Ex Parte Sherman et al

Patent Trial and Appeal BoardOct 25, 2012

11323871 (P.T.A.B. Oct. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JASON T. SHERMAN, MARK R. DISILVESTRO, and MICHAEL A. KRYGER ____________ Appeal 2011-011770 Application 11/323,871 Technology Center 3700 ____________ Before TONI R. SCHEINER, DONALD E. ADAMS, and DEMETRA J. MILLS, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134 involves claims 1-33 (App. Br. 2; Reply Br. 2; Ans. 2). We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE CASE The claims are directed to a method of predicting an operating state of a curable bone cement composition (claims 1-15 and 21-28); an apparatus for predicting the operating state of a curable bone cement composition (claims 16-20 and 29-33). Independent claims 1, 16, 21, and 29 are Appeal 2011-011770 Application 11/323,871 2 representative and are reproduced in the Claims Appendix of Appellants’ Brief. Claims 1, 2, 4-15, 21, 22, and 24-28 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Grupp. 1 Claims 3 and 23 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Grupp and Bourlion. 2 Claims 16, 17, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Grupp and Goetz. 3 Claims 18 and 31 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Grupp, Goetz, and Bourlion. We reverse. Anticipation: ISSUE Does the preponderance of evidence on this record support Examiner’s finding that Grupp teaches Appellants’ claimed invention? FACTUAL FINDINGS (FF) FF 1. Appellants disclose [A] method of predicting the operating state of a bone cement composition[, which] includes sampling the electrical impedance of the bone cement composition and determining if the magnitude of the electrical impedance has decreased to a minimum impedance value. If so, a countdown timer is executed. The length of the countdown timer may be configured to predict end-of-work time and/or setting time of 1 Thomas Grupp, DE 100 08 481 A1, published September 13, 2001, as translated PTO 09-6899. 2 Bourlion et al., US 2005/0119660 A1, published June 2, 2005. 3 Goetz et al., US 2003/0176807 A1, published September 18, 2003. Appeal 2011-011770 Application 11/323,871 3 the bone cement composition. Setting time may also be predicted by executing a countdown timer upon the occurrence of an inflection point in the impedance magnitude data. Setting time may also be predicted by use of a countdown timer which is executed when the phase of impedance of the bone cement composition increases to a maximum phase of impedance value. (Spec. 2: 15 - 3: 2) FF 2. Grupp teaches a method for determining the consistency of bone cement, “to determine and indicate when the cement is suitable to use, is nearing non-usability and is non[-]usable” (Ans. 5; Grupp 6- 9 and 2: 4-5). FF 3. Grupp’s figure 6 is reproduced below for clarity: “Fig. 6 shows the curve of dynamic viscosity of Osteopal over the measurement time, whereby the characteristic processing points are indicated” (Grupp 11: 16-18). FF 4. Grupp teaches that [T]he signal sequence … is such that when the bone cement reaches its processing consistency the first signal 40[, green light signal … which indicates that the bone cement can be utilized,] is issued, and then after a specific time period, Appeal 2011-011770 Application 11/323,871 4 depending on the measured dielectric properties of the bone cement, the third signal 44[, a yellow or orange light signal, which indicates to the operator that the bone cement has reached a consistency such that the end of the processing period is impending,] comes on, while the first signal 40 goes out, and finally the warning signal 42[, a red light signal, which indicates that the bone cement can no longer be used by the operator,] comes on, and the other signals are out. (Grupp 14: 1-3; 7-9; and 13-24 (emphasis added); Ans. 5-13.) FF 5. Examiner finds that Grupp’s method “inherently has a timer/clock in order to determine whether a predetermined amount of time has passed” (Ans. 11). ANALYSIS Appellants’ claimed invention requires that “a predetermined amount of time” must elapse before a control signal is generated (see, e.g., independent claims 1 and 21; see also FF 1). In contrast, Grupp’s signals are based on the measured dielectric properties of the bone cement (FF 4; Cf. FF 1). Examiner is correct in recognizing that some amount of time passes between each of Grupp’s signaling events (see generally Ans. 20-22; FF 3- 4). However, in