Ex Parte 6,936,050 B2 et al

Patent Trial and Appeal Board

Sep 27, 2013

95000451 (P.T.A.B. Sep. 27, 2013)

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.
95/000,451 03/12/2009 6,936,050 B2 101.0056-10REX 5200
22882 7590 09/27/2013
MARTIN & FERRARO, LLP
1557 LAKE O'PINES STREET, NE
HARTVILLE, OH 44632
EXAMINER
CLARK, JEANNE MARIE
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/27/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

NuVASIVE, INC.
Requester and Appellant

v.

Patent of ZIMMER SPINE, INC.
Patent Owner and Respondent
____________

Appeal 2013-004188
Reexamination Control 95/000,451
Patent US 6,936,050 B2
Technology Center 3900
____________

Before RICHARD E. SCHAFER, SALLY G. LANE, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION
This is a new Decision pursuant to 37 C.F.R. §41.77(f). In the Initial
Decision dated August 5, 2011, we adopted Requester’s proposed rejections
of claims 1 and 20, triggering new grounds of rejection under 37 C.F.R. §
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41.77(b). Patent Owner re-opened prosecution pursuant to 37 C.F.R. §
41.77(b)(1). Subsequently, Patent Owner canceled all pending claims,
including claims 1 and 20, with the exception of claims 5, 9, 19, 25, 26, 29,
53, and 54 (Communication by the Examiner, dated February 11, 2013). All
the claims subject to the new grounds of rejection have been canceled.
Remaining claims 5, 9, 19, 25, 26, 29, 53, and 54 were not subject to
any rejections or substantive refusals to enter a rejection (Communication by
the Examiner, dated February 11, 2013). Requester does not contest the
patentability of claims 5, 9, 19, 25, 26, and 29 (Requester Comments on
Patent Owner’s Response after Board Decision i and 1-2, dated October 6,
2011).
Claims 53 and 54 are a different story.
1
Claims 53 and 54 were
pending during the initial Appeal. Claim 53 was dependent on claim 1, and
claim 54 dependent on claim 53. Prior to the Appeal, Requester had
proposed a new rejection of, inter alia, claims 1, 53 and 54 under 35 U.S.C.
§ 103 as obvious in view of Yapp and Orion (Third Party Requester
Comments After Non-Final Office Action, dated October 30, 2009, p. 23 &
31). The Examiner in the Action Closing Prosecution did not adopt the
proposed rejection of the claims over Yapp and Orion (Action Closing
Prosecution, dated February 16, 2010, p. 16; see also Right of Appeal Notice
10, dated April 28, 2010). Requester then appealed the Examiner’s decision

1
Upon re-opening of prosecution under 41.77(b)(1), Patent Owner amended
claim 53 by rewriting it in independent form to include all the limitations of
the claim 1 which had been canceled (Patent Owner Response After Board
Decision 49, dated September 6, 2011). Claim 54 was also amended. The
subject matter covered by those claims is identical to the subject matter
covered by the claims prior to amendment.
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not to adopt the rejection of claims 1, 53 and 54, as well as certain other
claims under 35 U.S.C. § 103 as obvious in view of Yapp and Orion
(Requester Appeal Br. 5). In the Appeal Brief, with respect to the proposed
rejection over Yapp and Orion, Requester presented arguments only for the
non-patentability of claim 1 choosing not to separately argue the
unpatentability of claims 53 and 54 (Requester Appeal Br. 5 & 22-24, dated
September 27, 2010). For this reason, we did not address the merits of the
subject matter of claims 53 and 54 in the Initial Decision, nor did we address
any of the other dependent claims (Initial Decision 23). Accordingly, we
affirmed the Examiner’s refusal to reject claims 53 and 54, and the other
unargued claims, over Yapp and Orion. However, we did agree with
Requester that it had established that the subject matter of claim 1 was
unpatentable over the combination of Yapp and Orion. We entered a new
ground of rejection as to that claim under 37 CFR § 41.77(b). Dependent
claims 53 and 54 were not subject to a new ground. Initial Decision 23.
Requester did not request rehearing of our decision.
2

