Ex Parte BethellDownload PDFPatent Trial and Appeal BoardDec 17, 201211608312 (P.T.A.B. Dec. 17, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte MICHAEL CLAY BETHELL __________ Appeal 2012-001996 Application 11/608,312 Technology Center 3700 __________ Before ERIC GRIMES, LORA M. GREEN, and SHERIDAN K. SNEDDEN, Administrative Patent Judges. SNEDDEN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to methods for treating a spinal deformity. The Examiner has rejected the claims as anticipated. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2012-001996 Application 11/608,312 2 STATEMENT OF THE CASE Appellant‟s invention relates to “methods of treating vertebral members and, more particularly, treatment methods using tethers with strength limits that prevent exertion of an excessive force on the vertebral members.” (Specification, ¶0001.) Figure 1 of the Specification is reproduced below. Figure 1 “is a schematic view of a tether attached to vertebral members with anchors.” (Id. at ¶0006.) The embodiment of Figure 1 is described in the following passage of the Specification: Figure 1 illustrates a schematic representation of a tethering system 10 that includes a tether 40 attached to vertebral members 90 with anchors 20. The tether 40 applies a tensile force to the vertebral members 90 to reduce and/or eliminate the spinal deformity. The tether 40 includes a release mechanism 30 that prevents the tether from exerting an excessive amount of force that could cause damage to the vertebral members 90. In one embodiment, the tethering system 10 is used on a patient with growth potential. The amount of tensile force applied by the tether 40 increases during growth of the vertebral members 90. The tether 40 is constructed to fail Appeal 2012-001996 Application 11/608,312 3 prior to exertion of a force that would damage the vertebral members 90. (Specification, ¶0018; emphasis added). “By way of example, the release point may be at a tensile force of about 450N when a force greater than this amount would damage the vertebral members 90.” (Specification, ¶0040.) The “release mechanism comprises the tether 40 detaching or slipping at an anchor 20.” (Specification, ¶0027.) Claims 1-3, 6, 7 and 13-16 are on appeal. Independent claims 1, 13 and 15, which are illustrative of the appealed subject matter, read as follows (emphasis added): 1. A method of treating a spinal deformity comprising: attaching a first anchor to a first vertebral member; attaching a second anchor to a second vertebral member; connecting a tether to the first and second anchors; the tether being configured to apply a corrective force to the vertebral members to treat the spinal deformity; and the tether being configured to detach from the first anchor upon reaching a tensile load limit to avoid damage to the first and second vertebral members. 13. A method of treating a spinal deformity comprising: attaching first and second anchors to a convex side of vertebral members; connecting a tether to the first and second anchors; the tether being configured to apply a corrective force to the convex side of the vertebral members that increases as the vertebral members grow; and the tether being configured to detach from the first anchor and remain attached to the second anchor upon reaching a strength limit of the tether and prior to the vertebral members being damaged. 15. A method of treating a spinal deformity comprising: Appeal 2012-001996 Application 11/608,312 4 connecting a tether to a convex side of vertebral members; the tether being configured to apply a force to the convex side of the vertebral members that increases as the vertebral members grow; and the tether being configured to detach from at least one of the vertebral members to prevent the force from increasing above a predetermined amount. The claims stand rejected as follows: I. Claims 1-3, 6, 7 and 13-16 under 35 U.S.C. §102(b) as being anticipated by Braun et al. (US 2003/0088251A1, published May 8, 2003). I. Issue The Examiner finds that “Braun provides examples of materials from which the flexible tether may be made,” that “[t]hese materials are not commonly understood by one of ordinary skill in the art to have unlimited elasticity, and thus a flexible tether made from these materials would break upon reaching some tensile load limit,” and that “[b]ecause the flexible tether of Braun is positioned such that it circles the heads of the anchors… and slides with respect to the heads of the anchors when the tether breaks, it would „separate [or] disconnect‟ from the anchors.” (Ans. 8 -9; citations omitted.) The Examiner further contends that the Specification “equates detaching with slipping or moving” and that “the Braun tether slides with respect to the anchor.” Thus, “[e]very time the Braun tether slides with Appeal 2012-001996 Application 11/608,312 5 respect to