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Patent Trials and Appeals Board

Nov 14, 2019

14515879 - (D) (P.T.A.B. Nov. 14, 2019)

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.
14/515,879 10/16/2014 James McWilliam 67145-302 PUS1 1418
26096 7590 11/14/2019
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
STEWART, ALVIN J
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
11/14/2019 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):
cgolaw@yahoo.com
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES MCWILLIAM, WILLIAM MICHAEL KARNES,
KAREN LEIGH GALLEN, and KENT ELLINGTON
Appeal 2019-003167
Application 14/515,879
Technology Center 3700
Before LINDA E. HORNER, CHARLES N. GREENHUT, and MICHAEL
J. FITZPATRICK, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 5‒15, and 21‒26.2 We have
jurisdiction under 35 U.S.C. § 6(b).
The Examiner rejected the claims on appeal as either anticipated by,
or for obviousness over, the prior art. Appellant argues that the prior art

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Arthrex, Inc.
Appeal Br. 3.
2 Claims 3, 4, and 16‒20 are canceled.
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does not disclose or render obvious certain limitations recited in independent
claims 1 and 10. For the reasons explained below, we agree with the
Examiner that the prior art anticipates the claimed subject matter. We also
agree with the Examiner that some of the prior art combinations render
obvious the claimed subject matter, but we agree with Appellant that the
Examiner erred in finding that one of the combinations renders obvious the
claimed subject matter. Thus, we affirm in part.
CLAIMED SUBJECT MATTER
The claims are directed to an osteotomy wedge that can be implanted
into a bone that has been cut to change the alignment of the bone. Spec.
¶¶ 1‒2. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An osteotomy wedge, comprising:
an asymmetrical body that includes an outer perimeter
established by a continuous, smooth surface, wherein the outer
perimeter includes a concave surface, wherein the body includes
a fore surface and a hind surface, wherein the outer perimeter of
the body is asymmetrically shaped when viewed in a direction
facing one of the fore surface and the hind surface, the fore
surface and the hind surface each having a texture comprising a
plurality of pyramid-shaped projections arranged in a crisscross
pattern, and wherein the body is tapered such that a thickness of
the body continuously decreases from a dorsal surface of the
body to a plantar surface of the body.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kohrs US 6,855,166 B2 Feb. 15, 2005
Paul US 7,137,997 B2 Nov. 21, 2006
Murillo et al. US 2008/0077247 A1 Mar. 27, 2008
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Spann US 2012/0010472 A1 Jan. 12, 2012
Milz et al. US 2012/0083852 A1 Apr. 5, 2012
REJECTIONS
The following rejections are on appeal:
1. Claims 1, 5‒7, 10‒12, 14, 15, 21‒23, 25, and 26 are rejected under
35 U.S.C. § 102(a)(1) as anticipated by Spann.
2. Claims 1, 2, and 24 are rejected under 35 U.S.C. § 103 as
unpatentable over Milz and Paul.
3. Claims 10‒14 and 22 are rejected under 35 U.S.C. § 103 as
unpatentable over Murillo and Paul.
4. Claims 8 and 9 are rejected under 35 U.S.C. § 103 as unpatentable
over Spann and Kohrs.
OPINION
Anticipation Rejection based on Spann
Appellant argues the claims subject to this ground of rejection as a
group. Appeal Br. 7‒9. We select claim 1 as representative, and claims 5‒7,
10‒12, 14, 15, 21‒23, 25, and 26 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2018).
Appellant argues that Spann does not disclose a wedge having a body
that is “tapered such that a thickness of the body continuously decreases
from a dorsal surface of the body to a plantar surface of the body” as recited
in independent claim 1. Appeal Br. 7. Appellant contends that Spann’s
spinal implant is tapered from side-to-side and not from the dorsal surface to
the plantar surface of the body, when “dorsal” and “plantar” are interpreted
properly. Id. at 7‒9. Appellant points to the use of the terms “dorsal” and
“plantar” in the Specification and in the art to refer to surfaces
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corresponding to the top and bottom surfaces, respectively, of the foot. Id.
7‒8 (citing Spec. ¶¶ 35, 36, 50, Figs. 2A, 4; Ex. 2 (“The Anatomy of the
Foot” (available at http://files.ali-cle.org/thumbs/datastorage/skoob/articles/
BK40-CH15_thumb.pdf) at 206). Appellant further argues that the
Examiner has misinterpreted the claimed “fore surface” and “hind surface,”
which Appellant contends “refer to front and rear surfaces, respectively.”
Appeal Br. 9.
In the exemplary osteotomy wedge described in the Specification, the
Specification uses the terms “dorsal” and “plantar,” consistently with the
meaning of the terms in the art, to refer to surfaces corresponding to the top
and bottom surfaces, respectively, of the foot. In particular, the
Specification describes an osteotomy wedge used during a medial
cuneiform3 osteotomy to correct a deformity in the foot. Spec. ¶ 2. The
Specification describes, for example, that Figure 1 illustrates the bones of
foot 20 “from a top (dorsal) perspective” having osteotomy wedge 32
implanted into medial cuneiform bone 28. Id. ¶ 35; see also id. ¶ 36
(describing that Figure 3 shows the wedge from “a top (dorsal) view”). In
the example provided in the Figures and the Specification, dorsal surface 36
of osteotomy wedge 32 corresponds to the surface of the wedge facing
upward from the foot, and plantar surface 44 corresponds to the surface of
the wedge facing downward from the foot, when wedge 32 is implanted in
the foot. Id. ¶¶ 38‒39, 41, Figs. 1, 2A, 3, 4. Likewise, fore surface 52 and
hind surface 54 of osteotomy wedge 32 correspond to the surfaces of the

