Ex Parte Sharifi-Mehr

Patent Trial and Appeal Board

Nov 26, 2013

11601596 (P.T.A.B. Nov. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte AMIR ALI SHARIFI-MEHR
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Appeal 2011-012290
Application 11/601,596
Technology Center 3700
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Before: MICHAEL L. HOELTER, SCOTT A. DANIELS, and
JILL D. HILL, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Amir Ali Sharifi-Mehr (Appellant) appeals under 35 U.S.C. § 134
from a rejection of claims 1, 2 and 5-26. Claims 3 and 4 are canceled.
Claims 1, 19 and 21 are independent. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
THE INVENTION
The claimed subject matter relates to an orthopedic implant,
specifically to a dynamic intervertebral disc implant device. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An intervertebral implant comprising:
an upper plate having an outer surface and an inner
surface;
a lower plate having an outer surface and an inner
surface;
a first intermediate plate having a first surface opposing
the inner surface of said upper plate and a second surface
opposing the inner surface of said lower plate;
a first flexible hinge formed integrally with said upper
plate and said intermediate plate; and
a second flexible hinge formed integrally with said
intermediate plate and said lower plate, wherein the first
flexible hinge traverses the second flexible hinge about a
vertical axis of the implant;
wherein the implant is monolithic; and
wherein the implant is not compressible along the
vertical axis.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gordon
Frigg
US 6,964,686 B2
WO 2004/054479
Nov. 15, 2005
July 2004

REJECTIONS
The Examiner made the following rejections:
Claims 1, 2 and 4-26 stand rejected under 35 U.S.C §112 first
paragraph as failing to comply with the written description requirement.
Ans. 3.
Claims 1, 2 and 4-26 stand rejected under 35 U.S.C §112 second
paragraph as being indefinite. Ans. 4.
Claims 1, 2 and 4-26 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Frigg and Gordon. Ans. 4.

ANALYSIS
Claims 1, 2 and 4-26 as failing to comply with
the written description requirement

It is well settled by our reviewing court that “the test for determining
compliance with the written description requirement is whether the
disclosure of the application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal support in the
specification for the claim language. . . . The content of the drawings may
also be considered in determining compliance with the written description
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requirement.” In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983) (citations
omitted).
It is the Examiner's burden to establish a prima facie case of non-
patentability based on the written description requirement by presenting
evidence or reasons establishing why persons skilled in the art would not
recognize, in the original disclosure, a description of the invention defined
by the claims. In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996). It is also
well settled that whether a specification complies with the written
description requirement of 35 U.S.C. § 112, first paragraph, is a question of
fact. Gentry Gallery Inc. v. Berkline Corp., 134 F.3d 1473, 1479 (Fed. Cir.
1998).
The Examiner finds that the application as originally filed does not
provide adequate written descriptive support for the recitation in claim 1
“wherein the implant is not compressible along the vertical axis”.1 Ans. 3.
The Examiner supports this finding by pointing out that Appellant’s flexible
hinges 74, 76, traverse the vertical axis of the implant, and also because the
Specification states only that the implant is axially rigid, as opposed to “not
compressible”. Ans. 8, see also Spec. Figure 3A.
There is no dispute that the Specification as originally filed describes
that the implant “is designed to be axially rigid to support loads on the spine,
while allowing compliance about the flexible hinges.” Spec. [0045]

