Ex Parte de Villiers et al

Patent Trial and Appeal Board

Apr 25, 2016

12986292 (P.T.A.B. Apr. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/986,292 01107/2011
21971 7590 04/27/2016
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.
29850-703.401 6057
EXAMINER
SNOW, BRUCE EDWARD
ART UNIT PAPER NUMBER
3738
NOTIFICATION DATE DELIVERY MODE
04/27/2016 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 HAHNLE
Appeal2013-003268
Application 12/986,292
Technology Center 3700
Before EDWARD A. BROWN, WILLIAM A. CAPP, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
Malan de Villiers and Ulrich Hahnle (Appellants) 1 appeal under 35
U.S.C. § 134 from the Examiner's decision rejecting claims 1-14 and 28--41.
Appeal Br. 6. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 The Appeal Brief identifies the real party in interest as SpinalMotion, Inc.
Appeal Br. 3.
Appeal2013-003268
Application 12/986,292
CLAIMED SUBJECT MATTER
Claims 1, 12, 28, and 39 are independent. Claim 1 is illustrative of
the claimed subject matter, 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, inner bearing surfaces, and
lateral portions;
a 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;
a projection formed on the upper or lower surface of the
core;
a slot formed on at least one of the inner bearing surfaces,
the slot arranged to receive and cooperate with the projection to
retain the core between the plates when the plates slide over the
core, wherein the projection and slot are located between a
central axis of the plates and an outer periphery thereof, and
wherein the lateral portions of the upper and lower plates are
adapted to contact one another during sliding movement of the
plates over the core.
Appeal Br. 42, Claims App.
REJECTIONS2
The claims stand rejected as follows:
1. Claims 28--41 under 35 U.S.C. § 112, first paragraph, written
description requirement. Final Act. 2.
2. Claims 28-33 and 38--40 under 35 U.S.C. § 102(b) as
anticipated by Yasui (JP 63-164948 A, pub. July 8, 1988). Id. at 8.
2 The Examiner has withdrawn the rejection of claims 28-31, 33, 35, and
37--41under35 U.S.C. § 102(b) as anticipated by Paponneau (EP 1 346 709
A2, pub. Sept. 24, 2003); and the rejection of claim 36 under 35 U.S.C.
§ 103(a) as unpatentable over Paponneau. Ans. 11.
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Application 12/986,292
3. Claims 28-34 and 38--40 under 35 U.S.C. § 103(a) as
unpatentable over Yasui. Id. at 10.
4. Claims 35-37 under 35 U.S.C. § 103(a) as unpatentable over
Yasui as evidenced by Viart (US 2003/0191534 Al, pub. Oct. 9, 2003) and
Eisermann (US 2004/0073312 Al, pub. Apr. 15, 2004). Id. at 11.
5. Claim 41under35 U.S.C. § 102(b) as anticipated by, or, in the
alternative, under 35 U.S.C. § 103(a) as unpatentable over, Yasui as
evidenced by Viart. Id. at 12.
6. Claims 1-14 under 35 U.S.C. § 103(a) as unpatentable over
Ferree (US 2004/0030391 Al, pub. Feb. 12, 2004) and Yasui. Id. at 3.
ANALYSIS
Lack of Written Description (Claims 28--41)
Claim 28 recites the limitation of "each slot is located entirely
between a central axis of the plates and an outer periphery of the core."
Appeal Br. 44, Claims App. (emphasis added). Claim 39 recites a similar
limitation. Id. at 45. The Examiner finds that the Specification does not
support the term "entirely" recited in claims 28 and 39. Final Act. 2.
