Ex Parte 7582058 et al

Patent Trial and Appeal Board

Apr 15, 2014

95001247 (P.T.A.B. Apr. 15, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,247 10/27/2009 7582058 03190.005600.36 7728
26191 7590 04/15/2014
FISH & RICHARDSON P.C. (TC)
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
FLANAGAN, BEVERLY MEINDL
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
04/15/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

MEDTRONIC, INC.
Requester

v.

NUVASIVE, INC.
Patent Owner
____________

Appeal 2012-009491
Reexamination Control 95/001,247
Patent 7,582,058
Technology Center 3900
____________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG, and
JOSIAH C. COCKS, Administrative Patent Judges.

COCKS, Administrative Patent Judge.

DECISION ON REQUESTER’S
REQUEST FOR REHEARING
Appeal 2012-009491
Reexamination Control 95/001,247
Patent 7,582,058

2
I. INTRODUCTION
Third Party Requester, Medtronic, Inc. (“Medtronic”), requests
rehearing of the Decision mailed March 18, 2013 (“Decision”).
1
Patent
Owner NuVasive, Inc. (“NuVasive”) has filed comments in response to
Medtronic’s Request.
2

In the Decision, we affirmed the Examiner’s determination not to
adopt proposed grounds of rejections for claims 10-29 based on the
following combination of references: (a) Koros, Michelson, Foley ’871,
Kelleher, and NIM Guide (hereinafter “Ground (a)”, Rejection (17) in the
Decision); and (b) Smith, Michelson, Koros, Marino, and NIM Guide
(“Ground (b)”, Rejection (18) in the Decision). Decision 46. In its Request
for Rehearing, Medtronic requests that the Board reconsider our affirmance
of the Examiner’s determination with respect to those two proposed grounds.
3PR Rh’g. Req. 2.
We have considered Medtronic’s request but decline to modify the
Decision. Accordingly, Medtronic’s Request for Rehearing is denied.
II. DISCUSSION
A “request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked in rendering the
Board’s opinion reflecting its decision.” 37 C.F.R. § 41.79(b)(1). Here,

1
See Medtronic’s “Request for Rehearing” filed May 20, 2013 (“3PR Rh’g
Req.”).

2
See NuVasive’s “Comments in Opposition to Rehearing Request Under 37
C.F.R. § 41.79(c)” filed June 20, 2013.
Appeal 2012-009491
Reexamination Control 95/001,247
Patent 7,582,058

3
Medtronic contends the following: “Requestor submits that the PTAB
misapprehended the meaning of ‘distractor blades’ as used in Koros
3
, which
affected the application of Koros against the ‘retractor blade’ recited in the
pending claims.” 3PR Rh’g Req. 2.
In the Decision, we were unpersuaded by Medtronic’s assessment that
the prior art accounts for the feature in claim 10 of a “locking member” that
is “releasably received within a passageway of the first retractor blade” of a
retractor assembly. Decision 39-40. In particular, in advocating for the
grounds of rejection involving Koros, Medtronic directed our attention to
“retractor blades 30” of Koros and to “screws 83 that are releasably received
in passageways 82 and 86 in the retractor blades…”
4
In light of those
teachings of Koros, Medtronic argued that claim 10 would have been
obvious in view of the prior art. However, as we observed in the Decision,
Koros discloses two sets of “blades,” those characterized as “distractor
blades 32,” and those characterized as “retractor blades 30.” Decision 40.
Koros associates its screws 83 with distractor blades 32 rather than retractor
blades 30. Because we were not persuaded that Koros contemplated the use
of its screws 83 with retractor blades 30, we did not discern error in the
Examiner’s determination not to adopt the proposed rejections. Id.
In its Request for Rehearing, Medtronic argues that the Board
overlooked that Koros’s “distractor” blades 32 may also be considered as
“retractor” blades. 3PR Rh’g Req. 3-4. In that regard, Medtronic now
contends that distractor blades 32 and associated screws 83 meet the

3
U.S. Patent No. 6,139,493 issued October 31, 2000.

4
See page 39 of Medtronic’s Appeal Brief filed September 6, 2011.
Appeal 2012-009491
Reexamination Control 95/001,247
Patent 7,582,058

