Ex Parte Shur

Patent Trial and Appeal Board

Sep 26, 2017

12449838 (P.T.A.B. Sep. 26, 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.
12/449,838 08/31/2009 Vladimir Shur JDC1011USNA 5108
7590 09/27/2017
Joel D. Citron
2003 Ferndale Drive
Wilmington, DE 19810
EXAMINER
HOBAN, MELISSA A
ART UNIT PAPER NUMBER
3738
MAIL DATE DELIVERY MODE
09/27/2017 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 VLADAMIR SHUR
________________

Appeal 2016-001002
Application 12/449,838
Technology Center 3700
________________

Before STEVEN D.A. McCARTHY, THOMAS F. SMEGAL and
LISA M. GUIJT, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

The Appellant requests rehearing of our “Decision on Appeal,” mailed 1
June 23, 2017 (“Decision”), affirming the final rejection of claims 1, 2, 4, 6–2
12, 15–18 and 21–25 under § 103(a) as being unpatentable over Davidson 3
(US 5,358,529, issued Oct. 23, 1994) and Wang (US 6,414,086 B1, issued 4
July 2, 2002); claims 1, 2, 4, 6–12, 15–18 and 21–23 under § 103(a) as being 5
unpatentable over Rolston (US 2005/0171612 A1, publ. Aug. 4, 2005) and 6
Wang; and claims 24 and 25 under § 103(a) as being unpatentable over 7
Rolston, Wang and Bahler (US 5,395,401, issued Mar. 7, 1995).1 We retain 8
jurisdiction under 35 U.S.C § 134 and 35 U.S.C. § 6. 9

