Ex Parte de Villiers et al

Patent Trial and Appeal Board

Aug 25, 2014

11829056 (P.T.A.B. Aug. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MALAN DE VILLIERS and DAVID HOVDA
__________

Appeal 2012-005309
Application 11/829,056
Technology Center 3700
__________

Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

PAULRAJ, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to an
intervertebral prosthesis. The Examiner rejected the claims on
anticipation/obviousness grounds. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

STATEMENT OF THE CASE
Background
“[T]he invention relates to restoration of spinal motion with a
prosthetic disc for intervertebral insertion, such as in the lumbar and cervical
spine” (Spec. ¶ 1). “Many [prior art] prosthetic discs use protruding anchors

1 Appellants identify the Real Party in Interest as SpinalMotion, Inc. (see
App. Br. 3).
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2
to anchor the endplates to the adjacent vertebra,” and “[w]hile elongate fins,
keels and other anchors have generally been successful in anchoring
endplates to vertebra, clinical trials with large numbers of patients have
shown that in rare cases the endplates of the implanted prosthetic disc can
slip, causing patient discomfort and requiring surgical intervention” (id. at
¶ 2). “Another rare complication can arise with the elongate anchors when
prosthetic discs are placed in adjacent intervertebral spaces on opposite ends
of a vertebra, referred to as ‘stacking’” (id.). “The vertebra positioned
between the adjacent prosthetic disks can split possibly as a result of grooves
cut in the same plane on the upper and lower surfaces of the vertebra” (id.).
The Claims
Claims 1–22 and 28–33 are on appeal. Independent claims 1 and 28
are representative, and read as follows:
1. An intervertebral prosthesis comprising:
an upper component adapted to engage an upper vertebra;
a lower component adapted to engage a lower vertebra;
a row of discrete pillars extending from an outer surface of at least
one of the upper component or the lower component and including pillars of
different average heights arranged to form an elongate anchor structure
having an increasing height relative to the outer surface from at least one end
of the anchor structure toward a center of the anchor structure, the row of
pillars adapted to enter a groove formed in the upper vertebra or the lower
vertebra and
wherein the upper component and the lower component are adapted to
engage each other or an intermediate member to form an articulate joint
between the vertebrae.

28. An improved intervertebral prosthesis of the type including a first
component adapted to engage a first vertebra, a second component adapted
to engage a second vertebra, and an anchor on at least one of the first and
second components which is axially oriented over a length of the component
and is adapted to enter a groove formed in at least one of the vertebrae, the
App
App

impr
distr
plura
new
bein
anch
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obvi
FF1.
FF2.

2 Lak
3 Eis
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lication 11
ovement c
ibuted ove
lity of anc
bone grow
g of differe
or structur
t least one
rd a cente
The Issu

The Exa
ous over th
Lakin
(Laki
Figur

in et al., U
ermann et
05309
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omprising
r the lengt
hors prov
th relative
nt averag
e having a
componen
r of the an
e
miner has
e combin
is directe
n, Title) (e
e 1 of Lak

S 7,780,6
al., US 20
a plurality
h on the at
ide an incr
to a singl
e heights a
n increasin
t from at
chor struct
rejected th
ation of La
FINDIN
d to an “in
mphasis o
in is repro

76 B2, iss
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3
of axially
least one
eased surf
e anchor, a
nd are arra
g height r
least one e
ure.
e claims u
kin2 and E
GS OF FA
tervertebr
mitted).
duced belo
ued Aug. 2
0 A1, pub
aligned,
componen
ace area to
t least som
nged to fo
elative to
nd of the a
nder 35 U
isermann
CT
al implant
w:

4, 2010.
lished No
spaced-apa
t, wherein
receive a
e of the a
rm an elo
an outer su
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.S.C. § 10
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ation appa
v. 4, 2004
rt anchors
the
nd engage
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3(a) as
ratus”
.

App
App

FF3.
FF4.
eal 2012-0
lication 11
“With
prost
artifi
verte
impla
Figur
“FIG
inclu
col. 2
Lakin
Tu
altern
60 w
to an
enhan
impla
the ar
taper
pegs
insert
posit
Alter
the p
05309
/829,056
reference
hesis 10 m
cial disc pr
bral bodie
nt.” (Lak
e 7 of Lak
. 7 is simp
de a plural
, ll. 13–15
discloses
rning to t
ative artif
ith one or
adjacent v
ced bone
ntation so
tificial dis
ed or non-
62 may be
ion and/or
ioned alon
natively, th
late. The p
to the sim
ay include
osthesis m
s 16 and 18
in, col. 2,
in is repro
lified side
ity of pegs
).
:
he simplifi
icial disc p
more keels
ertebral bo
ingrowth b
as to prov
c prosthes
tapered sid
angled an
resist mig
g an anteri
e pegs 62
egs 62 ma
4
plified vi
first and
ay be imp
and refer
ll. 55–59.)
duced belo
view of an
according
ed side vi
rosthesis m
or pegs 6
dy. The p
etween ad
ide resista
is. The pe
es. The to
d/or taper
ration. Th
or-posteri
may be p
y be used
ew of FIG
second pla
lanted bet
red to as a

