Ex Parte 5860973 et alDownload PDFPatent Trial and Appeal BoardMar 20, 201890013464 (P.T.A.B. Mar. 20, 2018) Copy Citation 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. 90/013,464 03/06/2015 5860973 13958-0128RX1 2815 22882 7590 03/20/2018 MARTIN & FERRARO, LLP 1557 LAKE O'PINES STREET, NE HARTVILLE, OH 44632 EXAMINER FLANAGAN, BEVERLY MEINDL ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 03/20/2018 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 WARSAW ORTHOPEDIC, INC.1 Appellant, Patent Owner ____________________ Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,9732 Technology Center 3900 ____________________ Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and DANIEL S. SONG, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON APPEAL 1 Warsaw Orthopedic, Inc. is the real party in interest (Appeal Brief (hereinafter “App. Br.”) 2). 2 Issued September 13, 2005 (hereinafter “the ’973 patent”). Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 2 Claims 1, 24, 35, 40–42, 57, and 61 are subject to reexamination, and stand rejected. The Patent Owner appeals under 35 U.S.C. §§ 134(b) and 306 from a Final Rejection of the rejected claims (App. Br. 2). We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. In addition to the Appeal Brief, the Patent Owner also relies on a Reply Brief (hereinafter “Reply Br.”), and declarations of Dr. Barton L. Sachs. Because the declaration evidence is referred to in the briefs and the Examiner’s Answer, we do not generally cite to the declarations below but instead, cite to the portions of the briefs and Answer where the evidence is discussed. We are also informed that the ’973 patent was the subject of district court infringement and validity litigation, the result of which was appealed to the Court of Appeals for the Federal Circuit that rendered its decision in Warsaw Orthopedic, Inc. et al. v. NuVasive, Inc., 778 F.3d 1365 (Fed. Cir. 2015). We discuss aspects of this decision, and the underlying decision of the district court infra. The claimed invention is directed to a spinal implant). Independent claim 1 illustrative of the claimed subject matter reads as follows (App. Br. 64, Claims App’x): 1. A translateral spinal implant for insertion from the lateral aspect of the spine in the disc space between two adjacent vertebrae, said implant having a length that is greater than one half the transverse width of the vertebrae, said length being substantially greater than the depth of the vertebrae, and a height for contacting each of the two adjacent vertebrae. Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 3 REJECTIONS 1. The Examiner rejects claims 1, 24, 35, 40, 41, 57, and 61 under 35 U.S.C. § 102(b) as anticipated by U.S. Patent No. 5,192,327 to Brantigan (iss. March 9, 1993; hereinafter “Brantigan ’327”). The Examiner also rejects various claims as unpatentable under 35 U.S.C. § 103(a) as follows: 2. Claims 1, 24, 35, 40, 41, 57, and 61 as obvious over Brantigan ’327 in view of U.S. Patent No. 4,545,374 to Jacobson (iss. Oct. 8, 1985; hereinafter “Jacobson”); 3. Claims 1, 24, 35, 40, 41, 57, and 61 as obvious over Brantigan ’327, Jacobson, and further in view of U.S. Patent No. 5,397,364 to Kozak et al. (iss. Mar. 14, 1995; hereinafter “Kozak”); 4. Claims 1, 24, 35, 40, 41, 57, and 61 as obvious over Brantigan ’327, Jacobson, and further in view of WO 92/14423 to Pisharodi (iss. Sept. 3, 1992; hereinafter “Pisharodi”); 5. Claims 41 and 42 as obvious over Brantigan ’327, Jacobson, and further in view of U.S. Patent No. 4,834,757 to Brantigan (iss. May 30, 1989; hereinafter “Brantigan ’757”); 6. Claims 41 and 42 as obvious over Brantigan ’327, Jacobson, Kozak, and Brantigan ’757; and 7. Claims 41 and 42 as obvious over Brantigan ’327, Jacobson, Pisharodi, and Brantigan ’757. We AFFIRM. ISSUES The following issues have been raised in the present appeal. 1. Whether the Examiner erred in interpreting the claims. Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 4 2. Whether the Examiner erred in concluding that the claims would have been obvious. CLAIM CONSTRUCTION The ’973 patent expired on February 27, 2015 (Final Action (hereinafter “Final Act.”) 2; 1st Decl. Sach ¶ 37). Accordingly, the claims of the ’973 patent are interpreted using ordinary and customary meaning of the terms as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history. See In re Rambus, Inc., 753 F.3d 1253, 1256 (Fed. Cir. 2014); Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Indeed, the Examiner applies the Phillips standard in interpreting the claims (Final Act. 2; Ans. 26). Entire Preamble The position of the Examiner is that the preamble language “[a] translateral spinal implant for insertion from the lateral aspect of the spine in the disc space between two adjacent vertebrae,” is merely a recitation of intended use, and thus, not entitled to patentable weight (Final Act. 5; see also Ans. 30). Nevertheless, the Examiner finds the language of the preamble “to be limiting,” and that the recitation of a translateral implant means that the implant “must be capable of being inserted from a lateral direction.” (Final Act. 3; see also Ans. 46). The Patent Owner argues that “the Examiner confusingly analyzes the preambles of independent claims 1, 35, and 61,” and argues that patentable weight should be given to the preamble (App. Br. 6–7; see also Reply Br. Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 5 11–12). In that regard, the Patent Owner argues that the preambles provide proper antecedent bases for the recited “vertebrae” and dimensions (App. Br. 8–9, 11–12), and that the preambles are “necessary to give life, meaning, and vitality to the claims.” (App. Br. 9, 11, 13; see also id. at 13–14). For the reasons that follow, we generally agree with the Patent Owner that the preamble, including its vertebrae recitation, should be given patentable weight for the reasons argued by the Patent Owner, and further find that the preamble requires the implant to be “capable of being inserted from a lateral direction.” (See Final Act. 3). “Translateral Spinal Implant” and “Translateral Spinal Fusion Implant” The Patent Owner submits arguments as to the interpretation of these terms within the preamble of the claims. The arguments pertaining to these two terms do not differ, and the term “fusion” does not play a role in the interpretation issues raised, and thus, are addressed together by the Patent Owner (see, e.g., App. Br. 17–18). Accordingly, we refer to and specifically address the limitation “translateral spinal implant” herein below. The Patent Owner asserts that: the claim term “translateral spinal implant” means a spinal implant for implantation into a human spine structured so that it is capable of direct lateral insertion to extend, coast-to-coast, across the transverse width of the disc space from proximate one lateral side to proximate the other lateral side thereof. (App. Br. 17–18). While the Examiner agrees that “translateral” means that the implant “must be capable of being inserted from a lateral direction,” the Examiner Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 6 disagrees that “translateral” requires that the implant “must extend across the transverse width of the disc space from proximal one lateral side to proximate the other lateral side.” (Final