Ex Parte Sweeney

Patent Trial and Appeal Board

Aug 21, 2017

12906594 (P.T.A.B. Aug. 21, 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.
12/906,594 10/18/2010 Patrick J. Sweeney 029815-0142 1386
26371 7590 08/23/2017
FOT FY Rr T ARDNFR T T P
EXAMINER
3000 K STREET N.W. RAMANA, ANURADHA
SUITE 600
WASHINGTON, DC 20007-5109 ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
08/23/2017 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.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICK J. SWEENEY
Appeal 2015-006033
Application 12/906,594
Technology Center 3700
Before EDWARD A. BROWN, ARTHUR M. PESLAK, and
SEAN P. O’HANLON, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Patrick J. Sweeney (Appellant)1 appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1—9 and 21.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The Appeal Brief identifies Spinal Generations, LLC, as the real party
interest. Appeal Br. 2.
2 Claims 10-14 are cancelled, and claims 15—20 are withdrawn from
consideration. Appeal Br. 15—18 (Claims App.).
Appeal 2015-006033
Application 12/906,594
CLAIMED SUBJECT MATTER
Appellant’s disclosure “relates to a vertebral prosthesis and related
spinal fixation system. In particular, the present invention relates to a
vertebral prosthesis that is designed to be used in conjunction with a spinal
fixation plate.” Spec. 12.
Claims 1 and 21 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter:
1. A spinal implant system suitable for a spinal fusion
procedure, comprising:
a vertebral prosthesis adapted to be placed at a site of an
excised vertebra between two adjacent remaining vertebrae, the
vertebral prosthesis comprising:
a shaft having a first end and a second end, wherein the
shaft is adjustable to alter a distance between the first end and the
second end;
a first end plate coupled to the first end of the shaft, the
first end plate having an outer edge defining an outer perimeter
of the first end plate;
wherein the first end plate is locked to the shaft to create a
rigid structure suitable to allow the two remaining vertebrae
adjacent the vertebral prosthesis to fuse together with the
vertebral prosthesis to form one rigid structure; and
a first anchor extending from the first end plate such that
the first anchor is positioned within the outer perimeter of the
first end plate, the first anchor defining an aperture configured to
receive and engage a bone screw;
wherein the bone screw engages with the aperture in the
first anchor to thereby secure the vertebral prosthesis at the site
of the excised vertebra and form a rigid structure comprising the
bone screw, the vertebral prosthesis, and the two adjacent
vertebrae.
Appeal Br. 15 (Claims App.).
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Application 12/906,594
REJECTIONS
Claims 1—6 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Eisermann (US 7,850,735 B2, issued Dec. 14, 2010), Erickson (US
6,419,705 Bl, issued July 16, 2002), and Ferree (US 7,048,766 B2, issued
May 23, 2006).
Claims 1, 7—9, and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Daher (US 4,657,550, issued Apr. 14, 1987) and Graham
(US 5,246,458, issued Sept. 21, 1993).
ANALYSIS
Obviousness of claims 1—6 over Eisermann, Erickson, and Ferree
Claim 1 recites “a shaft having a first end and a second end.” Appeal
Br. 15 (Claims App.). The Examiner finds that Eisermann discloses a
vertebral prosthesis 170 comprising a shaft (i.e., “cage 172 between plates
178/180”). Final Act. 5; see also Ans. 3^4 (referred to as “first
interpretation”). The Examiner finds, alternatively, that cage 172 is
composed of four shafts, which are separated by graft windows and slots
132. Final Act. 2; see also Ans. 3^4 (referred to as “second interpretation”).
The Examiner explains that the plain meaning of a “shaft” that is
applied in the rejection is a “pillar” or a “column,” which has no aspect ratio
requirement. Ans. 2—3 (citing collinsdictionary.com). Appellant asserts that
“[ojrdinary usage of the term ‘shaft’ and/or accepted definitions include
descriptions such as, ‘a long, narrow body or part.’” Appeal Br. 5.
The Examiner determines that the “shaft” of Eisermann, under the
first interpretation, is reasonably considered a “shaft” based on the noted
plain meaning. Ans. 3. The Examiner also finds that one of the “elongate
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Application 12/906,594
portions” of the central cage portion of Eisermann, under the second
interpretation, fits Appellant’s definition of a “shaft” because the aspect ratio
shown in Figure 12 meets that definition. Id.
