Ex Parte Bethell

Patent Trial and Appeal Board

Dec 17, 2012

11608312 (P.T.A.B. Dec. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MICHAEL CLAY BETHELL
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Appeal 2012-001996
Application 11/608,312
Technology Center 3700
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Before ERIC GRIMES, LORA M. GREEN, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to methods
for treating a spinal deformity. The Examiner has rejected the claims as
anticipated. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

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Application 11/608,312

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STATEMENT OF THE CASE
Appellant‟s invention relates to “methods of treating vertebral
members and, more particularly, treatment methods using tethers with
strength limits that prevent exertion of an excessive force on the vertebral
members.” (Specification, ¶0001.) Figure 1 of the Specification is
reproduced below.

Figure 1 “is a schematic view of a tether attached to vertebral
members with anchors.” (Id. at ¶0006.) The embodiment of Figure 1 is
described in the following passage of the Specification:
Figure 1 illustrates a schematic representation of a
tethering system 10 that includes a tether 40 attached to
vertebral members 90 with anchors 20. The tether 40 applies a
tensile force to the vertebral members 90 to reduce and/or
eliminate the spinal deformity. The tether 40 includes a release
mechanism 30 that prevents the tether from exerting an
excessive amount of force that could cause damage to the
vertebral members 90. In one embodiment, the tethering system
10 is used on a patient with growth potential. The amount of
tensile force applied by the tether 40 increases during growth of
the vertebral members 90. The tether 40 is constructed to fail
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prior to exertion of a force that would damage the vertebral
members 90.

(Specification, ¶0018; emphasis added). “By way of example, the
release point may be at a tensile force of about 450N when a force
greater than this amount would damage the vertebral members 90.”
(Specification, ¶0040.) The “release mechanism comprises the tether
40 detaching or slipping at an anchor 20.” (Specification, ¶0027.)
Claims 1-3, 6, 7 and 13-16 are on appeal. Independent claims 1, 13
and 15, which are illustrative of the appealed subject matter, read as follows
(emphasis added):
1. A method of treating a spinal deformity comprising:
attaching a first anchor to a first vertebral member;
attaching a second anchor to a second vertebral member;
connecting a tether to the first and second anchors;
the tether being configured to apply a corrective force to
the vertebral members to treat the spinal deformity; and
the tether being configured to detach from the first
anchor upon reaching a tensile load limit to avoid damage to
the first and second vertebral members.

13. A method of treating a spinal deformity comprising:
attaching first and second anchors to a convex side of
vertebral members;
connecting a tether to the first and second anchors;
the tether being configured to apply a corrective force to
the convex side of the vertebral members that increases as the
vertebral members grow; and
the tether being configured to detach from the first
anchor and remain attached to the second anchor upon reaching
a strength limit of the tether and prior to the vertebral members
being damaged.

15. A method of treating a spinal deformity comprising:
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connecting a tether to a convex side of vertebral
members;
the tether being configured to apply a force to the convex
side of the vertebral members that increases as the vertebral
members grow; and
the tether being configured to detach from at least one of
the vertebral members to prevent the force from increasing
above a predetermined amount.