Act. 3; see also Ans. 27). In support, the Examiner notes that “col. 6, lines 45–47 states that the implant 100a ‘may extend substantially across the entire transverse width W of the vertebra V1.’” (Final Act. 3; see also Ans. 27–28). In addition, the Examiner further finds that: col. 3, lines 24–26 and 37–38, col. 6, lines 44–45 and 48–49 of the specification [of the ’973 patent], for example, state that the implant “has a length that is greater than one half of the transverse width of the vertebrae” and “has a length that is substantially greater than the depth of the vertebrae.” This is exactly what is recited in independent claims 1, 35 and 61 of U.S. Patent No. 5,860,973. This description and the claim limitations regarding the length of the implant do not require that the implant span the entire transverse width of the vertebra. (Final Act. 3–4; see also Ans. 28). We agree with the Examiner’s interpretation of “translateral spinal implant,” and address the Patent Owner’s arguments infra.3 The Patent Owner argues that the Specification of the ’973 patent uses the term “translateral” consistently, and confirms that the implants must extend coast-to-coast across the transverse width of the disc space from proximate one lateral side to proximate the other lateral side (App. Br. 21). Specifically, the Patent Owner (App. Br. 21) relies on the disclosure in the Specification that “[t]he translateral spinal fusion implant of the present invention is inserted into the spine of a patient across the transverse width of 3 We nevertheless note that the interpretation of this term is not dispositive as to Rejection 3 as discussed infra. Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 7 the vertebrae to be fused,” and that “[t]he transverse width of a vertebra is measured from one lateral aspect of the spine to the opposite lateral aspect.” (Spec., col. 3, ll. 4–9). The Patent Owner points out that the drawings and the Specification support this interpretation, and discloses that a large surface area of contact between the implant and the vertebra results (App. Br. 21–22, citing Spec., col. 6, ll. 51–57; Figs. 2, 4, and 17; see also Reply Br. 3–5). In that regard, the Patent Owner also points out (App. Br. 22; see also Reply Br. 4) that the description of Figure 2 states that “the spinal fusion implant 100 extends translaterally in the direction from one lateral aspect of the vertebrae to the opposite lateral aspect of the vertebrae.” (Spec., col. 6, ll. 14–18). However, we agree with the Examiner that the Specification of the ’973 patent referred to “actually refers to how the implant is inserted (e.g., across the transverse width of the vertebrae) and not its length dimension.” (Ans. 28). More significantly, the above noted disclosure does not diminish the fact that the Specification of the ’973 patent explicitly discloses the claim language that the spinal implant “has a length that is greater than one half of the transverse width of the vertebrae,” and “has a length that is substantially greater than the depth of the vertebrae.” (See Spec., col. 3, lines 24–26 and 37–38, col. 6, ll. 44–49; see also Ans. 28). These limitations are explicitly and clearly directed to the length of the claimed spinal implant. In contrast, the Patent Owner seeks to ascribe additional length requirement to the claimed spinal implant by interpreting the preamble term “translateral spinal implant,” which would, in effect, make the explicitly recited claim language in the body of the claims meaningless. Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 8 Moreover, the term “coast-to-coast” does not even appear in the Specification of the ’973 patent, and we do not surmise any need for ascribing a special meaning to “translateral spinal implant” beyond that ascribed by the Examiner. To interpret it otherwise, would be importing limitations described in the embodiments of the Specification of the ’973 patent. A particular embodiment appearing in the written description must not be read into the claim if the claim language is broader than the embodiment. In particular, Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). As the Examiner explained, while “the claims are interpreted in light of the specification, limitations from the specification are not read into the claims,” “[t]his is clearly a case of patent owner attempting to import limitations into the claims that are not affirmatively recited.” (Final Act. 4; see also Ans. 28–29). The Patent Owner argues that “translateral” is not merely “lateral” and that the Examiner’s interpretation treats these terms the same (App. Br. 24, 32–33), and that “[w]ith the proper weight accorded to the prefix ‘trans’ as it modifies ‘lateral,’ the meanings of ‘translateral spinal implant’ and ‘translateral spinal fusion implant’ require at a minimum that these implants be ‘structured ... to extend across the transverse width of the disc space from Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 9 proximate one lateral side to proximate the other lateral side thereof.” (App. Br. 25). In that regard, the Patent Owner analogizes that: Just like the “transcontinental” railroad that spanned from East to West across the continental U.S., the ’973 patent too makes clear that its claimed “translateral” implants similarly span from coast-to-coast (’973 patent at col. 3, lines 4–9; col. 6, lines 14–18; and Figs. 2, 4, and 17), and Figs. 2, 4, and 17 all depict an implant spanning from proximate one lateral side to proximate the other lateral side of the two adjacent vertebrae. (App. Br. 23–24). However, this argument is unpersuasive because as discussed above, the Patent Owner’s interpretation of “translateral” in the preamble makes the explicit limitations in the body of the claims pertaining to the length of the spinal implant meaningless, i.e., that the “length” be greater than one half the transverse width of the vertebrae. In addition, the analogy based on the “transcontinental” railroad is not persuasive and actually undermines the Patent Owner’s assertion because the claims do not recite a “transvertebral spinal implant.” Moreover, while the embodiments disclosed in the Specification of the ’973 patent sufficiently discloses an embodiment of the spinal implant extending across the vertebral disc space from proximate one lateral side to proximate the other lateral side, the express language in the claim, which is consistent with the broader disclosure in the Specification of the ’973 patent that explicitly utilizes the same broader dimensional language recited in the claims. The Patent Owner also argues that a broader construction of “translateral spinal implant” has been disavowed by the Specification of the ’973 patent which distinguishes smaller spinal implants, and “criticizes prior Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 10 art spinal fusion implants ‘inserted from either the front or the back of the patient,’” which limits such implants (App. Br. 25, citing Spec. col. 1, l. 65– col. 2, l. 2; see also Reply Br. 5–6 (quoting col. 3, ll. 11–17)). However, we observe that these distinctions between the smaller prior art implants and that disclosed in the ’973 patent are reflected in the explicit limitations in the body of the claim which requires “a length that is greater than one half the