Cochlear Limited

Patent Trials and Appeals Board

Nov 10, 2020

14543327 - (D) (P.T.A.B. Nov. 10, 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.
14/543,327 11/17/2014 Goran BJORN 5441-060U 5145
111614 7590 11/10/2020
Pilloff Passino & Cosenza LLP
2000 Duke Street
Suite 300
Alexandria, VA 22314
EXAMINER
KUHLMAN, CATHERINE BURK
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
11/10/2020 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):
mail@pilloffpassino.com
mcosenza@pilloffpassino.com
rpilloff@pilloffpassino.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GORAN BJORN, MARCUS ANDERSSON,
STEFAN MAGNANDER, and STELLAN JOHANSSON

Appeal 2020-000861
Application 14/543,327
Technology Center 3700
Before EDWARD A. BROWN, LYNNE H. BROWNE, and
BRANDON J. WARNER, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–4, 6–9, 13–16, 26–28, 31, 35–39,
and 41–63. Appellant’s representative presented oral argument on October
22, 2020. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

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 Cochlear Limited.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to a bone conduction apparatus. Spec.2 ¶ 7.
Claims 1 and 13 are independent. Appellant does not contest the merits of
the rejection of either independent claim. For context, however, we
reproduce both claims below:
1. An apparatus for a bone conduction implant, comprising:
a bone fixture including a screw thread configured to
screw into a skull, wherein at least a portion of a section of the
screw thread is non-uniform.

13. An apparatus for a bone conduction implant, comprising:
a bone fixture including a threaded section, wherein an
outer profile of the threaded section is non-uniform.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Misch US 5,628,630 5/13/1997
Day ’978 US 5,829,978 11/3/1998
Day ’703 US 6,102,703 8/15/2000
Bono US 6,129,730 10/10/2000
Osterle US 6,699,250 B1 3/2/2004
Westerkull US 2006/0093175 A1 5/4/2006
Laan US 2007/0147973 A1 6/28/2007
Hansson US 2008/0091208 A1 4/17/2008
Branemark US 2008/0125868 A1 5/29/2008
Hsieh US 2010/0092920 A1 4/15/2010
Berckmans US 7,771,774 B2 8/10/2010
Holmstrom US 2010/0240010 A1 9/23/2010
Andersson US 2010/0286776 A1 11/11/2010

2 Our citation to the Specification (“Spec.”) is to the “clean copy” of the
substitute specification filed February 19, 2015.
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REJECTIONS
1. Claims 26 and 46 stand rejected under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement.
2. Claims 4, 16, 26, 27, 38, 39, 43, 46, and 583 stand rejected under
35 U.S.C. § 112(b) as indefinite.
3. Claims 1, 13–15, 26, 35, and 36 stand rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Westerkull.
4. Claims 3, 4, 6–8, 31, 38, and 39 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Westerkull and Holmstrom.
5. Claims 3, 37, 41, and 46–52 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Westerkull and Bono.
6. Claims 3 and 42 stand rejected under 35 U.S.C. § 103 as
unpatentable over Westerkull and Hsieh.
7. Claims 9, 53, 56, 58, and 62 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Westerkull and Berckmans.
8. Claims 16, 27, and 43 stand rejected under 35 U.S.C. § 103 as
unpatentable over Westerkull and Misch.
9. Claims 28 and 44 stand rejected under 35 U.S.C. § 103 as
unpatentable over Westerkull and Hansson.
10. Claim 45 stands rejected under 35 U.S.C. § 103 as unpatentable
over Westerkull, Osterle, and Hansson.
11. Claims 55 and 57 stand rejected under 35 U.S.C. § 103 as
unpatentable over Westerkull and Laan.