w:

other artif
to the pre
ew of FIG
ay includ
2 for fixat
egs 62 ma
jacent peg
nce to mig
gs 62 may
p surface
ed to facili
e pegs 62
or centerli
laced anyw
as the sole
. 1, an arti
tes 12 and
ween adja
n interver
icial disc
sent teach
. 7, an
e a plate
ion relativ
y allow fo
s 62 after
ration of
include
s of the
tate
may be
ne.
here on
structure
ficial disc
14. The
cent
tebral
prosthesis
ings” (id.,
e
r

App
App

FF5.
FF6.
eal 2012-0
lication 11
for fi
used
fixati

(Id. a
Figur
“FIG
prost
accor
Lakin
A
one o
fixati
in the
prost
44 an
The s
poste
show
cente
05309
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xation to t
in combin
on structu
t col. 4, ll.
e 6A of L
. 6A is a si
hesis inclu
ding to the
discloses
n alternativ
r more ou
on relative
simplifie
hesis 40 m
d a pair of
ingle keel
rior center
n in FIG. 6
rline. The
he adjacen
ation with
res.
20–33.)
akin is rep
mplified f
ding at lea
present te
:
e artificia
twardly ex
to an adja
d front vie
ay include
keels 46 a
42 may be
line of the
) or dispo
pair of kee
5
t vertebral
one or mo
roduced be
ront view
st one pla
achings”
l disc pros
tending ke
cent verte
w of FIG.
a single k
nd 48 on
positione
correspon
sed at a gi
ls 46 and
bodies or
re keels or
low:
of another
te with spa
(id. at col.
thesis 40 m
els to prov
bral body.
6, the artif
eel 42 on
a second p
d on the a
ding plate
ven distan
48 on the
may be
other

artificial d
ced apart
1, ll. 63–6
ay includ
ide
As show
icial disc
a first plat
late 50.
nterior-
44 (as
ce from th
other plate
isc
keels
5).
e
n
e
e

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Application 11/829,056

6
50 may be spaced equally from the centerline or
otherwise spaced from the centerline. A greater
separation between the pair of keels 46 and 48 may
provide additional stability for the artificial disc
prosthesis 40 and thereby facilitate multi-level
procedures, because of the interdigitation of alternative
keels. The prosthesis 40 may alternatively include two or
more spaced apart keels extending from both plates. For
example, the prosthesis 40 may include three keels
extending from both plates. It will be understood that the
prosthesis 40 may be a two piece prosthesis or a three
piece prosthesis.

(Id. col. 3, ll. 42–60.)
FF7. Lakin teaches that “[t]he keels may vary in length in the anterior-
posterior direction. The keels may have a leading edge and may be
a constant height throughout the entire length.” (Id. col. 3, ll. 61–
63.) Lakin also teaches that “the keels may taper in the anterior-
posterior direction,” that “the taper may be limited to a
forward/anterior portion of the keel,” or “[a]lternatively, any
portion of the keel may be tapered along its length in the anterior-
posterior direction.” (Id. col. 4, ll. 8–15.)
FF8. Eisermann is directed to a “prosthetic device for insertion into a
spondylosed intervertebral space” (Eisermann, Abstract).
App
App

FF9.
FF10
eal 2012-0
lication 11
Figur
“FIG
latera
disclo
. Eiser
A
keel 5
beari
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/829,056
e 4a of Ei
. 4a is an i
l insertion
sure” (id.
mann disc
flange me
8 of articu
ng surface
sermann is
sometric v
according
at ¶ 15).
loses:
mber or k
lar compo
48. In on
7
reproduce
iew of an
to one em
eel 68, con
nent 42, e
e embodim
d below:
articulatin
bodiment
figured sim
xtends fro
ent, the k
g prosthet
of the pre
ilar to th
m the
eel 68

ic joint for
sent
e

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extends along the transverse axis T and is offset from the
center of the bearing surface 48. Such an embodiment
would accommodate insertion of the prosthetic joint 40
using a lateral approach.

