Ex Parte Barrus et al

Patent Trial and Appeal Board

Aug 29, 2018

14211573 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/211,573 03/14/2014
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.
1449-313 1005
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, SCOTT JONES,
BRANDON MOORE, and LARRY McCLINTOCK1
Appeal2017-008734
Application 14/211,573
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 Appellants state that the real party-in-interest is K2M, Inc. App. Br. 1.
Appeal2017-008734
Application 14/211,573
SUMMARY
Appellants file this appeal under 35 U.S.C. § I34(a) from the
Examiner's Final Rejection of claims 1---6, 8, 18, and 19. Specifically,
claims 1, 6, 8, and 18 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"), Malek (US 2005/0113927 Al,
May 26, 2005) ("Malek"), and Rock et al. (US 2009/0105769 Al, April 23,
2009) ("Rock"). 2
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to a spinal hook, including a hook
member, an inner collet, and an outer portion. Abstr.
2 The Examiner also rejected claim 19 as unpatentable under 35 U.S.C.
§ 112, second paragraph as indefinite, and rejected claims 8 and 19 as
unpatentable under 35 U.S.C. § I03(a) as being obvious over the
combination of Rock and Malek. See Final Act. 2, 7. Appellants make no
argument with respect to these rejections. We consequently summarily
affirm the Examiner's rejection of claims 8 and 19. See 37 C.F.R.
§ 41.3 7 ( 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 14/211,573
REPRESENTATIVE CLAIM
Appellants argue claims 1---6, 8, and 18 together. App. Br. 3. Claim 1
is representative of the claims on appeal and recites:
1. A spinal hook comprising:
a hook member including a head portion and a blade
portion;
an inner collet including a base portion configured to
rotatably engage the head portion, and a pair of engaging
portions defining a first slot configured to receive a connecting
rod therein, the inner collet defining a second slot; and
an outer portion movable relative to the inner collet
between a locked position in which the outer portion causes the
pair of engaging portions to move toward each other and an
unlocked position in which the outer portion causes the pair of
engaging portions to be spread apart to facilitate insertion or
removal of the connecting rod, wherein the outer portion includes
a pin configured to be slidably received in the second slot of the
inner collet.
App. Br. 10.
ISSUES AND ANALYSES
We are persuaded by, and expressly adopt, the Examiner's findings,
reasoning and conclusions establishing that Appellants' claims are prima
facie obvious over the combined cited prior art. We address the arguments
raised by Appellants below.
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Application 14/211,573
Issue 1
Appellants contend 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. 5.
Analysis
The Examiner finds, inter alia, that Matthis teaches a spinal implant,
comprising: a member including a head portion and a bone engaging
portion; (2) an inner collet including a base portion configured to rotatably
engage the head portion and a pair of engaging portions defining a first slot
configured to receive a connecting rod therein; and (3) an outer portion
movable relative to the inner collet. Final Act. 3.
The Examiner also finds that Matthis neither teaches nor suggests that
the outer portion is movable relative to the inner collet between a locked
position in which the outer portion causes the pair of engaging portions to
move toward each other and an unlocked position in which the outer portion
causes the pair of engaging portions to be spread apart to facilitate insertion
or removal of the connecting rod. Final Act. 4. The Examiner also finds
that Matthis fails to teach or suggest that each engaging portion of the pair of
engaging portions includes a surface configured to engage an inner surface
of the outer portion during the transition of the outer portion between the
locked and unlocked positions. Id.
The Examiner finds that Richelsoph teaches a device comprising: (1)
an inner collet, including a base portion and a pair of engaging portions,
defining a slot configured to receive a connecting rod; and an outer portion
movable relative to the inner collet between a locked position in which the
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Application 14/211,573
outer portion causes the pair of engaging portions to move toward each other
and an unlocked position in which the outer portion causes the pair of
engaging portions to be spread apart to facilitate insertion or removal of the
connecting rod. Final Act. 5 (citing Richelsoph Figs 1-2). The Examiner
finds that Richelsoph teaches that each engaging portion includes a surface
configured to engage an inner surface of the outer portion during the
transition of the outer portion between the locked and unlocked position. Id.
The Examiner also finds that Richelsoph teaches that the surface is tapered
such that in the unlocked position, the surface is spaced apart from the inner
surface of the outer portion. Id.
The Examiner finds that Malek teaches that a hook member is an
alternative type of member to a screw member. Final Act. 5 ( citing Malek
Figs. 15, 16). The Examiner finds that Malek teaches that the hook member
includes a head portion and a bone engaging portion in the form of a blade
portion. Id.
Finally, the Examiner finds that Rock teaches a device comprising: (1)
an inner collet including a base portion defined along a length of the inner
collet; and (2) an outer portion movable relative to the inner collet between a
locked position and an unlocked position, the outer portion including a pin
configured to be slidably engaged within the second slot of the inner collet.
Final Act. 6 (citing Rock Figs. 1-6; ,r,r 32-33). The Examiner finds that
Rock further teaches that the pin guides movement of the outer portion
relative to the inner housing when moving between the locked position and
the unlocked position. Id. ( citing Rock ,r 33)
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art to substitute the hook member with its blade
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Application 14/211,573
portion, as taught by Malek, for the bone engaging portion of Matthis,
because that would be simply to substitute one type of member for another,
as was commonly known in the art. Final Act. 6. The Examiner further
concludes that it would have been obvious to one of ordinary skill in the art
to modify the inner collet and outer portion of Matthis, such that the outer
portion is movable relative to the inner collet between a locked position in
which the outer portion causes the pair of engaging portions to move toward
each other and an unlocked position in which the outer portion causes the
pair of engaging portions to be spread apart to facilitate insertion or removal
of the connecting rod, so that each engaging portion of the pair of arms
includes a surface configured to engage an inner surface of the outer portion
during the transition of the outer portion between the locked and unlocked
positions, as taught by Richelsoph. Id. at 6-7. The Examiner concludes that
a person of ordinary skill in the art would be motivated to combine the
teachings of the references, because doing so would simplify the assembly
of the device by eliminating the need for a securing element ( such as
securing element 61 in Matthis), which would also reduce the risk of
undesirable in situ disassembly of the device due to backout of the securing
element from the outer portion. Id. at 7.
Appellants argue 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. 5 ( quoting Matthis ,r 6). According to Appellants, the
intended purpose of Matthis is to securely lock the shank of the bone
anchoring device to the head after assembly. Id. Specifically, Appellants
points to paragraphs [0046]-[004 7] of Matthis, which teach, inter alia:
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Application 14/211,573
During 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 the
head 203, the head 203 is compressed and the shank 202 becomes
securely locked in the head 203.
Mathis ,r 4 7.
Appellants contend that the modification of Matthis, proposed by the
Examiner, to include "an outer portion movable relative to the inner collet,"
as recited in claim 1, would render Matthis unsuitable for its intended
purpose. App. Br. 7. Appellants assert that such a modification would
inhibit secure locking of the shank in the head after assembly and also
preclude a modular system having variability. Therefore, argue Appellants,
there is no suggestion or motivation that would have led a person of ordinary
skill to make the proposed modification. Id.
Appellants contend 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,
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Application 14/211,573
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
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.
202
Figure 11 of Matthis depicts a sectional view of the upper part
of the third embodiment in an assembled state
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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.
Moreover, we do not agree with Appellants' contentions 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 Appellants' argument
persuasive.
Finally, we are not persuaded by Appellants' argument that the
combination of the teachings of Matthis and Richelsoph somehow prevents
the system from being modular. The Examiner's combination of the
references simply substitutes one mechanism for securing the rod to the
anchor in a multi-component system with another, more advantageous
mechanism. See Final Act. 7.
Issue 2
Appellants argue the Examiner erred because the combination of
Matthis and Richelsoph would change the principle of operation of Matthis'
bone anchoring device. App. Br. 7.
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Application 14/211,573
Analysis
Appellants argue modifying Matthis' bone anchoring device to
replace the securing element 61 with an outer portion movable relative to an
inner collet to secure a rod, as taught by Richelsoph, would change the
principle of operation of Matthis' bone anchoring device. App. Br. 7.
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
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 Appellants' 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. We are therefore not persuaded by Appellants' argument.
Issue 3
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Appellants next argue that person of ordinary skill in the art would not
have looked to Richelsoph to solve a problem already solved by Matthis.
App. Br. 8.
Analysis
According to Appellants, Matthis has already solved the problem of
retaining a rod within a bone anchoring device. App. Br. 8. Appellants
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. Id.
Appellants also allege, without adducing any supporting evidence,
that the Examiner relied impermissibly on hindsight in establishing a prima
facie case of obviousness, by using claim 1 as a guide or road map. App. Br.
8.
We are not persuaded by Appellants' 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. Appellants do
not present any evidence or argument to rebut the Examiner's conclusion in
this respect.
With respect to Appellants' allegation that the Examiner employed
impermissible hindsight:
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made and
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does not include knowledge gleaned only from applicant's
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (C.C.P.A. 1971). Appellants point
to no evidence, and make no argument, to show that the knowledge used by
the Examiner in arriving at the conclusion that the claims were prima facie
obvious came, or could only have come, from Appellants' Specification and
not from the teachings and suggestions of the prior art. We consequently
affirm the Examiner's rejection of claims 1---6, 8, and 18.
DECISION
The Examiner's rejection of claims 1---6, 8, 18, and 19 under 35 U.S.C.
§ 103(a) is affirmed.
The Examiner's rejection of claim 19 under 35 U.S.C. § 112, second
paragraph, 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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