Ex Parte Collins et al

Patent Trial and Appeal BoardSep 19, 2012

11170657 (P.T.A.B. Sep. 19, 2012)

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. 11/170,657 06/29/2005 Keith Collins 1842-0066 4039 99097 7590 09/19/2012 Hoffman and Baron, LLP 6900 Jericho Turnpike syosset, NY 11791 EXAMINER ARAJ, MICHAEL J ART UNIT PAPER NUMBER 3775 MAIL DATE DELIVERY MODE 09/19/2012 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 KEITH COLLINS, THOMAS S. WILSON, and ANDREW CARTER ____________________ Appeal 2010-006211 Application 11/170,657 Technology Center 3700 ____________________ Before: JENNIFER D. BAHR, MICHAEL L. HOELTER, and JOHN W. MORRISON, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-006211 Application 11/170,657 2 STATEMENT OF THE CASE Keith Collins et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 2, 4-17, 19, and 20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The Claimed Subject Matter Claim 16, reproduced below, is the only independent claim involved in this appeal and is illustrative of the claimed subject matter. 16. A kit of parts for use in treating a damaged or diseased spinal disc having an outer annulus and an inner nucleus pulposus, comprising: a cannula having a distal end, a proximal end and an inner opening extending therethrough, the distal end of said cannula adapted to be inserted through said disc annulus; a sharp-tipped stylet configured to fit within said inner opening and adapted to be removed from said cannula after insertion of said cannula through said annulus; an injection needle having a distal end and a proximal end, said distal end adapted to be inserted into said proximal end of said cannula and configured for relatively close sliding fit therewithin, said injection needle having a length sufficient so that said distal end is disposed inside the disc annulus when the needle is inserted into said cannula; a syringe for containing a quantity of curable biomaterial, said syringe adapted to be coupled to the proximal end of said needle and to inject said biomaterial into said needle under pressure; and a quantity of curable biomaterial that upon curing emulates the properties of natural nucleus pulposus. Appeal 2010-006211 Application 11/170,657 3 Evidence The Examiner relied on the following evidence in rejecting the claims on appeal: Belef Boyd Pynson US 2002/0147497 A1 US 2003/0083642 A1 US 2003/0209455 A1 Oct. 10, 2002 May 1, 2003 Nov. 13, 2003 Rejections Appellants request our review of the Examiner’s rejections of: (1) claims 2, 4-6, 9, 10, 16, 17, 19, and 20 under 35 U.S.C. § 102(b) as anticipated by Boyd; (2) claims 2, 4-6, 9, 10, 16, 17, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable over Boyd and Pynson; and (3) claims 7, 8, and 11-15 under 35 U.S.C. § 103(a) as unpatentable over Boyd and Belef. OPINION Claim 16 requires, in pertinent part, a cannula having an inner opening extending therethrough, and a sharp-tipped stylet configured to fit within the inner opening. In reading claim 16 on the structure of Boyd, the Examiner found that Boyd’s cannula 11 corresponds to the claimed “cannula” and the tissue removal device R corresponds to the claimed “sharp-tipped stylet.” Ans. 3. A dispositive issue raised in this appeal is whether Boyd’s tissue device R is configured to fit within the inner opening 16 of the cannula 11. See App. Br. 8-9; Reply Br. 3. Boyd discloses use of the tissue removal device R and cannula 11 during different parts of the surgical procedure, and does not disclose using the removal device R and cannula 11 together. Specifically, in the Appeal 2010-006211 Application 11/170,657 4 procedure described by Boyd, a trephine T is passed over guide wire G and driven through the disc annulus to form a portal into the disc nucleus. Para. [0052]; fig. 3. Next, the tissue removal device R is advanced through the trephine T or through a working channel cannula (not cannula 11) aligned with the disc portal and is used to remove all or part of the nucleus N of the disc D, forming a cavity C. Para. [0052]; fig. 4 (cavity not labeled in fig. 4, but labeled in fig. 5). After the tissue removal step, the trephine T and tissue removal device are removed, and a distraction cannula 11 is introduced into the cavity over the guide wire G to begin the process of distracting the tissue and introducing curable biomaterial to fill the cavity. Fig. 5; paras. [0054], [0055]. Boyd does not disclose the relative dimensions of the tissue removal device R and the lumen 16 of the distraction cannula 11, and does not disclose passing the tissue removal device R into or through the lumen 16 of cannula 11. Thus, Boyd does not support the Examiner’s finding that the tissue removal device R is configured to fit within the lumen of cannula 11. Inasmuch as the Examiner’s rejection of claim 16 and dependent claims 2, 4-6, 9, 10, 17, 19, and 20 is grounded in part on an unsupported finding, we cannot sustain it. The Examiner’s rejections under 35 U.S.C. § 103(a) of claims 2, 4-6, 9, 10, 16, 17, 19, and 20 as unpatentable over Boyd and Pynson, and of claims 7, 8, and 11-15 as unpatentable over Boyd and Belef suffer from the same deficiency as the Examiner’s anticipation rejection. Thus, we also cannot sustain the rejections under 35 U.S.C. § 103(a). Appeal 2010-006211 Application 11/170,657 5 DECISION The Examiner’s decision rejecting claims 2, 4-17, 19, and 20 is reversed. REVERSED hh