Ex Parte Boyd

Board of Patent Appeals and Interferences

Apr 1, 2010

10282666 (B.P.A.I. Apr. 1, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte LAWRENCE M. BOYD
__________

Appeal 2009-013341
Application 10/282,666
Technology Center 1600
__________

Decided: April 1, 2010
__________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to methods
for treatment of an intervertebral disc. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm-in-part.
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Statement of the Case
Background
“[T]ypically, disc degeneration and/or herniation is preceded by
degeneration of the vertebral endplates. Treatment of the disc degeneration
can proceed as outlined above - i.e., a discectomy followed by the
introduction of some form of scaffold into the intradiscal space” (Spec. 8, ll.
1-4). According to the Specification “where the scaffold is of the type
described above that seeks to restore normal disc function (at least as much
as possible), patency of the endplates is of critical concern” (Spec. 8, ll. 11-
13).
The Specification teaches that the “present invention contemplates a
method and system for addressing the diseased vertebral endplates in
anticipation of treatment for a degenerative or diseased intervertebral disc”
(Spec. 9, ll. 1-3).
The Claims
Claims 1-8, 10, 11, 17-19, and 21-25 are on appeal. We will focus on
claims 1, 19, and 22, which are representative and read as follows:
1. A method for the treatment of an intervertebral disc
prior to the introduction of a disc prosthesis or graft
comprising the steps of:
providing a fluent material including a decalcifying
agent capable of reacting with the endplate of a vertebra
adjacent the disc to decalcify the endplate;
removing at least a portion of the nucleus pulposus of
the intervertebral disc to expose at least a portion of the
endplate to the disc space; and
injecting the fluent treatment material into the disc
space to come into contact and react with the portion of the
endplate to prepare the portion of the endplate to
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accommodate a disc prosthesis or graft subsequently
introduced into the disc space.

19. The method for the treatment of an intervertebral disc
according to claim 1, wherein the step of injecting a fluent
treatment includes restricting the fluent treatment to a
substantially enclosed volume around a portion of the
endplate that is less than the entire exposed endplate.

22. The method for the treatment of an intervertebral disc
according to claim 21, wherein the step of injecting a fluent
treatment includes restricting the fluent treatment to a
substantially enclosed volume around a portion of the
exposed endplate.

The prior art
The Examiner relies on the following prior art references to show
unpatentability:
Felt et al. US 5,888,220 Mar. 30, 1999
Boyer II et al. US 2002/0120347 A1 Aug. 29, 2002

Stedman’s Medical Dictionary 87, 684 (22nd ed. 1972).

The Merck Index 3480 (11th ed. 1989).

Baogan et al., The relationship between cartilage end-plate calcification and
disc degeneration ** an experimental study, 114 CHINESE MEDICAL J. 308-
312 (2001).

The issues
A. The Examiner rejected claim 19 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement
(Ans. 6-8).
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B. The Examiner rejected claims 1-8, 10, 17-19, and 21-25 under 35
U.S.C. § 103(a) as being obvious over Felt, Stedman’s Medical Dictionary,
Baogan and Boyer II (Ans. 8-11).
C. The Examiner rejected claims 1-8, 10, 11, 17-19, and 21-25 under 35
U.S.C. § 103(a) as being obvious over Felt, Stedman’s Medical Dictionary,
Baogan, Boyer II, and Merck Index (Ans. 11-12).
D. The Examiner rejected claims 1-8, 10, 11, 17-18, and 21-25 on the
ground of nonstatutory obviousness type double patenting over claims 1-4
and 17-18 of U.S. Patent 7,004,945, Baogan, Boyer II, and Merck Index
(Ans. 12-16).
E. The Examiner provisionally rejected claims 1-8, 10, 11, 17-18, and
21-25 on the ground of nonstatutory obviousness type double patenting over
claims 37-39, 45-47, 52, 53, and 92 of U.S. Patent Application 10/667,540,
Baogan, Boyer II, and Merck Index (Ans. 12-16).
F. The Examiner provisionally rejected claims 1-8, 10, 11, 17-18, and
21-25 on the ground of nonstatutory obviousness type double patenting over
claims 1, 4, 5, and 14 of U.S. Patent Application 11/169,405, Baogan, Boyer
II, and Merck Index (Ans. 12-16).
G. The Examiner provisionally1 rejected claims 1-8, 10, 11, 17-18, and
21-25 on the ground of nonstatutory obviousness type double patenting over
claims 1, 4, 6, 8, 21, 30-32, 45, and 46 of U.S. Patent Application
11/170,382, Baogan, Boyer II, and Merck Index (Ans. 12-16).

1 This rejection is no longer provisional, since U.S. Patent
Application 11/170,382 has now issued as U.S. Patent 7,556,650.
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H. The Examiner provisionally rejected claims 1-8, 10, 11, 17-18, and
21-25 on the ground of nonstatutory obviousness type double patenting over
claims 1, 4, 5, and 28-30 of U.S. Patent Application 11/170,577, Baogan,
Boyer II, and Merck Index (Ans. 12-16).
I. The Examiner provisionally rejected claims 1-6, 10, 11, 17-18, and
21-25 on the ground of nonstatutory obviousness type double patenting over
claims 21, 27, 29-32 of U.S. Patent Application 11/049,820, Baogan, Boyer
II, and Merck Index (Ans. 13-16).

