Ex Parte De Villiers et al

Patent Trial and Appeal BoardMay 9, 2013

11982431 (P.T.A.B. May. 9, 2013)

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. 11/982,431 10/31/2007 Malan De Villiers 022031-001740US 1092 21971 7590 05/10/2013 WILSON, SONSINI, GOODRICH & ROSATI 650 PAGE MILL ROAD PALO ALTO, CA 94304-1050 EXAMINER SNOW, BRUCE EDWARD ART UNIT PAPER NUMBER 3738 MAIL DATE DELIVERY MODE 05/10/2013 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 MALAN DE VILLIERS and ULRICH R. HAHNLE __________ Appeal 2011-008377 Application 11/982,431 Technology Center 3700 __________ Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and SHERIDAN K. SNEDDEN, Administrative Patent Judges. SNEDDEN, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134 involves claims 18-32. The Examiner has rejected the claims under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2011-008377 Application 11/982,431 2 STATEMENT OF THE CASE Appellants’ invention relates to an intervertebral prosthesis for insertion between adjacent vertebrae. Claims 18 and 27 are representative and reads as follows (emphasis added): 18. An intervertebral prosthesis for insertion between adjacent vertebrae, the prosthesis comprising: upper and lower prosthesis plates locatable against respective vertebrae and having bearing surfaces thereon; a rigid preformed core located between the plates, the core having opposed bearing surfaces configured to cooperate with the bearing surfaces of the plates to allow the plates to slide in articulated manner over the core; and wherein the core is preformed with angularly spaced, radial passages and radially oriented pins located in the radial passages serving as radiographic markers. 27. An intervertebral prosthesis for insertion between adjacent vertebrae, the prosthesis comprising: upper and lower prosthesis plates locatable against respective vertebrae and having bearing surfaces thereon; a rigid core located between the plates, the core having opposed, convexly curved surfaces configured to cooperate with the bearing surfaces of the plates to allow the plates to slide in articulated manner over the core; wherein each plate and is bounded by an annular rim, such that the annular rims are arranged to contact one another at a predetermined limit of sliding movement of the plates over the core; wherein the core is transparent to X-radiation and carries radiographic markers; and wherein the core is formed with preformed angularly spaced, radial passages accommodating radially oriented pins serving as the radiographic markers. Appeal 2011-008377 Application 11/982,431 3 The claims stand rejected as follows: I. Claims 18-26 and 31-32 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Keller 1 and Ray. 2 II. Claims 27-30 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Keller, Ray, and Rogozinski 3 . III. Claims 18-32 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Rogozinski and Ray as evidenced by Marnay. 4 I. Issue The Examiner rejects claims 18-26 and 31-32 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Keller and Ray. The issue presented is: Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? Findings of Fact The following findings of fact (“FF”) are supported by a preponderance of the evidence of record. FF1. Keller discloses a plastic implant suitable for use in intervertebral endoprostheses having a circumferential channel for receiving a radiographic contrast wire (Keller 2, ¶¶ [0016] and [0022]). 1 Keller, US 2001/0027343 A1, published Oct. 4, 2001. 2 Ray et al., US 6,132,465, issued Oct. 17, 2000. 3 Rogozinski, US 5,888,226, issued Mar. 30, 1999. 4 Marnay et al., US 6,936,071 B1, issued Aug. 30, 2005. Appeal 2011-008377 Application 11/982,431 4 FF2. “A metal wire 9 fitted in the groove 3, 4 is visible on X-rays and makes it possible to check the position of the sliding core 1” (id. at ¶ [0022]). FF3. Ray discloses a wedge-shaped prosthetic spinal disc nucleus (Ray, Abstract). FF4. Ray discloses as follows: To aid in ensuring proper placement of the prosthetic spinal disc nucleus 20 within an intervertebral disc space and to review the stability of the prosthetic spinal disc nucleus 20 during patient follow-ups, three radiopaque wires 38 are preferably forced into the hydrogel core 22. The radiopaque wires 38 are located within the hydrogel core 22 to define the overall shape, as shown in FIG. 1A. As described below, the radiopaque wires 38 further provide an indication of a location of the prosthetic spinal disc nucleus 20 upon implant. (Ray, col. 8, ll. 2-11; emphasis added.) Analysis The Examiner finds that “[b]oth Keller and Ray et al teach intervertebral prostheses for replacing an injured or malfunctioning nucleus” and both references disclose the use of radiographic markers for determining the