Ex Parte Sharifi-MehrDownload PDFPatent Trial and Appeal BoardNov 26, 201311601596 (P.T.A.B. Nov. 26, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte AMIR ALI SHARIFI-MEHR ____________________ Appeal 2011-012290 Application 11/601,596 Technology Center 3700 ____________________ Before: MICHAEL L. HOELTER, SCOTT A. DANIELS, and JILL D. HILL, Administrative Patent Judges. DANIELS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012290 Application 11/601,596 2 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. Appeal 2011-012290 Application 11/601,596 3 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 Appeal 2011-012290 Application 11/601,596 4 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. Appeal 2011-012290 Application 11/601,596 5 (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 Appeal 2011-012290 Application 11/601,596 6 “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 Appeal 2011-012290 Application 11/601,596 7 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. Appeal 2011-012290 Application 11/601,596 8 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 Appeal 2011-012290 Application 11/601,596 9 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 Appeal 2011-012290 Application 11/601,596 10 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 Appeal 2011-012290 Application 11/601,596 11 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 Appeal 2011-012290 Application 11/601,596 12 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 Klh Copy with citationCopy as parenthetical citation