1 The “vertical axis,” as currently claimed, is not described in the original
specification, recited in the original claims, nor shown explicitly in
Appellant’s figures 1-6. Notwithstanding, based on the written description
and drawings as originally filed, a person of ordinary skill in the art would
understand that the claimed “vertical axis” is a center axis of the implant,
essentially as shown in Appellant’s annotations of Figures 3H and 6E
depicting a vertical axis at pp. 10-11 of the Appeal Brief.
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(emphasis added). The Specification explains that the implant takes the
place of a vertebral body such as a vertebra disc, and is intended to “provide
support to the spinal column while maintaining motion at the corrected
spinal segment.” Spec. [0044]. A common definition of the word “rigid” is
“ [s]tiff, firm, unbending.” Oxford English Dictionary
http://www.oed.com/view/Entry/165916?redirected From=rigid#eid (last
visited Nov. 15, 2013). Keeping in mind the definition, we understand from
Appellant’s description that pressure exerted on the implant causes flexing
of the implant about the flexible hinges which perpendicularly traverse the
vertical axis of the implant. We also understand that such flexing or bending
of the hinges (as they traverse the vertical axis) may even apply curvature to
the vertical axis of the implant. Nothing, however, in the description
explains that there is any lengthening, (extension), or shortening
(compression) of the vertical axis of the implant. Thus, we appreciate that
“rigid”, as it is modified by “axially” must, to have meaning within the
context of the Specification and the claims to one of ordinary skill in the art,
relate to the lengthening and shortening, i.e. the lack of extension and
compression, of the device along the vertical axis under load.
Our comprehension is aided by Appellant’s disclosure that the implant
is intended to maintain or restore the intervertebral separation between
vertebrae. See Spec. para. [0007]. Furthermore, the definition of “rigid”
does not require a rigid element or material to be compressible, or
incompressible. In other words, our understanding is that “rigid” is a
broader term than the phrase “not compressible”. Unless defined otherwise,
“rigid” therefore, includes elements and materials which are incompressible
and materials which are compressible. The use of a narrower phrase such as
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“not compressible” is merely a sub-element of “rigid” and therefore
disclosed by the broader usage in the Specification of the term “rigid.” For
example, claim 1 would not encompass a rigid material or element which
was axially compressible.
Hence, the language of claims 1, 19 and 21 “wherein the implant is
not compressible” has not been established as involving a new concept by
the Examiner's assertion that the hinges flex, or because the phrase “not
compressible” is not explicitly used in the Specification. The Examiner has
not carried the burden to establish that the rejected claims are in violation of
the written description requirement of 35 U.S.C. § 112, on this appeal
record.
Accordingly, we reverse the Examiner's lack of written description
rejection.
Claims 1, 2 and 4-26 as indefinite
The Examiner finds that claims 1, 2 and 4-26 are indefinite because it
is not clear how “the implant is not compressible along the vertical axis”
when there are flexible material body parts, i.e., the flexible hinges that lie
on that axis. Ans. 4.
Appellant explains that one of ordinary skill in the art would
understand that “[t]he ‘flexibility’ of the hinges simply does not require
them to be constructed of a material that allows compression along the
vertical axis of the implant under opposing forces from the adjacent
vertebrae.” Br. 17.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
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Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
As discussed above relative to the written description rejection, the
flexing of the implant occurs about the hinge axis perpendicularly traversing
the vertical axis of the implant. Spec. paras. [0044-45]. While the upper
plate 52, for example, in Figure 3A, can be compressed on one side of the
flexible hinge 74 (with the opposing side of the upper plate 52 being
correspondingly extended relative thereto) due to the slots 78, 80, there is no
indication that the hinge axis, perpendicular to the main vertical axis of the
device, is compressed, or extended for that matter. Indeed, if one side of
upper plate 52 is compressed, the opposing side of the plate 52 will be
correspondingly extended, and the hinge axis about which the upper plate
rotates will remain neutral, i.e. neither compressed, nor extended. Since the
hinge axis traverses the main axis of the implant, the movement of the upper
plate similarly fails to axial compress, or extend the vertical axis of the
implant at their point of intersection along the hinge axis. Under a load
which may move, or rotate the upper plate 52 about the hinge axis, the
evidence best supports Appellant’s interpretation that the implant, therefore,
remains “not compressed along the vertical axis,” as called for in claim 1.
Accordingly, we do not agree that the movement of the plates 52,
about their respective hinges causes inherent compression of the vertical axis
of the implant and we reverse the rejection of claims 1, 2 and 5-26 as
indefinite.