3 The medial cuneiform is a bone in the foot that lies between the navicular
bone and the first metatarsal bone.
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wedge facing the toe (or front of the foot) and heel (or rear of the foot),
respectively.
The Specification is not limited, however, to use of the osteotomy
wedge in the medial cuneiform bone, specifically, or even in the foot,
generally. Id. ¶ 35 (“The osteotomy wedge 32 may have uses beyond the
medial cuneiform bone 28.”). The Specification describes that the terms
“dorsal,” “plantar,” “fore,” and “hind” are used “with reference to the
normal attitude[4] of the human body, and in this case the foot . . . for
purposes of explanation, and should not be considered otherwise limiting.”
Id. ¶ 50.
The preamble of claim 1 is directed to an “osteotomy wedge.” It is
not limited by the claim language to a medial cuneiform osteotomy wedge,
specifically, or to an osteotomy wedge for use in the foot, generally.
Further, the Specification explicitly suggests that the wedge can have uses
elsewhere than in the medial cuneiform bone. Spec. ¶ 35. We do not read
into the claim a limitation that the wedge must be capable of, or restricted to,
use in the foot simply due to the use of “dorsal” and “plantar” terminology
in the claims. This is particularly so in view of the explicit statement in the
Specification that these terms are used with reference to the normal attitude
of the human body for purposes of explanation and should not be considered
otherwise limiting. Id. ¶ 50.
We acknowledge the terms “dorsal” and “plantar” have a meaning in
the art in relation to a person’s anatomy. Appeal Br. 7‒8, Ex. 2, 206. That
is why these terms were used in the Specification to identify particular