1 We did not sustain a rejection of claims 1, 2, 6, 8 and 15 under pre-
AIA 35 U.S.C. § 102(b) as being anticipated by Davidson.
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ERRATA 1
The Appellant submitted a “Request for Rehearing under 37 C.F.R. 2
41.52,” dated July 13, 2017 (“Rehearing Request” or “Reh’g Req.”). We 3
grant rehearing to the extent that we have considered the arguments in the 4
Rehearing Request. In response to those arguments, we vacate Finding of 5
Fact (“FF”) 5, on page 6, lines 5–15, of the Decision, and FF 15, on page 10, 6
lines 6–16, of the Decision. Both FF 5 and FF 15 cite to Collier et al., 7
Comparison of Cross-Linked Polyethylene Materials for Orthopaedic 8
Applications, 414 CLINICAL ORTHOPAEDICS & RELATED RESEARCH 289, 289 9
(Lippincott Williams & Wilkins, Inc. 2003) (“Collier”). In the Request, the 10
Appellant argues that the citation of Collier constitutes a new ground of 11
rejection (see Reh’g Req. 4); and that the panel misinterpreted the teachings 12
of Collier (see Reh’g Req. 5 & 6). The Examiner did not rely on Collier in 13
the rejections on appeal. Furthermore, after reviewing the Appellant’s 14
“Appeal Brief under 37 C.F.R. 41.37,” dated January 12, 2015 and as 15
corrected March 10, 2015 (“Appeal Brief” or “App. Br.”); and the 16
Appellant’s “Reply Brief under 37 C.F.R. 41.41,” dated October 5, 2015 17
(“Reply Brief” or “Reply Br.”), we find that the Appellant did not rely on 18
the teachings of Collier in its arguments. The Appellant was not on notice 19
that it might be required to respond to the teachings of Collier in its 20
arguments. For this reason, we vacate all findings based on, or mentioning, 21
Collier. 22
In particular, we note that FF 15 says that “Collier indicates that 23
femoral components comprising crosslinked UHMWPE were commercially 24
available as of 2003. (See FF 5).” (Decision 10, ll. 10–12 (italics added for 25
emphasis)). We thank the Appellant for calling our attention to this 26
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sentence. We agree that the sentence finds no support in the teachings of 1
Collier. (See Reh’g Req. 5). 2
That said, the Appellant conceded in the Appeal Brief that: 3
Crosslinked [reduced wear polyethylene (“RWPE”)] is used in 4
prostheses such as knee and hip prostheses (but not in femoral 5
components), and as such it is well known it is biocompatible[;] 6
can be properly sterilized[;] [can be] formed into shaped parts[;] 7
[has] good strength characteristics[; has] improved (compared 8
to uncrosslinked [polyethylene (“PE”)]) creep (the deformation 9
of the polymer under mechanical load so its dimensions and/or 10
shape are change[d])[;] and [has improved] wear resistance 11
than uncrosslinked PE . . . . Therefore the more general 12
requirements of being suitable in prostheses, and [e]specially in 13
femoral components of knee prostheses, where wear and creep 14
are important, are met. 15
(App. Br. 12 (citing Scott (US 6,726,727 B2, issued Apr. 27, 2004), col. 14, 16
ll. 23–27) (italics added to quote for emphasis); see also id. at 8 (wherein the 17
Appellant concedes with respect to the teachings of Wang that it “has never 18
asserted that crosslinked, reduced wear polyethylenes were not known, or 19
generally said to be useful in prostheses of various types.”)). In other words, 20
the Appellant concedes that crosslinked RWPE has been used in knee and 21
hip prostheses; and that crosslinked RWPE was known to have greater wear 22
resistance than uncrosslinked polyethylene. Therefore, we substitute the 23
following finding of fact for FF 15, having found it true by a preponderance 24
of the evidence: 25
-- 16. Although Wang does not address the problem of stress 26
shielding, it does teach the use of cured mixtures of crosslinked and un-27
crosslinked UHMWPE in the fabrication of components of load-bearing 28
prostheses such as knee prostheses as a means to improve the wear 29
resistance of the prosthesis. (See FF 3 & 4). The Appellant concedes that 30
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crosslinked RWPE was used in knee and hip prostheses; and that crosslinked 1
RWPE was known to have greater wear resistance than uncrosslinked 2
polyethylene. (See App. Br. 12 (citing Scott (US 6,726,727 B2, issued Apr. 3
27, 2004), col. 14, ll. 23–27). Read in view of FF 1–3, this concession 4
implies that one of ordinary skill in the pertinent art would have known that 5
crosslinked RWPE could be used to improve the wear resistance of the 6
prosthesis, so as to improve the durability of prosthetic components and 7
reduce the likelihood of fine particles being scraped from the surfaces of 8
such components. -- 9
In vacated FF 15, we found that “the Appellant’s solution to the 10
problem of stress shielding, namely, fabrication of femoral prosthetic 11
components from crosslinked UHMWPE material having moduli of 12
elasticity less than that of human bone, was generally known as of the 13
Appellant’s filing date.” In the paragraph on page 12, line 20, through page 14
13, line 2, of the Decision, we said that: “That is, the Appellant’s proposed 15
solution to the problem of stress shielding (see FF 14) was a known solution 16
to the problem of wear at articulating surfaces within an implant, a problem 17
that resulted in the scraping off of particles of the material from which the 18
components were fabricated into surrounding bone and tissue (see FF 15).” 19
On page 5 of the Answer, the Examiner reasoned that: 20
In response to applicant’s arguments regarding the Declaration 21
under 37 C.F.R. 1.132 filed 12/8/2011, the [E]xaminer 22
maintains that in order to establish long felt need, the long-felt 23
need must not have been satisfied by another before the 24
invention by applicant. As stated in the previous Final Office 25
