Ex Parte De Villiers et al

Patent Trial and Appeal BoardApr 29, 2016

11982420 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111982,420 10/31/2007 21971 7590 05/03/2016 WILSON, SONSINI, GOODRICH & ROSATI 650 PAGE MILL ROAD PALO ALTO, CA 94304-1050 FIRST NAMED INVENTOR Malan De Villiers 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. 29850-710.304 9451 EXAMINER SNOW, BRUCE EDWARD ART UNIT PAPER NUMBER 3738 NOTIFICATION DATE DELIVERY MODE 05/03/2016 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 R. HAHNLE Appeal2014-003436 Application 11/982,420 Technology Center 3700 Before LYNNE H. BROWNE, ANNETTE R. REIMERS, and GORDON D. KINDER, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Malan de Villiers and Ulrich R. Hahnle (Appellants) appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject under 35 U.S.C. Â§ 103(a): (1) claims 18-26 as unpatentable over Ferree (US 2004/0030391 Al; pub. Feb. 12, 2004) and Eisermann (US 6,740,118 B2; iss. May 25, 2004); and (2) claims 18-26 as unpatentable over Buttner-Janz (US 5,401,269; iss. Mar. 28, 1995) and Eisermann. Claims 1-17 have been 1 Appellants indicate that "[a]n Appeal Brief has been filed for related U.S. Application No. 12/731,993" and "[n]o decision has been rendered on the appeal of the related application." Br. 3. A Notice of Abandonment for Application No. 12/731,993 was mailed May 7, 2015. Appeal2014-003436 Application 11/982,420 canceled. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claimed subject matter "relates to an intervertebral prosthesis." Spec. para. 2; Fig. 5. Claim 18, the sole independent claim, is representative of the claimed subject matter and recites: 18. A method for implanting an intervertebral prosthesis between adjacent vertebrae, the method comprising: providing a prosthesis comprising, upper and lower prosthesis plates having at least one upstanding elongate fin, the upper prosthesis plate having a concavely curved, spherical bearing surface therein, a movable core having a convexly curved, spherical surface configured to cooperate with the concavely curved surface of the upper plate, and a protrusion on at least one of the plates and corresponding opening on the core \~1hich hold the core captive and prevent the core from slipping out sideways from between the plates; placing the upper and lower plates into place between adjacent vertebrae with the at least one fin entering a slot cut in an associated vertebral surface; and inserting the movable core between the plates, wherein the upper and lower plates are able to both translate and rotate with respect to each other and with respect to the core. Claims 18-26 ANALYSIS Ferree and Eisermann Appellants have waived any arguments contesting the substance of the Examiner's underlying findings of fact as to the scope and content of Ferree 2 Appeal2014-003436 Application 11/982,420 and Eisermann as it relates to the Examiner's determination of obviousness of claims 18-26. Rather, Appellants limit their challenge of the Examiner's obviousness rejection to an attempt to remove Ferree as prior art. Br. 5-9. Specifically, Appellants contend that the rejection of claims 18-26 under 35 U.S.C. Â§ 103(a) is improper because Appellants submitted declarations under 3 7 C.F .R. Â§ 1.131 (" 131 Declaration")2 to show that the invention was conceived before the filing date of Ferree and was reduced to practice. Br. 5---6. Appellants rely on "Exhibits which show drawings of a prosthesis having the features of the prosthesis that is recited as being provided in the claims" as evidence that the invention was reduced to practice, and contend that "[t]he [131] Declarations also describe that the prosthesis shown in the exhibits were designed by the inventors for performing the method steps of the claims." Id. at 6. The 13 1 Declarations, signed by Appellants, attach Exhibits A, E, F, and G of unlabeled drawings. The 131 Declarations state that "[t]he illustrations contained in Exhibit A ... fully support each limitation recited in the claims of [the subject] patent application." 131 Declarations, para. 3. The 131 Declarations further state that Exhibits E, F, and G are "sheet[ s] of engineering drawings with improvements for the devices first illustrated in Exhibit A." 131 Declarations, paras. 