transverse width of the vertebrae, said length being substantially greater than the depth of the vertebrae.” As noted above, if “translateral” used in the claims meant everything that the Patent Owner asserts it means, the explicitly recited limitations within the body of the claim regarding the length of the implant would be devoid of meaning. The Patent Owner further argues that any broader construction of “translateral spinal implant” has been disavowed during the prosecution of the ’973 patent. Specifically, the Patent Owner lists the following statements: [1.] “[a]s the translateral spinal fusion implant of the present invention is inserted along the transverse width of the vertebrae, it has a different structural configuration and proportion as compared to spinal implants for insertion from either the front or the back of the patient.” (August 1996 Reply (Exhibit 1011) at pages 7–8 (emphasis added).) [2.] “[t]here is no teaching, disclosure or suggestion in for the use of a single implant that is inserted across the transverse width of the vertebrae.” (December 1995 Reply (Exhibit 1047) at page 14.) [3.] “[a]s the translateral spinal fusion implant of the present invention is inserted along the transverse width of the vertebrae, it has a different structural configuration and proportion as compared to spinal implants for insertion from either the front Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 11 or the back of the patient” and “[t]he implants that are inserted from either the front or back of the patient are necessarily limited by the depth of the vertebrae.” (December 1995 Reply (Exhibit 1047) at page 7.) (App. Br. 27–28; see also Reply Br. 7–8). However, these statements that the implant is “inserted” along/across the transverse width, or has “different structural configuration and proportion,” do not clearly establish that the recitation of “translateral” in the preambles of the claims requires the implants to “extend, coast-to-coast, across the transverse width of the disc space from proximate one lateral side to proximate the other lateral side,” and that all other implants not having such a length has been disclaimed. Moreover, as discussed supra, the limitations in the body of the claims already establish the required size of the spinal implant so as to distinguish the claimed implant from implants referred to in the above quoted passages of the prosecution history. In arguing that the preamble should be given patentable weight, the Patent Owner also notes that: the Federal Circuit found no error in the District Court’s determination that “‘said implant’ refers to ‘a spinal implant capable of being inserted translaterally.’” (Exhibit 1003 at page 6.) To be inserted “translaterally,” Patent Owner submits that the translateral spinal implant (claims 1 and 35) and translateral spinal fusion implant (claim 61) each must necessarily be structured so that it is capable of direct lateral insertion to extend, coast-to-coast, across the transverse width of the disc space from proximate one lateral side to proximate the other lateral side thereof. (App. Br. 17, fn. 4). Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 12 The Patent Owner references Warsaw Orthopedic v. NuVasive, 778 F.3d at 1368. This case affirmed a district court’s decision in a patent infringement action, and substantively addressed invalidity issues regarding the ’973 patent in the district court case Medtronic Sofamor Danek USA, Inc. et al. v. Nuvasive, Inc., Case No. 08cv1512-MMA(AJB) (S.D. Cal. 2010)(vacated and remanded on other grounds). In that regard, we agree with the Examiner that the interpretation of “translateral” as applied during the reexamination “aligns with the definition of ‘translateral’ given to the jury in the litigation involving U.S. Patent No. 5,860,973 (as submitted in Exhibit 10[0]3 at page 19 and at page 27 of Patent Owner’s December 2, 2015 response).” (Ans. 29). Indeed, the Patent Owner omits the fact that it advocated a construction in the district court trial that was similar, but slightly broader than the construction it now advocates. In particular, during the trial, the Patent Owner advocated interpreting “translateral spinal implant” to mean “an implant designed to be inserted from the side of the patient and across the transverse width of the disc space.” See Joint Claim Construction Chart, Worksheet, and Hearing Statement, filed May 27, 2009. The Patent Owner also omits the fact that in the district court case underlying the Federal Circuit’s decision, the term “translateral spinal implant” was explicitly interpreted in Order Construing Disputed Claim Terms. Medtronic v. NuVasive, Inc., 2010WL11452343 at *4.4 The district court rejected the Patent Owner’s interpretation, which is 4 Neither the Patent Owner nor its counsel Martin & Ferraro, LLP, directed the Board’s attention to the district court’s prior construction of the term at issue in the present appeal, the prior construction being left undisturbed by the Federal Court’s decision. Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 13 similar and slightly broader than that now advocated by the Patent Owner, and adopted an even broader construction, stating: The Court construes the term translateral spinal implant to mean: “a spinal implant capable of being inserted translaterally.” The Court construes the term translateral spinal fusion implant to mean: “a spinal fusion implant capable of being inserted translaterally.” 2010 WL 11452343 at *4. The district court’s interpretation did not require the implant to be inserted “across the transverse width of the disc space” as advocated during the trial, much less require the implant to “extend, coast-to-coast, across the transverse width of the disc space from proximate one lateral side to proximate the other lateral side thereof” as now advocated by the Patent Owner. The district court’s interpretation was not disturbed by the Federal Circuit which stated: The district court construed the preamble of claim 35 not to be limiting, but nonetheless instructed the jury that “said implant” refers to “a spinal implant capable of being inserted translaterally,” and that “capable” should be given its plain meaning. See J.A. 206. We see no error in the court’s determination that the claims require lateral insertion. Warsaw Orthopedic v. NuVasive, 778 F.3d at 1370. The Patent Owner’s assertion that in order to be “capable of being inserted translaterally” as interpreted by the district court and left undisturbed by the Federal Circuit, the implant must extend “coast-to-coast, across the transverse width of the disc space from proximate one lateral side to proximate the other lateral side thereof,” is contrary to the district court’s rejection of the Patent Owner’s advocated claim construction during trial, Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 14 which was similar, and even slightly broader, than the claim interpretation it now advocates in the present appeal. We do not view the district court’s interpretation of the term “translateral spinal implant” as being incomplete so as to require further interpretation as to what “translaterally” means in a circular manner. It is sufficiently clear that the term “translateral” is being interpreted by the district court as not requiring a specific length dimension. The Patent Owner did not direct our attention to the district’s court’s construction of the term, let alone distinguish it from the facts in this reexamination proceeding. The district court’s interpretation of “translateral” as not requiring a specific length dimension is further evidenced by its interpretation of the dimensional limitations in the body of the claim regarding the length of the implant, the court stating: “transverse width of the vertebrae,” does not need to be construed, and that implants less than 26 mm in length have not been disclaimed and are capable of meeting the term’s limitation. 