4
retractor blade and locking mechanism requirements of claim 10. Id. As
support for that position, Medtronic directs our attention to “Claim Chart K,”
“Claim Chart L,” and pages 15-16 of the Rebuttal Brief filed February 27,
2012 (“Reb. Br.”). We understand the two referenced claim charts to be
those that were filed March 19, 2010 as a part of Medtronic’s “Response to
Patent Owner’s Amendment,” with Claim Chart K directed to Ground (a)
and Claim Chart L directed to Ground (b).
Ground (a)
In reviewing the above-noted Claim Chart K concerning Ground (a),
we observe that, with respect to claim10, the chart makes no mention of
Koros’s “distractor blades 32,” or equates those particular distractor blades
with the retractor blades of claim 10. Rather, as described in Claim Chart K,
the blades relied upon are “retractor blades 30,” and associated structures
and operation thereof. Claim Chart K, p. 4. Claim 10 requires a “pair of
directly opposing retractor blades being releasably lockable to an external
assembly having handle arms.” In explaining how that requirement is met,
Medtronic urged that: “The retractor blades 30 of Koros are releasably
lockable to a frame 10 (eternal assembly) having arms 18 and 22,” citing to
Figure 1 and column 7, ll. 6-12. Claim Chart K, p. 4. Review of the cited
portions of Koros reveals that frame 10 and arms 18 and 22 are structures
interconnected to, and operable with, retractor blades 30 and not distractor
blades 32.
Elsewhere in Claim Chart K, in accounting for features of claims that
ultimately depend from claim 10 (e.g., claim 15), Medtronic points to
components such as “flanges 34,” and “bosses 36” in Koros in accounting
Appeal 2012-009491
Reexamination Control 95/001,247
Patent 7,582,058

5
for required claim features directed to a “first locking bolt” associated with
the first retractor blade. Claim Chart K, p. 7. Koros’s flanges 34 and bosses
36 are components that are structurally and functionally associated with
retractor blades 30 and not distractor blades 32. Koros, col. 6, ll. 11-13;
Fig. 2.
In the Rebuttal Brief, Medronic stated the following:
Koros discloses various retractor blades including “blade 32.”
Koros, col. 6, l. 45. Appellant is unclear what position
Respondent is attempting to argue by asserting that Koros does
not disclose inserting screw 83 through blade 30 when Koros
clearly describes inserting screw 83 through a passageway in
blade 32. That one retractor blade is assigned reference
numeral 30 and another is assigned reference number 32 is
irrelevant to whether the document, as a whole, shows a locking
member (screw 83) being inserted through a passage (passage
82) in a retractor blade (blade 32).

Reb. Br., pp. 15-16.
To the extent that Medtronic generally urged in its Rebuttal Brief that
Koros’s “blade 32” may be considered as the retractor blade required by
claim 10, Medtronic did not explain adequately how Koros’s blade 32 as a
“retractor blade” also accounts for other features of the retractor blades
required by claim 10, and those claims that depend therefrom. For instance,
Medtronic did not articulate how the feature of the blades in being
“releasably lockable to an external assembly having handle arms” is met in
connection with blades 32. As discussed above, Medtronic’s proposed
Ground (a) accounts for that quoted limitation by reference to components of
Koros’s retraction device associated with retractor blade 30, i.e. frame 10
and arms 18 and 22, and not distractor blades 32. Similarly, Medtronic also
Appeal 2012-009491
Reexamination Control 95/001,247
Patent 7,582,058

6
did not explain how other features required by the involved claims,
including the “first locking bolt” of claim 15 are met by features associated
with distractor blades 32.
Furthermore, in connection with its ground (a), Medtronic did not
present any credible basis for concluding that it would have been obvious to
implement Koros’s locking mechanism 83 and tubular guide 82 onto
Koros’s retractor blades 30. To the extent that Medtronic now makes such a
contention, it is untimely. In this situation, a request for rehearing is not an
opportunity for a party to make new arguments. See 37 C.F.R. § 41.79(b).
Ground (b)
In reviewing Medtronic’s Claim Chart L directed to Ground (b), we
observe that, in connection with claim 10, the claim chart makes no mention
of Koros’s “distractor blades 32” as constituting a component that
corresponds to the required retractor blades. Instead, as set forth in Claim
Chart L, Medtronic equated components of a different prior art reference,
Smith
5
. In that regard, Medtronic likened Smith’s elements 22 and 42 to the
retractor blades required by claim 10. Claim Chart L, p. 4. Those elements
are characterized, respectively, as a “first portion” and a “second portion” of
retractor 20 and each are formed as a “semi-cylindrical body.” Smith, col. 2,
l. 55 - col. 3, l. 25. The first and second portions pivot with respect to one
another so as to transition from an unexpanded configuration to a
configuration in which the retractor is expanded through skin and tissue to
increase the size of working channel 50. Id.