17, 18, 19. The 131 Declarations do not specifically point to descriptions or data within Exhibits A, E, F, or G to show evidence of conception or reduction to practice of the method of claim 18. For example, the 131 Declarations do not explain where 2 The affidavits are substantially identical, but signed separately by each inventor. For ease of reference, we refer to the affidavits of de Villiers and Hahnle as the "131 Declarations." 3 Appeal2014-003436 Application 11/982,420 Exhibits A, E, F, or G specifically evidence conception or reduction to practice of the "placing" or "inserting" steps of claim 18. Rather, the 131 Declarations consist of vague and general statements in the broadest terms as to what Exhibits A, E, F, and G show along with an assertion that these Exhibits indicate conception and reduction to practice dates prior to April 24, 2002. These statements amount essentially to mere pleading, unsupported by proof or showing of facts. In re Borkowski, 505 F.2d 713, 718 (CCPA 1974); In re Harry, 333 F.2d 920 (CCPA 1964). The 131 Declarations do not adequately explain what facts or data Appellants are relying upon to show a completion of their invention prior to the critical date. See Borkowski, 505 F.2d at 718. The unlabeled drawings of Exhibits A, E, F, and G are not clear on their face, and it is Appellants' burden to explain the content of Exhibits A, E, F, and Gas proof of acts amounting to reduction to practice. Id. at 719. Absent a clear explanation pointing out exactly what facts are established in Exhibits A, E, F, and G and relied on by Appellants, the 131 Declarations based thereon are of little assistance in enabling us to ascertain whether there was an actual reduction to practice of the invention. Id. Further, Appellants have failed to point to the specific information in Exhibits A, E, F, and G on which they rely to show conception of the invention. Neither the 131 Declarations nor the arguments in the Appeal Brief establish facts sufficient to tie the information found in Exhibits A, E, F, and G to the claim limitations in a manner to show conception of the method of claim 18. As such, Exhibits A, E, F, and G are of little assistance in enabling the Office to ascertain whether there was conception of the invention and reduction to practice prior to the effective 4 Appeal2014-003436 Application 11/982,420 date of the prior art. Even if one were to find that the 131 Declarations provide sufficient evidence of a prosthetic device, Appellants have not met their burden to show the specifics of that prosthetic device in sufficient detail to establish that the prosthetic device is used in the method as claimed. Actual reduction to practice requires proof of a physical embodiment or performance of a process that includes all limitations of the claims. See UMC Elecs. Co. v. U.S., 816 F.2d 647, 652 (Fed. Cir. 1987) ("Under our precedent there cannot be a reduction to practice of the invention here without a physical embodiment which included all limitations of the claims."). In this case, Exhibits A, E, F, and Gare unlabeled drawings (i.e., every feature of the prosthetic device described by Appellants in the 131 Declarations is not labeled in Exhibits A, E, F, and G). For example, Exhibits A, E, F, and G do not have the following items labeled so that they correspond to the description of the prosthetic device: upper and lower plates, core, fin, or protrusion. Further, neither Appellants' description of the prosthetic device in the 131 Declarations nor Exhibits A, E, F, and G correspond to every limitation of the claims. For example, neither the description of Exhibits A, E, F, and G in the 131 Declarations nor Exhibits A, E, F, and G identify the "placing" or "inserting" steps of claim 18. Moreover, Appellants acknowledge that "[t]he drawings [of Exhibits A, E, F, and G] do not show the prosthesis implanted between adjacent vertebrae with at least one fin entering a slot cut in an associated vertebral surface." Br. 6. Appellants here have not sufficiently explained the contents of Exhibits A, E, F, and G. More specifically, Appellants have not mapped the features of the prosthetic 5 Appeal2014-003436 Application 11/982,420 device to the claim limitations. The 131 Declarations, signed by Appellants, further attach Exhibits B, C, and D of redacted tax invoices. Exhibits B, C, and D are examples of "invoice[ s] from the contractor for work done on the devices illustrated in Exhibit A." 131 Declarations, paras. 