10163480 (B.P.A.I. Aug. 20, 2009)

Ex Parte Bonutti

Board of Patent Appeals and InterferencesAug 20, 2009

10163480 (B.P.A.I. Aug. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte PETER M. BONUTTI ____________________ Appeal 2009-002347 Application 10/163,480 Technology Center 3700 ____________________ Decided: August 20, 2009 ____________________ Before WILLIAM F. PATE, III, STEFAN STAICOVICI, and KEN B. BARRETT, Administrative Patent Judges. BARRETT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Peter M. Bonutti (Appellant) seeks our review under 35 U.S.C. § 134 of the rejection of claims 1, 53, 56, 59, 60, 63, 64, 66, 68, 70, 71, 88, and 89. No other claims are pending. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on August 13, 2009. Appeal 2009-002347 Application 10/163,480 2 SUMMARY OF THE DECISION We REVERSE. THE INVENTION Appellant’s claimed invention pertains to a method of changing the spatial relationship between two bones by inserting a wedge in the joint interconnecting the two bones. Spec. 2, l. 23 – 3, l. 9. Claim 1, reproduced below with paragraphing added, is representative of the subject matter on appeal. 1. A method of changing a spatial relationship between first and second bones which are interconnected at a joint in a patient’s body, said method comprising the steps of providing a rigid wedge member having a concave bone- contacting surface, forming an opening in a portion of the patient’s body to expose the joint interconnecting the first and second bones, moving the second bone relative to the first bone, said step of moving the second bone relative to the first bone includes expanding at least a portion of the joint interconnecting the first and second bones by inserting the wedge member in the joint and applying force against at least one of the first and second bones with the concave bone- contacting surface of the wedge member, closing the opening in the patient’s body with at least a portion of the wedge member disposed between the first and second bones at the joint interconnecting the first and second bones, and, thereafter, transmitting force between the first and second bones through the wedge member to maintain the joint in the expanded condition. Appeal 2009-002347 Application 10/163,480 3 THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Zucherman US 5,836,948 Nov. 17, 1998 (filed Jan. 2, 1997) MERRIAM-WEBSTER ONLINE DICTIONARY (2006), definition of joint Before us for review is the Examiner’s rejection of claims 1, 53, 56, 59, 60, 63, 64, 66, 68, 70, 71, 88, and 89 under 35 U.S.C. § 102(e) as anticipated by Zucherman. ISSUE Appellant contends that Zucherman fails to disclose inserting a wedge member in a joint. App. Br. 7. Specifically, Appellant contends that Zucherman teaches positioning an implant between two spinous processes, which, according to Appellant, is next to but not in the intervertebral joint. Id. The Examiner responds that one of ordinary skill would consider the space between two adjacent spinous processes as being a part of a joint. Ans. 3-4. Therefore, the issue on appeal is: Has Appellant shown that the Examiner erred in finding that Zucherman discloses inserting a wedge in a joint? ANALYSIS Independent claim 1 recites “expanding at least a portion of the joint interconnecting the first and second bones by inserting the wedge member in the joint.” Independent claims 60 and 88 similarly require “inserting the Appeal 2009-002347 Application 10/163,480 4 implant into a joint” and “inserting the implantable device into the joint,” respectively. Zucherman discloses positioning an implant between the spinous processes of adjacent vertebrae. Zucherman, col. 1, ll. 28-33; col. 5, ll. 2-11; fig. 9. The Examiner relies on definitions from a general dictionary, Merriam-Webster Online, as support for the proposition that one of ordinary skill in the art would consider the space between spinous processes as being part of a joint. Ans. 3-4. While a general-usage dictionary can be helpful in understanding claim language, a general dictionary “cannot overcome art-specific evidence of the meaning of a claim term.” Phillips v. AWH Corp., 415 F.3d 1303, 1318, 1322 (Fed. Cir. 2005) (citations and internal quotations omitted). Appellant contends that skilled artisans would not consider the space between two adjacent spinous processes to be a “joint,” and directs our attention to three medically-related documents. Reply Br. 5-6; see also App. Br. 8. Appellant’s submitted documents indicate that, in the medical field, the intervertebral joint is called a three-joint complex because it articulates in three places. See App. Br. 8 (quoting from the three documents). The space between spinous processes is not identified as a joint in those documents because it is not the place of union between two or more bones. See STEDMAN’S MEDICAL DICTIONARY (27th ed. 2000) (definition of “joint”). On the record before us, we cannot conclude that one of ordinary skill in the art would construe the claimed “joint” so broadly as to encompass the space between adjacent spinous processes. Thus, we cannot find by a preponderance of the evidence that Zucherman discloses inserting a wedge in a joint. Accordingly, we are constrained to reverse the rejection of Appeal 2009-002347 Application 10/163,480 5 independent claims 1, 60, and 88, as well as the rejection of dependent claims 53, 56, 59, 63, 64, 66, 68, 70, 71, and 89. CONCLUSION Appellant has shown that the Examiner erred in finding that Zucherman discloses inserting a wedge in a joint. DECISION The decision of the Examiner to reject claims 1, 53, 56, 59, 60, 63, 64, 66, 68, 70, 71, 88, and 89 is reversed. REVERSED Appeal 2009-002347 Application 10/163,480 6 LV PAUL D. BIANCO Fleit Gibbons Gutman Bongini & Bianco PL 21355 EAST DIXIE HIGHWAY SUITE 115 MIAMI, FL 33180