Ex Parte Weber et al

Patent Trial and Appeal Board

Oct 31, 2016

13216371 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/216,371 08/24/2011
11050 7590 11/02/2016
SEAGER, TUFTE & WICKHEM, LLP
100 South 5th Street
Suite 600
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Jan Weber
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2001.1298101 3992
EXAMINER
BARIA, DINAH N
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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):
BSC.USPTO@stwiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAN WEBER, AIDEN FLANAGAN, and
TORSTEN SCHEUERMANN
Appeal2015-001908
Application 13/216,371
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jan Weber et al. (Appellants) appeal under 35 U.S.C. § 134(a) from
the Examiner's final decision rejecting claims 1-16 and 18-20. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
THE INVENTION
Appellants' invention relates to an endoprosthesis that includes a
bioerodible magnesium alloy.
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Application 13/216,371
Claims 1, 9, and 16 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A bioerodible endoprosthesis comprising:
a bioerodible magnesium alloy comprising magnesium,
between 7 and 8 weight percent aluminum, between 0.4 and 0.8
weight percent zinc, between 0.05 and 0.8 weight percent
manganese, and at least a first rare earth metal with the proviso
that the bioerodible magnesium alloy includes no more than 0.8
weight percent of any rare earth metal.
THE REJECTIONS
The Examiner has rejected:
(i) claims 1-7 and 14 under 35 U.S.C. § 102(e) as being anticipated by
Hort (US 2011/0172724 Al, published July 14, 2011);
(ii) claims 8-11, 13, and 15 under 35 U.S.C. § 103(a) as being
unpatentable over Hort in view ofBoismier (US 2008/0082162 Al,
published Apr. 3, 2008);
(iii) claim 12 under 35 U.S.C. § 103(a) as being unpatentable over
Hort in view of Boismier and Castro (US 6, 716,444 B 1, issued Apr. 6,
2004);
(iv) claims 16, 18 and 19 under 35 U.S.C. § 103(a) as being
unpatentable over Boismier in view of Hort; and
(v) claim 20 under 35 U.S.C. § 103(a) as being unpatentable over
Boismier in view of Hort and Castro.
The Examiner's rejection of claims 1-8, 11-16, and 18-20 under 35
U.S.C. § 112, second paragraph, as being indefinite is withdrawn by the
Examiner. Ans. 8.
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The Examiner notes that "the rejections of the Non-Final Office
Action (based on Sillekens (WO 2010/093244 A2, published August 19,
2010)) are not currently being applied." Ans. 10. In view of this, and
because the Examiner does not list these rejections under the heading "NEW
GROUNDS OF REJECTION," we understand that no rejection using
Sillekens as a reference is before the Board.
ANALYSIS
Claims 1-7 and 14--35 U.S. C. § 102(e), anticipation--Hort
Appellants argue claims 1-7 and 14 as a group. Appeal Br. 3--4. We
take claim 1 as representative of the group with claims 2-7 and 14 standing
or falling with claim 1.
Claim 1 recites, in part:
a bioerodible magnesium alloy comprising magnesium, between
7 and 8 \veight percent aluminum, betv,reen 0.4 and 0.8 weight
percent zinc, between 0.05 and 0.8 weight percent manganese,
and at least a first rare earth metal with the proviso that the
bioerodible magnesium alloy includes no more than 0.8 weight
percent of any rare earth metal.
Appellants assert that "Hort does not disclose a particular alloy having
each and every claimed element in the claimed range," and rather, Hort
discloses a broad list of possibly alloying constituents that broadly
encompass the narrowly claimed ranges." Appeal Br. 3. Appellants argue
that "Hort's broad disclosure of very broad ranges for each of aluminum,
zinc, manganese, and rare earth metals does not disclose or suggest the very
narrow and specifically claimed ranges with sufficient specificity for Hort to
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anticipate claim 1." Id. (citing MPEP § 2131.03(II) andAtofina v. Great
Lakes Chem. Corp., 441 F.3d 991, 999 (Fed. Cir. 2006)).
The Examiner responds that although "MPEP § 2131. 03 (II) does state
claimed subject matter must be disclosed in a reference with 'sufficient
specificity'; it also goes on to suggests that (a) smaller range claimed within
the larger range of a reference should be 'critical."' Ans. 9 (citing
Clear Value Inc. v. Pearl River Polymers Inc., 668 F.3d 1340 (Fed. Cir.