Action, the teachings of Davidson alone, or in view of Wang, 26
and Rolston in view of Wang satisfy the long-felt need of stress 27
shielding by providing a femoral component made of a reduced 28
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wear crosslinked polyethylene that is the same as applicant’s 1
claimed invention. See MPEP §716. 2
As stated in the latter quotation, the Examiner correctly finds that the 3
Appellant’s solution to the problem of stress shielding was fabrication of 4
femoral prosthetic components from crosslinked UHMWPE material; and 5
that this solution was known from the combined teachings of Davidson and 6
Wang, or of Rolston and Wang. The Appellant concedes on page 7 of the 7
Rehearing Request that “Appellant does not know how limiting the claims to 8
a proviso in the claim stating ‘wherein said femoral component does not 9
cause stress shielding’ [sic], because the structure of the femoral component 10
or knee prosthesis would be the same.” This concession implies agreement 11
that the structure recited in the claims is the Appellant’s solution to stress 12
shielding, as the Examiner (and this panel) have found. The fact that the 13
Examiner incorrectly relied, in the alternative, on the teachings of Davidson 14
alone does not imply that the Examiner’s findings regarding the combined 15
teachings of Davidson and Wang are wrong, as the Appellant suggests at 16
pages 11 and 12 of the Rehearing Request. All it implies is that the 17
Examiner was diligent in backing up his or her findings, even when the 18
Examiner believed the single reference might suffice. Because we vacate all 19
findings based on, or mentioning, Collier; and because our remaining 20
findings are consistent with the Examiner’s, we do not designate a new 21
ground of rejection. 22
Nevertheless, we vacate the paragraph at page 12, line 20 through 23
page 13, line 2, of the Decision; and substitute the following. 24
-- Nevertheless, the probative weight of this evidence is significantly 25
reduced because the Appellant’s proposed solution to the problem of stress 26
shielding was a known solution to a different problem. That is, the 27
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Appellant’s proposed solution to the problem of stress shielding (see FF 14) 1
was a known solution to the problem of wear at articulating surfaces within 2
an implant, a problem that resulted in the scraping off of particles of the 3
material from which the components were fabricated into surrounding bone 4
and tissue (see FF 16). -- 5
6
DISCUSSION 7
The Appellant argues that the teachings of the cited prior art would 8
not have provided one of ordinary skill in the art reason to modify 9
Davidson’s knee prosthesis, or Rolston’s knee prosthesis, in the fashion 10
claimed prior to the filing of the underlying application. To this end, the 11
Appellant has presented evidence that, it asserts, proves a long felt need in 12
the pertinent art for a solution to the problem of stress shielding. (See App. 13
Br. 10–14; Reply Br. 3). Despite suggestions to the contrary on pages 7–11 14
of the Rehearing Request, the Appellant has not produced evidence of 15
unexpected results independent of its evidence of long felt need, despite 16
bearing the burden to produce any such evidence. See In re Dillon, 919 F.2d 17
688, 694 (Fed. Cir. 1990). The Appellant did not mention unexpected 18
results in either the Specification, the Appeal Brief or the Reply Brief. As 19
such, the Appellant waived reliance on unexpected results, separate and 20
apart from long felt need, as a secondary consideration. See 37 C.F.R. 21
§ 41.52(a); id., § 41.37(c)(1)(iv). 22
Both the Supreme Court and our reviewing court instruct us that 23
claimed subject matter may have been obvious, and hence unpatentable, for 24
reasons different than those that led an applicant to that subject matter. See 25
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (“Under the correct 26
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analysis, any need or problem known in the field of endeavor at the time of 1
invention and addressed by the patent can provide a reason for combining 2
the elements in the manner claimed.”); Dillon at 693 & 694 (en banc). As a 3
rule, unrecognized advantages that flow naturally from structure otherwise 4
obvious from the teachings of the prior art do not render the obvious 5
structure patentable. See Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985). 6
The words “flow naturally,” as used in Obiaya, likely derive from 7
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) 8
(“If, however, the disclosure is sufficient to show that the natural result 9
flowing from the operation as taught would result in the performance of the 10
questioned function, it would seem well settled that the disclosure should be 11
regarded as sufficient.”).2 The words are used in Obiaya, as in Continental 12
Can, to refer to an advantage that is inherent, that is, necessarily present, in a 13
claimed structure. That which is inherent is not necessarily known, see 14
Schering Corp. v. Geneva Pharmas., Inc., 339 F.3d 1373, 1378–79 (Fed. 15
Cir. 2003); and, as a general rule, that which was unknown could not have 16
been obvious, see In re Ochiai, 71 F.3d 1565, 1569–70 (Fed. Cir. 1995). 17
In this case, however, Wang teaches a reason for modifying a knee 18
prosthesis, such as that described by Davidson or Rolston, to include a 19
femoral component fabricated from reduced wear, crosslinked ultra-high 20
molecular weight polyethylene (“UHMWPE”). That reason was to reduce 21
the susceptibility of the femoral component to wear, at least as compared 22
with femoral components fabricated from uncrosslinked polyethylene. (See 23
generally Decision 4 & 5 (FF 1–4)). Thus, this is not a case where the 24