3 The statement of the rejection under 35 U.S.C. § 112(b) does not include
claim 58. The Examiner, however, sets forth a rejection of this claim under
this Section. Thus, claim 58 stands rejected under § 112(b).
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12. Claim 56 stands rejected under 35 U.S.C. § 103 as unpatentable
over Westerkull and Andersson.
13. Claims 59 and 60 stand rejected under 35 U.S.C. § 103 as
unpatentable over Westerkull and Branemark.
14. Claim 61 stands rejected under 35 U.S.C. § 103 as unpatentable
over Westerkull, Day ’703, and Branemark.
15. Claim 63 stands rejected under 35 U.S.C. § 103 as unpatentable
over Westerkull, Berckmans, and Day ’978.
OPINION
A. Claim Construction
Appellant devotes a substantial portion of each of the briefs to
instructing us that during patent examination, the examiner is charged with
applying the broadest reasonable interpretation in construing the claims and
explaining what does and does not constitute the broadest reasonable
interpretation. See Appeal Br. 10, 29–41, 48–53, 55–59, 61–63, 116–117;
Reply Br. 5–6, 17–18, 19–20, 25–26, 28–32, 57–58. Appellant is correct
that this is the standard to be applied by the examiner. Appellant is
mistaken, however, as to what is required of an examiner in applying the
broadest reasonable interpretation. By comparing the prior art to the
language of the claims and setting forth the basis of the rejection, an
examiner implicitly indicates his/her understanding of the broadest
reasonable interpretation. “There has never been a requirement for an
examiner to make an on-the-record claim construction of every term in every
rejected claim and to explain every possible difference between the prior art
and the claimed invention in order to make out a prima facie rejection.” In
re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011).
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Appellant also makes repeated reference to a case styled as “In re
Smith.” See, e.g., Appeal Br. 10, 27, 30; Reply Br. 3, 5, 17. Appellant does
not provide a citation for this case; however, it appears that Appellant is
referring to In re Smith International, Inc., 871 F.3d 1375 (Fed. Cir. 2017).
This case does not, however, pertain to an examiner’s burden in setting forth
the broadest reasonable interpretation of the claim terms or describe any
requirement of the examiner to make an on-the record claim construction.
Rather, this case criticizes the Board for relying on a claim construction that
was unreasonably broad within the specific facts of that case. Id. at 1382.
Appellant appears to be under the impression that this discussion in In re
Smith is binding precedent on the Examiner. See, e.g., Appeal Br. 10
(referring to the Examiner’s claim construction as “violating” In re Smith).
Appellant is reminded that each case must be decided on its own merits. In
re Gyurik, 596 F.2d 1012, 1016 (CCPA 1979).
An Appellant contesting an examiner’s claim construction should
identify the claim term(s) in question, explain why Appellant believes the
claim construction is wrong, and provide Appellant’s alternative
construction based on evidence in the record. Merely asserting that the
claim construction is wrong does not apprise us of reversible error. For the
most part, Appellant has not explained why the challenged claim
constructions are wrong. Instead, Appellant has generally asserted that the
Examiner has applied the wrong claim construction to essentially every
claim. See Appeal Br. 41–42. Appellant argues that “no case of anticipation
or obviousness can be established until the [broadest reasonable
interpretation] of [the] phrases [listed on pages 41–42] is placed on the
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record.” Id. at 41. As noted above, however, there is no requirement for the
Examiner to create such an express record. In re Jung at 1363.
Thus, Appellant’s repeated general arguments that the Examiner of
the ’327 Application has failed to set forth a claim construction do not
apprise us of error.
B. Indefiniteness of Claims 4, 16, 26, 27, 38, 39, 43, and 46
1. General Allegations
With respect to all of the rejections under 35 U.S.C. § 112(b),
Appellant asserts that “the basic requirements for establishing a claim as
indefinite has not been followed.” Appeal Br. 19; see also Reply Br. 10.
Appellant quotes MPEP § 2173.02 as if it proscribes a procedure an
examiner must follow in order to support a rejection under § 112(b). See
Appeal Br. 20; Reply Br. 11. Patent examination is not so regimented.
MPEP § 2173.02 instructs an examiner as to information that must be
considered in making a definiteness determination, but it does not require
that an examiner document such consideration on-the-record in the manner
Appellant suggests is required. Thus, Appellant’s allegations do not apprise
us of error.
2. Claim 26
Appellant does not contest the merits of the Examiner’s rejection of
claim 26 under 35 U.S.C. § 112(b). Appeal Br. 18–28. Accordingly, we
summarily sustain the Examiner’s decision rejecting claim 26 as indefinite.
3. Claims 4, 38, and 39
The Examiner determines that claims 4, 38, and 39 are indefinite
because “[i]t is unclear what is meant by running in wave form to
something, or running in spline form to something and whether this is
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different from just having a wave form or spline form (i.e. whether this
would mean running across the thread, along the thread, etc . . .).” Final
Act. 4. We understand Appellant to argue that because the Specification
states that the grooves run parallel to the thread direction or can run in a
different direction, this limitation is definite. See Appeal Br. 23. The
Examiner responds that “it is the grammatical structure of claim 4 that
renders it indefinite, not knowledge to one of ordinary skill in the art of what
the terms ‘waveform’ or ‘spline form’ mean.” Ans. 4. The Examiner
explains that “[i]t is unclear what a ‘wave form to’ or ‘spline form to’
something means.” Id. (emphasis added). In reply, Appellant contends that
it “presented substantive arguments, which are 100% ignored” detailing how
“our specification can be used to interpret our claims.” Reply Br. 14.
Appellant’s arguments, as best we understand them, are not
responsive to the rejection as articulated by the Examiner. The Examiner
has not indicated that the meaning of the claim terms “wave form” or “spline
form” is indefinite. Rather, the Examiner has determined that it is unclear
how a groove runs “in a wave form, or in splice form, to the thread
direction” as required by claim 4. Appeal Br. 144. We agree with the
Examiner for two reasons. First, when a feature is described as running “to”
something, a contextual framework is required in order to understand what
that feature is running “to” from. For example is the feature running “to” a
thread from the root? Second, it is not understood how a feature can run
“to” a direction. Does Appellant mean that the feature runs “along” or “in”
the direction? Or, does Appellant mean that the feature crosses the
direction? Given these questions about the meaning of these claim
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limitations, one of ordinary skill in the art would not understand the claim
with sufficient precision.
For these reasons, we sustain the Examiner decision rejecting claims
4, 38, and 39 as indefinite.
4. Claims 16, 27, and 43
The Examiner determines that claims 16, 27, and 43 are indefinite
because “it is unclear to what degree something must be different in order to
be substantially different.” Final Act. 4. Appellant disagrees, relying on
procedural arguments similar to those above with respect to examination
requirements for claim construction and indefiniteness determinations.
Appeal Br. 24–26. We find Appellant’s procedural arguments no more
persuasive in this instance as in those instances discussed above.
As used in claims 16, 27, and 43, the term “substantially” is a term of
degree. Terms of degree are not necessarily indefinite. “Claim language
employing terms of degree has long been found definite where it provided
enough certainty to one of skill in the art when read in the context of the
invention.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed.
Cir. 2014) (citing Eibel Process Co. v. Minnesota & Ontario Paper Co., 261
U.S. 45, 65–66 (1923) (finding “substantial pitch” sufficiently definite
because one skilled in the art “had no difficulty . . . in determining what was
the substantial pitch needed” to practice the invention)). If the specification
does not provide some standard for measuring that degree, a determination
must be made as to whether one of ordinary skill in the art could
nevertheless ascertain the scope of the claim (e.g., a standard that is
recognized in the art for measuring the meaning of the term of degree). For
example, in Ex parte Oetiker, 23 USPQ2d 1641 (Bd. Pat. App. & Inter.
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1992), the phrases “relatively shallow,” “of the order of,” “the order of about
5mm,” and “substantial portion” were held to be indefinite because the
specification lacked some standard for measuring the degrees intended.
In this case, the Examiner finds that “the specification provides no
guidance as to what may fall under the umbrella of the term ‘substantially
different.’” Ans. 4. Without such guidance, a person of ordinary skill in the
art would be unable to determine how the term “substantially different”
differs from the term “different” or how to ascertain the scope of the claim.
For this reason, we sustain the Examiner’s decision rejecting claims
16, 27, and 43 as indefinite.
5. Claim 46
The Examiner determines that “the phrase ‘uniform curved truncated
crest’ is indefinite” because “[i]t is unclear how a crest can be uniform and
curved, while also being truncated, which implies the crest has been cut off
to create a sharp or sudden edge.” Final Act. 5. Appellant argues that a cut
crest can also be curved and uniform. Appeal Br. 26. In support, Appellant
directs our attention to this figure:
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Appellant refers to this figure as Figure 3D. Id. at 27. However, this Figure
is only the left half of Figure 3D which is reproduced in full below:

Full Figure 3D shows a cross-sectional view of portion 332 of bone fixture
310. Spec. ¶¶ 12, 15. Portion 332 encompasses two sections of bone fixture
310’s threads. Id. ¶ 56. In cross section these threads have proximal facing
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flanks (right side of each thread) and distal facing flanks (left side of each
thread). Id. The proximal facing flanks have grooves 334 therein. The
proximal and distal flanks converge, but do not meet. The area where the
flanks converge is referred to as the crest. See id. ¶ 58.
Figure 3D also depicts dimensions D1, D2, H1, and W2. D1 is the
depth of groove 334. Spec. ¶ 58. It is depicted as the distance between a
line corresponding to a proximal flank and a parallel line intersecting the
deepest point of groove 334 on that flank. D2 is the depth of groove 338.
Id. ¶ 67. It is depicted as the distance between a line intersecting the top of a
thread and a parallel line intersecting the point at which the groove slopes
away from the proximal flank. H1 is the non-truncated height of the thread.
Id. ¶ 58. It is depicted as the distance between a line intersecting the point at
which the proximal and distal flanks would meet if not for grooves 338 and
the parallel line intersecting the top of a thread. W2 is the width of groove
338. Id. ¶ 67.
The crest illustrated in Figure 3D is “uniform” in that it has a smooth
surface. It is “curved” in that it has a rounded top. And, it is “truncated”4 in
that it has grooves 338 which prevent the proximal and distal flanges from
meeting. Thus, we agree with Appellant that the claim limitation is not
indefinite.
For this reason, we do not sustain the Examiner’s decision rejecting
claim 46 as indefinite.

4 As used in the Specification the term “truncated” does not appear to denote
a “sharp or sudden edge.” Final Act. 5.
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6. Claim 58
The Examiner determines that “the limitation ‘only one structural
surface feature’” recited in claim 58 “is indefinite because it is unclear
whether this means only one single feature, i.e. one bump or one groove, or
whether this means one type of structural surface feature, i.e. a roughened
surface only or a series of grooves only.” Final Act 5. Appellant argues that
“[o]ne structural feature means the species of a feature.” Appeal Br. 26. We
cannot determine with certainty what Appellant means. Appellant asserts
that “[t]his would have been recognized by the Examiner if she had
considered our specification.” Id. (quoting Spec. ¶ 875). The Examiner
responds that “the fact that the claim can reasonably be interpreted in two
different ways . . . renders the claim indefinite.” Ans. 4–5. In reply,
Appellant argues that the Examiner’s response is conclusive and again
directs our attention to paragraph 87 of the Specification. Reply Br. 16.
Paragraph 87 of the Specification states:
In an exemplary embodiment, the grooves (342, 334,
336, 338, 539) are configured to promote growth of the
recipient’s skull bone after implantation of the bone fixture into
the skull. In this regard, the grooves constitute at least one
structural surface feature configured to promote the growth of
bone. With respect to the grooves on the side of the flange
(e.g., the embodiment of FIG. 4A), over time, bone will grow
along the longitudinal direction of the bone fixture, and thus
envelop a portion of the flange, and thereby interact with the
grooves 336 / 436A.

5 We note that in both the Appeal Brief and Reply Brief, Appellant actually
quotes from paragraph 87 of the Specification, not paragraph 89, despite the
citations to paragraph 89.
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Spec. ¶ 87. Paragraph 87 clearly identifies “the grooves” as one structural
surface feature. Id. Thus, we understand the claim term “only one structural
feature” to encompass a feature (such as an area of the surface of the
structure) having sub-features (such as a series of grooves). Such a
definition would read on all of the alternatives suggested by the Examiner.
For this reason, we do not sustain the Examiner’s decision rejecting
claim 58 as indefinite.
C. Failure of Claims 26 and 46 to Comply With the Written
Description Requirement
1. Claim 26
As discussed above, claim 26 is indefinite. Thus, the Examiner’s
rejection of claim 26 as failing to comply with the written description
requirement is necessarily based on speculative assumptions as to the
meaning of the claim. Compare In re Steele, 305 F.2d 859, 862–63 (CCPA
1962). Thus, we cannot sustain the rejection of claim 26 under the written
description requirement of 35 U.S.C. § 112, first paragraph, because doing
so would require speculation as to its scope. See In re Moore, 439 F.2d
1232, 1235 (CCPA 1971) (One is not in a position to determine whether
there is adequate written description support for a claim under 35 U.S.C.
§ 112, first paragraph, until the metes and bounds of that claim are
determined under 35 U.S.C. § 112, second paragraph.). It should be
understood, however, that our decision is based solely on the indefiniteness
of claim 26 and does not reflect on the adequacy of the rejection of these
claims as lacking adequate written description support.
Thus, we do not sustain the Examiner’s decision rejecting claim 26 as
failing to comply with the written description requirement.
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2. Claim 46
The Examiner determines that the limitation “a crest of the thread is
different from a uniform curved truncated crest” is not supported by the
Specification because “a claim directed to the crest merely being ‘different’
from a uniform curved truncated crest goes beyond the scope of the
description.” Final Act. 3. Appellant argues that “[t]he USPTO concedes
that we disclose a plurality of species of crest. Thus, we disclose different
crests.” Appeal Br. 14. The Examiner responds that “the scope of [this]
limitation would encompass many non-disclosed embodiments.” Ans. 3. In
reply, Appellant simply asserts that “[t]his point is conceded per MPEP
707.” Reply Br. 7.6
“[T]he test for [written description] sufficiency is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc). One of ordinary skill in the art would understand
that Appellant has demonstrated possession of a thread having a “uniform
curved truncated crest”7 and also threads having different crests
configurations, thus satisfying the written description requirement.
Compare e.g., Spec. ¶ 58, with id. ¶ 71.

