Ex Parte Barrus

Patent Trial and Appeal Board

Aug 29, 2018

14185193 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/185,193 02/20/2014
31554 7590 08/31/2018
CARTER, DELUCA, FARRELL & SCHMIDT, LLP
445 BROAD HOLLOW ROAD
SUITE420
MELVILLE, NY 11747
Michael Barrus
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1449-346 8371
EXAMINER
HARVEY, TIJLIANNA NANCY
ART UNIT PAPER NUMBER
3733
NOTIFICATION DATE DELIVERY MODE
08/31/2018 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):
docket@cdfslaw.com
bpuchaczewska@cdfslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL BARRUS 1
Appeal2017-008693
Application 14/185, 193
Technology Center 3700
Before DONALD E. ADAMS, MICHAEL J. FITZPATRICK, and
JOHN G. NEW, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellant states that the real party-in-interest is K2M, Inc. App. Br. 1.
Appeal2017-008693
Application 14/185, 193
SUMMARY
Appellant files this appeal under 35 U.S.C. § I34(a) from the
Examiner's Final Rejection of claims 1---6, 10, 11, 13-18, and 23.
Specifically, claims 1-3, 10, 11, 13-18, and 23 stand rejected as
unpatentable under 35 U.S.C. § I03(a) as being obvious over the
combination of Matthis et al. (US 2008/0132957 Al, June 5, 2008)
("Matthis") and Richelsoph et al. (US 6,010,503, January 4, 2000)
("Richelsoph").
Claims 4--6 stand rejected as unpatentable under 35 U.S.C. § I03(a) as
being obvious over the combination of Matthis, Richelsoph, and Felix et al.
(US 2008/0243185 Al, October 2, 2008) ("Felix")2.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellant's invention is directed to spinal fixation devices that are
connectable to spinal rods used in spinal constructs. Spec. ,r 1.
REPRESENTATIVE CLAIM
Appellant argues claims 1-3, 10, 11, 13-18, and 23 together. App.
Br. 11. Claim 1 is representative of the claims on appeal and recites:
2 Appellant makes no argument with respect to this rejection. See, e.g., App.
Br. 11. We consequently summarily affirm the Examiner's rejection of
claims 4--6. See 37 C.F.R. § 4I.37(c)(iv) ("[A]ny arguments or authorities
not included in the appeal brief will be refused consideration by the Board
for purposes of the present appeal).
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Application 14/185, 193
1. A spinal fixation device, comprising:
a body portion including a stud portion defining a first
annular groove;
an outer housing positionable on the stud portion;
an inner housing having arms extending therefrom and
defining a second annular groove, the arms defining a U-shaped
slot configured to releasably receive a spinal rod, the inner
housing positionable between the outer housing and the stud
portion, the outer housing repositionable with respect to the inner
housing between a first, unlocked position where the arms are
permitted to flex to receive a spinal rod in the U-shaped slot and
a second, locked position where the inner and outer housings are
taper locked so that the arms are configured to grip a spinal rod
disposed in the U-shaped slot; and
a ring member positionable within each of the first and
second annular grooves of the respective stud portion and inner
housing to lock the inner housing to the stud portion and to
fixedly couple the outer housing to the stud portion.
App. Br. 12.
ISSUES AND ANALYSES
We are persuaded by, and expressly adopt, the Examiner's findings,
reasoning and conclusions establishing that Appellant's claims are prima
facie obvious over the combined cited prior art. We address the arguments
raised by Appellant below.
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Appeal2017-008693
Application 14/185, 193
Issue 1
Appellant contends that the Examiner erred because the proposed
combination of Matthis and Richelsoph would render the bone anchoring
device of Matthis unsatisfactory for its intended purpose. App. Br. 10.
Analysis
The Examiner finds that Matthis teaches a spinal fixation device,
comprising: (1) a body portion including a stud portion defining a first
annular groove; an outer housing positionable on the stud portion; (2) an
inner housing having extending arms and defining a second annular groove,
the arms defining a U-shaped slot configured to releasably receive a spinal
rod, the inner housing positionable between the outer housing and the stud
portion; and (2) a ring member positionable within each of the first and
second annular grooves of the respective stud portion and inner housing to
lock the inner housing to the stud portion and to fixedly couple the outer
housing to the stud portion. Final Act. 3 (citing Matthis Figs. 10-11).
The Examiner also finds that Matthis neither teaches nor suggests that
the outer housing is repositionable with respect to the inner housing between
a first, unlocked position where the upright arms are permitted to flex to
receive a spinal rod in the U-shaped slot and a second, locked position where
the inner and outer housings are taper locked so that the arms are configured
to grip a spinal rod disposed in the U-shaped slot. Final Act. 5.
The Examiner finds that Richelsoph teaches a spinal fixation device
comprising: (1) a body portion including a stud portion; (2) an outer
housing; (2) an inner housing positionable between the outer housing and the
stud portion, the inner housing configured to fixedly couple the outer
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Appeal2017-008693
Application 14/185, 193
housing to the stud portion. Final Act. 6. The Examiner finds Richelsoph
further teaches that the inner and outer housing can assume a first, unlocked
position in which the arms are permitted to flex to receive a spinal rod, and a
second, locked position, in which the inner and outer housings are taper
locked so that the arms grip the rod to secure the rod to the spinal fixation
device. Id. ( citing Richelsoph Fig. 1 ). The Examiner also finds that, in the
latter position, the inner and outer housings are substantially co-planar. Id.
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art to combine the teachings of Matthis and
Richelsoph because doing so would simplify the assembly of the spinal
fixation device by eliminating the need for the securing element 61 of
Matthis, which would also reduce the risk of unwanted in situ disassembly
of the device due to backout of the securing element from the outer housing.
Final Act. 6-7.
Appellant argues that Matthis expressly teaches that "there is a need
for a bone anchoring device with a shank and a head formed as separate
parts which ... provides secure locking of the shank in the head after
assembly." App. Br. 8 (quoting Matthis ,r 6). According to Appellant, the
intended purpose of Matthis is to securely lock the shank of the bone
anchoring device to the head after assembly. Id. Appellant contends that
Matthis also teaches that secure clamping occurs only "after final locking
with the securing element." Id. (quoting Matthis ,r 25). Specifically,
Appellant points to paragraph [0047] of Matthis, which teaches:
[D]uring tightening of the securing element 61 pressure acts on
the second end 203b of the head 203. The head 203 is pressed
toward the first end 40 of the receiving part 4. Due to the tapering
shape of the longitudinal bore 42 and to the slits 235 provided in
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Application 14/185, 193
the head 203, the head 203 is compressed and the shank 202
becomes securely locked in the head 203.
Id. Appellant contends that the modification of Matthis, proposed by the
Examiner, to remove the securing element 61 and rely solely on the taper
lock structure described in Richelsoph would prohibit the shank 202 of
Matthis from being securely locked in the head 203 as taught by Matthis. Id.
Appellant further asserts that there is no other disclosure in Matthis where
the shank 202 is securely locked in the head 203. Id.
Appellant contends that eliminating the securing element 61 of
Matthis and replacing it with the rod receiving mechanism 12 ofRichelsoph,
would preclude secure locking of the shank 202 with the head 203, as
intended by Matthis by means of the securing element 61, and therefore,
would render Matthis' bone anchoring device unsatisfactory for its intended
purpose.
We disagree. Matthis teaches:
The ring 7 is provided as a snap ring which has a substantially
annular shape with a clearance 70, as can be seen in FIG. 4c. The
ring 7 has a substantially rectangular cross section and is shaped
such that it fits in the groove 24 on the second portion 23 of the
shank 2 and in the groove 34 in the cylindrical bore 31 of the
head 3. Due to the clearance 70 the ring 7 has certain flexibility,
i.e.[,] its diameter can be enlarged and decreased by a certain
amount.
Matthis ,r 26. Matthis further teaches that:
The assembly of receiving part 4, head 3, ring 7 and pressure
element 5 can then be connected to the shank 2 by guiding the
second portion 23 of the shank 2 into the cylindrical bore 31 of
the head 3. The beveled shape of the upper free end 27 of the
shank 2 facilitates insertion. During insertion the head 3 and the
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Application 14/185, 193
ring 7 are slightly expanded by the second portion 23 of the shank
until the ring 7 snaps into the groove 24 of the second portion 23
of the shank. In this condition the ring 7 rests in the groove 24
of the end portion of the shank 2 and in the groove 34 of the head
3. As a result, the shank 2 is prevented from retracting again
from the head 3 by form-locking engagement of the ring 7 in the
groove 34 in the head 3.
Id. at ,r 30. Figure 11 of Matthis is reproduced below.