2010 WL 11452343 at *5. In that regard, we note that the evidence of record indicates that human lumbar and thoracic vertebrae have a mean length that is greater than its depth, and is greater than 26 mm. Berry et al., A Morphometric Study of Human Lumbar and Selected Thoracic Vertebrae, 12 SPINE, 4 (1987) (hereinafter “Berry”), pg. 364, Table 1. The court’s finding that spinal implants less than 26 mm in length have not been disclaimed undercuts the Patent Owner’s unpersuasive assertion of disclaimer, and would not make sense if the recitation of “translateral spinal implant” meant that the implant Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 15 extended “coast-to-coast” across the width of the disc space, which would be greater than 26 mm. The Patent Owner asserts that the purpose of limitation “said length being substantially greater than the depth of the vertebrae” was to confirm exclusion of prior art anterior and posterior implants, end-to-end multi-piece implants, and coast-to-coast implants that fail to meet this length limitation (App. Br. 33–35, citing Spec., col. 2, ll. 7–11 (“It was not previously possible to insert an implant that had a length that was greater than the depth of the vertebrae from front to back as such an implant would protrude from either the anterior or posterior aspect of the spine resulting in great harm to the patient.”)). This argument is unpersuasive and/or not credible because as discussed supra, if “translateral spinal implant” already required the implant to extend “coast-to-coast” as asserted by the Patent Owner, such language in the body of the claim would not have been necessary, and would already exclude such prior art that are limited by the shorter depth dimension of human vertebrae. Berry, 4, pg. 364, Table 1. In addition, the claims are directed to an implant, and as such, the dimensional limitations ascribed to “translateral” in the Patent Owner’s interpretation would be required as to each implant, thereby already excluding end-to-end, or nose-to-tail implants. Furthermore, while the Patent Owner relies on testimony of inventor Mr. Michelson during the district court trial as to the purported intent of including this limitation (App. Br. 35–36), we find little probative value in such hindsight testimony of an interested party. The Examiner further interprets “translateral” to “include ‘posterolateral’ and ‘anterolateral’ approaches to the spine, as long as they Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 16 come in from somewhere on the side of the patient.” (Final Act 36). The Examiner further finds that “the specification of U.S. Patent No. 5,860,973 clearly contemplates approaches to the spine that are something other than directly lateral.” (Final Act. 36, citing Spec., col. 3, ll. 61–65). The Patent Owner disagrees, and asserts that “the lengths of the claimed implants in the ’973 patent require their direct, truly direct lateral –– not anterolateral or posterolateral –– insertion into the spine.” (App. Br. 29; see also Reply Br. 8). The Patent Owner argues the requirement for directly lateral insertion is clear from Fig. 2, col. 6, ll. 14–18, and prosecution history (App. Br. 30, citing December 1995 Reply (Exhibit 1047) at pages 6 and 14), and that the passage cited by the Examiner “clearly concerns the location of an incision at the skin, and not the direction of insertion of the implant into the disc space.” (App. Br. 31–32; see also Reply Br. 8–9). In addition, according to the Patent Owner, “the claimed translateral spinal implant and translateral spinal fusion implant must necessarily be capable of being inserted into a disc space from a direct lateral direction,” and “due to the claimed spinal implants’ sizes, not inserting the claimed implants from a direct lateral direction into the disc space could risk damage to the surrounding anatomical structures of the patient.” (Reply Br. 8). While the Patent Owner is correct that the passage cited by the Examiner only pertains to the incision at the skin, we disagree with the Patent Owner that “translateral” requires “directly lateral.” Firstly, as the Examiner observes, “the term ‘directly lateral’ is neither defined nor depicted” in the ’973 patent (Ans. 37). As to the cited a portion of the Specification, it does not use the term “direct lateral,” and the Patent Owner Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 17 again seeks to import limitations from the preferred embodiment into the preamble term “translateral.” In addition, the cited portions of the prosecution history pertain to the length limitation and assert that prior art implants were inserted from either the front or the back of the patient, but do not associate “directly lateral” with the “lateral” term that is actually used in the claim, much less associate “directly lateral” with the term “translateral.” In fact, the preamble which utilizes the term “translateral” at issue, merely states “for insertion from the lateral aspect of the spine,” and not “directly lateral aspect.” Secondly, we observe that the claims are apparatus claims, and not method claims directed to a method of inserting a spinal implant. As such, as the Patent Owner states in its Reply Brief, the claim requires a spinal implant device that is capable of use via direct lateral insertion. Citing to the Answer’s discussion of the asserted disavowal, the Patent Owner asserts that the Examiner’s statement that “[i]t is clear from the specification of the ’973 patent that the invention pertains to a spinal implant that is larger than those previously patented or known in the prior art,” (Ans. 33), is an admission by the Examiner, which reinforces the Patent Owner’s claim construction of “translateral spinal implant” advocated (Reply Br. 2). However, we observe that the immediately following sentence states “[h]owever, this discussion does not preclude application to the claims of prior art that teaches a spinal implant meeting the claimed limitations,” and refers to lack of disclosure as to “direct lateral” and the discussion of Brantigan ’327 (Ans. 33, emphasis added). Thus, in context, the statement that the Patent Owner asserts as being an “admission” is actually a statement about what the Specification of the ’973 patent presents Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 18 its invention to be, i.e., a spinal implant that is larger than those previously patented or known in the art. The Patent Owner’s understanding of this statement of the Examiner also does not take into the full context of the Office Action in which the anticipation rejection based on Brantigan ’327 (Rejection 1) is maintained. In view of the above considerations, we conclude