4 Appellant does not explain further in the briefs or with reference to the
Specification the meaning of the “normal” attitude of the human body.
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surfaces of the exemplary medial cuneiform osteotomy wedge in relation to
other surfaces and features of the wedge. We agree, however, with the
Examiner that the names given to the various surfaces of the wedge do not
structurally distinguish the claimed wedge from the prior art implant that is
described with different labels. Ans. 7. Appellant’s arguments go to the
orientation of the osteotomy wedge within a patient’s bone during an
osteotomy procedure, and such orientation is not captured in the language of
claim 1, which is directed solely to the structural aspects of the claimed
wedge. For instance, the claim does not contain functional language on the
method of use of the wedge, or limit the wedge to use in a particular bone or
portion of a patient’s body, from which we might infer a particular
orientation of the wedge in use, or recite a method of implanting the wedge
in a particular orientation. Nor is the claim directed to a combination of a
medial cuneiform and osteotomy wedge implanted therein. Thus, under the
broadest reasonable interpretation, the “dorsal,” “plantar,” “fore,” and
“hind” identifiers for the various surfaces used in the claims simply provide
labels for each surface so as to identify the surfaces of the wedge body on
which various features, e.g., projections, tapering, outer perimeter, etc., are
located.
Spann discloses a spinal disc implant for use in an intervertebral space
of a subject. Spann ¶ 98. The Examiner identifies the embodiment
disclosed in Figures 11A, 11B, and 11C of Spann as having anticipated the
claimed subject matter. Final Act. 3. These Figures are reproduced below.
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Figures 11A, 11B, and 11C show a top view, a front view, and a side
view, respectively, of implant 272. Spann describes that implant 272 has top
bearing face 276, bottom bearing face 278, front face 280, rear face 282,
ipsilateral face 284, and contralateral face 286. Spann ¶ 101. Thus, as
shown above in Figure 11C, the taper of the body of implant 272 is such that
a thickness of the body continuously decreases from front face 280 to rear
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face 282. Indeed, the Examiner annotated Figure 11C to identify front face
280 as the claimed “dorsal surface” and rear face 282 as the claimed “plantar
surface.” Final Act. 3. Appellant argues that when Spann’s implant is
inserted between vertebral discs of a patient, top bearing face 276
corresponds to the claimed “dorsal surface” and bottom bearing face 278
corresponds to the claimed “plantar surface.” Appeal Br. 8‒9.
As explained above, the terms used to identify the surfaces of the
osteotomy wedge do not limit the claimed features with respect the surfaces
when used in a particular orientation within the body. The Examiner’s
reading of the claimed “dorsal” and “plantar” surfaces onto Spann’s front
face 280 and rear face 282 is not in error. The Examiner’s reading of the
claim terms onto the prior art is not inconsistent with the use of the terms
“dorsal” and “plantar” in the claim language and in the Appellant’s
Specification and is not based on an unreasonably broad interpretation of
these terms in light of the Specification. Likewise, we do not find error in
the Examiner’s reading of the terms “fore” and “hind” onto Spann’s top
bearing face 276 and bottom bearing face 278.
We do not adopt the Examiner’s finding that Spann’s spinal implant
272, if turned vertically, can be used as an osteotomy wedge implant for the
foot. Ans. 6. We have insufficient evidence on the record to substantiate the
Examiner’s finding that Spann’s implant, which is designed, shaped, and
sized to fit between adjacent vertebra in the spine, would be capable of being
used as an osteotomy wedge in a patient’s foot without some structural
modifications to the wedge to make it appropriately designed, shaped, and
sized for such use. Thus, the Examiner’s finding that Spann’s spinal implant
is capable of use as an osteotomy wedge implant for the foot is not based on
sound reasoning. This deficiency does not necessitate reversal of the
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rejection, however, because (1) the claim language is not limited to an
osteotomy wedge for a foot, and (2) as discussed above, the claim language,
under its broadest reasonable interpretation, reads on the structure of
Spann’s implant.
For these reasons, we sustain the rejection of claims 1, 5‒7, 10‒12,
14, 15, 21‒23, 25, and 26 under 35 U.S.C. § 102(a)(1) as anticipated by
Spann.
Obviousness Rejection of Dependent Claims 8 and 9 over Spann and
Kohrs
Claims 8 and 9 depend from claim 1. The Examiner rejected these
claims as unpatentable over Spann, as modified by Kohrs’s teaching that it
was known in the art to make spinal implants from porous titanium. Final
Act. 8‒9. Appellant relies exclusively on the arguments presented for
claim 1 in support of the patentability of these dependent claims. Appeal Br.
12 (arguing that the dependent claims should be allowed based on their
dependency from an allowable base claim). For the reasons discussed above
in our analysis of the rejection of claim 1 as anticipated by Spann, we
likewise sustain the rejection of claims 8 and 9 under 35 U.S.C. § 103 as
unpatentable over Spann and Kohrs.
Obviousness Rejection of Claims 1, 2, and 24 over Milz and Paul
The Examiner also rejected claim 1 as unpatentable over Milz, as
modified by Paul’s teaching of a tapered spinal implant to facilitate
installation of the implant in the treated area in lordosis. Final Act. 5‒6.
Appellant presents substantially the same argument addressed above.
Specifically, Appellant argues that even when combined, the references do
not disclose the claimed taper because the modified implant “would be
tapered from side-to-side, not from a dorsal surface to a plantar surface as
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claimed.” Appeal Br. 10. For the same reasons discussed above with
respect to the Examiner’s reading of the claimed surfaces onto the spinal
implant of Spann, we likewise do not find error in the Examiner’s reading of
the claimed “dorsal” and “plantar” surfaces on the side surfaces of the
modified spinal implant of Milz. See Ans. 9 (Figures from Milz and Paul
annotated by the Examiner). Thus, we sustain the rejection of claim 1 under
35 U.S.C. § 103 as unpatentable over Milz and Paul.
Appellant does not present separate arguments for dependent claims 2
and 24. Thus, these claims fall with independent claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2018).
Obviousness Rejection of Claims 10‒14 and 22 over Murillo and Paul
The Examiner also rejected claim 10 as unpatentable over Murillo, as
modified by Paul’s teaching of a tapered spinal implant to facilitate
installation of the implant in the treated area in lordosis. Final Act. 6‒8.
Appellant presents substantially the same argument addressed above.
Specifically, Appellant argues that even when combined, the references do
not disclose the claimed taper because the modified implant “would still not
be tapered from top to bottom as claimed.” Appeal Br. 11. For the same
reasons discussed above with respect to the Examiner’s reading of the
claimed surfaces onto the spinal implant of Spann, we likewise do not find
error in the Examiner’s reading of the claimed “dorsal” and “plantar”
surfaces on the side surfaces of the modified spinal implant of Murillo. See
Ans. 9 (Figure from Paul annotated by the Examiner).
Appellant further argues that the Examiner erred in finding that
Murillo’s implant comprises a body with an asymmetrical outer perimeter.
Appeal Br. 11‒12. In support of this argument, Appellant provides a
dictionary definition of the term “asymmetric” as meaning “not identical on
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both sides of a central line; unsymmetrical; lacking symmetry.” Ex. 1
(definition from dictionary.com, available at http://www.dictionary.com/
browse/asymmetric, viewed on February 8, 2018). Appellant argues that the
outer perimeter of Murillo’s implant is identical on both sides of a central
line drawn vertically through the implant shown in Figure 3G of Murillo. In
response, the Examiner identifies a line extending along the length of the
longitudinal axis of Murillo’s spinal implant about which the implant is not
symmetric. Ans. 10 (providing Figure 3G of Murillo annotated by the
Examiner with a horizontal line).5
The plain meaning of “asymmetric” refers to object that has no lines
of symmetry. Ex. 1. For example, a diamond or kite-shaped polygon is
considered symmetric because it has one line of symmetry, i.e., a vertical
center line, even though this shape is not symmetric about a horizontal
center line. The description provided in Appellant’s Specification of the
asymmetrical shape of the body is consistent with this plain meaning. The
Specification describes that “when viewed from the forefoot or hindfoot
directions, it is not possible to draw an axis through a center of mass M of
the body 33 such that the body 33 would be symmetrical about that axis.”
Spec. ¶ 37 (emphasis added).
We agree with Appellant that the Examiner erred in finding that the
outer perimeter of Murillo’s implant is asymmetric. We are not persuaded
that because the Examiner is able to identify a single line about which the

