Ex Parte Chin et al

Patent Trial and Appeal BoardJan 2, 2014

11609988 (P.T.A.B. Jan. 2, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KINGSLEY R. CHIN, DANIEL R. BAKER, AND DANIEL F. JUSTIN ____________ Appeal 2012-002311 Application 11/609,988 Technology Center 3700 ____________ Before JENNIFER D. BAHR, JAMES T. MOORE, and BEVERLY M. BUNTING, Administrative Patent Judges. JAMES T. MOORE, Administrative Patent Judge. DECISION ON APPEAL The Appellants1 seek relief from the final rejection of claims 1-14 under 35 U.S.C. § 6(b). We have jurisdiction pursuant to 35 U.S.C. § 134. For the reasons stated hereinafter, we affirm-in-part the rejections of record. 1 The real party in interest is Spinefrontier, LLS. (App. Br. 2). Appeal 2012-002311 Application 11/609,988 2 BACKGROUND The present invention relates to an implant for use in spinal stabilization by attaching the implant to the spinous processes along one or more vertebrae. (Specification, page 1, lines 15-17). Claims 1-28 are pending. Claims 15-28 are withdrawn from consideration. Claims 1-14 have been rejected in the final office action and are the subject of the present appeal. Claim 1 is reproduced below: 1. An implantable assembly for stabilization of spinous processes, comprising: a k-shaped component comprising an elongated plate and top and bottom deformable plates extending at non-zero value first and second angles from a first surface of said elongated plate, respectively, thereby defining first and second spaces between said elongated plate and said top and bottom deformable plates; a compression element configured to compress and move said first and second deformable plates toward said elongated plate and to change said first and said second angles, respectively; wherein said first and second spaces are configured to receive first and second spinous processes, respectively; and wherein said moving of said first and second deformable plates toward said elongated plate results in engaging said first surface of said elongated plate and first surfaces of said top and bottom deformable plates with lateral surfaces of said first and second spinous processes, respectively. For ease of reference, an embodiment of the presently claimed invention is reproduced below from Figure 5: Appeal 2012-002311 Application 11/609,988 3 The Appellants’ figure 5 depicts a side plan view of a device according to the present invention THE REJECTIONS Claims 1-6, 13, and 14 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Gainor (US 2004/0002764 A1, pub. Jan. 1, 2004). Claims 7-12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gainor in view of Ferree (US 2007/0067040 A1, pub. March 22, 2007). ANALYSIS I. The Rejection under 35 U.S.C. § 102(b) Claims 1, 3-6, 13, and 14 Claims 1-6, 13, and 14 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Gainor. The Appellant argues claims 1, 3-6, 13, and 14 and claim 2 as separate groups. We select claim 1 as representative of the first group, treating Appeal Applica claims 3 C.F.R. § M “k”-sha plates a reader v F T 35 U.S. F (citing G urged, i materia (Examin In Placing minor. 2012-0023 tion 11/60 -6, 13 and 41.37(c)( ore specif ped compo t non-zero isualize, F igure 4 de he Appell C. § 102(b irst, the Ap ainor, par ts outer reg ls in Gaino er’s Answ this regar the materi Moreover 11 9,988 14 as stan 1)(vii) (20 ically, the nent with angles and igure 4 of picts an ex ants raise f ). pellants u agraph [0 ions 70 ar r would b er, page 9 d, a prepo als under c , Gainor se ding or fa 11). Examiner an elonga a compre Gainor is ploded vie our assert rge that G 039]). (Ap e likewise e capable o ). nderance o ompressiv ems to inh 4 lling with has found ted plate a ssion elem reproduce w of an em ions of err ainor’s sec peal Brief rigid. Id. f undergo f the evid e stress ca erently ac representa that Gain nd deform ent. Answ d below. bodimen or as regar ond mem , page 5). The Exam ing at leas ence supp n cause d cept this p tive claim or describ able top an er, page 5 t of the Ga ds the reje ber 54 is a As a cons iner coun t some cha orts the Ex eformation ossibility 1. See 37 es the claim d bottom . To help inor devic ction unde “rigid” bo equence, it ters that t nge in sha aminer. , even if in paragrap ed the e r dy is he pe. h Appeal Applica [0040], from a “ A 6A and 6B have compre specific or straig G 2012-0023 tion 11/60 lines 1 to 2 relatively dditionall 6B is urge thus been ssion of th ally descri hten” elon ainor’s fig Figu 11 9,988 , where it rigid” mat y, later in t d while ar brought t e elongate be a tighte gated firs ures 6A a res 6A an states that erial. he Appell guing abou o our spec d first mem ning mem t member 5 nd 6B are d 6B are c Embodime 5 the secon ants’ brief t a compr ific attenti ber. The ber, used, 2. (Appe reproduce ross sectio nt of the G d member , a certain ession ele on regardi figures an as the App al Brief, p d below. nal views ainor dev is prefera interpretat ment. Fig ng effects d written ellants sta age 5). of a comp ice bly formed ion of Fig ures 6A an of description te, to “unf ression ures d old Appeal 2012-002311 Application 11/609,988 6 Consequently, in light of the Examiner’s findings and the Appellants’ arguments, we find no error in the Examiner’s finding that the members of Gainor are deformable and not rigid. Second, the Appellants urge that the second member outer regions 70 are parallel to the first member, and therefore cannot be at a non-zero first and second angle from the first surface. (Appeal Brief, page 5). The Examiner observes that the top and bottom plates extend in multiple directions in space which have non- zero angles to the elongated plate. (Examiner’s Answer, page 5). Again, a preponderance of the evidence of record supports the Examiner’s position that Gainor anticipates the broadly-worded claim language. The top and bottom plates are distanced from the elongated plate in a step-wise fashion at almost right angles. Accordingly, we are not persuaded by this argument. Third, the Appellants argue that Gainor lacks a compression element, in that the reference element 108 is a shaft that causes the first member 52 to unfold or straighten. (Appeal Brief, page 5). The Examiner adequately explains that element 108 has a head 109 (see figures 6A and 6B above) which enables the top and bottom plates to move towards the elongated plate, as seen in figures 5 and 6. (Examiner’s Answer, page 10). Gainor’s figure 5B is reproduced below in part. Appeal Applica Fig T Figure 5 the post e.g. Gai W support claim 1 C W equivale (Appeal C 2 c p th b T element bottom 2012-0023 tion 11/60 ure 5B is here are se B is partic 84, drawi nor, parag e therefor s the Exam , and claim laim 2 ith respec nt to a pla Brief, pag laim 2 is r . The a omprises a lates and a rough-bor ottom defo he Examin comprisin deformabl 11 9,988 a partial c veral com ularly rele ng the resp raph [0047 e conclud iner’s find s 3-6, 13, t to claim te placed e 6.) eproduced ssembly o plate plac bolt confi e opening rmable pl er has fou g a plate ( e plates (s ross-sectio pression e vant. It d ective pla ]). e that a pre ings. For and 14 fal 2, the App on the top below: f claim 1 w ed on top gured to p s formed i ates and th nd that Ga Reference ee Figure 4 7 nal drawin mbodimen escribes th tes togethe ponderan these reas l therewith ellants urg and bottom herein sa of said top ass throug n the cente e center o inor furth Numeral , reproduc g of the G ts in the G at coupler r with com ce of the e ons, we su . e that Gai plates of id compre and botto h concentr r of said p f said elon er describe 58) placed ed in part ainor dev ainor refe 86 engag pressive vidence of stain the r nor’s cap the claim ssion elem m deform ically alig late, said t gated plat s a compr on top of below) an ice in use