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Claims 1, 2 and 4-26 as unpatentable over Frigg and Gordon
Claims 1, 2, 4-9, 11-13 and 15-26
Appellant argues claims 1, 2, 4-9, 11-13 and 15-26 as a group, where
claims 1, 19 and 21 are the independent claims, and present separate
arguments as to dependent claims 10 and 14. See Br. 18, 23. We select
claim 1 as representative of the group where claims 2, 4-9, 11-13 and 15-26
stand or fall with claim 1. See 37 C.F.R. 41.37(c)(1)(vii) (2011).
The Examiner finds that Frigg discloses all the limitations of claim 1
with the exception of the hinges being flexible and integral, and the implant
being monolithic. Ans. 6. The Examiner turns to Gordon for teaching an
intervertebral implant having flexible and integral hinges and a monolithic
implant. Id. The Examiner reasons that it would be obvious to one of skill
in the art to substitute the integral flexible hinges of Gordon’s intervertebral
implant to make Frigg’s implant monolithic thus “minimizing the risk of
small pieces of the implant (e.g. the hinges [40, plates 10, 20] of Frigg) from
dislodging into the inner body space.” Ans. 7.
Appellant argues that the combination of Frigg and Gordon is
improper because Frigg’s implant has separate components, and is intended
to reduce friction in the device and “minimize the influence of the implant
on the spinal column with respect to bending and flexion/extension
movement…by having a reduced surface contact area between moving
parts.” Br. 19. Appellant contends that in Gordon’s monolithic implant
when a load is applied “both compression and extension forces occur within
the connecting hinge.” Br. 20. Appellant asserts that the combination is
improper because there is no physical, integral attachment of the rods and
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plates in Frigg’s implant, in other words, Frigg’s separate rods do not
undergo extension forces and are subject only to compressive forces. Br. 21.
Appellant argues that because the objective of Frigg is different from
that of Gordon and the claimed invention, namely, “eliminat[ing] the
possibility that the adjacent plates could create an extension force on the
rods during movement of the plates,” a person of ordinary skill in the art
would not look to Gordon for the use of the integral biasing hinges as a
substitute for the separate hinge rod components in Frigg. Br. 21-22. We
are not persuaded by Appellant’s argument for two reasons, first because in
determining whether the subject matter of a claim is obvious, “neither the
particular motivation nor the avowed purpose of the (patentee) [applicant]
controls. What matters is the objective reach of the claim. If the claim
extends to what is obvious, it is [unpatentable] under § 103.” KSR v.
Teleflex Int'l Co. Inc., 550 U.S. 398, 419 (2007). The reason to modify the
reference may often prompt a person of ordinary skill in the art to do what
the inventor has done, but for a different purpose or to solve a different
problem. It is not necessary that the prior art suggest the combination to
achieve the same advantage or result discovered by an applicant. See, e.g.,
In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). Second, in general, making
separate components into a unitary or integral component is not patentable.
See Howard v. Detroit Stove Works, 150 U.S. 164, 170, (1893) (Where a
patent to a stove was void “because it involves no invention to cast in one
piece an article which has formerly been cast in two pieces.”)
Appellant’s argument that Frigg discloses separate components
having reduced friction characteristics and having no extension forces acting
on the hinge to improve relative movement between vertebral bodies does
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not persuade us that there is any significant functional difference in Frigg’s
vertebral implant from Gordon’s vertebral implant. Both disclose vertebral
implants which maintain vertebrae separation while permitting flexion of the
spine. See Gordon col. 2, ll. 12-22., Frigg translation pg. 1. The implants
differ only perhaps in the relative degree of flexion. See In re Larson, 340
F.2d 965, 968 (C.C.P.A. 1965) (validating the reasoning that the elimination
of elements without a change in function of the underlying device was
obvious, the Court agreed “with the board that it would be obvious to
