Expanding Orthopedics Inc.Download PDFPatent Trials and Appeals BoardAug 30, 20212021002009 (P.T.A.B. Aug. 30, 2021) Copy Citation 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. Appeal 2021-002009 Application 15/155,190 2 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). Appeal 2021-002009 Application 15/155,190 3 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. Appeal 2021-002009 Application 15/155,190 4 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). Appeal 2021-002009 Application 15/155,190 5 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. Appeal 2021-002009 Application 15/155,190 6 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 Appeal 2021-002009 Application 15/155,190 7 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 Appeal 2021-002009 Application 15/155,190 8 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 Copy with citationCopy as parenthetical citation