In contrast, Appellant contends that Eisermann does not disclose a
“shaft,” as claimed. Appeal Br. 5. Appellant asserts that cage 172 is not a
“shaft” because “[a] cage is, by definition, not a long, narrow body, but
rather an enclosure structure.” Id. (citing Eisermann, col. 13,11. 53—57).
“During examination, ‘claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad, of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Appellant’s figures depict shaft
16 in different embodiments. See, e.g., Figs. 1—3, 11. The shafts 16 shown
in these figures have a generally long, narrow body, consistent with
Appellant’s definition of a “shaft.” We agree with Appellant that
Eisermann’s cage 172, which has a generally square shape in Figure 12,
would not be considered a “shaft” by one of ordinary skill in the art in view
of Appellant’s disclosure.
Further, the Examiner does not explain adequately how the “plain
meaning” of a shaft as a “pillar” or a “column” is consistent with
Appellant’s disclosure, or why one of ordinary skill in the art would consider
Eisermann’s cage 172 to be a “pillar” or a “column.”
Regarding the Examiner’s “second interpretation” of Eisermann’s
cage 172, we also agree with Appellant that one of ordinary skill in the art
would not consider any one of the “elongate portions” of cage 172 to be a
“shaft” in view of Appellant’s disclosure. The Examiner also does not
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Application 12/906,594
explain adequately how any one of the “elongate portions” of cage 172
would be considered a “pillar” or a “column” by one of ordinary skill in the
art.
Further, we note that claim 1 recites “a first end plate coupled to the
first end of the shaft” and that “the first end plate is locked to the shaft.”
Appeal Br. 15 (Claims App. (emphasis added)). Appellant’s Figure 2 shows
that shaft 16 and endplates 12, 14 are separate components from each other
and, consequently, are “coupled to” each other to form a vertebral prosthesis
as shown, e.g., in Figure 1. In contrast, Eisermann’s support plates 178, 180
and sidewalls forming cage 172 are portions of the same, single piece of
material. See Eisermann, Fig. 12. It is not apparent how support plate 178
or 180 is “coupled to” or “locked to” the alleged “shaft.” As Eisermann’s
“elongate portions” in cage 172 are likewise part of the same, single piece of
material, it is also not apparent how any one of the “elongate portions” is
“coupled to” or “locked to” either of support plates 178, 180.
The Examiner’s use of Erickson and Ferree to reject claim 1 fails to
cure the above-described deficiencies of Eisermann. Final Act. 7—8.
Accordingly, we do not sustain the rejection of claim 1, and claims 2—6
depending therefrom, as unpatentable over Eisermann, Erickson, and Ferree.
Obviousness of claims 1, 7—9, and 21 over Daher and Graham
Appellant argues claims 1, 7—9, and 21 together as a group, and
presents the same argument applied to claims 1 and 21. Appeal Br. 10-13.
We select claim 1 as representative, and claims 7—9 and 21 stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
As to claim 1, the Examiner finds that Daher discloses, inter alia, a
spinal implant system comprising a first end plate (“10+ respective 17”)
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Application 12/906,594
coupled to a shaft 5, 8, 9, and a first anchor 16a—16d extending from the first
end plate, but does not disclose “the first anchor defining an aperture
configured to receive and engage a bone screw” or the final “wherein”
clause limitation. Final Act. 8—10 (citing Daher, Figs. 1, 2).
The Examiner also finds that Graham discloses a spinal implant
system for maintaining the spacing between two adjacent vertebral bodies,
comprising bone screw 43 and anchors 16, 26, each having an aperture to
engage the bone screw. Id. at 10 (citing Graham, Figs. 1, 4). The Examiner
concludes that it would have been obvious to substitute the pronged
anchoring mechanism of Daher with Graham’s anchoring mechanism. Id.
Appellant’s contention that it would not have been obvious to modify
the prongs of Daher to have an aperture does not address the Examiner’s
rejection. Appeal Br. 11. As the Examiner explains, the rejection does not
form an aperture in Daher’s prongs, but, rather, removes the prongs from the
endplates and replaces them with Graham’s vertebral engagement members
and outer plates 16/26, 42. Ans. 7 (citing Graham, Figs. 1, 2).