5
U.S. Patent 7,261,688 B2 issued August 28, 2007.
Appeal 2012-009491
Reexamination Control 95/001,247
Patent 7,582,058

7
Although each of Smith and Koros is described as being “retractor”
systems, it is evident that the configuration of Smith’s retractor system in
forming a working channel through a pivoting relationship between two
semi-cylindrical bodies is distinct from the operation of Koros’s system. In
Koros, there are two separate sets of opposing blades, namely retractor
blades 30 on the one hand and distractor blades 32 on the other. Retractor
blades 30 are associated with retractor 10 and distractor blades 32 are
associated with distractor 12. Koros, col. 5, ll. 57-58. The blades of the
retractor and distractor are moved relative one another by virtue of
“moveable arms” and “crank mechanisms.” Id. at col. 5, ll. 60-63.
Distractor 12 is also characterized as an “[o]ffset distractor fame.” Id. at col.
7, ll. 13. Distractor blades 32 of the offset distractor frame are outfitted with
tubular guides 82 and 86 that receive fixation screws 83. Id. at col. 6, ll. 58-
64. As set forth in Koros:
Offset distractor frame 12 is then positioned in the
incision with fixation screws 83 screwed into vertebrae 94 and
96 of spine 92 on opposite sides of affected disc 98. Fixation
screws 83 firmly hold offset retractor fame in position allowing
adjacent vertebrae 94 and 96 to be spread providing a clear
view of the operating site.

Koros, col. 7, ll. 13-18.
With respect to the offset distractor fame, Koros also explains that
“[t]he adjacent vertebrae can then be gently spread by cranking the right
angle offset distractor frame.” Id. at col. 4, ll. 53-55.
Thus, in Koros, the fixation screws 83 are anchored into adjacent
vertebrae and operate in conjunction with moveable arms and crank
mechanisms, which form part of an offset distractor frame in a distractor
Appeal 2012-009491
Reexamination Control 95/001,247
Patent 7,582,058

8
system, to spread adjacent vertebrae. Koros does not indicate that the
fixation screws 83, taken alone, provide any particular functions
disconnected from the other components of Koros’s distractor system that
facilitate bone spreading. Medtronic generally relies on Koros’s fixation
screws as providing “stability and support” for other retractor blades, such as
those of Smith. See Claim Chart L, 5. However, it is not Koros’s disclosure
that the fixation screws themselves would provide those functions in any and
all retractor blade systems. Medtronic does not explain persuasively why a
person of ordinary skill in the art would have sought to implement Koros’s
fixation screws in other retractor assemblies that are unconcerned with, and
not configured to, provide bone spreading functionality, such as the tissue
retraction system of Smith. Yet, that is the premise underpinning
Medtronic’s assertions of obviousness with respect to NuVasive’s claim 10
in view of the combined teachings of Smith, Michelson, Koros, Marino, and
NIM Guide.
We have considered Medtronic’s Request for Rehearing in
conjunction with our decision to affirm the Examiner’s non-adoption of a
proposed rejection of claim 10 based on the above-noted prior art. However,
we are not persuaded that the combined teachings of those references, in the
manner urged by Medtronic, adequately account for the feature the claim 10
of “a locking member releasably received within the first passageway of the
first retractor blade.” See App. Br. Claim App’x, iv. That was a
determination we made in the Decision. Decision 40. Medtronic has not
shown that we misapprehend or overlooked anything in that regard.
Appeal 2012-009491
Reexamination Control 95/001,247
Patent 7,582,058

9
III. CONCLUSION
After due consideration of Medtronic’s Request for Rehearing, we are
not persuaded that the Board misapprehended or overlooked any points in
the Decision. Accordingly, while we have considered the Request, we
decline to modify the Decision.
The Request for Rehearing is denied.
Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose
of judicial review. A party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See
37 C.F.R. §§ 90.1 and 1.983.

DENIED

PATENT OWNER:

FISH & RICHARDSON P.C.
PO BOX 1022
MINNEAPOLIS, MN 55440-1022

THIRD-PARTY REQUESTER:

FITZP ATRICK, CELLA, HARPER & SCINTO
1290 AVENUE OF THE AMERICAS
NEW YORK, NY 10104-3800

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,247 10/27/2009 7582058 03190.005600.36 7728
26191 7590 04/15/2014
FISH & RICHARDSON P.C. (TC)
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
FLANAGAN, BEVERLY MEINDL
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
04/15/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

MEDTRONIC, INC.
Requester

v.