6 Appellant notes that the rejection of claim 47 under 35 U.S.C. § 112(a) was
withdrawn by the Examiner, then states “[t]hat leaves 26 and 47.” Reply
Br. 7. It appears that the reference to claim 47 in this sentence and the
discussion that follows is a typographical error. For purposes of this
decision we assume that Appellant meant to reference claim 46.
7 For further analysis of how the Specification demonstrates possession of
this crest, see our discussion above regarding the rejection of this limitation
under 35 U.S.C. § 112(b).
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For this reason, we do not sustain the Examiner’s decision rejecting
claim 46 for failure to comply with the written description requirement.
D. Anticipation of claims 1, 13–15, 26, 35, and 36 by Westerkull
1. Claims 1, 13, 35, and 36
As noted above, Appellant does not contest the merits of the rejection
of claims 1, 13, 35, and 36. Appeal Br. 60–141. Accordingly, we
summarily sustain the Examiner’s decision rejecting claims 1, 13, 35, and 36
under 35 U.S.C. § 102(a).
2. Claim 26
As discussed above, claim 26 is indefinite. Accordingly, we cannot
sustain the rejection of this claim under 35 U.S.C. § 102(a) because to do so
would require speculation as to the scope of the claim. See In re Aoyama,
656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred in
affirming an anticipation rejection of indefinite claims); In re Steele at 862–
63 (Holding that the Board erred in affirming a rejection of indefinite claims
under 35 U.S.C. § 103(a)).
3. Claims 14 and 15
Claim 14 requires “a first sub-section of the threaded section is
tapered in an opposite direction from a second sub-section of the threaded
section.” Appeal Br. 145. Claim 15 depends from claim 14 and further
requires “a third sub-section of the threaded section is tapered in an opposite
direction from the first sub-section of the threaded section, and wherein the
third sub-section has an angle of taper relative to a longitudinal axis of the
bone fixture that is greater than that of the second subsection.” Id.
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The Examiner finds that Westerkull discloses the limitations of claims
14 and 15. Final Act. 6–7. The Examiner provides an annotated copy of
Westerkull’s Figure 2, reproduced below:

Figure 2 is a cross-sectional side view of fixture 104. Westerkull ¶¶ 31, 35.
As shown, fixture 104 has the appearance of a flange screw oriented as if
standing on end with flange 114 near the top of the fixture and threaded bore
116 extending from the top of fixture 104 a distance approximately half the
length of the screw towards the bottom end of the screw. Fixture 104 also
includes external threaded portion 110 having threads 112, 118, 122 of
differing diameter, depth, and pitch. Id. ¶¶ 36–38. The Examiner annotates
Figure 2 by adding lines 1, 2, 3, which represent the angle of taper in
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different sections of fixture 104. In particular, as drawn by the Examiner,
line 2 intersects the top two threads on the left side of fixture 104.
Appellant argues that “[t]he Examiner’s second sub-section does not
taper as she proffers.” Appeal Br. 44; Reply Br. 21. Appellant then
provides a different annotated version of Figure 2 reproduced below:

Appellant’s annotated version of Figure 2 is nearly identical to the annotated
version described above with the notable exception that line 2 has been
relocated to intersect the second and third threads from the top instead of the
top two threads. According to Appellant, this is the “real 2.” Appeal Br. 45;
Reply Br. 22.
The term “second sub-section” is not further defined in either claim
14 or claim 13—from which claim 14 depends. Thus, this claim term is
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broad and can be fairly read on any sub-section of the threaded section.8
The Examiner has selected one such sub-section and Appellant has selected
another. Either sub-section could correspond to the claimed “second sub-
section,” as broadly recited, such that Appellant’s selection is no more
correct or “real” than the Examiner’s.
For these reasons, we sustain the Examiner’s decision rejecting claims
14 and 15 as anticipated by Westerkull.
E. Rejection of Claims 3, 4, 6–8, 31, 38, and 39 as Unpatentable over
Westerkull and Holmstrom
1. Claims 4, 31, 38, and 39
As we have determined that claims 4, 38, and 39 are indefinite, we
cannot sustain the rejections of these claims under 35 U.S.C. § 103 because
to do so would require speculation as to the scope of the claims. See In re
Aoyama, 656 F.3d at 1300; In re Steele, 305 F.2d at 862–63.
For this reason, we do not sustain the Examiner’s decision rejecting
claims 4, 38, and 39 as unpatentable over Westerkull and Holmstrom.
Appellant does not contest the merits of the rejection of claims 3 and
31 as unpatentable over Westerkull and Holmstrom. Appeal Br. 60–141.

