Appeal 2007-1526
Application 11/035,534
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827,
1830 (Fed. Cir. 2004). In assessing a broadest reasonable claim construction
wherein a potentially exclusionary “consisting essentially of” transitional
phrase is involved, it is appropriate that Appellants bear the burden of: (1)
showing the basic and novel characteristics of their claimed invention, and
(2) establishing how those characteristics would be materially changed by
any allegedly excluded component of an applied reference. See In re
DeLajarte, 337 F.2d 870, 873-74, 143 USPQ 256, 258 (CCPA 1964);
Ex parte Hoffman, 12 USPQ2d 1061, 1063-64 (BPAI 1989).
Here, Appellants have not carried this burden by their unsubstantiated
arguments to the effect that representative claim 79 would exclude the post
treatment step of Haruyuki with hydrogen peroxide and hydrogen fluoride in
solution. In this regard, we note that claim 42, which depends from claim
79, provides for a further treatment step following the hydrofluoric acid
treatment. Thus, claim 79 is not closed to other treatment steps, which may
beneficially affect the implant biocompatibility. Moreover, Appellants
expressly indicate that they do not consider their inventive contribution to be
bound by the theory or their thoughts that biocompatibility is enhanced by
retention of fluoride on the implant surface (Specification 4: 31- 5: 2).3
Furthermore, and assuming that such a post treatment step were
excluded by representative claim 79, it is our view that it would have been
3 Indeed, U.S. Patent No. 4,330, 891, of record (referenced in the
Specification at 2) would appear to suggest that the presence of fluoride ions
was known to be beneficial to tissue growth around an implant surface (col.
4, ll. 8-28). In the event of further prosecution of the subject matter of this
application before the Examiner, the Examiner should consider whether this
patent together with other prior art of record would render any pending
claims unpatentable.
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: September 9, 2013