the Examiner’s interpretation of “translateral spinal implant” and “translateral spinal fusion implant” is supported by a preponderance of the evidence and consistent with prior court interpretations, and therefore reject the Patent Owner’s assertion that these terms require a spinal implants that “extend, coast-to- coast, across the transverse width of the disc space from proximate one lateral side to proximate the other lateral side thereof.” (App. Br. 17–18). We further disagree with the Patent Owner’s assertion that the preamble language “translateral” connotes “directly lateral” as asserted. ANALYSIS We note that only those arguments timely made in the briefs of record in this appeal have been considered. Other arguments not made or those not properly presented to the Board have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37 (c)(1)(iv). In that regard, the Patent Owner only submits arguments relative to independent claims 1, 35, and 61, and does not separately argue claims ultimately depending therefrom. Accordingly, the dependent claims stand or fall with the corresponding independent claim from which they depend. We also consider the rejections and arguments in an order that differs from that presented. Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 19 Rejection 2 Claims 1, 24, 35, 40, 41, 57, and 61 as obvious over Brantigan ’327 in view of Jacobson. The Patent Owner relies on arguments set forth relative to the anticipation Rejection 1. Accordingly, we cite to portions of the record that address Rejection 1, and the Examiner’s findings with respect to Brantigan ’327, in addressing the present obviousness rejection, which further relies on Jacobson. The Examiner finds to the extent the preamble is limiting, Brantigan ’327 teaches a translateral spinal implant capable of being inserted “from the lateral aspect of the spine in the disc space between two adjacent vertebrae.” (Final Act. 6). Specifically, the Examiner finds that “Brantigan ’327 teaches a spinal fusion implant 10 that can be inserted either anteriorly, posteriorly or laterally into the vertebral column.” (Final Act. 8, citing Brantigan ’327, Figs. 1 and 6; col. 2, ll. 64–66 and col. 6, ll. 61–66). Indeed, the Specification of Brantigan ’327 discloses that: the plugs can be inserted either anteriorly, posteriorly or laterally into the vertebral column while mounted on the end of an insertion tool. (Brantigan ’327, col. 2, ll. 64–66, emphasis added). the plugs of this invention such as the plugs 11 or a stack of the plugs, are inserted into the opened up disc space such as 70 between adjacent vertebrae 71 and 72, either anteriorly, laterally or posteriorly while mounted on a tool 73 having a single end 73a threaded into the internally threaded hole 13 of the plug 11 as illustrated in FIG. 13. (Brantigan ’327, col. 6, ll. 62–68, emphasis added). We also find that Brantigan ’327 further discloses: Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 20 The invention now provides vertebral prosthetic implant devices suitable for anterior, posterior or lateral placement in any area of the spine requiring replacement of disc or vertebral body. (Brantigan ’327, col. 2, ll. 55–58, emphasis added). The individual plugs or the stack of plugs can be introduced anteriorly, laterally or posteriorly depending upon conditions and the tool receiving recesses 13 and 23 of the plugs 11 and 21 can thus be positioned to meet the particular type of insertion into the vertebral column. (Brantigan ’327, col. 5, ll. 30–35, emphasis added). The Examiner also finds that: Jacobson teaches a direct lateral approach to the spine and access equipment to effectuate that access (see, e.g., Figs. 1–8). Jacobson also teaches that the laterally positioned access cannula 11 provides an access corridor through which a variety of procedures may be performed at the spinal disc space, including fusion (see col. 6, lines 3–13). Jacobson thus clearly discloses using a lateral approach to place a spinal fusion implant. (Final Act. 11; see also id. at 22–23). The Examiner concludes that: In light of the disclosure of Brantigan ’327 as set forth above and in view of the teachings of Jacobson, it would have been obvious for one of ordinary skill in the art at the time the invention was made to use a lateral approach to place the spinal fusion implant of Brantigan ’327. (Final Act. 11; see also id. at 22–23). In the context of Rejection 1, the Patent Owner argues that: Brantigan ’327 does not disclose either a translateral spinal implant or a translateral spinal fusion implant that is structured so that it is capable of direct lateral insertion to extend, coast-to- coast, across the transverse width of the disc space from Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 21 proximate one lateral side to proximate the other lateral side thereof. (App. Br. 57). However, the argument that Brantigan ’327 fails to disclose an implant that extends “coast-to-coast, across the transverse width of the disc space,” is premised on the Patent Owner’s erroneous claim interpretation, and thus, unpersuasive. In addition, the Patent Owner’s argument that the implant of Brantigan ’327 is not capable of direct lateral insertion is contrary to the explicit disclosure therein as reproduced above. Relevant thereto, we observe that in Warsaw Orthopedic v. NuVasive, the validity challenge to the ’973 patent was whether claim 35 of the ’973 patent was “anticipated and obvious in light of two prior art references: spinal implants used by surgeon Dr. John Brantigan before the critical date and U.S. Patent No. 5,192,327 to Brantigan.” 778 F.3d at 1370. In its decision, the Federal Circuit stated: Warsaw also presented substantial evidence to the jury distinguishing the ’973 patent from the Brantigan references. Warsaw argued that the Brantigan references were not “capable” of lateral insertion because (1) the FDA had not approved the implant for lateral insertion, (2) the ridges, grooves, and tool holes of the Brantigan references suggested they were intended for anterior or posterior insertion, not lateral insertion, and (3) the lack of tapering or rounding on the Brantigan implant made it ill-suited for lateral insertion. Because there was substantial evidence for the jury to conclude that the Brantigan references did not teach an implant capable of lateral insertion, the jury was entitled to find that the Brantigan references did not anticipate or render obvious the asserted claims of the ’973 patent. Id. Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 22 Nevertheless, it is unclear whether the passages of Brantigan ’327 set forth above explicitly disclosing lateral insertion of the spinal implant was fully appreciated by the jury during the trial, and the Federal Circuit’s determination appears to be limited to whether there was a substantial evidence for the jury’s conclusion based on the enumerated reasons identified in the decision. In this regard, we further note that findings with respect to Brantigan ’372 were also addressed by the Federal Circuit in In re Warsaw Orthopedic, Inc., which was an appeal of two Inter Partes Review decisions by the Board,5 canceling certain claims of U.S. Patent No. 8,251,997,6 which is related to the subject ’973 patent. 