9, 10, 11. Similar to Exhibits A, E, F, and G discussed above, Exhibits B, C, and D are of little assistance in enabling the Office to ascertain whether there was conception of the invention and reduction to practice prior to the effective date of the prior art. Because Appellants are unable to swear behind the Ferree reference, the Ferree reference stands as prior art, and Appellants have failed to demonstrate error in the Examiner's rejection of claims 18-26 under Â§ 103(a). Accordingly, for the foregoing reasons, we summarily sustain the Examiner's rejection of claims 18-26 as unpatentable over Ferree and Eisermann. Buttner-Janz and Eisermann Claims 18-26 The Examiner finds that Figure 14 of Buttner-Janz discloses the method of claim 18, including a prosthesis having "[an] upper prosthesis plate having a concavely curved, spherical bearing surface therein" and "a movable core having a convexly curved, spherical surface configured to cooperate with the concavely curved surface of the upper plate." Ans. 5---6; see also Final Act. 7-8; Br. Claims App. 12 (emphasis added). 3 3 The Examiner relies on Eisermann for disclosure of a prosthesis having an elongated fin on the upper and lower plates and the method step of cutting a slot into the vertebral surfaces for the fins. See Ans. 6-7; see also Final Act. 8. 6 Appeal2014-003436 Application 11/982,420 Appellants contend that Buttner-Janz discloses "a prosthesis with upper and lower plates having non-spherical bearing surfaces, and a core with a non-spherical surface[] for cooperating with the non-spherical bearing surfaces [of the plates]." Br. 9. According to Appellants, Buttner- Janz "teaches the use of non-spherical oval surfaces to prevent[] free rotary mobility and to cause the prosthesis plates to rotate back into a neutral position." Id. at 9-10 (citing Buttner-Janz, col. 3, 11. 25--42). Appellants' argument is persuasive. Buttner-Janz discloses "the invention comprises the articular surface forming curved arches with a different average radius in the sagittal section and in the frontal section." Buttner-Janz, col. 1, 11. 42--44 (emphasis added). Buttner-Janz further discloses: According to the invention the radii of curvature of the articular surfaces 6 are different in the sagittal section and frontal section, namely smaller in the sagittal section (FIG. 3) than in the frontal section (FIG. 1). Whereas when the sliding surfaces have a spherical shape their congruence is retained even when the prosthesis plates are twisted around the vertical axis 9 with respect to the prosthesis core (in the direction of the arrow 10), the congruence is no longer present in the case of the articular surface configuration according to the invention in the sectional planes which differ fi~om the principal planes. Id. at col. 3, 11. 21-32 (emphasis added); see also Br. 9-10. In other words, Buttner-Janz discloses oval bearing surfaces (i.e., surfaces formed from non- congruent/different radii) rather than spherical bearing surfaces (i.e., surfaces formed from congruent/the same radii) as claimed. See Br. 9-10. Further, in regard to the Examiner's position that Buttner-Janz "teaches that the bearing surfaces could have the same radii as portions taken from a sphere," the Examiner does not direct us to any discussion in Buttner-Janz of 7 Appeal2014-003436 Application 11/982,420 a prosthesis having spherical bearing surfaces (i.e., surfaces formed from congruent/the same radii) and a protrusion as claimed. See Ans. 1 O; see also id. at 5-6; Final Act. 7-8; Buttner-Janz, Fig. 14. Moreover, Buttner-Janz discloses that stops such as the "protrusions" of Figure 14 are safely used with non-spherical bearing surfaces, since the danger of vigorous striking of prosthetic parts that occurs with spherical bearing surfaces, is generally avoided due to the resistance to rotation attained with non-spherical bearing surfaces. See Buttner-Janz, col. 1, 1. 62 - col. 2, 1. 17. As such, based on the foregoing reasons, the Examiner fails to establish by a preponderance of the evidence that the combined teachings of Buttner-Janz and Eisermann disclose the method of claim 18. Accordingly, we do not sustain the Examiner's rejection of claims 18- 26 as unpatentable over Buttner-Janz and Eisermann. DECISION We AFFIRM the decision of the Examiner to reject claims 18-26 as unpatentable over Ferree and Eisermann. We REVERSE the decision of the Examiner to reject claims 18-26 as unpatentable over Buttner-Janz and Eisermann. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 8