rence, but es notches force. (Se record ejection o is not ed inventio ent able ned op and e. ession said top an d a bolt in e, f n. d Appeal Applica (Referen concent Novemb A the inde through C plates. C Claim 2 II unpaten C over Ga C 7 m 2012-0023 tion 11/60 ce numer rically alig er 18, 201 s may be ntation de a central o Figure 4 d ap 58 is, l onsequent . Accordin . The Reje table over laims 7-12 inor in vie laim 7 rea . The a ember pla 11 9,988 al 84 )(Fig ned throu 1 (“Office seen in Ga fined by th pening. epicts an e ogically, th ly, we are gly, we su ction of C Gainor in stand reje w of Ferre ds as follo ssembly o ced over s . 6A, ref. gh-bore op Action”) inor Figur e central r xploded v en dispos not persua stain the r laims 7-12 view of F cted unde e. No cla ws: f claim 1 f aid elonga 8 108) confi enings. (O , page 4). e 4 reprod egion, and iew of an ed on top ded by the ejection o under 35 erree. r 35 U.S.C ims are arg urther com ted plate’s gured to p ffice Act uced in pa snaps ont embodime of the top Appellan f claim 2. U.S.C. § . § 103(a) ued separ prising a top end a ass throug ion mailed rt below, c o second e nt of the G and bottom ts’ argum 103(a) as as being u ately. top lockin nd said top h on ap 58 cov lement 54 ainor dev deformab ent as to being npatentab g ers ice le le Appeal Applica d p p T multiple threaded materia the Gain prevent T locking spinous T top surf 2012-0023 tion 11/60 eformable late’s top e assing thro he Examin plates an through b l. The Exa or assemb the escape he Appell member to process. ( he Examin ace of 22a 11 9,988 plate’s top nd and sa ugh said f er has fou d locking m ores in th miner con ly with lo of intradi ants urge t be placed Appeal Br er in resp and 22b. Figur accordin end and c id top defo irst spinou nd that Fe embers. e plates, an cluded tha cking mem scal mater hat this is over the ief, page 8 onse noted See Figure e 6 is a cro g to Ferree 9 onfigured rmable pl s process. rree descri The lockin d help pre t it would bers as ta ial. (Offic incorrect b ends of the ). that a por 6 of Ferr ss section stapled in to lock sa ate’s top e bes a surg g membe vent escap have been ught by Fe e Action, ecause cla plates an tion of the ee, reprodu al view of to a verteb id elongat nd withou ical devic rs compris e of intra obvious t rree, in or page 7). im 7 requ d not pass staple ext ced in par a device ral annulu ed t e comprisi e long bol discal o construc der to help ires the top through th ends over t below. s ng ts t e a Appeal Applica T said elo A In locking goes thr shown e 9, which N presente A and 14 s T unpaten 2012-0023 tion 11/60 he device ngated pla ppellants’ this insta member p ough the p rror in the depends o such ele d for thos ccordingly tand unde he rejectio table over 11 9,988 structure o te’s top en figure 27 F of an nce, we ag assing ove lates. The rejection therefrom ment appe e claims, w , for the r r 35 U.S.C n of claim Gainor in f claim 7 r d and said in part is r igure 27 i embodim ree with th r the ends refore, on of claim 7 . ars in clai e affirm t CON easons sta . § 102(b) s 7 and 9 u view of F 10 equires a top deform eproduced s a cross s ent of the e Appella of the pla balance, w . Likewise ms 8, and he rejectio CLUSION ted above, as being a nder 35 U erree is rev top lockin able plat below. ectional v claimed in nts. Ferre tes; rather, e conclud , we rever 10-14. As n of those the rejecti nticipated .S.C. § 10 ersed. g member e’s top end iew vention e does not the lockin e the App se the reje no separa claims. on of claim by Gaino 3(a) as be placed ov . describe a g member ellants hav ction of c te argume s 1-6, 13 r is affirm ing er e laim nt is , ed. Appeal 2012-002311 Application 11/609,988 11 The rejection of claims 8 and 10-14 under 35 U.S.C. § 103(a) as being unpatentable over Gainor in view of Ferree is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART llw