832 F.3d. 1327, 1333 (Fed. Cir. 2016). In In re Warsaw Orthopedic, the Federal Circuit affirmed the Board’s obviousness rejection of various claims of the ’997 patent based on the combination of Brantigan ’372 and Jacobson stating that: In any event, the record belies Warsaw’s argument that the Brantigan implants were not designed for lateral implantation. 5 In re Warsaw Orthopedic involved an appeal from two decisions of the Board: NuVasive, Inc. v. Warsaw Orthopedic, Inc. (NuVasive I), IPR2013– 00208, 2014 WL 3422010 (PTAB 2014); and NuVasive, Inc. v. Warsaw Orthopedic, Inc. (NuVasive II), IPR2013–00206, 2014 WL 3422008 (PTAB 2014) (See also Request for Reexamination 83). 6 Specifically, the ’997 patent is entitled “Method for Inserting an Artificial Implant Between Two Adjacent Vertebrae Along a Coronal Plane,” and issued from application Serial No. 13/306,583, which, through a chain of continuations and division, is a child of application Serial No. 08/394,836. The presently reexamined ’973 patent, through a chain of continuation and continuation-in-part applications, is also a child of the same ’836 application. Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 23 Brantigan col. 6 ll. 62–68 (“[T]he plugs of this invention ... are inserted into the opened up disc space ... either anteriorly, laterally[,] or posteriorly....”). In re Warsaw Orthopedic, 832 F.3d at 1333 (alteration in original).7 The Patent Owner also argues that despite the above disclosure as to lateral insertion “Brantigan ’327 does not disclose direct lateral insertion of the implants,” pointing out that Brantigan ’327 also discloses that its implant can be introduced anteriorly or posteriorly “depending on conditions.” (App. Br. 57 (emphasis added), citing Brantigan ’327, col. 5, ll. 30–32). The Patent Owner also asserts that “Brantigan ’327 uses the term ‘laterally’ to mean to the side of the mid-sagittal line instead of meaning from the lateral side of the intervertebral space or along a direct lateral path to the spine[].” (App. Br. 57–58). These arguments are unpersuasive for various reasons. Firstly, neither the claims nor the Specification of the ’973 patent use the term “direct lateral insertion.” In addition, this argument fails to recognize that the alternative anterior/posterior insertion disclosed in Brantigan ’327, does not diminish its explicit disclosure of lateral insertion. In that regard, we agree with the Examiner that the Patent Owner’s argument: presuppose[s] that the implant of Brantigan ’327 is not and cannot be inserted laterally, which contradicts the disclosure of Brantigan ’327 and the disclosure of U.S. Patent No. 5,860,973 which states that the implant, which is designed for lateral insertion, can be inserted anteriorly or anterolaterally (see col. 3, lines 61-65 of U.S. Patent No. 5,860,973). 7 For unexplained reasons, neither the Patent Owner nor its counsel Martin & Ferraro, LLP, directed the Board’s attention to the related IPR proceedings or the resultant Federal Circuit decision. Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 24 (Answer 37–38). Furthermore, the rejection at hand is an obviousness rejection wherein the Examiner rejected the claims concluding that “in view of the teachings of Jacobson, it would have been obvious for one of ordinary skill in the art at the time the invention was made to use a lateral approach to place the spinal fusion implant of Brantigan ’327.”8 (Final Act. 11; see also id. at 22–23). Jacobson discloses a method of spinal surgery performed using a lateral approach to the intervertebral space (Jacobson, col. 5, ll. 1–3, 27–28, 49–51; col. 8, ll. 53–55; Figs. 1–6), and these teachings are relied upon by the Examiner in combination with the teachings of Brantigan ’327. As to the assertion that Brantigan ’327 meant side of the mid-sagittal line when using the term “lateral,” we are not provided with persuasive evidence in support of this interpretation. The Patent Owner refers to its own characterizations of Brantigan ’327 in its First Response submitted during the prosecution of the ’973 patent (App. Br. 58). However, such statements of the Patent Owner do not persuasively establish the meaning of the term as used in Brantigan ’327. To the contrary, as the Examiner notes, “Dr. Brantigan testifies that his references to ‘lateral’ in the ’327 patent meant a ‘direct lateral approach.’” (Final Act. 36, citing Trial Transcript of Dr. Brantigan, dated Sept. 8, 2011, pg. 8; see also Ans. 36). In the context of Rejection 1, the Examiner also found that even if the preamble is limiting: 8 Similar conclusions of the Board in the relevant IPR proceedings regarding the related ’997 patent were left undisturbed by the Federal Circuit in In re Warsaw Orthopedic, 832 F.3d at 1332. Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 25 Figures 10 and 11 of Brantigan ’327 clearly show that the implant 11 has a length that is greater than one half of the transverse width of the vertebrae. Although Brantigan ’327 does not show a top view, Figures 1 and 10 show sufficiently that the length of the implant 11 is substantially greater than the depth of the vertebrae. (Final Act. 20). The Patent Owner disputes this finding, arguing that Figure 10 of Brantigan ’327 fails to disclose an implant having a length that is “substantially greater than the depth of the vertebrae” because it shows that “the long horizontal slots 11e of the plugs 11 are extending side-to-side in the disc space 54” such that the longest dimensions of the plugs 11 are not actually shown in Figure 10, and instead, the longest dimensions extend into the page (App. Br. 39–41). Accordingly, the Patent Owner argues that: if the longest dimensions of the implants of Fig. 10 of Brantigan ’327 are “into the page,” then the longest dimensions of the implants would necessarily be less than the depth of the vertebrae, which would comport with the disclosure of Brantigan ’327. (Second Sachs Declaration (Exhibit 1046) at ¶ 31.) A necessary corollary to this conclusion is that the shorter dimension of the Brantigan ’327 implant is also less than the depth of the vertebrae. (App. Br. 41–42). However, this argument is not dispositive because Figures 10 and 11 do not define the boundaries of Brantigan ’327’s disclosure in its Specification, which is broader in scope than the exemplary embodiments illustrated in Figures 10 and 11. In that regard, the Specification of Brantigan ’327 discloses that its implant may be oval and “generally shaped and sized to conform with the disc space between adjoining vertebrae in a Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 26 vertebral column.” (Brantigan ’372, col. 4, ll. 5–8). The evidence of record indicates that the mean width of a human vertebrae is substantially greater than its mean depth (see Berry, pg. 364, Table 1). Accordingly, it is evident that when an oval spinal implant is “generally shaped and sized to conform with the disc space between adjoining vertebrae” as disclosed in Brantigan ’327, such an implant would have had, and it would have been obvious for a spinal implant to have had, a length that is “substantially greater than the depth of the vertebrae” as required by the claim language. In that regard, the subject matter of the ’997 patent In re Warsaw Orthopedic was closely related to the subject matter of the ’973 patent, as shown in claim 