Ex Parte Serafin et al

Patent Trial and Appeal Board

Aug 14, 2017

13507397 (P.T.A.B. Aug. 14, 2017)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/507,397 06/25/2012 Louis A. Serafin JR. LASCER-877 1294
41324 7590 08/14/2017
CHRISTOPHER JOHN RUDY
209 HURON AVENUE, SUITE 8
PORT HURON, MI 48060
EXAMINER
HOBAN, MELISSA A
ART UNIT PAPER NUMBER
3738
MAIL DATE DELIVERY MODE
08/14/2017 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte LOUIS A. SERAFIN JR., GERALD J. JERRY JR.,
AND NICHOLAS H. BURLINGAME1
__________

Appeal 2016-0015182
Application 13/507,397
Technology Center 3700
__________

Before ERIC B. GRIMES, AMANDA F. WIEKER, and
JACQUELINE T. HARLOW, Administrative Patent Judges.

WIEKER, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134(a) involving claims to a
prosthetic implant or component comprising Mg-TTZ ceramic, which have
been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 According to Appellants, the Real Parties in Interest are the Louis A.
Serafin, Jr. Trust, Signal Medical Corporation, Xylon, L.L.C., and Zimmer-
Biomet. Appeal Br. 1 (filed Mar. 27, 2015); Reply Br. 1 (filed Nov. 18,
2015).
2 Appellants identify Appeal No. 2013-00002 as related. Appeal Br. 1.
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STATEMENT OF THE CASE
The claimed invention concerns a “ceramic body [that] embraces a
bodily implant, especially a load-bearing joint implant.” Spec. 1. The
Specification discloses that the claimed ceramic implant has improved
strength and “conform[s] to precise and intricate geometries.” Id. at 6.
Claims 1–20 are on appeal. Appeal Br. (Claims App. 1–4). Claims 1,
12, and 17 are independent. Id. Claim 1 is illustrative and reads as follows:
1. A prosthetic implant or implant component, which
comprises a knee replacement joint implant or joint implant
component, which is at least one of the following (A, B):
(A) a magnesium oxide stabilized transformation
toughened zirconia ceramic (an Mg-TTZ) femoral component
selected from the group consisting of a unicompartmental
femoral condylar component; a cruciate-retaining knee implant
femoral component, which includes medial and lateral condylar
articular surfaces; a posterior stabilized knee femoral
component, which includes medial and lateral condylar articular
surfaces; and a rotational knee femoral component frame, which
includes medial and lateral condylar articular surfaces; and
(B) at least one member selected from the group
consisting of a tibial component for articulation against
corresponding condylar surface(s) of the femoral component;
and a patellofemoral joint implant;
wherein feature “A” is necessarily present.
Id. at Claims App. 1 (emphasis added). Independent claims 12 and 17 also
recite “a magnesium oxide stabilized transformation toughened zirconia
ceramic (an Mg-TTZ).” Id. at Claims App. 2–3.

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REJECTIONS
The claims stand rejected as follows:
I. Claims 1–7 under 35 U.S.C. § 103(a) as unpatentable over
Ketcham (US 4,939,107, iss. July 3, 1990) and Khandkar (US
2003/0153984 A1, pub. Aug. 14, 2003).
II. Claims 8–10 and 12–16 under 35 U.S.C. § 103(a) over
Ketcham, Khandkar, and Upshaw (US 4,081,866, iss. Apr. 4,
1978).
III. Claim 11 under 35 U.S.C. § 103(a) over Ketcham, Khandkar,
and Schneider (US 6,033,222, iss. Mar. 7, 2000).
IV. Claims 17–20 under 35 U.S.C. § 103(a) over Ketcham,
Khandkar, and Goodman (US 5,766,257, iss. June 16, 1998).
V. Claims 1–20 on the grounds of provisional non-statutory double
patenting over all claims of U.S. Patent Application No.
13/507,396.3
ANALYSIS
Rejection I – Obviousness over Ketcham and Khandkar
Claims 1–7
Issue
Regarding independent claim 1, the Examiner finds that “Ketcham
teaches the production of transformation toughened ZrO2-containing ceramic
alloys in which magnesium can be utilized as a toughening agent and/or a
stabilizing agent.” Final Act. 6 (citing Ketcham, Abstract) (mailed Oct. 29,