8 To the extent that Appellant is relying on the Specification in his selection
of what constitutes the “real 2,” reading a claim in light of the specification,
to thereby interpret limitations explicitly recited in the claim, is a quite
different thing from reading limitations of the specification into a claim, to
thereby narrow the scope of the claim by implicitly adding disclosed
limitations which have no express basis in the claim. In re Prater, 415 F.2d
1393, 1404–05, (CCPA 1969). Although the claims are interpreted in light
of the specification, limitations from the specification are not read into the
claims. In re Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993).
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Accordingly, we summarily sustain the Examiner’s decision rejecting claims
3 and 31 as unpatentable over Westerkull and Holmstrom.
2. Claim 6
Claim 6 requires a “groove [that] is located at a crest of the thread.”
Appeal Br. 144. The Examiner finds that “Holmstrom discloses a fixture for
insertion into bone comprising a thread 24 with a section including a groove
30.” Id. According to the Examiner, “[t]he groove runs along the coronal
flank 34 to an apical flank 36 and continues to the next coronal flank 34 so
as to form a channel that extends along a path extending alternatingly and
repeatedly along thread bottoms and thread tops” such that “[t]he groove 30
therefore is located at a crest and at a root of the thread.” Id. at 7–8 (citing
Holmstrom ¶ 69, Fig. 1). Based on this finding, the Examiner reasons that it
would have been obvious to one of ordinary skill in the art “to include a
groove on the thread section of Westerkull, in order to provide a small gap to
stimulate in-growth of bone tissue, as taught by Holmstrom.” Id. at 8 (citing
Holmstrom ¶ 70).
Appellant argues that in Holmstrom “the groove merely crosses the
crest of the thread. This is not located at the crest of the tread.” Appeal Br.
62; Reply Br. 31. Appellant, however, does not explain how a groove that
crosses the thread is not also at least partially located at the thread. Instead,
Appellant poses a hypothetical about whether or not Interstate 95 is located
at the Susquehanna River or the Rappahannock River because it crosses both
rivers. Reply Br. 31. To the extent this hypothetical may be relevant to
understanding the claim language at issue, we note that it would be
impossible for Interstate 95 to “cross” either of these rivers if some portion
of Interstate 95 were not located “at” them. We note further, that claim 6
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does not require the groove to be located exclusively at the crest of the
thread.
Thus, Appellant does not apprise us of error and we sustain the
Examiner’s rejection of claim 6 as unpatentable over Westerkull and
Holmstrom.
3. Claim 7
Claim 7 requires a “groove [that] is located at a root of the thread.”
Appeal Br. 144. The Examiner’s rejection of claim 7 is similar to the
rejection of claim 6. Final Act. 7–8. Likewise, Appellant raises similar
arguments for claim 7. Appeal Br. 62–63; Reply Br. 32. These arguments
are no more persuasive with respect to a groove that is located at the root of
the thread, than they are with respect to a groove that crosses the crest of the
thread.
According, we sustain the Examiner’s decision rejecting claim 7 as
unpatentable over Westerkull and Holmstrom.
4. Claim 8
Claim 8 requires “a depth of the groove is between about one-fourth
and one-seventh of a non-truncated height of the thread.” Appeal Br. 144.
The Examiner finds that Holmstrom discloses grooves that have a depth of
15% of the thread height. Final Act. 8 (citing Holmstrom ¶ 72). Appellant
argues that “[t]here is absolutely nothing about non-truncated heights in
paragraph 0072.” Appeal Br. 60; Reply Br. 30. The Examiner responds that
“a ‘non-truncated thread height’ is interpreted as a full thread height.” Ans.
7.
We agree with the Examiner that the only reasonable interpretation of
“non-truncated thread height” is the entire or “full” thread height or simply
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“the thread height.” Appellant does not proffer any alternative interpretation
or explain why the Examiner’s interpretation may be wrong. Thus,
Appellant does not apprise us of error.
Further, Holmstrom discloses a depth of a groove with respect to a
non-truncated thread height of “preferably 15% - 30% of the thread height.”
Holmstrom ¶ 72. The claim recites a range of between one-fourth (i.e.,
25%) and one-seventh (i.e., 14%) of the thread height. These ranges
overlap. In the case where the claimed range “overlap[s] or lie[s] inside
ranges disclosed by the prior art” a prima facie case of obviousness exists.
See MPEP § 2144.05(I) (citing In re Wertheim, 541 F.2d 257CCPA 1976)
and In re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990)). Appellant’s arguments
do not apprise us of error in the prima facie case of obviousness.
For these reasons, we sustain the Examiner’s decision rejecting claim
8 as unpatentable over Westerkull and Holmstrom.
F. Rejection of Claims 3, 37, 41, and 46–52 based on Westerkull and
Bono
1. Claims 3, 37, 41, and 46
Appellant does not contest the merits of the rejection of claims 3, 37,
41, and 46 as unpatentable over Westerkull and Bono. Appeal Br. 60–141.
Accordingly, we summarily sustain the Examiner’s decision rejecting claims
37, 41, and 46 as unpatentable over Westerkull and Bono.
2. Claims 47, 49, and 52
The Examiner rejects 47, 49, and 52 together. Final Act. 9–10.
Appellant argues that the rejection is unfounded. Appeal Br. 64; Reply Br.
33.