dispense with the added cargo handling features of Le Clair et al. and use the
frame without those features.”)
Appellant argues that the effect of the monolithic construction in
Gordon which does not permit the same freedom of movement as Frigg’s
device is the antithesis of the reduced friction effect desired by Frigg’s
implant. Br. 19. Appellant, however, provides no explanation, nor points to
any aspect or disclosure in Frigg that teaches that some level of restriction of
movement of the plates 10, 20, 30 is unwarranted. Indeed, Frigg’s Figures
11 and 12 and written description at page 13 disclose an embodiment of
Frigg having elastically malleable means 60 having springs 61 which
provide tension, i.e. extension, forces to the plates 10, 20 and 30 while
permitting essentially unrestricted mobility of the plates about the hinge rods
40 and 50.
To the extent that Appellant points out that Gordon is designed to
permit axial compression along a vertical axis (Br. 23), and thus teaches
away from combination with Frigg’s axially incompressible components,
Appellant has not pointed to anything in Gordon that criticizes, discredits, or
discourages investigation into the claimed invention. See In re Fulton, 391
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F.3d 1195, 1201 (Fed. Cir. 2004) (A reference does not teach away by
merely disclosing an alternative invention without criticizing, discrediting,
or otherwise discouraging investigation into the claimed invention.).
Accordingly, we are not apprised of error in the Examiner’s
articulated reasons and rational underpinnings supporting the combination of
references and we sustain the rejection of claim 1 as unpatentable over Frigg
and Gordon. Claims 2, 4-9, 11-13 and 15-26 fall with claim 1.
Claims 10 and 14
Appellant argues that Gordon does not disclose the hinge having “an
opening extending between and in communication with said first [third] slot
and said second [fourth] slot” as recited in claims 10 and 14. Br. 24-25. The
Examiner replies that Gordon’s Figures 7 and 8 disclose an opening, being
the axial opening of the implant, which provides communication between
the dual flexion locations 154 on either side of Gordon’s flexible hinge.
Ans. 9.
Appellant’s position is essentially that Gordon’s structure defines only
a single undivided hinge element and a single slot, or slit 152, between each
plate where “[e]ach slit extends into the flexure from one direction only and
terminates at the hinge,” and “[a]s seen more particularly in FIG. 8, hinge
’A‘ does not have any openings extending therethrough.” Br. 24-25. We
agree. The Examiner’s position requires that we interpret Gordon’s single
slit 152 as including both a first slot and a second slot. Although the axial
passage through Gordon’s structure does communicate with the entirety of
each slit 152 as shown in Gordon’s Figures 7 and 8, the Examiners
interpretation would read the limitations of a first and second slot elements
out of claim 7, upon which claims 10 and 14 both depend. Even under the
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broadest reasonable interpretation, “a first and second slots” must, to have
any meaning to one of ordinary skill in the art, differentiate from a single
slot as encompassed by claim 1. We do not import limitations from the
Specification into the claims here, but merely interpret the claim limitations
in light of the Specification which explains that the first and second slot
“angulate relative to one another about axis Y.” Gordon’s single slit 152
cannot angulate relative to itself.
The Examiner’s interpretation with respect to Gordon’s single slit 152
is not supported by a preponderance of the evidence. Accordingly, we do
not sustain the Examiner’s obviousness rejection of claims 10 and 14 in
view of Frigg and Gordon.
DECISION
The rejection of claims 1, 2 and 4-26 under 35 U.S.C §112 first
paragraph as failing to comply with the written description requirement is
REVERSED.
The rejection of claims 1, 2 and 4-26 under 35 U.S.C §112 second
paragraph as being indefinite is REVERSED.
The rejection of claims 1, 2 and 4-26 under 35 U.S.C §103(a) as being
unpatentable over Frigg and Gordon is AFFIRMED.
The rejection of claims 10 and 14 under 35 U.S.C §103(a) as being
unpatentable over Frigg and Gordon is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

AFFIRMED-IN-PART
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