Ex Parte de Villiers et al

Patent Trial and Appeal Board

Jan 29, 2019

15167763 (P.T.A.B. Jan. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/167,763 05/27/2016 Malan de Villiers
143452 7590 01/31/2019
WILSON SONSINI GOODRICH & ROSA TI/Simplify Medical
650 PAGE MILL ROAD
PALO ALTO, CA 94304-1050
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
29850-703.308 1086
EXAMINER
SNOW, BRUCE EDWARD
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
01/31/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentdocket@wsgr.com
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 HAHNLE
Appeal2018-003592 1
Application 15/167,763 2
Technology Center 3700
Before MICHAEL C. ASTORINO, KENNETH G. SCHOPPER, and
BRADLEY B. BAY AT, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-27, 30, 32-37, and 39-44. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 Our decision references the Appeal Brief ("Appeal Br.," filed Oct. 9,
2017), the Reply Brief ("Reply Br.," filed Feb. 14, 2018), the Examiner's
Answer ("Ans.," mailed Dec. 15, 2017), and the Final Office Action ("Final
Act.," mailed Mar. 31, 2017).
2 According to Appellants, the real party in interest is Simplify Medical Pty,
Ltd. Appeal Br. 3.
Appeal2018-003592
Application 15/167,763
BACKGROUND
According to Appellants, "the invention relates to a prosthetic disc for
intervertebral insertion, such as in the lumbar and cervical spine." Spec. ,r 2.
CLAIMS
Claims 1, 16, 40, and 41 are the independent claims on appeal.
Claim 1 is illustrative of the appealed claims and recites:
1. An intervertebral prosthetic disc for insertion between
adjacent vertebrae, the disc comprising:
first and second plates each having inner surfaces and
outer surfaces locatable against the respective vertebrae;
a core located between the inner surfaces of the plates, the
core allowing the plates to articulate with respect to one another;
and
an elongated flexible tie member engaged with at least one
of the first and second plates at a location radially outside of a
perimeter of the core, wherein the elongated flexible tie member
holds the core captive during movement of the plates in flexion,
extension, and translation,
wherein the first plate is formed by coupling two
independent members together with one member forming an
inner bearing surface and another member forming the outer
vertebrae contacting surface, and
wherein the elongated flexible tie member is a single tie
member which holds the core captive during sliding movement
of the plates over the core in flexion, extension and translation.
REJECTIONS
1. The Examiner rejects claims 16-19, 21-26, 30, 40, 41, and 44 under
35 U.S.C. § 102(e) as anticipated by Ferree. 3
3 Ferree, US 7,156,848 B2, iss. Jan. 2, 2007.
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Application 15/167,763
2. The Examiner rejects claims 16-19, 21-26, 30, 40, 41, and 44 under
35 U.S.C. § I03(a) as unpatentable over Ferree.
3. The Examiner rejects claims 1-15, 20, 27, 32-37, 39, 42, and 43 under
35 U.S.C. § I03(a) as unpatentable over Ferree in view ofBryan. 4
DISCUSSION
Anticipation
Claims 16-19, 21-26, 30, and 44
Claim 16 is a method claim, which requires, inter alia, an elongated
flexible tie member that "is a single tie member which holds the core [ of an
intervertebral prosthetic disc] captive [between first and second plates]
during sliding movement of the plates over the core in flexion, extension and
translation." Appeal Br. 22-23. We are persuaded by Appellants' argument
that Ferree does not disclose a single tie member as required by claim 16.
The Examiner finds Ferree discloses an intervertebral disc and method
for its insertion between adjacent vertebrae including first and second plates,
a core, and an elongated flexible tie member as claimed. Final Act. 5---6. In
particular, the Examiner finds that Ferree discloses
[ A ]n elongated flexible tie member engaged with at least one of
the first and second plates at a location radially outside of a
perimeter of the core. See at least 2:35 et seq. teaching using a
braided materials. Also, see at least claim 1 teaching "one or
more elongated elements." Further note 2:41-42 teaching "check
reins may also be used about all sides of the [ artificial disc
replacement ('ADR')]".
4 Bryan et al., US 2002/0128715 Al, pub. Sept. 12, 2002.
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Application 15/167,763
Id. at 6. The Examiner also finds that Ferree discloses that "the elongated
flexible tie member holds the core captive during movement of the plates in
flexion, extension, and translation (see at least 1:55 et seq.)." Id. at 7.
We agree with Appellants that the Examiner has not established that
Ferree discloses, either expressly or inherently, a single tie member that acts
to hold the core captive during flexion, extension, and translation. Ferree
discloses an intervertebral prosthetic with "check reins" used to "limit the
extreme range of motion which would otherwise be permitted by some ADR
designs." Ferree col. 2, 11. 24--27. Ferree discloses that check reins may be
employed on all sides of an ADR. Id. at col. 2, 11. 41--42. However, Ferree
does not expressly disclose the use of a single check rein that holds the core
captive during sliding movement of the plates in flexion, extension, and
translation. At best, we find that Ferree discloses that multiple check reins
may be employed to hold the core captive during such movement.
In the Answer, the Examiner asserts
As explained in at least the abstract, an anterior insertion
approach of the prosthetic disc removes only the anterior
longitudinal ligament and an anterior portion of the annulus
fibrosus leaving the lateral and posterior portions of annulus
fibrosus and other tissues intact. Therefore, only an anterior tie
