Ex Parte Arnold et al

Patent Trial and Appeal Board

Sep 28, 2016

13798243 (P.T.A.B. Sep. 28, 2016)

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.
13/798,243 03/13/2013 Benjamin Arnold 1672-0121DIV1 4677
28078 7590 09/29/2016
MAGINOT, MOORE & BECK, LLP
One Indiana Square, Suite 2200
INDIANAPOLIS, IN 46204
EXAMINER
COTRONEO, STEVEN J
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
09/29/2016 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
____________________

Ex parte BENJAMIN ARNOLD, SEUNGKYU DANIEL KWAK, JOHN
RILEY HAWKINS, ERASMO A. LOPEZ, MISSOUM MOUMENE,
CHARLES M. BARTISH JR., WILLIAM L. DUNBAR JR.,
AMIE BORGSTROM, and ANWAR M. UPAL
____________________

Appeal 2015-001323
Application 13/798,243
Technology Center 3700
____________________

Before ANTON W. FETTING, BRADLEY B. BAYAT, and
TARA L. HUTCHINGS, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–4, 7–10, and 13. Final Act. 2 (mailed Dec. 3,
2013). We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.

1 Our decision references Appellants’ Appeal Brief (“Br.,” filed Apr. 28,
2014), and the Examiner’s Answer (“Ans.,” mailed Aug. 29, 2014).
2 Appellants identify the real party in interest as “DePuy Synthes Products,
LLC” (Br. 1).
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Application 13/798,243

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CLAIMED INVENTION
Appellants’ claimed invention relates to the field of spinal
stabilization devices, and in particular, to a posterior stabilization unit
configured for use with a segmental unit of the spine. Spec. ¶ 1. Claims 1
and 8 are the independent claims on appeal. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A spine stabilization system comprising:

at least one bone anchor assembly, the bone anchor
assembly including a bone engaging member and a receiver
member, wherein the receiver member includes a connecting
member cavity extending from a first side of the receiver
member to a second side of the receiver member; and

an elongated connecting member defining a connecting
member axis inserted into the connecting member cavity by
moving the elongated connecting member along the connecting
member axis through the first side of the receiver member
without rotation of the connecting member and connected to the
receiver member, wherein the connecting member comprises
locking features configured to secure the connecting member to
the receiver member without the use of a fixation screw
extending through a top portion of the receiver member.

Br. 18, Claims Appendix.

REJECTIONS
The following rejections are before us for review.
Claims 1–3, 7–9, and 13 are rejected under 35 U.S.C. § 102(b)
as anticipated by Moriya (US 5,010,879, iss. Apr. 30, 1991).
Claims 4 and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Moriya and Ralph (US 2002/0111626 A1, pub.
Aug. 15, 2002).
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ANALYSIS
Anticipation by Moriya
In rejecting independent claim 1 under 35 U.S.C. § 102(b) as being
anticipated by Moriya, the Examiner finds that the wedge member of
Moriya, as depicted in Figure 6, constitutes the claimed “elongated
connecting member.” Final Act, 2, see also Ans. 2 (citing Moriya Fig. 6).
Appellants acknowledge that Moriya’s wedge member meets the plain
meaning of the term “connecting member,” but argue that “[t]he manner in
which the phrase ‘connecting member’ is used in the claims and the
[S]pecification, however, narrows the scope of the phrase ‘connecting
member.’” Br. 5–6 (citing Spec. ¶ 40, Figs. 1, 15A–15F). Consequently,
Appellants assert that the Examiner’s interpretation is contrary to the
meaning that one of ordinary skill in the art would arrive at after reading the
Specification and properly construing the claim language, as recited in claim
1. Id. at 6. Appellants’ argument is persuasive.
A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference. Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628,
631 (Fed. Cir. 1987). There is no dispute as to the meaning of “connecting
member,” thus, we seek to construe the claim term “elongated connecting
member,” as recited in claim 1. We find that the ordinary and customary
meaning of the term “elongated” is “unusually long in relation to its width.”3
As such, the term “elongated connecting member” is construed as an
element that is unusually long in relation to its width, which joins two other

3 https://en.oxforddictionaries.com/definition/us/elongated (last visited Sept.
20, 2016).
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Application 13/798,243

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elements together. We find that our interpretation is consistent with
Appellants’ Specification in describing and depicting the claimed “elongated
connecting member.” See Spec. ¶40 (elongated connecting members 26
comprise rods or bars, and extend between a first bone anchor fixed to an
upper vertebra 20 and a second bone anchor fixed to a lower vertebra 21);
see also Figs. 1, 15A–15F.
“Having construed the claim limitation at issue, we now compare the
claims to the prior art to determine if the prior art anticipates those claims.”
In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). In
contrast to our construction of the claim term “elongated connecting
member” supra, we find that Moriya’s wedge member 6a is described as a
“short cylindrical member” mounted on an elongated rod 11 to fix the hook
engagement member 2 to the elongated rod 11. See Moriya 2:16–23, 3:64–
65; see also Moriya Figure 4. A short cylindrical member is not unusually
long in relation to its width, as shown by the perspective view of Moriya’s
wedge member in Figure 6. Moreover, Moriya’s description of wedge
members 6a in relation to elongated rods 11, further supports this
distinction.
We find the Examiner’s interpretation of “elongated connecting
member” as recited in the claim unreasonably broad and inconsistent with
the plain meaning of the claim term. We disagree that “the broadest
reasonable interpretation [of elongated connecting member] would be a part
that connects to [sic] parts together.” Ans. 5. As such, one of ordinary skill
in the art would not interpret wedge member 6b as described and depicted in
Moriya as corresponding to the claimed “elongated connecting member.”
Consequently, we agree that the Examiner erred in finding that “elongated
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connecting member,” as set forth in claim 1, is expressly described in
Moriya as wedge member 6b. “[A]bsence from the reference of any claimed
element negates anticipation.” Kloster Speedsteel AB v. Crucible, Inc., 793
F.2d 1565, 1571 (Fed. Cir. 1986).
Accordingly, the rejection of independent claim 1, as well as
dependent claims 2, 3, and 7 as being anticipated by Moriya is not sustained.
Because independent claim 8 recites substantially similar language and is
rejected based on the same interpretation as claim 1 (see Final Act. 3), we
also do not sustain the rejection of independent claim 8 and claims 9 and 13,
which depend from claim 8.
Obviousness over Moriya and Ralph
We do not sustain the rejection of dependent claims 4 and 10 under 35
U.S.C. §103(a) over Moriya and Ralph because the rejection relies on the
same erroneous finding regarding the disclosure in Moriya as set forth
above.
DECISION
The Examiner’s rejections of claims 1–4, 7–10, and 13 are reversed.

REVERSED