NUVASIVE, INC.
Patent Owner
____________

Appeal 2012-009491
Reexamination Control 95/001,247
Patent 7,582,058
Technology Center 3900
____________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG, and
JOSIAH C. COCKS, Administrative Patent Judges.

Opinion of the Board filed by COCKS, Administrative Patent Judge.

Opinion Dissenting filed by SONG, Administrative Patent Judge.

DECISION ON PATENT OWNER’S
REQUEST FOR REHEARING
Appeal 2012-009491
Reexamination Control 95/001,247
Patent 7,582,058

2
I. INTRODUCTION
Patent Owner, NuVasive, Inc. (“NuVasive”), requests rehearing of the
Decision mailed March 18, 2013 (“Decision”).
1
Third Party Requester,
Medtronic, Inc. (“Medtronic”) has filed comments in response to Nuvasive’s
Request.
2

In the Decision, we reversed the Examiner’s determination not to
enter a proposed ground of rejection of claims 10-50 of U.S. Patent
7,582,058 (the “’058 patent”) under 35 U.S.C. § 314(a), and, in doing so,
entered the rejection by operation of 37 C.F.R. § 41.77(b). Decision 8-11.
NuVasive requests that the Board withdraw the rejection as applied to claims
10-16 and 19-27. PO Rh’g Req. 1.
We have considered NuVasive’s request and modify our decision in
the manner discussed below. NuVasive’s Request for Rehearing is granted.
II. DISCUSSION
A “request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked in rendering the
Board’s opinion reflecting its decision.” 37 C.F.R. § 41.79(b)(1). Here,
NuVasive contends that the Board misapprehended or overlooked the
broadest reasonable interpretation of the scope of claim 10 in concluding

1
See NuVasive’s “Request for Rehearing Under 37 C.F.R. § 41.79” filed
April 18, 2013 (“PO Rh’g Req.”).

2
See Medtronic’s “Comments in Opposition to Request for Rehearing” filed
May 20, 2013 (“3PR Comm.”).
Appeal 2012-009491
Reexamination Control 95/001,247
Patent 7,582,058

3
that it was improperly broadened vis-à-vis claim 4 so as to violate of 35
U.S.C. § 314.

Original claim 4 of the ’058 patent is directed to a method of
accessing a surgical target site and includes a step of “sensing a response of
a nerve depolarized” by electrical stimulation. ’058 patent, col. 18, ll. 31-32.
Claim 10 was added by amendment during reexamination and, in lieu of the
above-noted sensing step, instead recites “sensing an electromyographic
(EMG) response of a muscle coupled to a nerve depolarized” by electrical
stimulation. App. Br. Claims App’x. In the Decision, we concluded that the
record did not establish that the muscle sensing step recited in claim 10 is
simply a narrower statement of the nerve sensing step that was recited in
claim 4.
A. NuVasive’s Position on Rehearing
NuVasive contends that the Board overlooked or misapprehended
certain aspects of the claim that, when construed in light of the disclosure of
the ’058 patent, undermine the Board’s conclusion that above-noted sensing
step in claim 10 constitutes impermissible broadening vis-à-vis the sensing
step of claim 4. PO Rh’g Req. In particular, NuVasive notes that all of the
embodiments disclosed in the ’058 patent involve the monitoring of a nerve
through sensing of the condition or response of a muscle. PO Rh’g Req. 4-5.
To that end, NuVasive observes the following:
[T]he ’058 patent specification discloses three different ways in
which the “sensing a response of a nerve depolarized by said
stimulation” of claim 4 may be done, all of which involve
sensing a response of the nerve by sensing a response of a
muscle coupled to the nerve. These three ways of sensing
disclosed in the ‘058 patent are: (1) observing visual muscle
Appeal 2012-009491
Reexamination Control 95/001,247
Patent 7,582,058

4
twitches in muscle groups associated with the nerve, (2) using a
“traditional electromyography (EMG) system,” which involves
EMG skin electrodes being attached to the patient’s skin to
monitor electrical activity in the underlying muscle, and (3)
using a surgeon-driven EMG system, which similarly involves
EMG skin electrodes being attached to the patient’s skin to
monitor electrical activity in the underlying muscle. See ’058
patent, col. 9, line 59 to col. 10, line 18; see also col. 4, lines
13-23; col 10, lines 53-56; col. 11, lines 23-39.