member is needed to stop extrusion opposite the approach
direction. Said natural intact tissues help hold said core captive
which brings the examiner to note the scope of the claim.
Ans. 7. However, we agree with Appellants that the claim requires a single
tie member that is capable of functioning to hold the core captive as claimed.
See Reply Br. 2. Although the open ended language of the claim does not
preclude other elements from being present, the claim requires that the
single tie member acts to hold the core captive during sliding movement of
the plates over the core in flexion, extension, and translation. The Examiner
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Application 15/167,763
has not shown that the single tie member in Ferree achieves this function,
either expressly or inherently.
Based on the foregoing, we are persuaded of reversible error in the
rejection of claim 16 as anticipated by Ferree. Accordingly, we do not
sustain the rejection of claim 16. For the same reasons, we also do not
sustain the rejection of dependent claims 17-19, 21-26, 30, and 44.
Claims 4 0 and 41
Claim 40 recites, in relevant part, an intervertebral prosthetic disk
with first and second plates, a core, and a flexible tie member "configured to
be inserted entirely between the adjacent vertebrae in the assembled
configuration." Appeal Br. 25. Claim 41 includes a substantially similar
limitation. Id. at 26. Regarding this limitation, the Examiner finds that
Ferree discloses this configuration in Figure 1. Final Act. 7. The Examiner
also finds that this limitation is directed to an intended use of the device and
"does not differentiate the claimed apparatus from" the prior art, which
satisfies all of the claimed structural limitations. Ans. 9. Appellants argue
that Ferree does not teach the claimed configuration because "Ferree
describes a disc that is assembled in-situ." Appeal Br. 15. We agree and
find that the Examiner's mere assertion that the structure is equivalent is not
sufficient to show that Ferree discloses a device that is configured as
claimed. Ferree does not expressly or inherently indicate that the device
may be preassembled and Ferree provides reasons why in situ assembly is
preferred. See Appeal Br. 15. Thus, we do not sustain the rejection of claim
40 as anticipated by Ferree. For the same reasons, we also do not sustain the
rejection of independent claim 41.
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Application 15/167,763
Obviousness
Claims 16-19, 21-26, 30, and 44
As an alternative to the anticipation rejection of claim 16, the
Examiner finds that "it would have been obvious to have used a single
elongated element (rein) to extend about all sides of the ADR [of Ferree]
with predictable results." Final Act. 6 (emphasis omitted). The Examiner
also finds that Ferree teaches the use of check reins about all sides of the
ADR, and thus, the Examiner determines that it would simply be common
sense "to one skilled in the art that a single tie member, in lieu of many,
could have been used extending around all sides of the prosthetic disc ...
like a shoe having one shoe lace." Ans. 8.
We agree with Appellants that the Examiner has failed to establish
that the use of a single tie member would have been obvious in view of
Ferree. Given the configurations described in Ferree, we do not find
adequate support, without further evidence or explanation from the
Examiner, that one of ordinary skill in art would have found it feasible, let
alone a matter of common sense, to employ a single tie member laced about
all sides of the ADR such that it functions to hold the core captive as
claimed.
Based on the foregoing, we do not sustain the rejection of independent
claim 16. For the same reasons, we do not sustain the rejection of dependent
claims 17-19, 21-26, 30, and 44.
Claims 4 0 and 41
The Examiner does not appear to address claims 40 and 41 in the
rejection based on obviousness over Ferree alone. See Final Act. 6-7.
Rather, as discussed above, the Examiner only asserts that Ferree's device is
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configured as required by the claim. Id. at 7. Without further explanation,
the Examiner has not established that it would have been obvious to
configure Ferree's device as required by claim 40. Accordingly, we also do
not sustain the rejection of claim 40 as obvious. For the same reasons, we
do not sustain the rejection of claim 41 as obvious.
Claims 1-15, 20, 27, 32-37, 39, 42, and 43
Claim 1 is directed to an intervertebral prosthetic disc including first
and second plates, a core, and an elongated flexible tie member that "is a
single tie member which holds the core captive during sliding movement of
the plates over the core in flexion, extension and translation." Appeal
Br. 21. With respect to these elements of claim 1, the Examiner relies on the
same findings relied upon in the rejections including Ferree alone. See Final
Act. 7. As discussed above, the Examiner has not established that Ferree
discloses or, otherwise, renders obvious a single tie member that performs
the function of holding the core captive during sliding movement as claimed.
Further, the Examiner does not rely on Bryan in a manner that addresses the
deficiency discussed above with respect to the rejections of claim 16.
Accordingly, for the reasons set forth above, we do not sustain the rejection
of independent claim 1 or the rejection of dependent claims 2-15 and 32-37,
which depend from claim 1. Similarly, do not sustain the rejection of claims
20, 27, 39, 42, and 43, which ultimately depend from claim 16.
CONCLUSION
We REVERSE the rejections of claims 1-27, 30, 32-37, and 39-44.
REVERSED
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