(Id. at ¶ 98.)
FF11. Eisermann discloses:
In some embodiments, one or both of the keels 58, 68
may include a sharp forward edge, illustrated by edge
68a of FIG. 4. By having such an edge, insertion of the
keel into the associated vertebral body is facilitated.
Also, the edge 68a can be of sufficient sharpness that the
adjacent vertebral bodies do not require a slot for
receiving the keel 68, discussed in greater detail below.

(Id. at ¶ 100.)
PRINCIPLES OF LAW
“Section 103(a) forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.”’ KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007) (quoting 35 U.S.C. § 103(a)). “[W]hen a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result.” Id. at 416. “[I]f a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” Id. at 417.

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ANALYSIS
Claims 1 and 13
Claims 1 and 13 recite an intervertebral prosthesis including among
other elements, “pillars of different average heights arranged to form an
elongate anchor structure having an increasing height relative to the outer
surface from at least one end of the anchor structure toward a center of the
anchor structure” (Cls. 1, 13). We find that the Examiner has made a prima
facie showing of obviousness for these claims based on the cited teachings
of the prior art (Ans. 5–7; FF1–11).
With respect to these independent claims, Appellants argue that “[i]n
the event that one of ordinary skill in the art was to take the teachings of
Eisermann et al. and apply those teachings to Lakin et al., the resulting
implant would have a plurality of pegs with each of the pegs having a taper,”
but assert that “[h]owever, neither reference teaches pillars of different
heights” (App. Br. 11–12). In support, Appellants point to Fig. 39 of
Eisermann to argue that Eisermann “did contemplate a multiple part anchor
structure and that anchor structure did not meet the claimed ‘pillars of
different average heights . . .’” (id. at 12). Appellants also argue that the
Examiner relies upon an incorrect reading of Eisermann because “it is the
sharp forward edge (tapering in the width direction) that facilitates insertion
of the keel into the associated vertebral body” (id. at 10).
We are not persuaded by Appellants’ arguments. Eisermann plainly
discloses that an advantage of including the “sharp forward edge” (68a in
Fig. 4a) is that “[b]y having such an edge, insertion of the keel into the
associated vertebral body is facilitated,” and “the edge 68a can be of
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10
sufficient sharpness that the adjacent vertebral bodies do not require a slot
for receiving the keel 68” (FF11). This is similar to the advantage of the
rows of pillars with increasing height identified in Appellants’ Specification,
which states:
In specific embodiments, the pillars are shaped and
arranged to facilitate insertion into the groove so that the pillars
of a row will fit tightly in the groove, for example where the
row of pillars is driven into the groove with force. For
example, the row of pillars can include pillars of increasing
height along the row so that the row presents pillars of
increasing height to the groove as the row is advanced distally
into the groove.