3 Now U.S. Patent 9,694,102, issued July 4, 2017.
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2014). The Examiner also finds that “Ketcham clearly states that early
researchers worked with such oxides as MgO and CaO for stabilizing ZrO2.”
Id. (citing Ketcham, 1:50–56). Therefore, according to the Examiner,
“Ketcham at least discloses that the use of magnesium oxide as a stabilizing
agent is well known in the art and meets the limitations of a component
which is a magnesium oxide stabilized transformation toughened zirconia
ceramic (an Mg-TTZ).” Id. at 6–7. The Examiner relies on Khandkar for
teachings regarding a knee implant. Id. at 7–8.
Appellants argue that Ketcham avoids use of MgO as a stabilizing
agent. Appeal Br. 4–5. According to Appellants, “by avoiding prior known
magnesium oxide . . . particularly after mentioning MgO as an early
stabilizer for zirconia as background or prior art . . . Ketcham teaches away
from Mg-TTZ.” Id. at 7. Appellants also argue that the Board’s reasoning
as articulated in Appeal No. 2013-00002 applies to this case, wherein the
Board determined that Ketcham did not disclose or render obvious Mg-TTZ.
Reply Br. 2.
The issue with respect to this rejection is whether Ketcham discloses
or renders obvious a magnesium oxide stabilized transformation toughened
zirconia ceramic, i.e., a “Mg-TTZ ceramic,” as claimed.
Findings of Fact
1. Ketcham discloses “the production of transformation toughened
ZrO2-containing ceramic alloys wherein the toughening agent is selected
from the group consisting of a rare earth metal vanadate and a magnesium
and/or calcium tungstate/molybdate, and SnO2 can be utilized as a
toughening agent and/or a stabilizing agent for ZrO2.” Ketcham, Abstract.
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2. Ketcham discloses that the ceramic alloy may consist of ZrO2, with
at least one stabilizer oxide selected from the group consisting of: Sc2O3,
Y2O3, CeO2, TiO2, and RE2O3, wherein RE2O3 is a rare earth metal selected
from the group consisting of: La2O3, Ce2O3, Pr2O3, Nd2O3, Sm2O3, Eu2O3,
Gd2O3, Tb2O3, Dy2O3, Ho2O3, Er2O3, Tm2O3, Yb2O3, and Lu2O3. Id. at
2:19–35; see also id. at 11:16–25. Ketcham discloses that its alloy also
contains a toughening agent, which can be MgWO4 or MgMoO4, among
other things. Id. at 2:36–39.
3. Ketcham discloses:
Heretofore, the focus of stabilizer use has been to add a
particular oxide dopant to zirconia to obtain specific crystal
phase structures and phase distribution, and to arrest the
transformation reaction at a defined stage of its operation. As a
result, although early researchers worked with such oxides as
MgO and CaO for stabilizing ZrO2, more recent research has
utilized exotic and costly additives in moderate concentrations
such as Y2O3, CeO2, and other rare earth oxides to produce
materials demonstrating many desirable properties.
Id. at 1:50–59.
4. Ketcham discloses that:
[S]tabilizer additives have been frequently employed in the
ceramic art to restrain otherwise uncontrollable phase
transformations. Hence, various dopants have been utilized to
arrest the transformation reaction at a point in its development
where the resulting phase or mixture of phases renders the
material most useful. For example, moderate concentrations of
MgO, CaO, Y2O3, CeO2, and other rare earth oxides have been
incorporated into ZrO2 to yield stabilized and partially stabilized
bodies demonstrating very interesting properties. ZrO2-Y2O3
systems are particularly attractive because of the direct
dependence of the tetragonal-to-monoclinic transformation
temperature on the amount of Y2O3 present. Such systems,
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however, did not produce articles exhibiting excellent
toughening characteristics, and Y2O3 is a very expensive
ingredient.
Id. at 5:21–36.
Principles of Law
“In proceedings before the Patent and Trademark Office, the
Examiner bears the burden of establishing a prima facie case of obviousness
based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir.
1992).
Analysis
We agree with Appellants that the Examiner has not established that
Ketcham discloses or renders obvious a magnesium oxide stabilized
transformation toughened zirconia ceramic, i.e., a “Mg-TTZ,” as claimed.
We understand that Ketcham discloses “the production of transformation
