Ex Parte de Villiers et al

Patent Trial and Appeal Board

Jan 28, 2019

14287709 (P.T.A.B. Jan. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/287,709 05/27/2014 Malan de Villiers
143452 7590 01/30/2019
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.
29850-703.307 2053
EXAMINER
SNOW, BRUCE EDWARD
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
01/30/2019 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
Appeal2017-001507 1
Application 14/287,7092
Technology Center 3700
Before MICHAEL C. ASTORINO, KENNETH G. SCHOPPER, and
BRADLEY B. BA YAT., Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 1-11 and 13. We have jurisdiction under 35 U.S.C. § 6(b). An oral
hearing was held on January 15, 2019.
We REVERSE.
1 Our decision references the Appeal Brief ("Appeal Br.," filed June 9,
2016), the Reply Brief ("Reply Br.," filed Nov. 10, 2016), the Examiner's
Answer ("Ans.," mailed Sept. 26, 2016), and the Final Office Action ("Final
Act.," mailed Dec. 21, 2015).
2 According to Appellants, the real party in interest is Simplify Medical Pty
Ltd. Appeal Br. 3.
Appeal2017-001507
Application 14/287,709
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 and 7 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:
upper and lower plates having outer surfaces locatable
against the respective vertebrae and inner bearing surfaces;
core between the plates, the core having upper and lower
surfaces complementary in shape to the inner bearing surfaces
of the plates to allow the plates to slide over the core, the core
including a lateral surface between the upper and lower
surfaces; and
one of the plates including a retaining structure that
projects at least partly into the lateral surface of the core only at
diametrically opposed regions thereof to hold the core captive
between the plates when the plates slide over the core; wherein
the core has a substantially circular shaped perimeter which
defines the lateral surface and the retaining structure extends
inward from the perimeter.
Appeal Br. 13.
REJECTION
The Examiner rejects claims 1-11 and 13 under 35 U.S.C. § 102(e) as
anticipated by Huppert. 3
3 Huppert et al., US 7,056,344 B2, iss. June 6, 2006.
2
Appeal2017-001507
Application 14/287,709
DISCUSSION
We are persuaded of error by Appellants' argument that Huppert does
not disclose a core with a circular shaped perimeter that defines a lateral
surface into which retaining structures extend. See Appeal Br. 6-9; see also
Reply Br. 1-3.
In the rejection, the Examiner finds that Huppert discloses a core 13
with a perimeter that "closely resembles that of the upper plate 111" and
may be considered substantially circular in shape according to the broadest
reasonable interpretation of the claim. Final Act. 2-3. The Examiner makes
clear that under this application of Huppert, the core includes arms 131 and
132. Id. Alternatively, the Examiner indicates in the Answer that Ruppert's
core includes an upper portion that includes a substantially circular
perimeter and an additional lateral surface, i.e., arms 131 and 132, into
which the retaining structures extend. See Ans. 4--5.
Claim 1 expressly requires that the core includes a substantially
circular perimeter, that the circular perimeter defines the lateral surface of
the core, and that the retaining structures extend inward from this perimeter.
Thus, the claim requires a core in which the retaining structures extend
inward from a substantially circular perimeter. We agree with Appellants
that Huppert does not disclose such a core. As acknowledged by the
Examiner, Huppert discloses a core in which retaining structures are
included within the arms of the core. See Huppert Fig. 1. We do not agree
that the claimed "substantially circular perimeter" reads on a core with arms
as depicted in Ruppert's Figure 1. Further, to the extent that the Examiner
relies on the upper portion of Ruppert's core as the circular perimeter and
the lower portion as the lateral surface into which the retaining structures
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Appeal2017-001507
Application 14/287,709
extend, the claim requires that the retaining structures extend inward from
the circular perimeter. Thus, the Examiner's alternative application of the
core of Huppert fails to show that Huppert discloses a core as claimed.
Based on the foregoing, we are persuaded of error in the rejection, and
therefore, we do not sustain the rejection of claim 1 as anticipated by
Huppert. Independent claim 7 similarly requires providing a core with a
substantially circular perimeter into which retaining structures extend. Thus,
for the same reasons, we also do not sustain the rejection of claim 7 as
anticipated by Huppert. Finally, for the same reasons, we do not sustain the
rejection of dependent claims 2-6, 8-11, and 13, each of which depends
from claims 1 or 7.
CONCLUSION
We REVERSE the rejection of claims 1-11 and 13.
REVERSED
4