(Spec. ¶ 11.)
Contrary to Appellants’ characterization of the Eisermann reference,
we find that the increasing height of edge 68a, and not merely the tapering
width, facilitates insertion of the prosthesis between an upper and lower
vertebra. Furthermore, Lakin itself also discloses that “[t]he keels may have
a leading edge,” and that the pegs may include tapered sides (FF4, FF7). As
such, we agree with the Examiner that one skilled in the art would have
found it obvious to superimpose the overall shape of the keel (including
sharp edge 68a) taught by Eisermann onto the spaced-apart pegs (i.e.,
pillars) taught by Lakin (Ans. 6–7). The advantage of such a combination is
that the resulting prosthesis would allow for enhanced bone ingrowth
between adjacent pegs, while also facilitating the insertion of the prosthesis
between the vertebra. We find this to be a clear example of a “combination
of familiar elements according to known methods [yielding] no more than ...
predictable results.” KSR, 550 U.S. at 416.
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Appellants’ focus on the embodiment shown in Fig. 39 of Eisermann
is unavailing. In particular, Appellants argue that “[t]o fabricate such a
construct from the disclosures of Lakin and Eisermann is clearly hindsight
reconstruction of the invention without any basis in the prior art,” and “[t]his
hindsight reconstruction is particularly egregious in this situation where both
Lakin (FIG. 7) and Eisermann (FIG. 39) show multiple pillars or multiple
keels having the same height” (Reply Br. 3). We do not find the rejection to
be based on hindsight reconstruction because the prior art provided express
motivation to include a sharp/tapered edge in the keel to facilitate insertion
of the prosthesis. Moreover, the fact that Eisermann disclosed an alternative
embodiment in Fig. 39 that did not include a sharp edge for multiple keels
does not negate the obviousness of the claimed invention. The mere
disclosure of alternatives does not necessarily negate a suggestion for
modifying the prior art to arrive at the claimed invention. See In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004) (the “mere disclosure of alternative
designs does not teach away”); see also In re Mouttet, 686 F.3d 1322, 1334
(Fed. Cir. 2012) (“just because better alternatives exist in the prior art does
not mean that an inferior combination is inapt for obviousness purposes”).
Accordingly, we affirm the obviousness rejection of claims 1 and 13.
Appellants do not present separate arguments for claims 2–4, 6–8, 10–12,
14–19, 21, 22, and 31–33. Therefore, those claims fall with their respective
independent claims. 37 C.F.R. § 41.37(c)(1)(vii).
Claim 5
Dependent claim 5 recites that “each pillar has a height and several
pillars have substantially the same height” (Cl. 5). With respect to this
claim, Appellants argue that “Lakin et al. and Eisermann et al. either alone
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12
or in any reasonable combination do not teach or suggest pillars of both
increasing heights and pillars of the same height” (App. Br. 13). We
disagree. The superimposition of the shape of the keel taught in Fig. 4a of
Eisermann onto the pegs taught by Lakin would result in pillars of both
increasing height and pillars of the same height. As noted by the Examiner,
“there would be no reason for tapering all of the pillars of Lakin in view of
Eisermann and his rationale because once the leading group of tapered
pillars has penetrated the bone slot, the need for a taper has been obviated as
the keel has already been inserted into the intervertebral space” (Ans. 10).
We therefore affirm the rejection of claim 5.
Claim 9
Dependent claim 9 recites that “at least some of the pillars have a
vertical recess on a distal surface” (Cl. 9). The Examiner finds that this
feature is satisfied by the recess between the adjacent pillars taught by Lakin
(Ans. 11). Appellants argue that this feature is not taught or suggested by
the combination, and that “[t]he space between pillars may be a recess, but it
is clearly not ‘a recess on a distal surface’” (Reply Br. 4).
We do not agree with Appellants’ claim interpretation, as there is
nothing in the claim language to suggest that “a vertical recess on a distal
surface” cannot be the recess between the adjacent pegs taught in Fig. 7 of
Lakin. Moreover, we find nothing in either the claim language or the
Specification to indicate that the “distal surface” must be the surface of the
pillars as opposed to the claimed “outer surface of at least one of the upper
component or the lower component” from which the pillars extend. The
only reference in the Specification to a “vertical recess” is the statement that:
“At least some of the pillars have a vertical recess on a distal surface. The
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13
vertical recess provides space into which bone can grow to anchor the
implant, and the recess does not initially engage bone recess as the pillar is
advanced distally into the groove” (Spec. ¶ 11). This does not suggest that
the vertical recess must be different than the gaps between the rows of
pillars, or that the “distal surface” must be on the surface of the pillars. To
the contrary, the Specification elsewhere identifies “distal end 108” as the
portion of the prosthesis “that leads as the implant is advanced into the
intervertebral space” (id. at ¶ 26).
Under our broadest reasonable interpretation of the claim 9, we find
that the recess between the pillars taught by Lakin satisfies the “vertical
recess” requirement. In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) (“During examination, ‘claims . . . are to be given their
broadest reasonable interpretation consistent with the specification, and . . .
claim language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’”) (Citations omitted.) We
therefore affirm the rejection of claim 9.
Claim 20
Dependent Claim 20 recites that “the rows of pillars are offset from
each other to avoid vertebral splitting” (Cl. 20). For this claim, the
Examiner points to the embodiment in Fig. 6A of Lakin showing spaced
apart keels (Ans. 7–8; FF5–6). Contrary to Appellants’ unsupported
assertion, we find this to be a clear disclosure of pillars that are offset from
each other as required by the claim. Appellants’ discussion of Figures 6 and
9 of Eisermann is not relevant since the Examiner did not rely upon those
alternative embodiments to support the obviousness rationale (App. Br. 13–
14). We therefore affirm the rejection of claim 20.
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14
Claim 28
Claim 28 is a Jepson claim that claims as the improvement a plurality
of spaced-apart anchors with “at least some of the anchors being of different
average heights and are arranged to form an elongate anchor structure
having an increasing height relative to an outer surface of the at least one
component . . . ” (Cl. 28). Thus, the “anchors” recited in this claim are
similar to the “pillars” recited in claims 1 and 13. The Examiner rejected
this claim as obvious based on the same combined teachings of Lakin and
Eisermann (Ans. 5–7). Because Appellants’ argument for this claim is
similar to those discussed above with respect to claims 1 and 13, we also
affirm the obviousness rejection of claim 28.
Appellants do not present separate arguments for dependent claims 29
and 30. Therefore, those claims fall with claim 28. 37 C.F.R.
§ 41.37(c)(1)(vii).

SUMMARY
We affirm the claim rejections under 35 U.S.C. §103(a).
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

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