Appellant next contends that Graham discloses a disc replacement
system, which is non-analogous art to the claimed spinal implant. Appeal
Br. 12—13. Appellant contends that a disc replacement device for
positioning in a disc space is different from a vertebral replacement device
that spans two disc spaces and a removed vertebra, and is not considered to
be in the same “field of endeavor.” Id. at 12. Appellant also contends that
Graham’s disc replacement system is not reasonably pertinent to the
problem faced by the inventor. Id. According to Appellant, claim 1 is
directed to “a spinal implant system that is capable of supporting the spine as
necessary by a spinal implant system without requiring a spinal fixation
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device.” Id. Appellant contends that “[w]hen seeking a way of providing a
rigid spinal implant, to rigidly fuse separated vertebrae, one skilled in the art
would not be inclined to look to a disc replacement system” because “a disc
replacement is intended to allow for movement between two adjacent
vertebrae.” Id. at 13.
The Examiner maintains that Graham is analogous art. Ans. 8. The
Examiner explains that both disc prostheses and spinal fusion devices are in
the same field of endeavor, that is, spinal prostheses. Id. The Examiner also
explains that one of ordinary skill in the art would have found spinal
articulating prostheses reasonably pertinent to spinal fusion devices, as both
devices can connect to adjacent vertebral bodies by means of keels, maintain
a generally physiological distance between adjacent vertebral bodies, and aid
in the repair of the vertebral bodies in similar fashions. Id.
In reply, Appellant does not address the Examiner’s specific reasoning
as to why Graham is analogous prior art, but repeats contentions made in the
Appeal Brief. Reply Br. 5—6; Ans. 8. Accordingly, Appellant does not
apprise us of any error in the Examiner’s reasoning.
As for Appellant’s contention that claim 1 is directed to “a spinal
implant system that is capable of supporting the spine as necessary by a
spinal implant system without requiring a spinal fixation device” (Appeal
Br. 12), we agree that claim 1 does not expressly require “a spinal fixation
device.” However, claim 1 does not expressly exclude a “spinal fixation
device,” and dependent claim 7 requires “a spinal fixation device.” See id.
at 16. Accordingly, we construe claim 1 as being sufficiently broad to
encompass embodiments of the spinal implant system that comprise “a
spinal fixation device” in addition to the recited vertebral prosthesis.
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A reference is “reasonably pertinent” to the problem faced by the
inventor if it “logically would have commended itself to an inventor’s
attention in considering his problem.” In re ICON Health and Fitness, Inc.,
496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (quoting In re Clay, 966 F.2d 656,
658 (Fed. Cir. 1992)). As for the scope of analogous art:
The Supreme Court’s decision in KSR International Co. v.
Teleflex, Inc., 550 U.S. 398 (2007), directs us to construe the
scope of analogous art broadly, stating that ‘ familiar items may
have obvious uses beyond their primary purposes, and a person
of ordinary skill often will be able to fit the teachings of multiple
patents together like pieces of a puzzle.” Id. at 402 (emphasis
added).
Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010).
We are not persuaded that Graham’s teaching of another known
anchoring mechanism for vertebrae is not reasonably pertinent to the
problem that Appellant contends is addressed by the claimed spinal implant
system. Even if Graham’s device may be different from Daher’s, we are not
persuaded that one of ordinary skill in the art would not have looked to
Graham to teach another anchoring mechanism for vertebrae, as relied on by
the Examiner. For example, Appellant does not provide any persuasive
reasoning as to why one of ordinary skill would have considered Graham’s
anchoring mechanism unsuitable to replace Daher’s anchoring mechanism.
Accordingly, we sustain the rejection of claim 1, and claims 7—9 and
21, which fall with claim 1, as unpatentable over Daher and Graham.
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DECISION
The rejection of claims 1—6 under 35 U.S.C. § 103(a) as unpatentable
over Eisermann, Erickson, and Ferree is reversed.
The rejection of claims 1, 7—9, and 21 under 35 U.S.C. § 103(a) as
unpatentable over Daher and Graham is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended according to 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRM-IN-PART
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