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a. Claim 47
Claim 47 states,
the threaded section extends a first distance in a direction
of the longitudinal axis of the fixture, wherein the fixture, in its
entirety, extends a distance in a direction of the longitudinal axis
that is between 1.25 and 1.375 times the first distance, wherein
the maximum diameter of the thread is greater than the first
distance.
Appeal Br. 147. The Examiner’s rejection of this claim relies upon an
assumption as to the distance the fixture extends. Final Act. 9 (“the length
of the entire device could be at least 5 mm (such as 5.1 or 5.3 mm as recited
in claims 49 and 52).” Since, the distance the fixture extends is not address
not recited, it is speculative for the Examiner to assert that this distance is
1.25 to 1.35 times the distance the threaded section extends.
For this reason, we do not sustain the Examiner’s decision rejecting
claim 47 as unpatentable over Westerkull and Bono.
b. Claims 49 and 50
Claim 49 states,
the threaded section extends a distance in a direction of the
longitudinal axis of the fixture that is between 3.8 and 4.2 mm,
wherein the fixture, in its entirety, extends a distance in a
direction of the longitudinal axis between 5.1 and 5.5 mm,
wherein the maximum diameter of the thread is between 4.3 mm
and 4.7 mm.
Appeal Br. 148. The Examiner relies on the same reasoning regarding the
obviousness of the dimensions set forth in claim 49, as for claim 47
discussed above. See Final Act. 9–10. The Examiner’s reasoning is just as
speculative as it pertains to the dimensions specified by claim 49 as it is for
the dimension specified by claim 47 for the reasons discussed above.
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Accordingly, we do not sustain the Examiner’s decision rejecting
claim 49, and claim 50 which depends therefrom, as unpatentable over
Westerkull and Bono.
c. Claim 52
Claim 52 requires “the threaded section extends a distance in a
direction of the longitudinal axis of the fixture that is 4 mm, wherein the
fixture, in its entirety, extends a distance in a direction of the . . .
longitudinal axis that is 5.3mm, wherein the maximum diameter of the
thread is 4.5 mm.” Appeal Br. 148. The Examiner asserts that “the recited
distances are not disclosed or claimed as critical to Applicant’s invention.”
Although, this may be true, the Examiner has not sufficiently shown that
dimensions close to these dimensions are known or would have been
obvious. Rather, as discussed above regarding claim 47, the Examiner’s
rejection is speculative.
For this reason, we do not sustain the Examiner’s decisions rejecting
claim 52 as unpatentable over Westerkull and Bono.
3. Claim 48
Claim 48 requires a fixture including “a flange, the diameter of which
exceeds a maximum diameter of the thread by 10% to 20%, the diameter
being normal to the longitudinal axis.” Appeal Br. 148. Noting that
“Westerkull is silent as to the diameter of the flange being specifically 10–
20% larger than the maximum diameter of the thread,” the Examiner reasons
that it would have been obvious to one of ordinary skill in the art “to
construct the fixture such that the flange diameter exceeds the maximum
thread diameter by 10–20% as such would ensure the flange is sufficiently
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large to fulfill the required function of Westerkull of preventing the flange
from entering the skull.” Id.
Appellant argues that Westerkull is not silent as to the diameter of the
flange. Appeal Br. 76. Rather, Appellant argues Westerkull’s “drawings
show a diameter that exceeds the maximum diameter of the thread by more
than 20%.” Id. Although, Appellant’s argument is not responsive to the
rejection as articulated, we nevertheless agree with Appellant that the
Examiner’s rejection is flawed. Specifically, the Examiner provides no
reason why a person of ordinary skill in the art would choose a diameter that
falls within the range claimed because even if we were to assume that a
diameter that is 10% larger than the maximum diameter of the thread is
sufficient to prevent the flange from entering the skull, the Examiner gives
no reason for limiting this diameter to no more that 20% larger.
For this reason, we do not sustain the Examiner’s decision rejecting
claim 48 as unpatentable over Westerkull and Bono.
4. Claim 51
Claim 51 requires “the outer circumference of all thread of the fixture
is within a perfect circle, a mean average distance of the crests of the thread
of the threaded section of the bone fixture from the perfect circle is about
0.01 to about 1.5 mm.” Appeal Br. 148. The Examiner finds that
a perfect circle can be drawn about the threaded portion of the
fixture. The mean average distance of the crests of the thread
from the perfect circle merely depends on where the circle is
drawn. Such a circle can be placed such that the mean average
distance is between about 0.01-1.5 mm.
Final Act. 10.
Appellant argues that this “conclusion is based on a failure to
recognize that the mean average distance is governed [by] the geometry of
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the threads.” Appeal Br. 78. We agree with Appellant and also see a more
fundamental flaw in the rejection. The rejection as articulated by the
Examiner is based on the concept that “a perfect circle can be drawn.” Final
Act. 10 (emphasis added). The Examiner, however, provides no reasoning
as to why the prior art threads would be configured such that a perfect circle
can be drawn as proscribed by the claim. Thus, the rejection fails to set forth
a prima facie case of obviousness.
For this reason, we do not sustain the Examiner’s decision rejecting
claim 51.
G. Rejection of Claims 3 and 42 as Unpatentable Based on Westerkull
and Hsieh
Appellant does not contest the merits of the rejection of claims 3 and
42 as unpatentable over Westerkull and Hsieh. Appeal Br. 60–141.
Accordingly, we summarily sustain the Examiner’s decision rejecting claims
3 and 42 as unpatentable over Westerkull and Hsieh.
H. Rejection of Claims 9, 53, 54, 58, and 62 as Unpatentable over
Westerkull and Berckmans
1. Claims 9 and 53
In the Reply Brief, Appellant withdraws is traversal of the rejection of
these claims. Reply Br. 43. Accordingly, we summarily sustain the
Examiner’s decision rejecting claims 9 and 53 as unpatentable over
Westerkull and Berckmans.
2. Claim 54
Claim 54 is similar to claim 49 with an additional limitation directed
to the diameter of the flange. Appeal Br. 148–49. Rejecting claim 54 the
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Examiner relies upon reasoning similar to the speculative reasoning
discussed above regarding claim 49. Final Act. 12–14.
For this reason, we do not sustain the Examiner’s decision rejecting
claim 54 as unpatentable over Westerkull and Berckmans.
3. Claims 58
Claim 58 requires “at least one cutting pocket extending across at
least four thread crests relative to a longitudinal axis of the bone fixture,
wherein the cutting pocket includes only one structural surface feature
configured to promote growth of the recipient’s skull bone.” Appeal Br.
149. The Examiner finds, inter alia, that Berckmans “discloses the surface
of the screw, including the cutting pockets, is roughened and/or provided
with a coating to promote bone growth. . . . The coating may be applied
without first roughening the surface of the implant.” Final Act. 14 (citing
Berckmans, Fig. 6, 4:30–39, 7:16–21). Regarding the number of crests the
cutting pocket extends across, the Examiner determines that
it would have been obvious to one of ordinary skill in the art
before the effective filing date of the claimed invention to
configure the cutting pocket of Westerkull to extend across at
least four thread crests, as taught by Berckmans, as such a feature
is a design consideration that will depend on the size of the
fixture, as well as the size of the threads and the depth of insertion
and amount of osseointegration desired; such features can be
optimized based on the intended use and placement of the screw
and Applicant has not disclosed extension across four thread
crests specifically as critical (paragraph [0076] of Applicant’s
specification discloses the cutting pockets can extend across one,
two, three, four, five, six or more thread crests or any value or
range of values therebetween in integer increments).
Final Act. 14–15.
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Appellant argues that “[c]olumn 4, lines 30–39 do not provide an
option.” Appeal Br. 83. We understand Appellant to be arguing that the
description at column 4, lines 30–39 does not support the Examiner’s
finding that the coating may be applied to an unroughened surface.
Appellant’s argument is not responsive to the rejection as articulated by the
Examiner, because the Examiner relies on column 7, lines 16–21 to support
this finding, which it does. Thus, Appellant does not apprise us of error.
In addition, Appellant argues that “based on the design considerations,
the Examiner is asserting that the cutting pocket would basically extend the
entire length of the threaded section.”9 Appeal Br. 85. In contrast,
according to Appellant, in Berckmans and Westerkull the pocket does not
extend beyond a minority of the length of the thread. Id. Appellant also
contends that “the design consideration when applied to Westerkull would
not result in the pocket extending across more than three threads. Id.
Appellant also argues that the Examiner has not identified a result-effective
variable for optimization. Id. at 87–90.
The Examiner responds that “Berckmans discloses the cutting pocket
extends across four thread crests. Extending across four threads is not the
entire length of the threaded section of Westerkull.” Ans. 12. Regarding
Appellant’s optimization argument, the Examiner responds that she “has not
cited In re Aller and it would have been obvious to configure the screw with
cutting pockets and threads designed to provide the best outcome (i.e.
optimized) according to the area of insertion.” Id.