In reply to the Patent Owner’s response with respect to the new
ground, Requester argued that the subject matter of claims 53 and 54 was
unpatentable over Yapp and Orion. (Requester Comments on Patent
Owner’s Response after Board Decision 57-60, dated October 6, 2011). The
Examiner held that the proposed rejection claims 53 and 54 was beyond the
scope of reopened prosecution permitted for a new ground and refused to

2
As will be apparent, had Requester requested rehearing, this proceeding
may not have ended up in its current procedural posture.
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address the proposed rejection. Determination under 37 CFR 41.77(d),
December 16, 2011, 11-12.
Requester now asks us to consider the proposed rejection of claims 53
and 54 alleging that it was properly before us for review (Requester’s
Comments on Examiner’s Determination After Board Decision 3 & 4). We
decline to accept Requester’s invitation. We do not have a substantive
decision by the Examiner refusing to reject the subject matter of claims 53
and 54 to review. The Board’s jurisdiction in inter partes reexamination is
over substantive determinations of patentability. 35 U.S.C. §§ 315(a) and
(b). The Examiner refused to consider the merits of the proposed rejections
on procedural grounds. Requester did not seek review by petition of that
procedural decision. We decline to consider the proposed rejection sua
sponte since we do not have the Examiner’s views on the merits of the
proposed rejection.
However on further reflection, claims 53 and 54 (as well as the other
dependent claims) should have been identified as subject to a new ground of
rejection in our original decision. The examiner’s refusal to reject the
dependent claims 53 and 54 was premised on the refusal to enter rejections
as to independent claim 1. Our reversal of that decision undercut the basis
of the refusal to reject the dependent claims as well. Therefore, our earlier
opinion should have reversed the examiner’s refusal to reject claims 53 and
54 and entered a new ground of rejection including those claims. We do so
now.
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TIME PERIOD; NEW GROUND OF REJECTION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.77(b) which provides that “[a]ny decision which includes a
new ground of rejection pursuant to this paragraph shall not be considered
final for judicial review.” Accordingly, no portion of the decision is final for
purposes of judicial review. A requester may also request rehearing under
37 C.F.R. § 41.79, if appropriate, however, the Board may elect to defer
issuing any decision on such request for rehearing until such time that a final
decision on appeal has been issued by the Board.
For further guidance on new grounds of rejection, see 37 C.F.R.
§ 41.77(b)-(g). The decision may become final after it has returned to the
Board. 37 C.F.R. § 41.77(f).
37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN
ONE MONTH FROM THE DATE OF THE DECISION, must exercise one
of the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must be
either an amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both.
(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record.
Any request to reopen prosecution before the examiner under 37
C.F.R. § 41.77(b)(1) shall be limited in scope to the “claims so rejected.”
Accordingly, a request to reopen prosecution is limited to issues raised by
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the new ground(s) of rejection entered by the Board. A request to reopen
prosecution that includes issues other than those raised by the new ground(s)
is unlikely to be granted.
A requester may file comments in reply to a patent owner response.
37 C.F.R. § 41.77(c).
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for
all patent owner responses and requester comments, is required.
The examiner, after the Board’s entry of a patent owner response and
requester comments, will issue a determination under 37 C.F.R. § 41.77(d)
as to whether the Board’s rejection is maintained or has been overcome.
The proceeding will then be returned to the Board together with any
comments and reply submitted by the owner and/or requester under
37 C.F.R. § 41.77(e) for reconsideration and issuance of a new decision by
the Board as provided by 37 C.F.R. § 41.77(f).

§ 41.77(b)

alw

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FOR PATENT OWNER:

MARTIN & FERRARO, LLP
1557 LAKE O’PINES SREET, NE
HARTVILLE, OH 44632

FOR THIRD-PARTY REQUESTER:

DOROTHY P. WHELAN
FISH AND RICHARDSON, P.C.
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022