Appellants contest this finding. Appeal Br. 9. In support, Appellants
provide an annotated version of Figure 11 of the application, showing the
locations of a left "Slot" and a right "Slot" between the central axis of the
plates and "an outer periphery of the core." Id. at 10. The Examiner
responds that "if a plate was to slide fully left or right such that the
projection engaged the slot, ... the slot would move beyond the periphery
of the core." Ans. 11 (emphasis added). Appellants contend that the
Examiner does not show how such movement of the slot could occur in this
embodiment. Reply Br. 2. According to Appellants, "motion all the way to
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Application 12/986,292
the right or all the way to the left in [this embodiment] is prevented by a
combination of the upper and lower plates contacting one another and the
rib 70 contacting the edges of the channel 72." Id.
Appellants' contentions are persuasive. Claim 28 further recites that
"the slot [is] arranged to receive and cooperate with the projection to retain
the core between the plates when the plates slide over the core." Appeal Br.
44, Claims App. The Examiner does not identify any disclosure in
Appellants' application that supports the position that a portion of a slot 72
shown in Figure 11 "would move beyond the periphery of the core,"
although a corresponding rib 70 is engaged in the slot, when a plate slides
"fully left or right." Rather, Appellants' disclosure appears not to support
this position. In this regard, we further note that Figure 1 illustrates a
prosthetic disc 10 having plates 12, 14 and core 16 in vertical alignment, and
Figure 2 depicts the prosthetic disc after sliding movement of plates 12, 14
over core 16. See Spec. paras. 21-22. As shown in Figure 2, opposing
lateral portions of plates 12, 14 contact each other, and thereby prevent,
further sliding of plates 12, 14. See id. para. 41. The embodiment of the
prosthetic disc shown in Figure 11 likewise includes opposing lateral
portions on the upper and lower plates. These lateral portions would appear
to limit sliding similarly to the embodiment shown in Figure 2.
Consequently, the Examiner has not shown with evidence that a slot 70
could move beyond the outer periphery of the core when the corresponding
rib 72 is engaged in the slot 70 in Figure 11. Thus, the Examiner has not
shown that the disclosure fails to support the recitation of "entirely between"
in claims 28 and 39.
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Thus, we do not sustain the rejection of claims 28--41 under 35 U.S.C.
§ 112, first paragraph, written description requirement.
Anticipation by Yasui (Claims 28-33 and 38--40)
Claims 28-33 and 38
In rejecting claim 28, the Examiner finds that Yasui discloses an
intervertebral prosthetic disc comprising upper plates C1, P1, lower plates C2,
P2, and core b. Final Act. 8-9. In support, the Examiner provides a first
annotated Figure 2 of Yasui having notations for a "Slot," "Projection,"
"upper slot," and "upper projection." Id. at 9. The Examiner finds that the
"upper slot" "is located entirely between a central axis of the plates and an
outer periphery of the core." Id. (emphasis added). The Examiner reasons
that "[i]f 'central axis of the plates' is interpreted [as] a central vertical axis,
it is the examiner's position that said axis has no axial dimension.
Therefore, theoretically, all of the slot and projection is located between said
axis (in a radial fashion) and an outer periphery of the core." Id. (emphasis
omitted).
Appellants also provide an annotated version of Figure 2 of Yasui.
Appeal Br. 16. In contrast to the Examiner, Appellants contend that Figure
2 shows that central axis "U" extends through the "upper slot" in sliding
member P 1. Id. at 15-16. Thus, Appellants contend that Yasui' s device "is
not configured such that 'each slot is located entirely between a central axis
of the plates and an outer periphery of the core.'" Id. at 15.
Appellants' contention is persuasive. Figure 1 of Appellants'
application shows central axis 40 extending vertically through the lateral
center of core 16 and plates 12, 14. See Spec. para. 41; Fig. 1. Similarly,
Figure 11 shows a vertically-extending axis in broken line. This axis
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Application 12/986,292
likewise appears to extend through the lateral center of the core and the
upper and lower plates, and thus, appears to be a "central axis" of the
structure. Consistent with the location of the central axes in Figures 1 and
11, central axis "U" in annotated Yasui Figure 2 extends vertically,
approximately through the lateral center of turning body band projecting
part J. Appeal Br. 16. As such, the slot that receives projecting part J is not
located "entirely between a central axis of the plates and an outer periphery
of the core."