the anchor, it disengages from the anchor,” such that “[w]hen it stops sliding, it effectively reengages.” (Ans. 7-8.) Appellant contends that Braun “discloses that the tether may be flexible and can slide with respect to the head of the anchor” (App. Br. 5) and that “[n]o reasonable construction of the term „detach‟ can include a tether that slides but still remains attached to a head of an anchor” (App. Br. 6). The issue presented is: Does the evidence of record support the Examiner‟s findings that Braun discloses a tether configured to detach from an anchor or vertebral members once a threshold amount of force has been reached? Findings of Fact The following findings of fact (“FF”) are supported by a preponderance of the evidence of record. FF1. The term “detach” means “to separate, usually without violence or damage; disconnect.” (The American Heritage Dictionary, 359 (1980); see also App. Br. 5.) FF2. The term “detach” may also mean “to unfasten and separate, disengage; disunite.” (The Random House Dictionary, 2011.) FF3. The Specification discloses as follows: Another release mechanism comprises the tether 40 detaching or slipping at an anchor 20. The movement releases the tether 40 and prevents force applications above the strength limits. The tether 40 may detach or move at one anchor 20, or more than one anchor 20. (Specification, ¶[0027].) FF4. Braun Figure 18 is reproduced below: Appeal 2012-001996 Application 11/608,312 6 Figure 18 of Braun “is an anterior view illustrating the engagement of the tether to the anchors while the compressive force on the anchors is maintained through the anchor extensions.” (Braun, ¶[0021].) Elements of the embodiment of Figure 18 are described in the following excerpt of Braun: As shown in FIG. 18, first compression device 70a can then be removed. Tether 80 is advanced distally off of anchor extensions 74a, 74b and onto the platforms of the heads of anchors 130a, 130b. The attachment locations for tether 80 on the heads of the anchors 130a, 130b are spaced farther apart than anchor extensions 74a, 74b, causing tether 80 to further stretch and apply the desired compressive force to anchors 130a, 130b when loaded thereon. … The use of a flexible tether 80 preserves multiple planes of motion of the vertebrae without compromising the stabilization effect. Further, flexible tether 80 can slide with respect to the head of the anchor without compromising the stabilization effect between motion segments. A flexible tether 80 also produces less deleterious effects on spinal disc D since some range of segmental motion is preserved. The non-rigid Appeal 2012-001996 Application 11/608,312 7 attachment of the tether to the anchor protects the anchor since less forces are delivered to the anchor than would be delivered with a rigid attachment. (Braun, ¶¶ [0068] and [0070]; emphasis added.) Principles of Law “[U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102. ” Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). “[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). However, a claim element cannot be interpreted so broadly so as to read the limitation out of the claim. See Texas Instr. Inc. v. United States Int’l Trade Comm’n, 988 F.2d 1165, 1171 (Fed. Cir. 1993) (Claim language cannot be mere surplusage. An express limitation cannot be read out of the claim). Applicant must show in specification intent to re-define a term to act as own lexicographer. “Without evidence in the patent specification of an express intent to impart a novel meaning to a claim term, the term takes on its ordinary meaning.” Optical Disc Corp. v. Del Mar Avionics, 208 F.3d 1324, 1334 (Fed. Cir. 2000). Analysis We agree with Appellant. The ordinary meaning of the term “detach” refers to the separation or disengagement of elements. (FF1 and FF2; see Appeal 2012-001996 Application 11/608,312 8 also Ans. 7-8 and App. Br. 5.) We are not persuaded by the Examiner‟s arguments that the Specification clearly re-defines the term “detach” to also mean “slipping or moving.” (See FF3; Ans. 7.) Having determined the scope of Appellant‟s claims, we do not agree with the Examiner‟s findings that Braun describes an assembly configured such that a tether separates from the anchor or vertebral member upon reaching a certain force threshold. Rather, the disclosure of Braun is limited to instances where the tether slides with respect to the head of the anchor. (FF4; App. Br. 6.) Conclusion of Law We conclude that the preponderance of the evidence of record does not support the Examiner‟s conclusion that that Braun discloses a method meeting all of the limitations of claims 1, 13, 15 and dependent claims thereto (claims 2-3, 6-7, 14 and 16). SUMMARY We reverse claims 1-3, 6, 7 and 13-16 under 35 U.S.C. §102(b) as being anticipated by Braun. REVERSED alw Copy with citationCopy as parenthetical citation