Id. (emphasis in original).
NuVasive also directs our attention to particular “determining” and
“communicating” associated with each of claims 4 and 10, that, when read
in connection with the noted “sensing” steps of those claims, convey that
claim 10 would not be understood as being broader than claim 4. Id. at 7-8.
B. Medtronic’s Position on Rehearing
Medtronic contends that the Board did not overlook any matter in
connection with the determination in the Decision that claim 10 had been
improperly broadened. In that regard, Medtronic urges:
[T]here is not exact overlap between the sensing of a response
of a nerve depolarized by electrical stimulation and sensing an
EMG response of a muscle that is coupled to that nerve. While
sensing EMG activity in a muscle may suggest potential nerve
depolarization, the sensing of the two different activities is not
the same. As discussed, depolarization of the nerve may not
result in EMG activity of the muscle if there is compression,
trauma, or a disease state affecting the nerve or nerve junction.
Conversely, an EMG response in a muscle could result from
causes unrelated to the direct electrical stimulation of an
associated nerve (e.g., irritation of the nerve, mechanical
stimulation of the muscle, voluntary movement of the patient
etc.).

Appeal 2012-009491
Reexamination Control 95/001,247
Patent 7,582,058

5
3PR Comm. 8.
Medtronic characterizes the issue that was, and is, before the Board as
“whether ‘sensing an electromyographic (EMG) response of a muscle
coupled to a nerve depolarized by said stimulation” could possibly cover a
scenario not covered by “sensing a response of a nerve depolarized by said
stimulation.” Id. at 11. To that end, Medtronic submits that claim 10 covers
the sensing of a muscle’s EMG response from something other than a
coupled nerve’s depolarization, such as “mechanical stimulation of the
muscle itself.” Id. For that reason, Medtronic maintains that claim 10 is
broader than claim 4.
C. Analysis
We have considered the respective positions of NuVasive and
Medtronic. Upon reflection, and with appropriate consideration of the
content of claim 10 as a whole in the context of the ’058 patent, we conclude
that we misapprehended the proper scope of claim 10 in connection with the
“sensing” step required by that claim.
In the Decision, we indicated that we were not aware of evidence of
record sufficient to convey generally that sensing the response of muscle is a
narrower form of sensing a nerve. Decision 10-11. That indication,
however, overlooked the particularities of the response that is sensed as a
part of claim 10. Claim 10 is directed to a method of accessing a surgical
target site. We look carefully at the following steps recited in claim 10:
sensing an electroymographic (EMG) response of a
muscle coupled to a nerve depolarized by said stimulation using
an EMG sensor of the nerve monitoring system;

Appeal 2012-009491
Reexamination Control 95/001,247
Patent 7,582,058

6
determining at least one of nerve proximity and nerve
direction of said nerve relative to said at least one component of
said distraction assembly based upon a stimulation current
threshold level required to evoke the sensed EMG response in
the muscle coupled to the nerve.

App. Br. Claims App’x.
As set forth above, claim 10 is directed to sensing the response,
specifically an EMG response, of a muscle coupled to a nerve via an EMG
sensor that is part of a “nerve monitoring system.” Thus, claim 10 does not
associate the sensing of the muscle response from a general perspective, but
from one in which the associated sensing mechanisms are those of a system
directed to “nerve monitoring.” Furthermore, the next “determining” step of
the claim connects “the sensed EMG response” (emphasis added) to one that
determines characteristics of a nerve, i.e., “nerve proximity” or “nerve
direction.” Thus, the particular EMG response that is sensed as a part of
claim 10 is one that must be able to convey information about the nerve that
is coupled to the muscle.
The parties do not disagree that EMG responses in muscles may be
produced due to activity of the muscle itself, apart from activity (i.e.,
depolarization) of the nerve coupled to the muscle. It is the existence of
those types of EMG responses, unrelated to nerve activity, that forms the
basis for Medtronic’s position that claim 10 has been broadened. However,
EMG responses arising solely from muscle activity, and not from nerve
activity, are not the type of responses that convey the requisite nerve
information required by claim 10. As discussed above, the language of
claim 10 links the sensed EMG response of the muscle to the depolarization
Appeal 2012-009491
Reexamination Control 95/001,247
Patent 7,582,058

7
activity at the nerve, and thus, excludes other muscle responses that are not
the result of electrical stimulation of the nerve.
3