Thus, we do not sustain the rejection of claims 28-33 and 38 as
anticipated by Yasui.
Claims 39 and 40
Claim 39 recites, inter alia, "providing at least one slot in at least one
of the plates and at least one projection on the core, with each slot located
entirely between a central axis of the plates and an outer periphery of the
core." Appeal Br. 45; Claims App. (emphasis added). The Examiner's
findings for claim 39 are substantially the same as those for claim 28. Final
Act. 8-9. Accordingly, we also do not sustain the rejection of claims 39 and
40 as anticipated by Yasui.
Obviousness over Yasui (Claims 28-34 and 38--40)
Claims 28-34 and 38
In rejecting claim 28, the Examiner provides a second annotated
Figure 2 of Yasui, having notations for a "Projection" formed on core b, and
a "Slot" formed on lower plate P2 and arranged to receive the "Projection."
Final Act. 10. The Examiner finds that Yasui does not teach "the new range
of 'each slot located entirely between a central axis of the plates and an
outer periphery of the core."' Id. at 11. However, the Examiner determines
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that "the new range" would have been an obvious design choice. Id.
According to the Examiner, Appellants' invention would be expected to
perform equally well with "the projection and slot . .. located between a
central axis of the plates and an outer periphery thereof" Id.
We understand the Examiner's position to be that it would have been
obvious to modify Yasui' s device shown in second annotated Figure 2 by
modifying the "Projection" and "Slot." However, Appellants again point out
that Yasui's slot receiving projecting part J is not located "entirely between a
central axis of the plates and an outer periphery of the core." Appeal Br. 29-
31. And the Examiner does not state that the modification of Yasui would
also modify the "upper projection" on turning body band the "upper slot"
formed on sliding member P1 shown in the Examiner's first annotated Figure
2 of Yasui. See Final Act. 9. Consequently, the Examiner has not
established that it would have been obvious to modify Yasui such that "each
slot is located entirely between a central axis of the plates and an outer
periphery of the core," as required by claim 28 (emphases added).
Thus, we do not sustain the rejection of claim 28, and claims 29-34
and 38 depending therefrom, as unpatentable over Yasui.
Claims 39 and 40
The Examiner's findings for claim 39 are substantially the same as
those for claim 28. Final Act. 10-11. Accordingly, we do not sustain the
rejection of claims 39 and 40 as unpatentable over Yasui for the same
reasons discussed for claim 28.
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Obviousness over Yasui as evidenced by Viart and Eisermann
(Claims 35-37)
Claims 35 and 36 depend from claim 28 and recite the materials of the
upper plate and lower plate (claim 35) and the core (claim 36). Appeal
Br. 45, Claims App. The Examiner relies on Viart for disclosing the
limitations of claims 35 and 36. Final Act. 11-12. As such, the Examiner's
application of Viart does not cure the deficiencies of the rejection of claim
28 as anticipated by or unpatentable over Yasui. Accordingly, we do not
sustain the rejection of claims 35 and 36 as unpatentable over Yasui and
Viart.
Claim 37 depends from claim 28 and recites "at least one fin
extending from the outer surfaces of the upper and lower plates." Appeal
Br. 45, Claims App. The Examiner finds that Eisermann teaches this
feature. Final Act. 12. The Examiner's application of Eisermann does not
cure the deficiencies of the rejection of claim 28 as anticipated by or
unpatentable over Yasui. Accordingly, we do not sustain the rejection of
claim 37 as unpatentable over Yasui and Eisermann.
Anticipation/Obviousness over Yasui as evidenced by Viart (Claim 41)
Claim 41 depends from claim 39 and recites that the core comprises at
least one spherical surface. Appeal Br. 46, Claims App. The Examiner
finds that Yasui discloses this feature. Final Act. 12. Alternatively, the
Examiner relies on Viart for teaching this feature. Id. at 12-13. Neither of
these alternative positions cures the deficiencies of the rejection of claim 28
over Yasui. Accordingly, we do not sustain the rejection of claim 41 as
anticipated by Yasui, or unpatentable over Yasui and Viart.