2 Two cases cited in Obiaya, namely, In re Best, 562 F.2d 1252 (CCPA
1977), and In re Wilder, 429 F.2d 447 (CCPA 1970), do not mention the
words “flow naturally.”
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Examiner has combined the teachings of the references based on an inherent, 1
but unrecognized, property of the prior art. 2
We are persuaded that the subject matter of the appealed claims would 3
have been obvious despite the Appellant’s evidence that the problem of 4
stress shielding was long felt, that is, that the problem had been recognized 5
for years prior to the filing of the Appellant’s Specification. As mentioned 6
earlier, Wang expressly teaches a reason for modifying a knee prosthesis, 7
such as that described by Davidson or Rolston, to include a femoral 8
component fabricated from reduced wear, crosslinked UHMWPE, 9
independent of stress shielding. (See generally Decision 4 & 5 (FF 1–4)). 10
We are convinced that the claimed subject matter would have been obvious 11
despite the evidence that the claimed subject matter had the unrecognized 12
advantage of addressing the problem of stress shielding; and despite the 13
suggestion that the Appellant was led to the claimed subject matter by the 14
desire to address stress shielding. The probative value of the teachings of 15
the references outweighs the probative value of the Appellant’s evidence. 16
Despite the Appellant’s assertion to the contrary on pages 7 and 8 of 17
the Rehearing Request, the decision in United States v. Adams, 383 U.S. 39 18
(1966), is distinguishable. In Adams, the plaintiff sued the United State 19
Government for compensation for use of a claimed electrical storage battery. 20
(See id. at 41). One claim recited, “[i]n a battery, the combination of a 21
magnesium electropositive electrode, and an electronegative electrode 22
comprising cuprous chloride fused with a carbon catalytic agent.” (Id. at 23
43). The patent taught that one of its objects was to provide a constant 24
voltage and current without using an acidic electrolyte that might quickly 25
consume the magnesium electrode. (See id. at 42). The Government argued 26
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that the claimed subject matter would have been obvious, based on art 1
teaching batteries having electrodes comprising zinc and silver chloride, 2
respectively. (See id. at 48). Sustaining the lower court’s conclusion 3
regarding the “novelty” of the claimed battery, the Supreme Court remarked 4
that: 5
Nor is the Government’s contention that the electrodes of 6
Adams were mere substitutions of pre-existing battery designs 7
supported by the prior art. If the use of magnesium for zinc and 8
cuprous chloride for silver chloride were merely equivalent 9
substitutions, it would follow that the resulting device—10
Adams’—would have equivalent operating characteristics. But 11
it does not. The court below found, and the Government 12
apparently admits, that the Adams battery ‘wholly 13
unexpectedly’ has shown ‘certain valuable operating 14
advantages over other batteries’ while those from which it is 15
claimed to have been copied were long ago discarded. 16
(Id. at 50 & 51). In KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007), 17
the Court distilled this holding into the statement that the “fact that the 18
elements worked together in an unexpected and fruitful manner supported 19
the conclusion that Adam’s design was not obvious to those skilled in the 20
art.” 21
In Adams, the Government argued that the mere substitution of 22
magnesium and cuprous chloride for zinc and silver chloride electrodes, 23
respectively, would have been obvious per se. Here, as remarked 24
previously, Wang teaches a reason for modifying a knee prosthesis to 25
include a femoral component fabricated from reduced wear, crosslinked 26
UHMWPE. In addition, as indicated by the distillation in KSR Int’l, there 27
was a suggestion in Adams that the magnesium and cuprous chloride 28
electrodes acted synergistically to provide improved voltage and current 29
flow in a non-acidic battery fluid. Although synergy is not a prerequisite of 30
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nonobviousness, we note that the Appellant has not argued that its claimed 1
structure has any synergistic effect vis-à-vis stress shielding. The holding in 2
Adams does not control our decision here because the balance in the present 3
case between the evidence tending to show obviousness, and that presented 4
to show nonobviousness, differs from that in Adams. 5
6
DECISION 7
We GRANT the Request for Rehearing to the extent that we have 8
considered the Appellant’s argument and issued errata. We otherwise 9
DENY the same. 10
No time period for taking any subsequent action in connection with 11
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 12
§ 1.136(a)(1)(iv) (2007). If the Appellant seeks judicial review under 13
35 U.S.C. § 141, the Appellant must serve timely notice on the Director of 14
the United States Patent and Trademark Office. See 37 C.F.R. § 90.2. 15
16
GRANTED-IN-PART 17
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