Further still, that reading of the requirements of claim 10 is supported
by the Specification of the ’058 patent. It is clear that the invention of the
’058 patent is not concerned with any direct sensing of a nerve. Rather, as
noted by NuVasive, all the described embodiments of the invention
concerning “nerve surveillance” or “nerve monitoring” involve sensing the
responses of muscles that are coupled to, or associated with, the nerve
undergoing surveillance. See, e.g., col. 9, ll. 40-24; col. 11, ll. 5-39. The
’058 patent does not express that any and all responses of a muscle are
suitable to convey the particular nerve related information that is required as
a part of claim 10. Instead, it is the specific EMG responses in a muscle
generated due to nerve polarization that operate to impart the desired nerve
information. See, e.g. id. at col. 10, ll. 46-56; col. 11, ll. 24-34.

3
The dissent maintains that it is not apparent that NuVasive has advocated
expressly an assessment of the scope of claim 10 as excluding EMG
responses arising due to the muscle stimulation not associated with nerve
stimulation. However, in our view, NuVasive has expressed such a position
in representing to the Board, for instance:

Thus, Appellant’s hypothetical scenarios (involuntary muscle
spasm or voluntary muscle movement) ignore half of the claims
language in claim 10. To the extent an EMG response is
triggered from involuntary muscle spasm or voluntary muscle
movement and not from a nerve depolarized by the claimed
stimulation step, the EMG response in those scenarios are not
within the scope of claim 10 (because the nerve in those
scenarios is not “depolarized by said stimulation”).

PO Reh’g Req. 8.
Appeal 2012-009491
Reexamination Control 95/001,247
Patent 7,582,058

8
For the foregoing reasons, we conclude that when claim 10 is viewed
as a whole in light of the Specification, one of ordinary skill in the art would
have understood that muscle responses that are independent of, or unrelated
to, nerve polarization are not covered by claim 10.
III. CONCLUSION
After due consideration of NuVasive’s Request for Rehearing, we are
persuaded that we misapprehended or overlooked in the Decision matters in
connection with the proper scope of claim10. Accordingly, we modify the
Decision to reflect that the rejection of claims 10-29 based on impermissible
broadening under 35 U.S.C. § 314(a) that was proposed by Medtronic is
withdrawn.
NuVasive’s Request for Rehearing is granted.
Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose
of judicial review. A party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See
37 C.F.R. §§ 90.1 and 1.983.

GRANTED

DISSENTING OPINION
SONG, Administrative Patent Judge.
Appeal 2012-009491
Reexamination Control 95/001,247
Patent 7,582,058

9
I respectfully dissent from my colleagues' grant of the Patent Owner,
NuVasive's Request for Rehearing, and the modification of the Decision
mailed March 18, 2013. In my opinion, our initial analysis in the Decision
concluding that claim 10 broadens the scope of claim 4, and thus, violates 35
U.S.C. § 314(a), remains correct for the reasons set forth by Medtronic with
which we initially agreed (Decision 8-11).
Claim 4 recites, inter alia:
sensing a response of a nerve depolarized by said stimulation.
Claim 10 newly added during the reexamination recites, inter alia:
sensing an electromyographic (EMG) response of a muscle
coupled to a nerve depolarized by said stimulation using an EMG
sensor of the nerve monitoring system.
(Claims App'x., emphasis added).

Thus, while both claims require a nerve depolarized by stimulation, they
recite sensing responses of different physiological structures, claim 4
sensing a response of a nerve while new claim 10 senses a response of a
muscle. Correspondingly, these claims encompass different subject matter.
NuVasive argues that the Board's Decision overlooked the
Specification of the '058 patent that "clearly supports the proper claim
interpretation of original claim 4 and [] shows why claim 10 is a subset of
claim 4." (PO Rh'g Req. 2). In particular, NuVasive argues that the Board
applied an improperly narrow construction of claim 4 which required,
"presumably, that the claimed 'sensing' be done using direct contact with
the nerve, rather than indirect sensing (via a muscle coupled to the nerve)."
(Id. at 4, emphasis in original). NuVasive points out that the three different
ways for sensing a response of a nerve disclosed in the Specification of the
Appeal 2012-009491
Reexamination Control 95/001,247
Patent 7,582,058