A. 35 U.S.C. § 112, first paragraph, New Matter
The Examiner finds that “claim 19 has been amended such that it
currently requires fluent treatment material to be injected in a manner that
results in restriction of the fluent material ‘to a substantially enclosed
volume around a portion of the endplate that is less than the entire exposed
endplate’” (Ans. 6). The Examiner finds that this “remains a concept that is
not adequately supported by the specification as originally filed” (id.).
Appellant argues that “FIG. 7 illustrates one embodiment of the
invention sought to be protected by claim 19. In this embodiment, a cruciate
shaped tip 30 ‘provides means for focused treatment of the endplates’”
(App. Br. 11). Appellant argues that the “legs 38 of the tip 30 are described
as operating as ‘a dam to contain the treatment fluid and prevent the fluid
from contacting portions of the endplates that are otherwise acceptable.’”
(Id.) Appellant argues that
the figures and drawings show the step of restricting fluent
treatment to a limited volume around a limited portion of the
endplate that is less than the entirety. The rejection seeks to
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add a new limitation, namely that the restriction is limited to
only parts of the endplate requiring treatment. The language
of claims 1 and 19 do not include this limitation.

(App. Br. 12.)
In view of these conflicting positions, we frame the new matter issue
before us as follows:
Does the evidence of record support the Examiner’s conclusion that
Claim 19 fails to comply with the written description requirement as
incorporating new matter?
Findings of Fact (FF)
1. Claim 19 requires that in the “treatment of an intervertebral
disc,” the injected fluent treatment is restricted “to a substantially enclosed
volume around a portion of an endplate that is less than the entire exposed
endplate” (see Claim 19).
2. The Specification teaches that “unlike the prior embodiment,
the tip 30 of FIGS. 7, 8 provides means for focused treatment of the
endplates. Thus, the legs 38 serve to create an essentially sealed area
between the legs and the central body 34” (Spec. 24).
3. The Specification teaches that “fluid dispersed from the
openings 36 will be exposed to only a specific portion of the vertebral
endplates” (id.).
4. The Specification teaches that this “approach is especially
useful when it is determined that only discrete portions of the endplates are
diseased or damaged to a point that requires pre-treatment” (id.).
5. Figure 7 of the Specification is reproduced below:
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“FIG. 7 is an A-P view of a disc space with a cannulated distractor, shown
in cross-section . . . that provides for concentrated treatment of the vertebral
endplates” (Spec. 12).
6. The Specification teaches that “the openings 36 provide a fluid
path to discrete portions of the opposite endplates. Alternatively, the
openings can be concentrated to one side so that the fluid treatment is
applied to a portion of only one endplate” (Spec. 24).
Principles of Law
It is the Examiner's “initial burden [to] present [ ] evidence or reasons
why persons skilled in the art would not recognize in the disclosure a
description of the invention defined by the claims.” In re Wertheim, 541
F.2d 257, 263 (CCPA 1976).
To satisfy the written description requirement, the inventor must
“convey with reasonable clarity to those skilled in the art that, as of the filing
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date sought, he or she was in possession of the invention.” Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). “One shows that one is
‘in possession’ of the invention by describing the invention, with all its
claimed limitations.” Lockwood v. American Airlines, Inc., 107 F.3d 1565,
1572 (Fed. Cir. 1997).
“Although [the inventor] does not have to describe exactly the subject
matter claimed … the description must clearly allow persons of ordinary
skill in the art to recognize that [the inventor] invented what is claimed.” In
re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989).
Analysis
The Examiner finds that the “manner in which present claim 19 has
been amended broadens the scope of the claim to allow for the restriction of
the fluent treatment material to any portion (i.e., understood to be any
portion of the exposed endplate) of the exposed endplate” (Ans. 7). The
Examiner finds that the “previously presented claim was limited to that same
portion of the endplate that had been exposed and treated in independent
claim 1” (id.).
We do not agree with the Examiner that Claim 19 represents new
matter. The amendment2 to Claim 19 to restrict the fluent treatment to a
portion of the “endplate that is less than the entire” exposed endplate is fully
supported by the Specification.
The Specification states that that “fluid dispersed from the openings
36 will be exposed to only a specific portion of the vertebral endplates”
(Spec. 24; FF 3). The Specification recognizes that this “approach is

2 The Amendment was submitted March 12, 2007.
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especially useful when it is determined that only discrete portions of the
endplates are diseased or damaged to a point that requires pre-treatment”
(Spec. 24; FF 4).
These teachings of the Specification represent express support for
treating only discrete portions of the exposed endplate which are less than
the entire exposed endplate. The Specification recognizes the difference
between the embodiment where the entire exposed endplate is treated and
the embodiment of Figure 7, noting that “unlike the prior embodiment, the
tip 30 of FIGS. 7, 8 provides means for focused treatment of the endplates.
Thus, the legs 38 serve to create an essentially sealed area between the legs
and the central body 34” (Spec. 24; FF 2).
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Claim 19 fails to comply with the written description requirement as
incorporating new matter.