2012)). The Examiner notes that "in the current application, neither the
claims nor the originally filed specification sets forth criticality for the
specific weight percent range of elements in the magnesium alloy, as
claimed." Id. at 10. The Examiner specifically notes that for "rare earth
metals, the specification gives multiple possible weight percent ranges used
to make the magnesium alloy." Id. (citing Spec. 6, 11. 7-22).
Appellants reply that "the Examiner's demand of a showing of
criticality for each of the claimed ranges is not supported by the case law
surrounding anticipation." Reply Br. 1. Appellants reiterate that "the
claimed amounts of zinc and manganese fall outside of Hort's preferred
ranges and do not overlap any of Hort's listed range end points." Id. at 2.
Appellants assert that "the specification is clear that alloys having amounts
of aluminum, zinc, manganese, and rare earth metals produce improved
corrosion rates (see Fig. 3) and improved mechanical properties (see Figs.
2A and 2B) as compared to other magnesium alloys having different
percentages of aluminum, zinc, manganese, and rare earth metals." Id. at 3.
Appellants argue that "it is clear from the original claims that the Applicants
considered the claimed amounts of aluminum, zinc, and manganese to be
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critical for obtaining the improved corrosion resistance and improved
mechanical properties."1 Id.
We disagree with Appellants' assertion that the case law directed to
anticipation of ranges does not require a showing of criticality. The case
upon which Appellants rely, Atofina, was decided in 2006. The Federal
Circuit subsequently decided ClearValue in 2012 and discussedAtofzna
therein stating that, in Atofina, "the evidence showed that one of ordinary
skill would have expected the synthesis process to operate differently
outside the claimed temperature range, which the patentee described as
'critical' to enable the process to operate effectively." Clear Value, 668 F.3d
at 1345. The ClearValue decision also stated that because of "this
'considerable difference' between the prior art's broad disclosure and the
'critical' temperature range claimed in the patent, we held that 'no
reasonable fact finder could conclude that the prior art describes the claimed
range with sufficient specificity to anticipate this limitation of the claim."'
Id. (citing Atofina, 441 F.3d at 999). Subsequent to deciding Clear Value, in
2015, the Federal Circuit decided Ineos USA LLC v. Berry Plastics Corp.,
783 F.3d 865 (2015). Inineos, the court discussed bothAtofina and
Clear Value, and with respect to Atofina, stated that "[k]ey to this conclusion
We note that certain of the information in the Specification upon
which Appellants rely for these arguments (Tables I and III, and Figure 2A)
is identical to information found in an article by Erinc et al. (Modified AZ80
magnesium alloys for biomedical applications, Magnesium Technology
(2010)) that is of record in the case, and which was submitted by Appellants
with an IDS on Nov. 23, 2011. We do not see in the record any indication
that a determination was made as to whether or not this article is prior art to
the present application.
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[of no anticipation] was the fact that the evidence showed that a person of
ordinary skill in the art would have expected the synthesis reaction to
operate differently, or not all, outside of the temperature range claimed in
the patent-in-suit." Ineos, 783 F.3d at 869 (citing Atofina, 441 F.3d at 999;
see also Clear Value, 668 F.3d at 1345). The Ineos decision characterized
the Clear Value decision as "explain[ing] the importance of establishing the
criticality of a claimed range to the claimed invention in order to avoid
anticipation by a prior art reference disclosing a broader, overlapping
range." Ineos, 783 F.3d at 870. In Ineos, the court stated that "when the
prior art discloses a range, rather than a point, the court must evaluate
whether the patentee has established that the claimed range is critical to the
operability of the claimed invention." Ineos, 783 F.3d at 871.
Here, like in Clear Value and Ineos, the claimed ranges are entirely
within the ranges disclosed by Hort. Specifically, claim 1 recites aluminum
"between 7 and 8 weight percent" and Hort discloses "a quantity of 0 to 15
wt.-%, more preferably 1to10 wt.-%." Appeal Br. 8 (Claims App.); Hort,
para. 8. Claim 1 recites zinc "between 0.4 and 0.8 weight percent" and Hort
discloses "a quantity of 0 to 7 wt.-%." Id. Claim 1 recites manganese
"between 0.05 and 0.8 weight percent" and Hort discloses "a quantity of 0 to
5 wt.-%." Id. Claim 1 recites "at least a first rare earth metal earth metal"
and "no more than 0.8 weight percent of any rare earth metal," and Hort
discloses "a quantity of 0 to 5 wt.-%, particularly preferably in a quantity of
0.1 to 3 wt.-%." Id.