location of a prosthesis (Ans. 9). The Examiner concludes that It would have been obvious to one having ordinary skill in the art to have changed the orientation of the circumferential marker/passage of Keller to a radially orientation as taught by Ray et al forming preformed radial passages with radially oriented pins to allow radiographic viewing of said core to check location and orientation including radial orientation with predictable results Appeal 2011-008377 Application 11/982,431 5 (id. at 5). The Examiner reasons that a change in marker orientation would have been a simple substitution of one known element for another to obtain predictable results (Ans. 9-10, citing MPEP § 2141). Appellants contend that There is ... no rational reason ... to provide Keller’s rotationally symmetrical core 1 with angularly oriented, radiopaque markers, such as markers 38 of Ray, at least because Keller already includes a radiopaque marker wire 9, and furthermore because there is no need whatsoever, either identified in the prior art or posited in the Office Action, for knowing the rotational orientation of Keller’s rotationally symmetric core 1, the performance of which does not at all depend on its rotational orientation. (App. Br. 15.) We are not persuaded by Appellants’ arguments. While the placement of markers according to Ray may be used to define the orientation of an implant, the markers may also be used to simply define the location of the implant (FF4), which is how the markers are used in Keller (FF2). Claim 18 does not limit the use of markers to defining implant orientation. We agree with the Examiner’s rationale and adopt is as our own. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”) Conclusion of Law The preponderance of evidence on this record supports the Examiner’s conclusion of obviousness. Claims 19-26 and 31-32 fall with claim 18. 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2011-008377 Application 11/982,431 6 II. The Examiner rejects claims 27-30 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Keller, Ray, and Rogozinski. Appellants argue that “Rogozinski does not disclose or describe radiopaque markers or their orientation relative to any other portion of Rogozinski's device” and “[t]hus, Rogozinski does not cure the deficiencies of the hypothetical combination of Keller and Ray with respect to the appealed claims” (App. Br. 16). The Examiner, however, does not rely on Rogozinski for the teaching of radiopaque markers, but rather relies on Rogozinski to address additional limitations recited in claim 27 (Ans. 6). Specifically, the Examiner finds that Rogozinski discloses a “prosthesis comprising a plastic core which articulates between upper and lower plates having annular rims which are arranged to contact one another” (id.). Appellants’ arguments do not address the Examiner’s specific finding with regard to Rogozinski. As presented above, the combination of Keller and Ray renders obvious the element disputed by Appellants. We find the preponderance of evidence on this record supports the Examiner’s conclusion of obviousness with regard to claim 27. Claims 28-30 fall with claim 27. 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2011-008377 Application 11/982,431 7 III. Issue The Examiner rejects claims 18-32 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Rogozinski and Ray. The issue presented is: Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? Analysis Appellants contend that “Rogozinski/Ray fails to disclose, describe, or fairly suggest the preformed radial passageways and rigid core as claimed” (App. Br. 18). Upon review of the record before us, we find that the Examiner failed to establish an evidentiary basis on this record to support a conclusion that either Rogozinski or Ray would have suggested preformed radial passageways as set forth in the claims. Accordingly, the Examiner failed to establish a prima face case of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). See also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“All words in a claim must be considered in judging the patentability of that claim against the prior art.”). Conclusion of Law The preponderance of evidence on this record fails to support the Examiner’s conclusion of obviousness of claims 18-32 over the combination of Rogozinski and Ray. Appeal 2011-008377 Application 11/982,431 8 SUMMARY We affirm the rejection of claims 18-26 and 31-32 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Keller and Ray. We affirm the rejection of claims 27-30 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Keller, Ray, and Rogozinski. We reverse the rejection of claims 18-32 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Rogozinski and Ray. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED cdc