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Application 12/986,292
Obviousness over Ferree and Yasui (Claims 1-14)
Claims 1-11
The Examiner finds that Ferree discloses all limitations of claim 1
except for a projection formed on the upper or lower surface of the core, and
a slot formed on at least one of the inner bearing surfaces of the plates. Final
Act. 3--4 (citing Ferree, Figs. 3B, 5A, 5F). The Examiner relies on Yasui for
disclosing these missing features. Id. at 4--5 (reproducing second annotated
Yasui Fig. 2). The Examiner concludes that it would have been obvious to
use the slot and projection taught by Yasui in Ferree to retain the core
between the plates. Id. at 5---6.
Claim 1 recites that "the lateral portions of the upper and lower plates
are adapted to contact one another during sliding movement of the plates
over the core" (emphasis added). Appellants contend that it is not clear from
Figure 3B of Ferree whether there is contact between outer convex
components 302, 304, as found by the Examiner. Appeal Br. 24; Final Act.
3. As noted by Appellants, Ferree describes that Figure 3B shows outer
convex components 302, 304 in a "forward-most position." Id. (citing
Ferree, para. 41 ).
Appellants also contend that the projections at the ends ofYasui's
turning body b are configured to prevent contact between sliding members
P1, P2, which is contrary to claim 1. Appeal Br. 25. Appellants further
contend that projecting part J is provided on sliding member P1 to restrict
unlimited turning of turning body b. Id. (citing Yasui translation 3, second
para. under "Embodiments"). Appellants contend that combining Yasui' s
slot and projection with Ferree would prevent contact between Ferree' s
components. Id.
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The Examiner responds that one of ordinary skill in the art "would
reasonably appreciate that the plates are capable of contact" in Ferree. Ans.
14. The Examiner also contends that Appellants "have wrongly defined
'unlimited' to mean the plates cannot make contact." Id. The Examiner
states that "unlimited" is interpreted to mean "complete dislocation of plate
relative to the core." Id.
Appellants' contentions are persuasive. First, the Examiner has not
provided a sufficient basis to show that Ferree' s outer convex components
302, 304 are adapted to contact one another during sliding movement over
the core. Figure 3B does not show clearly there is contact between outer
convex components 302, 304. Nor does Ferree describe such contact. In
fact, Ferree's description that Figure 3B shows outer convex components
302, 304 "in a forward-most position" appears to indicate that these
components are not capable of further forward movement. See Ferree para.
41.
Second, the "lateral portions" of sliding members P1, P2 shown in
Figure 2 of Yasui would not be able to contact each other during sliding
movement over turning body b due to the presence of projection J. The
Examiner does not provide an apparent reason why one skilled in the art
would have modified Yasui' s device to allow lateral portions of sliding
members P1, P2 shown in Figure 2 to contact each during sliding movement
over turning body b.
In view of the above, the Examiner has not articulated an adequate
reason with a rational underpinning to combine the teachings of Ferree and
Yasui to achieve the claimed prosthetic disc. Accordingly, we do not sustain
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the rejection of claim 1, and claims 2-11 depending from claim 1, as
unpatentable over Ferree and Yasui.
Claims 12-14
Claim 12 is directed to a method of retaining a core in a prosthetic
disc, and recites, inter alia, "restricting movement of the plates by allowing
for contact between a lateral portion of the upper plate with a lateral portion
of the lower plate." Appeal Br. 43, Claims App. The Examiner's findings
are substantially the same as those for claim 1. Final Act. 3---6.
Accordingly, for reasons similar to those discussed for claim 1, we also do
not sustain the rejection of claim 12, and claims 13-14 depending from
claim 12, as unpatentable over Ferree and Yasui.
DECISION
The decision of the Examiner to reject claims 1-14 and 28--41 is
reversed.
REVERSED
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