1 of the ’997 patent reciting, inter alia: [i]nserting ... a non-bone interbody intraspinal implant ..., the length of said implant being sized to occupy substantially the full transverse width of the vertebral bodies of the two adjacent vertebrae, the length of said implant being greater than the depth of the disc space. (’997 patent, col. 23, ll. 19–39, claim 1, emphasis added). In fact, the Federal Circuit characterized the appeals of the IPR decisions stating “[t]hese appeals principally concern the length of the implant recited in the ’997 patent’s independent claims.” In re Warsaw Orthopedic, 832 F.3d at 1330. The court upheld the Board’s rejection stating that “[s]ubstantial evidence supports the PTAB’s finding that Brantigan teaches an implant that spans substantially the full width of a vertebra.” Id. at 1332. Moreover, the Federal Circuit also left undisturbed, the Board’s conclusion that: [It] would have been obvious to one of ordinary skill in the art that an implant that is “sized to conform with the disc space,” as Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 27 disclosed by Brantigan, would have occupied at least a length that is less than the full transverse width of the vertebral bodies by an insubstantial amount (i.e., occupying “substantially” the full transverse width). Otherwise, an implant that does not occupy “substantially” the full transverse width would not have been sized to conform to the disc space, in contrast to Brantigan’s disclosure that the implant is, in fact, sized to conform to the disc space. In re Warsaw Orthopedic, 832 F.3d at 1332 (quoting NuVasive I, 2014 WL 3422010, at *9). Related to the above, the Patent Owner also argues that: Brantigan ’327 discloses that its implants are “conforming in shape and size with hard end plates of vertebrae on which it is to be seated” (Brantigan ’327 at col. 7, lines 32–34) also does not disclose an implant with any dimension “being substantially greater than the depth of the vertebrae.” An “end plate,” like the implants of Brantigan ’327, occupy only a portion of the transverse width of a vertebra. (Declaration of Dr. Sachs (Ex. 1005) ¶ 43; and Second Sachs Declaration (Exhibit 1046) at ¶ 36.) (App. Br. 50). These arguments are unpersuasive. Firstly, with respect to the first cited quotation of Brantigan ’327 and “hard end plates,” the Patent Owner quotes claim 1 of Brantigan ’327, and does not refer to its broader Specification, which discloses an oval implant “generally shaped and sized to conform with the disc space between adjoining vertebrae in a vertebral column.” (Brantigan ’372, col. 4, ll. 5–8). Accordingly, in accordance with the full scope of disclosure of Brantigan ’372, such an implant that is shaped and sized to conform with the disc space would have had, and it would have been obvious for such an implant to have had, a length that is “substantially Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 28 greater than the depth of the vertebrae” as required by the claim language.9 To the extent that the Patent Owner may again be asserting a “coast-to- coast” requirement, we again disagree with the Patent Owner’s claim construction. The Patent Owner further argues that “Jacobson does not disclose a spinal implant or a spinal fusion implant having a length in the direction of insertion ‘being substantially greater than the depth of the vertebrae’” as required by independent claims 1, 35, and 61 (App. Br. 51–52). However, this argument is misdirected because the Examiner relies on Brantigan ’327 for disclosing the implant, and Jacobson for disclosing using a lateral approach to place a spinal fusion implant (Final Act. 11). As the Examiner explains, “Jacobson is being utilized as a teaching of lateral access to the 9 In In re Warsaw Orthopedic, the Federal Circuit did not reach the argument that “Brantigan does not disclose implants with a length—or any dimension—‘greater than the depth of the disc space,’” because it was not properly raised, and thus, waived. 832 F.3d at 1333. As such, the court did not disturb the Board’s conclusion that: regardless of whether the Brantigan implants may be rotated or reversed, “Brantigan discloses that the implant is ‘sized to conform with the disc space,’ which one of ordinary skill in the art would have understood to mean sized to occupy substantially the full transverse widths of the vertebral bodies for reasons previously stated.” NuVasive I, 2014 WL 3422010, at *11. In re Warsaw Orthopedic, 832 F.3d at 1333. This rationale would have been equally applicable to the depth dimension in that when the implant is sized to conform with the disc space, the length of the implant would be “substantially greater than the depth of the vertebrae.” Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 29 spine to perform a procedure and does not need to specifically describe placing a spinal implant, much less one with the specific structure of the one disclosed in U.S. Patent No. 5,860,973.” (Ans. 41). The Patent Owner, relying on the testimony of Dr. Sachs, also asserts that “[r]ather than disclosing a direct lateral approach to the spine, Jacobson actually discloses a posterolateral approach to the spine.” (App. Br. 59; see also id. at 59–60).10 However, this line of argument and the declarant’s testimony is unpersuasive.11 Firstly, this argument is premised on an improper claim construction, and is not persuasive as to the patentability of the claimed spinal implant device. More importantly, as already noted, Jacobson clearly discloses a method of spinal surgery performed using a “lateral” approach to the intervertebral space (Jacobson, col. 5, ll. 1–3, 27– 28, 49–51; col. 8, ll. 53–55; Figs. 1–6). Neither the claims at issue nor the Specification of the ’973 patent utilizes the term “direct lateral,” but instead, uses the term “lateral,” just like the disclosure of Jacobson. Moreover, we observe that this rejection is that of obviousness, and to any extent that Jacobson does not disclose a “direct lateral” approach, such lateral approach 10 We note that the Requester has asserted that the Patent Owner has advocated a contrary position that Jacobson discloses a direct lateral approach through its expert Dr. Watkins in other IPRs of patents owned by the Requester (see Request for Reexamination 82–83, 84–85). 11 While we do not rely on the following, we note that similar arguments of the Patent Owner characterizing Jacobson were found unpersuasive and addressed in the IPR proceedings relative to the related ’997 patent. See NuVasive, Inc. v. Warsaw Orthopedic, Inc., 2014 WL 3422010 at *4–*8; NuVasive, Inc. v. Warsaw Orthopedic, Inc., IPR2013–00206, 2014 WL 3422008 at *5–*9. For unexplained reasons, none of this information was brought to the Board’s attention by the Patent Owner or its counsel. Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 30 would have been obvious in view of its teaching, or in view of the combined teachings with Brantigan ’327, which discloses a laterally insertable spinal implant as already discussed supra. Therefore, in view of the above considerations, Rejection 2 of claims 1, 24, 35, 40, 41, 57, and 61 as unpatentable over the combination of Brantigan ’327 and Jacobson is affirmed. Rejection 3 Claims 1, 24, 35, 40, 41, 57, and 61 also stand rejected as obvious over Brantigan ’327 and Jacobson for the reasons set forth in Rejection 2, and further in view of Kozak. The Examiner finds, and concludes, that: Kozak teaches resting the implant within the disc space so that it sits on the hardest/strongest bone at the outer periphery of vertebrae known as the ring apophysis (see Figs. 1, 2A and 3, col. 5, lines 35–46 and col. 9, lines 58–62). Figure 3 of Kozak shows that the implant can span nearly the full length of the transverse width of the adjacent vertebrae. To the extent that Brantigan ’327 does not teach spanning nearly the full transverse width of the adjacent vertebrae from apophyseal ring to apophyseal ring, Kozak teaches that it is well known in the art. Thus, it would have been obvious for one of ordinary skill in the art at the time the invention was made to make the spinal fusion implant of Brantigan ’327 extend nearly the full transverse width of the adjacent vertebrae, in the manner disclosed by Kozak. (Final Act. 13–14; see also id. at 24–25). We agree with the Examiner’s findings and conclusion of obviousness. The Patent Owner argues that “none of the components of the device 20 of Kozak have a length in the direction of insertion that is substantially Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 31 greater than depth of the vertebrae.” (App. Br. 52). The Patent Owner also argues that components of Kozak are inserted anteriorly (App. Br. 52; see also id. at 61–62). However, these arguments are unpersuasive because it is not material that components of Kozak’s implant are smaller than the depth of the vertebrae. The rejection and reliance on Kozak is based on sizing of the spinal implant of Brantigan ’327 (Final Act. 14) to any extent that it does not disclose this limitation. Figures 2 and 3 of Kozak clearly illustrate that “the art was well aware of spinal implants spanning the full transverse width of the vertebrae,” such dimension satisfying the claim limitation of “having a length that is greater than one half the transverse width of the vertebrae, said length being substantially greater than the depth of the vertebrae.” (Ans. 43; Kozak, Figs. 2 and 3). Moreover, while Kozak may disclose anterior insertion, as discussed supra, Jacobson discloses lateral approach (and Brantigan ’327 discloses laterally inserted spinal implant as well). The Patent Owner also argues that “the ’973 patent and Kozak teach opposite approaches to spinal implants” and the claimed invention “permits a single implant to be inserted by a single procedure.” (App. Br. 53). This argument is also unpersuasive. We again note that the claims at issue are not method claims, but rather, are directed to a device having certain dimensions. Moreover, we observe that Brantigan ’327 is a single implant that is inserted by a single procedure, and Kozak was relied upon “to make the spinal fusion implant of Brantigan ’327 extend nearly the full transverse width of the adjacent vertebrae.” (Final Act. 13–14). The Patent Owner further argues that “[i]f sized according to the device 20 of Kozak (which a POSITA would not actually do), the implants Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 32 of Brantigan ’327 at the very least could not be rotated or reversed and Brantigan ’327’s key teaching that purports to simplify the surgical procedure would be belied by its combination with Kozak.” (App. Br. 54). This argument is also unpersuasive. The Patent Owner relies on the single sentence in Brantigan ’327 stating “[t]he oval shape simplifies the surgical procedure since it can be rotated or reversed and still fit the vertebrae.” (Brantigan ’327, col. 2, ll. 24–25). However, we observe that this sentence refers to the “oval shape” of the implant, and not specifically its size which is the basis of the rejection. Furthermore, we note that: a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine. See [Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000)] (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). As noted above, the Examiner correctly finds that “Kozak teaches resting the implant within the disc space so that it sits on the hardest/strongest bone at the outer periphery of vertebrae known as the ring apophysis (see Figs. 1, 2A and 3, col. 5, lines 35–46 and col. 9, lines 58– 62).” (Final Act. 13–14). To any extent that the suggested sizing of the implant of Brantigan ’327 would have impeded its ability to be rotated or reversed, we find that such a trade-off would have been desirable to one of ordinary skill in the art in applications when it is important to ensure that the Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 33 spinal implant sits on the hardest/strongest bone at the outer periphery of vertebrae as taught by Kozak (Kozak, col. 5, ll. 43–45). Finally, this rejection, which relies on Kozak together with Brantigan ’327 and Jacobson, is not impacted even if we were to adopt the Patent Owner’s claim construction that “translateral spinal implant” means a spinal implant that extends “coast-to-coast, across the transverse width of the disc space from proximate one lateral side to proximate the other lateral side thereof” as asserted (see App. Br. 17–18). As discussed supra, Kozak clearly teaches that dimensioning of spinal implants to extend “coast-to- coast, across the transverse width of the disc space from proximate one lateral side to proximate the other lateral side thereof” was well-known in the spinal implant art (see Kozak, Figs. 2, 3). Therefore, in view of the above considerations, Rejection 3 of claims 1, 24, 35, 40, 41, 57, and 61 as unpatentable over the combination of Brantigan ’327, Jacobson, and Kozak, is affirmed. Rejections 5 and 6 Claims 41 and 42 ultimately depend from independent claim 35, and stand rejected as obvious over Brantigan ’327, Jacobson, and Brantigan ’757 (Rejection 5), or in further combination with Kozak (Rejection 6). The Patent Owner does not separately argue these claims or rejections. Accordingly, claims 41 and 42 fall with independent claim 35 as rejected in Rejections 2 and 3. Rejections 5 and 6 are affirmed. Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 34 Rejection 4 Claims 1, 24, 35, 40, 41, 57, and 61 also stand rejected as obvious over Brantigan ’327, Jacobson, and further in view of Pisharodi. However, as discussed supra, we affirm the Examiner’s rejection of these claims relative to Rejections 2 and 3. Correspondingly, we decline to reach Rejection 4. Rejection 7 Claims 41 and 42 also stand rejected as obvious over Brantigan ’327, Jacobson, Pisharodi, and Brantigan ’757. However, as discussed supra, we affirm the Examiner’s rejection of these claims relative to Rejections 5 and 6. Correspondingly, we decline to reach Rejection 7. Rejection 1 Claims 1, 24, 35, 40, 41, 57, and 61 further stand rejected as anticipated by Brantigan ’327. However, these claims remain rejected as obvious for the reasons discussed supra relative to Rejections 2 and 3. Correspondingly, we decline to reach Rejection 1. CONCLUSIONS 1. Rejections 2 and 3 of claims 1, 24, 35, 40, 41, 57, and 61 are affirmed. 2. Rejections 5 and 6 of claims 41 and 42 are affirmed. 3. Rejections 1, 4, and 7 are moot and we decline to reach them. Appeal 2018-000540 Reexamination Control 90/013,464 Patent No. 5,860,973 35 Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation