Expanding Orthopedics Inc.

Patent Trials and Appeals Board

Aug 30, 2021

2021002009 (P.T.A.B. Aug. 30, 2021)

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.
15/155,190 05/16/2016 Jaffar Hleihil 2451LEV-US 5702
321 7590 08/30/2021
STINSON LLP
7700 FORSYTH BOULEVARD, SUITE 1100
ST LOUIS, MO 63105
EXAMINER
HANNA, SAMUEL SALEEB
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
08/30/2021 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):
stl.uspatents@stinson.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAFFAR HLEIHIL, MARK M. LEVY,
ASSAF GUY, and ERAN ISHAY

Appeal 2021-002009
Application 15/155,190
Technology Center 3700
____________

Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, and 5–18. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as CoreLink,
LLC. Appeal Br. 2.
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Application 15/155,190

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BACKGROUND
The Specification states that “[t]he present invention relates generally
to spinal implant devices, and particularly to an intervertebral cage for use
through a lateral approach of the spine.” Spec. 1.
ILLUSTRATIVE CLAIM
Claim 1 is the only independent claim on appeal and recites:
1. A device comprising:
an intervertebral cage comprising first and second
support surfaces arranged for pivoting about at least one pivot,
wherein the intervertebral cage has a length extending between
opposite non-longitudinal ends of the cage;
a rotatable lifting cam coupled to the intervertebral cage
and configured to rotate and translate relative to the
intervertebral cage; and
a rotatable actuating shaft coupled to the intervertebral
cage and configured to rotate about and translate along an axis
extending along the length of the intervertebral cage, the
rotatable actuating shaft being mounted on the lifting cam and
configured to impart rotation and translation of the lifting cam
about and along, respectively, the axis,
wherein actuation of said lifting cam via the rotatable
actuating shaft imparts non-parallel movement of at least one of
said first and second support surfaces with respect to the other
support surface about said at least one pivot.
Appeal Br. 13.
REJECTION2
The Examiner rejects claims 1, 3, and 5–18 under 35 U.S.C. § 112(a)
as failing to comply with the written description.

2 The Examiner has withdrawn the rejections under 35 U.S.C. §§ 103 and
112(b).
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DISCUSSION
With respect to claim 1, the Examiner determines that the limitations
“‘a rotatable lifting cam ... configured to rotate and translate relative to the
intervertebral cage ... a rotatable actuating shaft ... configured to impart
rotation and translation of the lifting cam about and along, respectively, the
axis’; and ‘a rotatable actuating shaft ... configured to rotate about and
translate along an axis extending along the length’ do not have support in the
originally filled [sic] disclosure.” Final Act. 6–7. In support, the Examiner
finds that
The most relevant recitation in the original disclosure can be
found in [i.e. para.31] which states that “turning shaft 40 turns
the cam 38”, however, there is no indication that the lifting cam
and the actuating shaft are configured to rotate about and
translate along an axis in response to rotation imparted by the
actuation shaft.
Id. at 7.3, 4 Thus, the Examiner specifically takes issue with the claim
requirement that the cam and actuating shaft translate along an axis of the
cage.
Appellant argues that Figures 4A–4C5 “and the related description
clearly describe the feature of the rotatable cam (38) translating relative to