5 The Examiner initially found that Murillo’s implant was asymmetric
because it is thicker on the right end than on the left. Final Act. 6
(referencing Murillo’s Figures 1B, 1C, 2B, 2C, and 3C). The Examiner
appears to have changed positions in the Answer in light of Appellant’s
argument that the claim specifically requires the “outer perimeter” of the
body to be asymmetric. Appeal Br. 11‒12.
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outer perimeter of the prior art implant is asymmetric that the implant
discloses an asymmetric outer perimeter. Because the outer perimeter of the
implant of Murillo has at least one line of symmetry about the vertical
centerline shown in the annotated Figure on page 11 of the Appeal Brief,
Murillo’s outer perimeter is not asymmetric, as recited in claim 10.
Thus, we do not sustain the rejection of claim 10 and its dependent
claims 11‒14 and 22 under 35 U.S.C. § 103 as unpatentable over Murillo
and Paul.
CONCLUSION
We sustain the Examiner’s anticipation rejection under 35 U.S.C.
§ 102(a)(1) over Spann and the Examiner’s obviousness rejections under
35 U.S.C. § 103 over Spann and Kohrs and over Milz and Paul. We do not
sustain the Examiner’s obviousness rejection under 35 U.S.C. § 103 over
Murillo and Paul.
More specifically, the Examiner’s decision on unpatentability of
claims 1, 2, 5‒12, 14, 15, and 21‒26 is affirmed, and the Examiner’s
decision on unpatentability of claim 13 is reversed.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)
/Basis
Affirmed Reversed
1, 5‒7, 10‒12,
14, 15, 21‒23,
25, 26
102(a)(1) Spann 1, 5‒7, 10‒
12, 14, 15,
21‒23, 25,
26

1, 2, 24 103 Milz, Paul 1, 2, 24
10‒14, 22 103 Murillo, Paul 10‒14, 22
8, 9 103 Spann, Kohrs 8, 9
Overall
Outcome
1, 2, 5‒12,
14, 15, 21‒
26
13
TIME PERIOD FOR RESPONSE
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 IN PART