The claims stand rejected as follows:
I. Claims 1-3, 6, 7 and 13-16 under 35 U.S.C. §102(b) as being
anticipated by Braun et al. (US 2003/0088251A1, published May 8,
2003).
I.
Issue
The Examiner finds that “Braun provides examples of materials from
which the flexible tether may be made,” that “[t]hese materials are not
commonly understood by one of ordinary skill in the art to have unlimited
elasticity, and thus a flexible tether made from these materials would break
upon reaching some tensile load limit,” and that “[b]ecause the flexible
tether of Braun is positioned such that it circles the heads of the anchors…
and slides with respect to the heads of the anchors when the tether breaks, it
would „separate [or] disconnect‟ from the anchors.” (Ans. 8 -9; citations
omitted.)
The Examiner further contends that the Specification “equates
detaching with slipping or moving” and that “the Braun tether slides with
respect to the anchor.” Thus, “[e]very time the Braun tether slides with
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respect to the anchor, it disengages from the anchor,” such that “[w]hen it
stops sliding, it effectively reengages.” (Ans. 7-8.)
Appellant contends that Braun “discloses that the tether may be
flexible and can slide with respect to the head of the anchor” (App. Br. 5)
and that “[n]o reasonable construction of the term „detach‟ can include a
tether that slides but still remains attached to a head of an anchor” (App. Br.
6).
The issue presented is: Does the evidence of record support the
Examiner‟s findings that Braun discloses a tether configured to detach from
an anchor or vertebral members once a threshold amount of force has been
reached?
Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
FF1. The term “detach” means “to separate, usually without violence
or damage; disconnect.” (The American Heritage Dictionary, 359 (1980);
see also App. Br. 5.)
FF2. The term “detach” may also mean “to unfasten and separate,
disengage; disunite.” (The Random House Dictionary, 2011.)
FF3. The Specification discloses as follows:
Another release mechanism comprises the tether 40 detaching
or slipping at an anchor 20. The movement releases the tether
40 and prevents force applications above the strength limits.
The tether 40 may detach or move at one anchor 20, or more
than one anchor 20.
(Specification, ¶[0027].)
FF4. Braun Figure 18 is reproduced below:
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Figure 18 of Braun “is an anterior view illustrating the engagement of
the tether to the anchors while the compressive force on the anchors is
maintained through the anchor extensions.” (Braun, ¶[0021].) Elements of
the embodiment of Figure 18 are described in the following excerpt of
Braun:
As shown in FIG. 18, first compression device 70a can
then be removed. Tether 80 is advanced distally off of anchor
extensions 74a, 74b and onto the platforms of the heads of
anchors 130a, 130b. The attachment locations for tether 80 on
the heads of the anchors 130a, 130b are spaced farther apart
than anchor extensions 74a, 74b, causing tether 80 to further
stretch and apply the desired compressive force to anchors
130a, 130b when loaded thereon.
…
The use of a flexible tether 80 preserves multiple planes of
motion of the vertebrae without compromising the stabilization
effect. Further, flexible tether 80 can slide with respect to the
head of the anchor without compromising the stabilization
effect between motion segments. A flexible tether 80 also
produces less deleterious effects on spinal disc D since some
range of segmental motion is preserved. The non-rigid
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attachment of the tether to the anchor protects the anchor since
less forces are delivered to the anchor than would be delivered
with a rigid attachment.
(Braun, ¶¶ [0068] and [0070]; emphasis added.)
Principles of Law
“[U]nless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of the
limitations arranged or combined in the same way as recited in the claim, it
cannot be said to prove prior invention of the thing claimed and, thus, cannot
anticipate under 35 U.S.C. § 102. ” Net MoneyIN, Inc. v. Verisign, Inc.,
545 F.3d 1359, 1371 (Fed. Cir. 2008).
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000). However, a claim element cannot be
interpreted so broadly so as to read the limitation out of the claim. See Texas
Instr. Inc. v. United States Int’l Trade Comm’n, 988 F.2d 1165, 1171 (Fed.
Cir. 1993) (Claim language cannot be mere surplusage. An express
limitation cannot be read out of the claim).
Applicant must show in specification intent to re-define a term to act
as own lexicographer. “Without evidence in the patent specification of an
express intent to impart a novel meaning to a claim term, the term takes on
its ordinary meaning.” Optical Disc Corp. v. Del Mar Avionics, 208 F.3d
1324, 1334 (Fed. Cir. 2000).
Analysis
We agree with Appellant. The ordinary meaning of the term “detach”
refers to the separation or disengagement of elements. (FF1 and FF2; see
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also Ans. 7-8 and App. Br. 5.) We are not persuaded by the Examiner‟s
arguments that the Specification clearly re-defines the term “detach” to also
mean “slipping or moving.” (See FF3; Ans. 7.)
Having determined the scope of Appellant‟s claims, we do not agree
with the Examiner‟s findings that Braun describes an assembly configured
such that a tether separates from the anchor or vertebral member upon
reaching a certain force threshold. Rather, the disclosure of Braun is limited
to instances where the tether slides with respect to the head of the anchor.
(FF4; App. Br. 6.)
Conclusion of Law
We conclude that the preponderance of the evidence of record does
not support the Examiner‟s conclusion that that Braun discloses a method
meeting all of the limitations of claims 1, 13, 15 and dependent claims
thereto (claims 2-3, 6-7, 14 and 16).
SUMMARY
We reverse claims 1-3, 6, 7 and 13-16 under 35 U.S.C. §102(b) as
being anticipated by Braun.
REVERSED

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