9 On page 62 of the Appeal Brief, Appellant begins discussing the rejection
of claim 62. Then, on page 91 Appellant refers to claim 58. We understand
Appellant’s reference to claim 58 to be a typographical error.
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As noted by the Examiner, the Specification states, “while the
embodiment of the pocket 302 depicted in FIG. 3A extends across three
thread crests, in alternate embodiments, cutting pockets can extend across
one, two, three, four, five, six or more thread crests or any value or range of
values therebetween in integer increments.” Spec. ¶ 78. The Specification
provides no guidance as to how many crests it is critical that the pocket(s)
extends. See id. We agree with the Examiner that the fact that the
Specification provides no such guidance is a strong indication that the
number of crests crossed is a design consideration that fails to distinguish
claim 62 over the prior art. As we have determined that the Examiner’s
design consideration reasoning is sufficient to support the rejection, we need
not consider whether the Examiner’s alternative reasoning based on
optimization is also sufficient.
For these reasons, we sustain the Examiner’s decision rejecting claim
58 as unpatentable over Westerkull and Berckmans.
4. Claim 62
Claim 62 is similar to claim 58 in that it requires “at least one cutting
pocket extending across at least four thread crests relative to a longitudinal
axis of the bone fixture.” Appeal Br. 150. The Examiner’s findings for this
limitation as similar to those discussed above for claim 58 as are Appellant’s
arguments regarding the Examiner’s rationale in support of here reasoning.
Final Act. 15–16; Appeal Br. 90–97. Appellant’s arguments are no more
convincing for claim 62 than for claim 58 for the reasons discussed above.
Thus, we sustain the Examiner’s decision rejecting claim 62 as
unpatentable over Westerkull and Berckmans.
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I. Rejection of Claims 16, 27, and 43 as Unpatentable Over
Westerkull and Misch
As we have determined that claims 16, 27, and 43 are indefinite, we
cannot sustain the rejections of these claims under 35 U.S.C. § 103 because
to do so would require speculation as to the scope of the claims. See In re
Aoyama, 656 F.3d at 1300; In re Steele, 305 F.2d at 862–63.
For this reason, we do not sustain the Examiner’s decision rejecting
claims 4, 38, and 39 as unpatentable over Westerkull and Holmstrom.
J. Rejection of Claims 28 and 44 as Unpatentable Over Westerkull
and Hansson
1. Claim 28
Claim 28 requires “the outer circumference of a threaded section of
the bone fixture is non-circular and symmetric about two orthogonal planes
each parallel to and each lying on a longitudinal axis of the fixture.” Appeal
Br. 146. The Examiner finds, inter alia, that “Hansson discloses a bone
fixture having a threaded section with reduced portions 4 provided as sectors
around the implant resulting in a non-circular cross-section or circumference
of the threaded section.” Final Act. 17–18 (citing Hansson Fig. 3a, ¶¶ 81–
82). According to the Examiner,
The sectors can be 90 degree sections which are diametrically
opposed [0043 and 0087], thus defining a threaded section with
four evenly distributed sectors. Such would result in an outer
circumference of the threaded section being non-circular and
symmetric about two orthogonal planes which are each parallel
to and lying on a longitudinal axis of the fixture.
Id. at 18.
Appellant argues that Hansson’s outer circumference is not symmetric
as required by claim 28 and provides several altered versions of Hansson’s
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Figure 3a to illustrate this point. See Appeal Br. 102–105; see also Reply
Br. 52. The Examiner responds “that [F]ig. 3a was not cited to show
symmetry, but merely to show reduced portions around the circumference
generally.” Ans. 13. The Examiner reiterates that “Hansson . . . discloses
the sectors can be 90 degree sections which are diametrically opposed [0043
and 0087], as opposed to 120 [degree] sections as illustrated in fig. 3a, thus
defining a threaded section with four evenly distributed sectors.” Id. This,
according to the Examiner, “would result in an outer circumference of the
threaded section being non-circular and symmetric about two orthogonal
planes which are each parallel to and lying on a longitudinal axis of the
fixture.” Id.
As Appellant’s arguments are directed to an embodiment (i.e. the
embodiment illustrated in Figure 3a of Hansson) which is not relied upon to
show the claimed symmetry, Appellant’s argument does not apprise us of
error. Although, Hansson does not provide a figure illustrating a cross-
section of an embodiment having the required symmetry, we agree with the
Examiner that Hansson describes such an embodiment in paragraph 87.
For these reasons, we sustain the Examiner’s decision rejecting claim
28 as unpatentable over Westerkull and Hansson.
2. Claim 44
Claim 44 requires “less than all of the outer circumference is curved.”
Appeal Br. 147. The Examiner finds that “Hansson discloses less than all of
the outer circumference is curved.” Final Act 18 (citing Fig. 3a). We
understand the rejection to rely on the same reasoning as the rejection of
claim 28 discussed above. See id. Specifically, we understand the Examiner
to determine that it would have been obvious to one of ordinary skill in the
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art “to construct the threaded portion of Westerkull with a non-circular
circumference having reduced portions symmetric about two orthogonal
planes which are each parallel to and lying on a longitudinal axis of the
fixture” in view of Hansson’s teaching that “such reduced portions allow for
tissue ingrowth to occur during the first few weeks after implantation.” Id.
(citing ¶ 80).
Appellant argues that the rejection is premised on improper hindsight
reasoning. Appeal Br. 106. Appellant, however, has not identified
knowledge relied upon in the rejection that was gleaned only from
Appellant’s disclosure. Thus, Appellant does not apprise us of error.
Accordingly, we sustain the Examiner’s decision rejecting claim 44 as
unpatentable over Westerkull and Hansson.
K. Rejection of Claim 45 as Unpatentable Over Westerkull, Osterle,
and Hansson
Claim 45 requires,
the outer circumference of the threaded section is non-circular
and is within a perfect circle, some but not all of the outer
circumference extending to the perfect circle, and all of the outer
circumference is curved, and symmetric about two orthogonal
planes each parallel to and each lying on a longitudinal axis of
the fixture.
Appeal Br. 147. For the limitations pertaining to symmetry, the Examiner
makes essentially the same findings regarding Hansson and relies on similar
reason as for claim 28 discussed above. In contesting this rejection,
Appellant relies on essentially the same arguments made for claim 28.
Appeal Br. 106–109. These arguments are no more persuasive regarding
claim 45 than they are for claim 28.
