejected claims require that the additional
metal oxides are present in a mixture with the TiO2 . . . [and] do not
encompass a composition where a second metal oxide is applied as a coating
to the ceramic substrate” as disclosed in Hunter. Br. 8–9.
Appellant’s overly narrow interpretation of claim 53 is inconsistent
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with the disclosures in Appellant’s Specification as a whole, however.
Claim 53 recites that the metal oxide scaffold of claim 41, which comprises
titanium oxide, further comprises at least one oxide of Zr, Hf, V, Nb, Ta
and/or Al. Appellant’s Specification defines “scaffold” as “an open porous
structure,” and defines “metal oxide” as “an oxide of a metal, such as an
oxide of Ti, Zr, Hf, V, Nb, Ta and/or Al.” Spec. 8, ll. 4–15.
The Specification states that “[i]n addition to titanium oxide, the metal
oxide scaffold may further comprise, in mixture, one or more of an oxide of
Zr, Hf, V, Nb, Ta and/or Al.” Spec. 15, ll. 5–6. The Specification further
indicates, however, that “[i]n yet another preferred embodiment of the
invention the metal oxide scaffold comprises a composite of Al2O3 and TiO2.
A composite may also be comprised of TiO2 and ZrO2. Such a scaffold will
have an increased strength.” Spec. 11, ll. 21–23 (emphasis added). The
Specification, therefore, indicates that a “scaffold” may comprise a
composite material, including a composite of TiO2 and ZrO2.
The Specification also exemplifies forming “scaffolds” by a “polymer
sponge, double coating” method that involves preparing a slurry containing
titanium oxide, dipping a reticulated, open-pore polymer foam into the
slurry, centrifuging the dipped polymer foam, heating the dipped,
centrifuged foam to burn out the polymer and sinter the ceramic, dipping the
sample so produced into a titanium oxide slurry as used in the first step of
the process, centrifuging the dipped sample, and heating the sample to sinter
the ceramic. Spec. 26, ll. 1–17 (Example 6: Slurry Recipe); 26, ll. 19–36
(Example 7: Scaffold Production–Polymer Sponge, 2nd Example); 28, ll. 20–
26 (Example 8: Scaffold Production–Polymer Sponge, Double Coating).
The Specification refers to the “double coated” material thus produced as a
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“scaffold.” See, e.g. Spec. 29, ll. 30 (“[t]here type[s] of scaffolds . . . as
described in example[s] 8 and 9.”); Spec. 30, ll. 25–25 (“[s]caffolds (as
described in examples 8 and 9)”).
Accordingly, a “metal oxide scaffold” as this term is used in
Appellant’s Specification, includes a composite open porous structure
comprised of a layer of titanium oxide coated with a second layer of either
titanium oxide or zirconium oxide. In re ICON Health and Fitness, Inc., 496
F.3d 1374, 1379 (Fed. Cir. 2007) (During prosecution of patent applications,
“the PTO must give claims their broadest reasonable construction consistent
with the specification. . . . Therefore, we look to the specification to see if it
provides a definition for claim terms, but otherwise apply a broad
interpretation.”).
Although a “metal oxide scaffold” may alternatively be comprised of
a single layer of titanium oxide mixed with zirconium oxide, the
Specification’s disclosures as a whole do not limit “metal oxide scaffolds” to
only such structures. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(“[L]imitations are not to be read into the claims from the specification.”);
E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003)
(claims must be interpreted “‘in view of the specification’” without
importing limitations from the specification into the claims unnecessarily
(citation omitted)). Consequently, contrary to Appellant’s arguments, claim
53 encompasses a titanium oxide scaffold as disclosed in Haugen and
modified by Sugahara coated on at least one surface with a zirconium oxide
film, as disclosed in Hunter.
Although Appellant also argues that “Hunter does not teach or suggest
a TiO2 material that meets the limitation of the rejected claims with respect
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to the level of surface contamination by secondary and/or tertiary
phosphates” (Br. 9) as discussed above, the Examiner relies on Sugahara,
rather than Hunter, for disclosure of such a titanium oxide. Final Act. 4.
We, accordingly, sustain the Examiner’s rejection of claims 53–55
under 35 U.S.C. § 103(a) as unpatentable over Haugen in view of Sugahara,
either Kogoi or Davidson, and Hunter.
Rejection III: claims 56 and 57 under 35 U.S.C. § 103(a) as unpatentable
over Haugen in view of Sugahara, Kogoi or Davidson, and Ellingsen
To address this rejection, Appellant relies on the arguments Appellant
presents for Rejection I (discussed above), and argues, in effect, that
Ellingsen fails to cure the deficiencies of Haugen in view of Sugahara and
Kogoi or Davidson, by asserting that “Ellingsen does not teach or suggest a
TiO2 material that meets the limitation of the rejected claims with respect to
the level of surface contamination by secondary and/or tertiary phosphates.”
Br. 9. Because we are unpersuaded of reversible error in the Examiner’s
rejection of claim 41 for the reasons discussed above, Appellant’s position
as to this rejection is also unpersuasive of reversible error.
Rejection IV: claims 41–47, 56, and 58–62 under 35 U.S.C. § 103(a) as
unpatentable over Kim in view of Sugahara and Kogoi or Davidson
Appellant argues that “Kim is primarily concerned with zirconium
and yttrium oxides, [and] although Kim does teach that titanium oxides may
be used in the compositions described therein . . . Kim does not specify the
level of contamination of secondary and/or tertiary phosphates on the
surface of the TiO2 particles.” Br. 9–10.
Merely pointing out what a claim recites and providing a skeletal
argument asserting that the applied prior art does not disclose or suggest
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certain claim limitations—as Appellant does to address this rejection—does
not constitute a substantive argument that requires our separate
consideration. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art. Because Lovin did not provide such arguments, the Board did not
err in refusing to separately address claims 2–15, 17–24, and 31–34.”).
We, accordingly, sustain the Examiner’s rejection of claims 41–47,
56, and 58–62 under 35 U.S.C. § 103(a) as unpatentable over Kim in view of
Sugahara, and either Kogoi or Davidson.
DECISION
We affirm the Examiner’s rejections of claims 41–62 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)(1)(iv).

AFFIRMED