10
'058 patent all involve sensing a response of a muscle coupled to the nerve,
and that "there is no express disclosure in the '058 patent of sensing a
response of a nerve using direct contact with the nerve itself, or using any
method of sensing that does not involve the muscle." (Id. at 4-7).
Firstly, NuVasive's presumption as to claim 4 is incorrect in that the
Decision did not state that claim 4 requires, or is interpreted to require,
sensing response of a nerve using direct contact with the nerve. Instead, the
Decision states, "[w]ith respect to claim 10, we also agree with Medtronic
that sensing the response of a nerve, as in claim 4, is not the same act as
sensing the response of a muscle, as in claim 10" and further notes that
nerves and muscles are not the same (Decision 10). Thus, the Decision
rejects claim 10 as being broader than claim 4, at least in part, based on the
arguments submitted by Medtronic as set forth in its Rebuttal Brief filed
February 27, 2012 (hereinafter "Req. Reb. Br.") in the subject appeal (Req.
Reb. Br. 18).
NuVasive's summarizes its main argument stating:
Accordingly, properly interpreted in accordance with the
required broadest reasonable interpretation, claim 4's recitation
of "sensing a response of a nerve" includes within its scope
sensing a response of a nerve by sensing a response of a muscle
coupled to the nerve (and most certainly includes the narrower
preferred embodiment of sensing an EMG response of a muscle
coupled to a nerve).
(PO Rh'g Req. 9).

I do not dispute that under the broadest reasonable interpretation in
view of the Specification of the '058 patent, that claim 4 includes sensing a
response of a nerve by monitoring an electromyographic (EMG) response of
Appeal 2012-009491
Reexamination Control 95/001,247
Patent 7,582,058

11
a muscle coupled to a nerve. However, NuVasive's arguments are pertinent
to issues of the scope of claim 4 and whether there is written descriptive
support for claim 10. These issues are not the determinative as to whether
claim 10 is broader than claim 4 under 35 U.S.C. § 314(a) which, in this
case, requires determining whether the new claim 10 encompasses any
subject matter that was not encompassed by claim 4. In this regard, a claim
"is broader in scope than the original claims if it contains within its scope
any conceivable apparatus or process which would not have infringed the
original patent," and "[a] claim that is broader in any respect is considered to
be broader than the original claims even though it may be narrower in other
respects." Medtronic, Inc. v. Guidant Corp., 465 F.3d 1360, 1374 (Fed. Cir.
2006); see also In re Freeman, 30 F.3d 1459, 1464 (Fed. Cir. 1994).
The record indicates that there are various reasons why the scope of
claim 10 is not merely just a subset of "sensing a response of a nerve"
recited in claim 4, but rather, encompasses subject matter beyond claim 4.
Medtronic has set forth such reasons in its Rebuttal Brief and has further
explained and supplemented its arguments in its opposition to NuVasive’s
Request for Rehearing (see generally, Req. Reb. Br. 18; 3PR Comm. 4-9).
These reasons include the fact that EMG response of a muscle may be
derived from involuntary muscle spasm or voluntary muscle movement, and
depolarization of the nerve does not necessarily result in a measurable EMG
response in the muscle for reasons such as nerve damage (id.). As the
majority acknowledges, the parties do not disagree that EMG responses in
muscles may be produced apart from activity of the nerve coupled thereto.
Appeal 2012-009491
Reexamination Control 95/001,247
Patent 7,582,058

12
Thus, the record indicates that EMG response of a muscle is not
always directly correlated to a nerve coupled to the muscle, but can be
independent of/from the coupled nerve regardless of whether or not the
coupled nerve is depolarized by the stimulation. It also follows that EMG
response of a muscle may be due to both the coupled depolarized nerve, and
other non-nerve related causes noted. Hence, whereas claim 4 would not
encompass such non-nerve related causes for EMG responses of the muscle,
the language of new claim 10 would encompass such responses so as to be
broader than claim 4 in this respect.
NuVasive's misunderstanding of the pertinent issue is exemplified in
its argument that:
all of [Medtronic's] grounds for rejection for claim 4, including
those adopted by the Board, rely on prior art that allegedly
shows the 'sensing a response of a nerve' by indirect means,
namely sensing the nerve response by sensing the response of
an associated muscle.
(PO Rh'g Req. 8).
NuVasive further observes that the Board entered various rejections based
on prior art that sense nerve response by sensing the response of an
associated muscle, and asserts that Medtronic contradicts itself in making the
broadening argument as to claim 10 while also relying on references that
sense the response of a muscle to sense nerve response (id. at 9-10).
However, there is no contradiction because the scope of the language of
claim 10, while overlapping with the scope of the language of claim 4,
encompasses subject matter beyond that of claim 4.
As noted, NuVasive does not disagree or factually challenge the
reasons in the record as to why EMG response of a muscle may not be
Appeal 2012-009491
Reexamination Control 95/001,247
Patent 7,582,058