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Accordingly, we sustain the Examiner’s decision rejecting claim 45 as
unpatentable over Westerkull, Osterle, and Hansson.
L. Rejection of Claims 55 and 57 as Unpatentable Over Westerkull
and Laan
Claims 55 and 57 are similar to claim 48 discussed above in that they
require a flange having “[a] diameter . . . which exceeds a maximum
diameter of the thread by 10% to 20%.” Appeal Br. 149. For this rejection,
the Examiner again relies on Westerkull as support that it would have been
obvious “to construct the fixture such that the flange diameter exceeds the
maximum thread diameter by 10–20% as such would ensure the flange is
sufficiently large to fulfill the required function of Westerkull of preventing
the flange from entering the skull.” Final Act. 20. The Examiner’s
reasoning is flawed for the reasons discussed above regarding the rejection
of claim 48. Laan is not relied upon to cure this defect in the rejection.
For this reason, we do not sustain the Examiner’s decision rejecting
claims 55 and 57 as unpatentable over Westerkull and Laan.
M. Rejection of Claim 56 as Unpatentable Over Westerkull And
Andersson
Claim 56 is similar to claim 48 discussed above in that it requires a
flange having “[a] diameter . . . which exceeds a maximum diameter of the
thread by 10% to 20%.” Appeal Br. 149. For this rejection, the Examiner
also relies on Westerkull for the proposition that it would have been obvious
“to construct the fixture such that the flange diameter exceeds the maximum
thread diameter by 10–20% as such would ensure the flange is sufficiently
large to fulfill the required function of Westerkull of preventing the flange
from entering the skull.” Final Act. 21. The Examiner’s reasoning is flawed
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for the reasons discussed above regarding the rejection of claim 48.
Andersson is not relied upon to cure this defect in the rejection.
For this reason, we do not sustain the Examiner’s decision rejecting
claim 56 as unpatentable over Westerkull and Andersson.
N. Rejection of Claims 59 and 60 as Unpatentable Over Westerkull
and Branemark
Appellant does not contest this rejection on the merits. See, Appeal
Br. 60–141. Accordingly, we summarily sustain the Examiner’s decision
rejecting claims 59 and 60 as unpatentable over Westerkull and Branemark.
O. Rejection of Claim 61 as Unpatentable Over Westerkull, Day ’703,
and Branemark
Claim 61 requires
at least one cutting pocket extending across at least six
thread crests relative to a longitudinal axis of the bone fixture,
wherein the cutting pocket includes a structural surface feature
configured to promote growth of the recipient’s skull bone, the
structural surface feature being a roughened surface; and
a roughened portion limited to roots of the thread
configured to promote growth of the recipient’s skull bone, the
roughened surface being located at at least four root turns of the
thread.
Appeal Br. 150. The Examiner finds, inter alia, that “Day ’703 discloses a
bone fixture comprising cutting pockets extending across at least six thread
crests of the fixture” and “application of a roughened surface
(hydroxyapatite (HA) coating) to the outer surface of a bone fixture,
including a middle portion 16 and distal portion 18 including the cutting
pockets.” Final Act. 23 (citing Day ’703, Fig.1, 4:58–64, 5:13–26.) The
Examiner reasons that it would have been obvious to one of ordinary skill in
the art
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to configure the cutting pockets of Westerkull to extend
across at least six thread crests, as taught by Day ’703 as such a
feature is a design consideration that will depend on the size of
the fixture, as well as the size of the threads and the depth of
insertion and amount of osseointegration desired; such features
can be optimized based on the intended use and placement of the
screw and Applicant has not disclosed extension across at least
six thread crests as critical.
Id.
Appellant’s arguments regarding Day ’703 are essentially the same as
its arguments regarding the teachings of Berckmans discussed above.
Compare Appeal Br. 132–138, with id. at 84–90. Given the lack of
criticality regarding the number of crests the cutting pockets cross disclose
in the Specification, Appellant’s argument is no more convincing as applied
to Day ’703 as to Berckmans for the reasons discussed above.
Appellant also argues that the entire rejection is based on improper
hindsight reasoning. Appeal Br. 132. This argument is not convincing
because Appellant has not identified any information relied on in the
rejection that was gleaned only from Appellant’s Specification. In addition,
Appellant argues that “there are not 6 thread crests in Westerkull.” Id. at
135. It appears that Appellant’s argument is based on Westerkull’s Figure 4.
Westerkull’s Figure 4 is a preferred embodiment, which does not proscribe
the limits of Westerkull’s disclosure. Moreover, Westerkull appears to
disclose six crests at least on the left hand side of Figure 4. Thus,
Appellant’s argument does not apprise us of error.
For these reasons, we sustain the Examiner’s decision rejecting claim
61 as unpatentable over Westerkull, Day ’703, and Branemark.
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P. Rejection of Claim 63 as Unpatentable Over Westerkull and Day
For this rejection Appellant argues “[w]e also traverse the rejection on
the same grounds that we traversed the rejection of claim 61. On this issue,
upon a finding that the rejection of claim 61 should be reversed, the rejection
of claim 63 should be reversed.” Appeal Br. 139. Having sustained the
Examiner’s rejection of claim 61 for the reasons discussed above, we
likewise sustain the Examiner’s decision rejecting claim 63 as unpatentable
over Westerkull and Day ’978.10
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
26, 46 112(a) Written description 26, 46
4, 16, 26,
27, 38, 39,
43, 46, 58
112(b) Indefiniteness 4, 16, 26,
27, 38, 39,
43
46, 58
1, 13–15,
26, 35, 36
102(a)(1) Westerkull 1, 13–15,
35, 36
26
3, 4, 6–8,
31, 38, 39
103 Westerkull,
Holmstrom
3, 6–8, 31 4, 38, 39
3,11 37, 41,
46–52
103 Westerkull, Bono 37, 41, 46 47–52
3,12 42 103 Westerkull, Hsieh 42
9, 53, 56,
58, 62
103 Westerkull,
Berckmans
9, 53, 58,
62
56
16, 27, 43 103 Westerkull, Misch 16, 27, 43

10 We note that Day ’978 is directed to subject matter similar to the subject
matter disclosed by Day ’703.
11 The rejection of claim 3 based on Westerkull and Bono is not considered
as the rejection of this claim is affirmed on another ground.
12 See note 13.
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28, 44 103 Westerkull,
Hansson
28, 44
45 103 Westerkull,
Osterle, Hansson
45
55, 57 103 Westerkull, Laan 55, 57
56 103 Westerkull,
Andersson
56
59, 60 103 Westerkull,
Branemark
59, 60
61 103 Westerkull, Day
’703, Branemark
61
63 103 Westerkull, Day
’978
63
Overall
Outcome
1, 3, 4, 6–9,
13–16, 26–
28, 31, 35–
39, 41–46,
53, 58–63
47–52, 54–
57

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-IN-PART