Ex Parte 5860973 et al

Patent Trial and Appeal Board

Mar 20, 2018

90013464 (P.T.A.B. Mar. 20, 2018)

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”).
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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.

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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.
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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.
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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
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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.
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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.
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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
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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
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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
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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).
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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.
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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,
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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
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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
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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
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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
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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.
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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:
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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
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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.
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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.

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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.
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(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.
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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
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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
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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
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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.”

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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.
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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
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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
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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
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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.

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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