Ex Parte Rusin et al

Patent Trial and Appeal Board

Jan 27, 2017

11719469 (P.T.A.B. Jan. 27, 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.
11/719,469 04/15/2009 Richard P. Rusin 60195US006 8192
32692 7590 01/31/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
PEPITONE, MICHAEL F
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
01/31/2017 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD P. RUSIN, SUMITA B. MITRA
and KEVIN M. CUMMINGS
Appeal 2016-002470
Application 11/719,469
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 57—61, 63—69, 92, 95, 100, 103, and 104. We have jurisdiction under
35 U.S.C. §6.
We REVERSE.
Claim 57 is illustrative of the subject matter on appeal and is
reproduced below:
Appeal 2016-002470
Application 11/719,469
57. A dental composition comprising:
a hardenable resin comprising water, wherein the
hardenable resin is polymerizable and/or crosslinkable; and
a phosphate salt of the formula:
OR
where x=2-4;
each R is independently H or P(0)(0')2(M+n)2/n, with the
proviso that at least one R group is P(0)(0')2(M+2n)2/n and at
least one R group is H; and
M is a metal of valence n,
wherein the phosphate salt is dissolved in the hardenable
resin of the dental composition.
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Appeal 2016-002470
Application 11/719,469
Appellants (App. Br. 4) request review of the following rejections
from the Examiner’s Final Action:
I. Claims 57—61, 63—69, 95, 100, 103, and 104 rejected under 35
U.S.C. § 103(a) as unpatentable over GB ‘318 (GB 1,532,318 to Beiersdorf
A.G., published November 15, 1978) and Rijke (US 4,141,864, issued
February 27, 1979).
II. Claim 92 rejected under 35 U.S.C. § 103(a) as unpatentable
over GB ‘318, Rijke and Muller (US 2004/0138759 Al, published July 15,
2004).
OPINION1
After review of the respective positions provided by Appellants and
the Examiner, we REVERSE the Examiner’s prior art rejections of claims
57-61, 63-69, 92, 95, 100, 103, and 104 under 35 U.S.C. § 103(a) for the
reasons presented by Appellants. We add the following.
Independent claim 57 is directed to a dental composition comprising a
hardenable resin and a phosphate salt dissolved in the hardenable resin of the
dental composition. Spec. 2.
We refer to the Examiner’s Final Action for a statement of the
rejection. Final Act. 3^4.
The premise of Appellants’ arguments is that the aqueous nature of
the cement composition of GB ‘318 would dissolve the solid soluble
particles of Rijke into the resin before the resin is hardened and, thus, the
resulting hardened resin from the combined teachings would not exhibit the
various benefits disclosed by Rijke. App. Br. 3—6; GB ‘318 1—2; Rijke col.
4,11. 22—30, 40-47; col. 6,11. 60—62. According to Appellants, the cement
1 We limit our discussion to independent claim 57.
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Appeal 2016-002470
Application 11/719,469
compositions of Rijke have solid soluble particles, such as calcium
glycerophosphate, admixed therein that result in the benefits of eliminating
thermal necrosis, curtailing the introduction of toxic quantities of monomers
and forming a high strength bond, all benefits relied upon by the Examiner
as motivation to combine the teachings of the cited art. App. Br. 3^4; Rijke
col. 4,11. 22—30, 40-47; col. 6,11. 60-62. Appellants further argue calcium
glycerophosphate particles are dissolvable in water and the Examiner has not
shown Rijke’s compositions to include water. App. Br. 4—5.2 Appellants
assert Rijke discloses these particles provide the stated benefits while the
resin hardens and before they are dissolved and leached away with the
extracellular fluid. App. Br. 4; Rijke col. 4,11. 3—47. That is, Appellants
argue Rijke does not disclose nor desires dissolving the solid soluble
particles into the resin of the cement composition. Thus, Appellants argue
adding the solid soluble particles of Rijke to the aqueous cement
composition of GB ‘318 would result in the particles being dissolved before
the resin is hardened and before the particles are able to provide the benefits
the Examiner relies upon to support the rejection. App. Br. 5—6; Rijke col. 4,
11. 8-11,22-30, 40-47.
We agree with Appellants. As noted above, Appellants presented a
reasonable technical argument why one skilled in the art would not have
combined the solid soluble particles of Rijke with the aqueous cement
composition of GB ‘318. App. Br. 3—6. The Examiner did not address this
technical argument in the Answer. Thus, absent impermissible hindsight,
2 Appellants rely on property information for calcium glycerophosphate
taken from The Merck Index, 13th edition, O'Neil, M.J, et al., ed., Merck &
Co., Inc., Whitehouse Station, NJ, page 280 (2001). App. Br. 5.
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Appeal 2016-002470
Application 11/719,469
the Examiner has not adequately explained why one skilled in the art would
have added the solid soluble particles of Rijke to the aqueous cement
composition of GB ‘318 when Rijke discloses removing these soluble solid
particles after the resin hardens by dissolving them with into an extracellular
fluid and leaching them out. Rijke col. 3,11. 45—50; col. 4,11. 3—5; col. 7,11.
1-27.
Under these circumstances, we cannot conclude that the Examiner has
met the minimum threshold of establishing obviousness under 35 U.S.C.
§ 103(a). See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); KSRInt’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)).
Accordingly, we reverse the Examiner’s prior art rejections under 35
U.S.C. § 103(a) for the reasons presented by Appellants and given above.
ORDER
The Examiner’s prior art rejections under 35 U.S.C. § 103(a) are
reversed.
REVERSED
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