13
correlated to a nerve coupled thereto (see generally, PO Req. Rh'g 7-9).
Instead, NuVasive argues that:
To the extent an EMG response is triggered from involuntary
muscle spasm or voluntary muscle movement and not from a
nerve depolarized by the claimed stimulation step, the EMG
response in those scenarios are not within the scope of claim 10
(because the nerve in those scenarios is not "depolarized by said
stimulation").
(PO Rh'g Req. 8).
However, this argument relies on limitations not appearing in claim 10. The
pertinent limitation recites that a muscle is coupled to the nerve and it is the
nerve that is "depolarized by said stimulation." The only requirement in this
limitation as to the relationship between the sensed EMG response and the
nerve is that the EMG response be "of a muscle" which must be coupled to
the depolarized nerve. The pertinent limitation of claim 10 does not require
the sensed EMG response of the muscle to be caused by the depolarized
nerve coupled thereto.
The majority notes that the Specification of the '058 patent is directed
to sensing EMG response of a muscle to derive nerve information, and refers
to the language of the claim reciting a "nerve monitoring system" and the
subsequent "determining" step as connecting the sensed EMG response of
the muscle to "one that must be able to convey information about the nerve
that is coupled to the muscle" such as proximity and direction. Based
thereon, the majority concludes that "EMG responses arising solely from
muscle activity, and not from nerve activity, are not the type of responses
that convey the requisite nerve information required by claim 10," and thus,
Appeal 2012-009491
Reexamination Control 95/001,247
Patent 7,582,058

14
muscle responses "that are not the result of electrical stimulation of the
nerve" are excluded from the language of claim 10.
Initially, it not apparent where NuVasive has expressly advocated the
interpretation of claim 10 adopted by the majority so that prosecution
estoppel would apply in interpreting claim 10.
4
Regardless, it appears that
the majority is reading exclusion limitations into claim 10. I do not view the
lack of disclosure with respect to EMG responses of a muscle that are not
attributable to the coupled nerve in the Specification of the '058 patent as an
exclusion of such EMG responses that limits the scope of claim 10.
5
As to
the majority's reference to the Specification of the '058 patent, I view such
analysis to be similar to that of NuVasive, that is, that claim 10 is adequately
supported by the Specification. However, as noted, this speaks little to
whether claim 10 encompasses subject matter that claim 4 did not.
As to the limitation of claim 10 that recites the step of determining the
nerve proximity or direction "based upon a stimulation current threshold
level required to evoke the sensed EMG response in the muscle coupled to
the nerve," it is important to observe that the recited "a stimulation current
threshold level" is merely correlated to the sensed EMG response of the
muscle rather than to an EMG response caused by the nerve that has been

4
In this regard, whereas the broadening rejection under 35 U.S.C. § 314(a)
was entered as a New Ground thereby affording NuVasive an opportunity to
reopen prosecution to submit clarifying amendments to claim 10, NuVasive
has chosen to forego that opportunity.
5
In a situation where the EMG response of the muscle may only be partially
attributable to the depolarized nerve, it is clear that the majority would view
such non-nerve based portion of the EMG response of muscles as being
excluded from claim 10.
Appeal 2012-009491
Reexamination Control 95/001,247
Patent 7,582,058

15
depolarized. Hence, I do not view this limitation of claim 10 as
necessitating the narrow construction adopted by the majority. To the
contrary, claim 10 allows the recited stimulation current threshold level to be
based on the sensed non-nerve associated EMG response of the muscle
which would not have been encompassed by claim 4. It is not apparent how
claim 10 precludes this non-nerve based threshold level from being used as a
basis to determine nerve proximity or direction, for example, by stimulating
the nerve to this non-nerve based threshold level. Again, a claim "is broader
in scope than the original claims if it contains within its scope any
conceivable apparatus or process which would not have infringed the
original patent." Medtronic, 465 F.3d at 1374.
For the above reasons, I respectfully dissent.

PATENT OWNER:

FISH & RICHARDSON P.C.
PO BOX 1022
MINNEAPOLIS, MN 55440-1022

THIRD-PARTY REQUESTER:

FITZPATRICK, CELLA, HARPER & SCINTO
1290 AVENUE OF THE AMERICAS
NEW YORK, NY 10104-3800