3 The Examiner and Appellant cite to the paragraph numbers for the
published application, i.e., US 2017/0100255 A1, published April 13, 2017.
For ease of reference, we will do the same.
4 The Examiner did not enter an amendment to the Specification filed on
Nov. 25, 2019, which sought to amend the paragraph cited by the Examiner.
See Final Act. 5.
5 We understand that the references to the Figures provided are in reference
to the drawings submitted on May 16, 2016.
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the cage (30).” Appeal Br. 5 (emphasis omitted). Regarding these figures,
Appellant asserts:
As can be seen in FIG. 4B, the cage (30) is in the non-expanded
configuration See also, e.g., paragraph [0016]. In this view, the
rotatable cam (38) is not visible. As can be seen in FIG. 4C, the
cage (30) is in the expanded configuration. See also, e.g.,
paragraph [0017]. In this view, the rotatable cam (38) is visible
and can be seen to have been translated from the left to the right
in order to expand the cage (30). Moreover, paragraph [0031]
as originally filed explicitly describes the cams (38) sliding on
an inclined surface, which can be understood by FIG. 4C. One
having ordinary skill in the art would understand the feature of
the rotatable lifting cam coupled to the intervertebral cage and
configured to rotate and translate relative to the intervertebral
cage is clearly described and enabled by at least, for example,
FIGS. 4A-4C and paragraph [0031] as originally filed.
Id. Appellant further explains that in the embodiment of Figures 4A–4C, the
cam 38 is described as being mounted on the shaft 40 such that the shaft and
cam rotate and translate together along the axis extending along the length of
the cage. Id. at 6. Appellant asserts that one of ordinary skill in the art
would understand that the cam translates along an axis extending along the
length of the cage because the Specification discloses that the cage expands
by the action of sliding the cam along an inclined surface, which requires
some longitudinal translation of the cam. Appeal Br. 5; see also Reply Br 4.
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 requirement.
In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983) (citations omitted).
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Here, we agree with the Examiner that the Specification as originally
filed does not provide adequate support for the claim limitation requiring
that the shaft is configured to both rotate and translate such that it imparts
rotation and translation of the cam along an axis along the length of the
intervertebral cage.
The Specification describes the embodiment shown in Figures 4A–4C
as follows:
The cage 30 includes first and second support surfaces 32
and 34 (which may be the upper and lower support surfaces).
Each support surface has an end arranged for pivoting about a
pivot 36 on or near the short (end) side of cage 30. The pivot
36 can be a rod which passes through the end portion of the
support surface. Alternatively, the ends of first and second
support surfaces 12 and 14 may be flexibly joined at ends of the
cage to form a flexible joint which serves as the pivot 36.
The cage 30 includes one or more lifting cams 38 and an
actuating shaft 40 for actuating the cams 38. The cams 38 may
be in the shape of wedges, for example. The cams 38 may be
mounted on shaft 40 so that turning shaft 40 turns the cams 38
to lift first and/or second support surfaces 32 and 34 (i.e., pivot
about pivots 36), for example, by the action of the wedges or
cams sliding on an inclined surface or surfaces. The cams 38
can be arranged to lift just one of the support surfaces or both
(simultaneously or sequentially). In the illustrated embodiment,
there is one central cam 38 and shaft 40, which are positioned
on the central longitudinal axis of the cage 30 (however,
alternatively they can be offset as in the first embodiment).
Actuating cam 38 raises the central portion of cage 30 to obtain
variable angulation (as opposed to the prior art fixed
angulation) for properly adapting to the local degree of
angulation and shape of the disc space, as in the thoracic or
lumbar spine and increasing the disc space height. The
angulated expansion can be facing the anterior border of the
cage or the center of the cage.
Spec. ¶¶ 30, 31.
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We agree with the Examiner that there is no express disclosure of the
cam or shaft translating along a longitudinal axis as required by the claim.
The Specification discloses only that the shaft 40 turns the cam 38 to lift the
support surfaces. Id. ¶ 31. As noted by Appellant, the Specification also
describes that such lifting of the support surfaces may be “by the action of
the wedges or cams sliding on an inclined surface or surfaces.” Id.
However, there is no further description of such actuation. Regarding this
disclosure, the Examiner finds that sliding of the cam on an inclined surface
is best understood as referring to sliding that occurs via rotation of the cam,
i.e., “rotation of the cam (38) about the axis . . . results in sliding an external
surface of the cam (38) on an internal inclined surface, while remaining to
be centrally located.” Ans. 14. The Examiner determines that “there is no
explicit, implicit or inherent support for the original disclosure supporting
that the rotatable lifting cam or the rotatable actuating shaft rotates and
translates along an axis” as claimed. Id. (emphasis omitted).
We agree with the Examiner. The Specification only expressly
discloses that the shaft and the cam rotate or pivot about pivot 36 to expand
the cage 30. Spec. ¶ 31. In the absence of any disclosure that the shaft or
cam move along the longitudinal axis of the cage, we agree with the
Examiner that the disclosure of actuating via the cam sliding on an inclined
surface seems to refer to sliding that occurs when the shaft is rotated such
that any sliding of the cam occurs radially about the longitudinal axis of the
cage and the cam remains at the same position along the length of the
longitudinal axis of the cage.
We are also not persuaded by Appellant that the Figures in
conjunction with the Specification provide adequate support for the
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limitations at issue. Appellant argues that Figure 4C shows the cage in an
expanded configuration and in which “the rotatable cam (38) is visible and
can be seen to have been translated from the left to the right in order to
expand the cage.” Reply Br. 5. Appellant explains that the Specification
description of the cam sliding on an inclined surface can be understood in
light of this figure. Id. We are not persuaded. The Specification describes
that Figure 4B depicts the cage in a non-expanded position and Figure 4C
depicts the cage in an expanded configuration. Spec. ¶¶ 16, 17. As
discussed above, the written description in the Specification further
describes only that rotation of the shaft and cam is required to expand the
cage. Without any further description, the figures lack sufficient clarity to
show how the shaft and cam in Figure 4B have been actuated to expand the
cage as depicted in Figure 4C.
Based on the foregoing, we are not persuaded of error in the rejection
of claim 1 for failing to comply with the written description requirement.
Accordingly, we sustain the rejection of independent claim 1 and dependent
claims 3 and 5–18.
CONCLUSION
We AFFIRM the written description rejection of claims 1, 3 and 5–18.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 3, 5–18 112(a) Written
Description
1, 3, 5–18

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a). See 37 C.F.R.
§ 1.136 (a)(1)(iv).

AFFIRMED