Appellants' assertion that the Specification shows improved corrosion
rates and improved mechanical properties in the claimed ranges is based on
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a comparison of alloys within the claimed ranges to alloys that are quite
different from ones falling within the scope of the claims and within the
ranges set forth in Hort. In particular, the comparison examples in Table II
of the Specification appear to be devoid of aluminum, and several (L 1 c, L 1 d,
L 1 e) are devoid of rare earth metals. Any demonstrated differences in
material properties set forth in the Specification thus are not probative of any
criticality of the narrower claimed ranges within the broader ranges
disclosed in Hort. The same is true for Appellants' argument that the
presence of the same ranges in the original claims is evidence of criticality-
any improvement in properties believed at the time of filing to distinguish
alloys having the claimed ranges of elements is as compared to considerably
different alloys.
Appellants have not persuasively established that any of the disclosed
properties for alloys within the claimed ranges differ from properties of
alloys having compositions within the broader ranges disclosed by Hort. See
Ineos, 783 F.39 at 870. As such, Appellants have not adequately established
the criticality of the recited ranges and thus, we agree with the Examiner that
Hort anticipates claim 1. Accordingly, we sustain the rejection under 35
USC § 102( e) of claims 1-7 and 14 as being anticipated by Hort.
Claims 8-11, 13, and 15--0bviousness--Hort and Boismier
Claims 16, 18, and 19--0bviousness--Boismier and Hort
Independent claim 9 recites, in part, "a bioerodible magnesium alloy
comprising magnesium, between 7 and 8 weight percent aluminum, between
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0.4 and 0.8 weight percent zinc, between 0.05 and 0.8 weight percent
manganese." Independent claim 16 recites, in part,
a bioerodible magnesium alloy comprising magnesium, between
7 and 8 weight percent aluminum, between 0.4 and 0.8 weight
percent zinc, between 0.05 and 0.8 weight percent manganese,
and at least a first rare earth metal with the proviso that the
bioerodible magnesium alloy includes no more than 0.8 weight
percent of any rare earth metal.
Appellants argue that because "a skilled artisan would have had no
reason to select the particularly claimed percentages for each of aluminum,
zinc, and manganese in a magnesium alloy based on Hort's very broad
disclosure of broad ranges for each element, and because "Boismier is cited
for disclosing a coating, not for providing a reason to select the claimed
amounts of aluminum, zinc, and manganese in Hort's magnesium alloy," the
combined teachings of Hort and Boismier also does not render obvious
claims 8-11, 13, 15, 16, 18, and 19. 1A .. ppeal Br. 4--5.
For the reasons discussed above, Appellants do not apprise us of
Examiner error with respect to the Examiner's finding that Hort anticipates
the recited ranges in a bioerodible magnesium alloy. Nor do Appellants
adequately explain why the combined teachings of Hort and Boismier do not
disclose a coating as recited in the claims. Likewise, Appellants do not
adequately explain why the Examiner's rationale for combining the
teachings of the references is in error. Accordingly, we are not apprised of
Examiner error in the rejection of claims 8-11, 13, 15, 16, 18, and 19 as
being unpatentable over Hort and Boismier. The rejection is sustained as to
those claims.
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Claim 12--0bviousness--Hort/Boismier/Castro
Claim 20--0bviousness--Boismier/Hort/Castro
Appellants present no additional arguments directed to the separate
patentability of claims 12 and 20. Appeal Br. 15; see also Reply Br. 3. For
the reasons set forth above in the analysis directed to the combination of
Hort and Boismier, the rejection of claim 12 as being unpatentable over Hort
in view of Boismier and Castro, and the rejection of claim 20 as being
unpatentable over Boismier in view of Hort and Castro are sustained.
DECISION
The rejection of claims 1-7 and 14 under 35 U.S.C. § 102(e) as being
anticipated by Hort is affirmed.
The rejection of claims 8-11, 13, and 15 under 35 U.S.C. § 103(a) as
being unpatentable over Hort in view of Boismier is affirmed.
The rejection of claim 12 under 35 U.S.C. § 103(a) as being
unpatentable over Hort in view of Boismier and Castro is affirmed.
The rejection of claims 16, 18 and 19 under 35 U.S.C. § 103(a) as
being unpatentable over Boismier in view of Hort is affirmed.
The rejection of claim 20 under 35 U.S.C. § 103(a) as being
unpatentable over Boismier in view of Hort and Castro is affirmed.
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)(l )(iv).
AFFIRMED
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