Ex Parte Fielding et al

Patent Trial and Appeal BoardAug 7, 2017

13073620 (P.T.A.B. Aug. 7, 2017)

United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/073,620 03/28/2011 LOUIS FIELDING 41564-705.502 8259 21971 7590 08/09/2017 WILSON, SONSINI, GOODRICH & ROSATI 650 PAGE MILL ROAD PALO ALTO, CA 94304-1050 EXAMINER SUMMITT, LYNNSY M ART UNIT PAPER NUMBER 3733 NOTIFICATION DATE DELIVERY MODE 08/09/2017 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 LOUIS FIELDING, IAN BENNETT, MANISH KOTHARI, TODD ALAMIN, HUGUES MALANDAIN, CRAIG LITHERLAND, and COLIN CAHILL Appeal 2015-005120 Application 13/073,6201 Technology Center 3700 Before ANNETTE R. REIMERS, JEREMY M. PLENZLER, and ERIC C. JESCHKE, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s Final Decision rejecting claims 15—30. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify Simpirica Spine, Inc. as the real party in interest. Br. 3. Appeal 2015-005120 Application 13/073,620 CLAIMED SUBJECT MATTER Claims 15 and 24 are independent, with claims 16—23 and 25—30 depending from claim 15 or 24. Claim 15 is representative of the claims on appeal, and is reproduced below: 15. A method for reducing instability of a spinal segment of a patient, said method comprising: coupling an elastic constraint between a superior spinous process and an inferior or L5 spinous process of a spinal segment, wherein the elastic constraint increases the bending stiffness of the spinal segment in flexion sufficiently to reduce lumbar pain or instability; and limiting elongation of the elastic restraint to a maximum elongation length to prevent excessive flexion of the spinal segment. REJECTIONS 1. Claims 15—17 are rejected under 35 U.S.C. § 102(e) as being anticipated by Trautwein (US Pat. Pub. No. 2008/0312693 Al, pub. Dec. 18, 2008). 2. Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Trautwein and Vessa (US Pat. Pub. No. 2008/0097431 Al, pub. Apr. 24, 2008). 3. Claims 19 and 24—26 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Trautwein, Vessa, Serhan (US Pat. Pub. No. 2005/0055096 Al, pub. Mar. 10, 2005), and Morphometry (Edgar Urrutia Vega et al., Morphometry of Pedicle and Vertebral Body in a Mexican Population by CT andFluroscopy, Int. J. Morphol., 27(4): 1299—1303 (2009)). 2 Appeal 2015-005120 Application 13/073,620 4. Claims 20 and 21 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Trautwein, Vessa, and Boyer (US 7,837,688 B2, iss. Nov. 23,2010). 5. Claims 22 and 23 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Trautwein and Boyer. 6. Claims 27 and 28 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Trautwein, Vessa, Serhan, and Boyer. 7. Claims 29 and 30 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Trautwein, Serhan, and Boyer. OPINION Claims 15—17 Appellants argue claims 15 and 16 as a group. Br. 7—8. We select claim 15 as representative. Claim 16 stands or falls with claim 15. See 37 C.F.R. 41.37(c)(l)(iv) (2015). The Examiner finds that Trautwein discloses each limitation of claim 15. Final Act. 2—3. Appellants respond that “[t]he action specifically argues that Fig. 3 of Trautwein ’693 shows an elastic constraint ‘which is positioned between the spinous processes.’”2 Br. 7—8. Appellants proceed to allege that “[sjuch a characterization of Trautwein is anatomically incorrect,” without further explanation. Id. at 8. These assertions are not persuasive of error as they 2 Although Appellants appear to quote the Final Action, we note that the language from the Appeal Brief reproduced above is not followed by a citation to the Final Action, and we do not find the exact language quoted by Appellants in the Final Action. Similar language appears on page 4 of the Final Action. See Final Act. 4 (“the elastic constraint is positioned vertically between the spinous processes, figure 3”). 3 Appeal 2015-005120 Application 13/073,620 amount to mere attorney argument unsupported by objective evidence. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Moreover, there is not even sufficient explanation for us to understand why Appellants disagree with the Examiner’s characterization of Trautwein. When addressing the Examiner’s rejection of claim 15, Appellants further note that “in, for example, Figs. 2 and 3 of Trautwein ’693 ... the stabilization units 10 of Trautwein are attached to the transverse processes, not the spinous processes.” Br. 8 (emphasis omitted). Appellants, however, fail to offer any explanation as to how this statement relates to the Examiner’s rejection or the language of claim 15. Claim 15 does not require that the elastic constraint is coupled to any spinous process. Appellants address claim 17, which depends from claim 15, separately. Id. at 8—9. When addressing claim 17, however, Appellants simply reproduce the language of the claim, paragraph 52 and a portion of Figure 5 A from Trautwein, and conclude that Trautwein’s “constraint will have a maximum length which is greater than the maximum elongation length.” Id. These assertions, too, are not persuasive of error as they amount to mere attorney argument unsupported by objective evidence. Again, there is not even sufficient explanation for us to understand why Appellants disagree with the Examiner’s characterization of Trautwein. For these reasons, we are not apprised of Examiner error in the rejection of claims 15—17. Claims 18—30 Appellants rely on the contentions presented with respect to claim 15 when addressing the rejections of claims 18—30. Br. 10—11. Those contentions fail to apprise us of error for the reasons set forth above. 4 Appeal 2015-005120 Application 13/073,620 DECISION We AFFIRM the Examiner’s decision to reject claims 15—30. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 5