203b
223
/61
\
W3o
'-... 202
Figure 11 of Matthis depicts a sectional view of the upper part
of the third embodiment in an assembled state
Matthis thus expressly teaches that it is the ring 7, engaging the
annular grooves of both the shank (i.e., the stud) and the inner bore of the
head (i.e., the inner housing) of the device that holds the shank and head
together, and not the securing element 61. This is consistent with
Appellant's claim 1, which recites, in relevant part: "a ring member
positionable within each of the first and second annular grooves of the
respective stud portion and inner housing to lock the inner housing to the
stud portion and to fixedly couple the outer housing to the stud portion."
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Application 14/185, 193
Moreover, we do not agree with Appellant's contention that replacing
the securing element 61 of Matthis with the rod receiving mechanism 12 of
Richelsoph would render Matthis' bone anchoring device unsatisfactory for
its intended purpose. Both elements in the respective references serve to
secure a spinal rod in place to the anchor. As the Examiner points out, the
mechanism of Richelsoph is advantageous because doing so would:
"eliminate[ e] the need for the securing element 61 of Matthis, which would
also reduce the risk of unwanted in situ disassembly of the device due to
backout of the securing element from the outer housing." See Final Act. 7.
We therefore do not find Appellant's argument persuasive.
Issue 2
Appellant argues the Examiner erred because the combination of
Matthis and Richelsoph would change the principle of operation of Matthis'
bone anchoring device. App. Br. 10.
Analysis
Appellant repeats the argument presented in the preceding section and
argue modifying Matthis' bone anchoring device to replace the securing
element 61 with the taper lock configuration of Richelsoph, as proposed by
the Examiner, would entirely change the principle of operation of Matthis'
bone anchoring device. App. Br. 10. Specifically, the taper lock
configuration of Richelsoph requires an entirely different mode of operation
than using a securing element 61, as disclosed by Matthis. Id.
We disagree. Matthis is directed to: "[a] bone anchoring device
includes a shank to be anchored in a bone or vertebra, a head, and a
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Application 14/185, 193
receiving part receiving the head for connecting the shank to a rod." Matthis
Abstr. Similarly, Richelsoph is directed to a: "a rod receiving ring for
receiving a portion of a rod therein and including a compressible insert for
receiving a portion of the rod therein in a noncompressed condition and
conforming allowing the portion of the rod to fixedly lock the portion of the
rod therein in a compressed condition." Richelsoph Abstr. The purpose of
the devices taught in both references is to secure a rod to an anchoring
device.
We acknowledge Appellant's point that the references teach two
different means of securing the rod to the device, viz., a securing element
versus compressible arms. However, we agree with the Examiner that a
person of ordinary skill in the art would have been motivated to combine the
references because of the advantages conferred by the compressible arms of
Richelsoph over the securing cap of Matthis, i.e., to reduce the number of
elements and to prevent the securing element from coming loose in situ. See
Final Act. 7.
Furthermore, both Matthis and Richelsoph differ in teaching alternate
methods of clamping a spinal rod in situ. "If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability." KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398,417 (2007). We conclude with the
Examiner that exchanging one known mechanism for another one known in
the art would be obvious to an artisan of ordinary skill. We are therefore not
persuaded by Appellant's argument.
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Application 14/185, 193
Issue 3
Appellant next argues that person of ordinary skill in the art would not
have looked to Richelsoph to solve a problem already solved by Matthis.
App. Br. 10.
Analysis
According to Appellant, Matthis has already solved the problem of
retaining a rod within a bone anchoring device. App. Br. 10. Appellant
points to Figures 10 and 11 of Matthis, as well as Matthis' teaching that
"[a]fter insertion of the rod 60 the securing element 61 is inserted for locking
the rod 60 in the receiving part 4." Id. (citing Matthis, ,r 47). Appellant
asserts that, because Matthis has solved the problem of retaining a rod within
a bone anchoring device, one of ordinary skill in the art would have no
motivation to look to Richelsoph, without using the claims of the instant
application as a guide or roadmap in formulating the rejection under 35
U.S.C. § 103.
We are not persuaded by Appellant's argument. The Examiner has, as
we have explained supra, articulated a rational motivation for a person of
ordinary skill to combine the references. See Final Act. 7. Appellant does
not present any evidence or argument to rebut the Examiner's conclusion in
this respect. We consequently affirm the Examiner's rejection of claims 1-
3, 10, 11, 13-18, and 23.
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Application 14/185, 193
DECISION
The Examiner's rejection of claims 1-6, 10, 11, 13-18, and 23 under
35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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