toughened ZrO2-containing ceramic alloys.” FF1. The Examiner has not
established, however, that these “transformation toughened” zirconia
ceramics are stabilized with magnesium oxide (MgO), or that such
stabilization would have been obvious to one skilled in the art. Instead,
when referring to “transformation toughened” zirconia ceramics, Ketcham
discloses stabilizing agents other than magnesium oxide, for example, SnO2
or Y2O3. FF1, FF2 (listing possible stabilizers, but not including MgO).
We are unpersuaded by the Examiner’s finding that “Ketcham clearly
states that early researchers worked with such oxides as MgO . . . for
stabilizing ZrO2.” Final Act. 6; Ans. 3 (mailed Sept. 23, 2015). Although
Ketcham discloses that magnesium oxide was used as a stabilizer in early
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zirconia ceramics research, the Examiner has not established that such use
involved “transformation toughened” zirconia. FF3, FF4 (noting that prior
research “did not produce articles exhibiting excellent toughening
characteristics”). Indeed, the Examiner does not point to any portion of the
record to support a finding that the zirconia ceramics used in this early
research were transformation toughened, as required by claim 1. See Final
Act. 6–7; Ans. 3.
Furthermore, although Ketcham contains separate disclosures related
to (1) transformation toughened zirconia (see FF1, FF2) and (2) magnesium
oxide stabilizers for zirconia (see FF3, FF4), the Examiner has not put forth
a prima facie case establishing that it would have been obvious to one skilled
in the art to combine aspects of Ketcham’s various disclosures to arrive at
the claimed Mg-TTZ. In re Fritch, 972 F.2d at 1265. Nor has the Examiner
pointed to teachings in Khandkar that would make up for the deficiencies in
Ketcham and thereby make obvious the implant component of claim 1. See
Final Act. 7–8.
Conclusion of Law
Because Ketcham does not disclose a magnesium oxide stabilized
transformation toughened zirconia ceramic, i.e., a “Mg-TTZ” ceramic, and,
because the Examiner has not set forth a rationale as to how or why a person
of ordinary skill in the art would have found a Mg-TTZ ceramic obvious in
view of Ketcham, by itself or combined with Khandkar, we reverse the
Examiner’s obviousness rejection of claim 1 under 35 U.S.C. § 103(a). The
rejection of claims 2–7, which depend from claim 1, is also reversed.
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Rejections II–IV – Obviousness over Ketcham and Khandkar,
in further combination with Upshaw, Goodman, or Schneider
Claims 8–20
The Examiner does not rely on Upshaw, Goodman, or Schneider in
any manner that would remedy the above noted deficiency in the
combination of Ketcham and Khandkar. Final Act. 9–17. Accordingly, we
reverse the Examiner’s obviousness rejections of claims 8–20 under 35
U.S.C. § 103(a).
Rejection V – Provisional Double Patenting
Claims 1–20
The Examiner provisionally rejects claims 1–20 over “all of the
claims of copending Application No. 13/507,396.” Final Act. 19. The
Examiner finds that “[a]lthough the conflicting claims are not identical, they
are not patentably distinct from each other because the various patent
applications and the instant application all recite the same basic structure
with a permutation of similar elements throughout,” such that the pending
claims are deemed to be “obvious variants” of the claims recited in the ’396
Application. Id.; see also Ans. 3.
Appellants argue that the pending claims represent “independent and
distinct inventions.” Appeal Br. 17–18.
In this case, the Examiner has not shown sufficiently that the pending
claims are patentably indistinct from those recited in the ’396 Application.
Specifically, the Examiner provides no substantive analysis to address the
differences between the claims. See Final Act. 19; compare Appeal Br.
(Claims App.), with Apr. 16, 2014 Claims, U.S. Patent Application No.
13/507,396 (claim set pending at the time of the Final Office Action). The
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Examiner’s conclusory statement that the claims are obvious variants of
each other is unsupported by any analysis or by any citation to the recited
claim language. Final Act. 19. Accordingly, we cannot sustain the
Examiner’s rejection.
SUMMARY
We reverse the Examiner’s decision to reject claims 1–20.

REVERSED