contrast to Appellants’ claimed invention, the signaling events in Grupp’s method are not controlled by time itself, but are instead controlled by the measured dielectric properties of the bone cement (FF 4; App. Br. 6-11; id. at 9 (“The amount of time that has elapsed is more or less irrelevant to Grupp’s process - only the measured dielectric properties of the bone cement control the duration of use of the bone cement”); Reply Br. 4-8; Cf. FF 1). Examiner failed to establish an evidentiary basis on this record to establish that Grupp’s method “inherently has a timer/clock in order to Appeal 2011-011770 Application 11/323,871 5 determine whether a predetermined amount of time has passed” (FF 5 (emphasis added)). CONCLUSION OF LAW The preponderance of evidence on this record fails to support Examiner’s finding that Grupp teaches Appellants’ claimed invention. Therefore, the anticipation rejection on this record is reversed. Obviousness: Does the preponderance of evidence on this record support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 6. Examiner relies on Grupp as discussed above (FF 2-5; Ans. 14). FF 7. Grupp fails to suggest an audible signal (see generally Ans. 14). FF 8. Examiner relies on Bourlion to suggest “a method of monitoring impedance wherein … [the] indicator is … audible, visual, or tactile” (id.). FF 9. Examiner finds that Grupp suggests an apparatus for performing Grupp’s method, wherein “the apparatus compris[es]: a bone cement container …, an electrical impedance analyzer measurement chamber … and capacitive element …, a processor electrically coupled to the electrical impedance analyzer …” (id. at 15). FF 10. Examiner finds that Grupp fails to suggest “a memory device electrically coupled to … [a] processor, wherein the memory device has stored therein a plurality of instructions which …[are] executed by the processor” (id. 16). FF 11. Examiner relies on Goetz to suggest “an impedance monitor comprising a processor and a memory device electrically coupled to the Appeal 2011-011770 Application 11/323,871 6 processor, wherein the memory device has stored therein a plurality of instructions … [that are] executed by the processor” (id.). FF 12. Examiner finds that the combination of Grupp and Goetz fails to suggest an audible signal and relies on Bourlion to make up for this deficiency. ANALYSIS The rejection over the combination of Grupp and Bourlion: Claims 3 and 23 depend from independent claims 1 and 21 respectively. Based on the combination of Grupp and Bourlion, Examiner concludes that, at the time of Appellants’ claimed invention, it would have been prima facie obvious “to modify the method taught by Grupp to include [an] audible indication as taught by Bourlion by substituting one indicating means [(e.g., sound)] for another [(e.g., light)]” (Ans. 14). Examiner fails, however, to establish that Bourlion makes up for the deficiency in Grupp discussed above (see App. Br. 12-13; Reply Br. 8-9). The rejection over the combination of Grupp and Goetz: Based on the combination of Grupp and Goetz, Examiner concludes that, at the time of Appellants’ claimed invention, it would have been prima facie obvious “to modify the apparatus taught by Grupp to include a processor having memory as taught by Goetz in order to provide a flexible analyzing means which can be easily updated by updating the operating/analyzing instructions” (Ans. 16). Examiner fails, however, to establish that Goetz makes up for the deficiency in Grupp discussed above (see App. Br. 14-16; Reply Br. 9-10). Appeal 2011-011770 Application 11/323,871 7 The rejection over the combination of Grupp, Goetz, and Bourlion: Examiner finds that the combination of Grupp and Goetz fails to suggest an audible signal and relies on Bourlion to make up for this deficiency (Ans. 19). Therefore, Examiner concludes that, at the time of Appellants’ claimed invention, it would have been prima facie obvious “to modify the apparatus taught by Grupp to include [an] audible indication as taught by Bourlion by substituting one indicating means for another” (id. at 20). Examiner fails, however, to establish that the combination of Goetz and Bourlion makes up for the deficiency in Grupp discussed above (see App. Br. 16-17; Reply Br. 10-11). CONCLUSION OF LAW The preponderance of evidence on this record fails to support a conclusion of obviousness. Therefore, the obviousness rejections on this record are reversed. REVERSED alw