B.-D, F.-I. 35 U.S.C. § 103(a) obviousness and obviousness type
double patenting rejections
The Examiner relies upon Felt or the claims of the cited patents and
patent applications to teach disc repair surgery (see, e.g., Ans. 8). The
Examiner concludes that
based on the disclosure of Baogan et al, relating the negative
effects of calcification on disc health, it is submitted that it
would have been obvious to one of ordinary skill in the art
to apply the demineralization techniques of Boyer II et al to
remove or reduce the calcification of the vertebral end-
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plates, prior to introduction of an intervertebral disc
prosthesis material, as in the method of Felt

(Ans. 10).
Appellant argues that “there is no apparent reason to combine each of
these references in the manner set forth in the rejection. Applicant further
contends that even if the references are combined they fail to disclose every
limitation of the rejected claims” (App. Br. 13). Appellant argues that Felt
“did not exhibit any concern over the condition of the vertebral endplates,
and did not suggest that the condition of the endplates may have any bearing
on the subsequently introduced prosthesis. The authors of the Boagan [sic]
reference did not suggest any treatments for a calcified endplate” (App. Br.
19).
Appellant also argues that “[i]t is unreasonable to suggest that anyone
would introduce a hazardous acidic decalcifying agent into a living being.
Certainly a person of ordinary skill in this art - a physician or surgeon -
would never contemplate implementing the demineralization procedures
disclosed in Boyer in a living patient” (App. Br. 20).
In view of these conflicting positions, we frame the obviousness
issues before us as follows:
(i) Does the evidence of record support the Examiner’s conclusion
that it would have been obvious to “inject[] the fluent treatment material into
the disc space” where the fluent material includes a decalcifying agent as
required by Claim 1?
(ii) Does the evidence of record support the Examiner’s conclusion
that it would have been obvious to “restricting the fluent treatment to a
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substantially enclosed volume around a portion of the exposed endplate” as
required by Claim 22?

Findings of Fact
7. Felt teaches a method “for repairing diarthroidal and
amphiarthroidal joints by minimally invasive means” (Felt, col. 4, ll. 14-16).
8. Felt teaches that a “discectomy (i.e., removal of some or all of
the nucleus pulposis, leaving an outer annular shell) is performed, with
optional distraction and repair of the annulus, in order to remove the
destroyed nucleus material while providing an intact annular shell” (Felt,
col. 4, ll. 59-63).
9. Felt teaches that a “useful balloon apparatus will include the
balloon itself, together with a delivery catheter . . . and fluid or gas pressure
means” (Felt, col. 6, ll. 9-12).
10. Felt teaches that after distraction of the intervertebral disc
space, the “desired quantity of the curable biomaterial is delivered by
minimally invasive means to the prepared site” (Felt, col. 10, ll. 12-21).
11. Baogan teaches that “there exists a positive correlation between
the thickness of the calcified layer of the cartilage end-plate and the degree
of the cervical disc degeneration” (Baogan 311, col. 2).
12. Baogan teaches that “calcification of the cartilage end-plate is a
key initiating factor of disc degeneration” (Baogan 311, col. 2).

13. Boyer teaches that:
Demineralization of cortical, cancellous, and
corticocancellous bone of autograft, allograft, and xenograft
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types is known. In one form, bone powder or chips are
chemically processed using an acid such as hydrochloric
acid, chelating agents, electrolysis or other treatments. The
demineralization treatment removes the minerals contained
in the natural bone, leaving collagen fibers with bone growth
factors including bone morphogenic protein (BMP).

(Boyer 1 ¶ 0008; emphasis added.)
14. Claim 1 of U.S. Patent 7,004,945 is reproduced below:
Claim 1. A method for injecting a fluent material into a
disc space comprising the steps of:
creating a portal in the annulus fibrosis in
communication with the intradiscal space;
impacting a cannulated distractor into the portal, the
distractor configured to distract the vertebrae adjacent the
intradiscal space and to establish a disc space height
between the adjacent vertebrae; and
introducing the fluent material into the intradiscal
space through a lumen of the cannulated distractor while the
distractor maintains the established disc space height.

(Claim 1, U.S. Patent 7,004, 945.)
15. Claim 1 of U.S. Patent Application 11/169,405 is reproduced
below:
Claim 1. A method for treating a herniated spinal disc
between opposing vertebral bodies having a damaged outer
annulus and an inner nucleus pulposus, comprising the steps
of:
providing a curable biomaterial that upon curing has
properties that emulate the properties of a natural nucleus
pulposus;
providing access to the nucleus pulposus through the
annulus;
removing at least a portion of the nucleus pulposus to
create an intradiscal space;
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applying a first distraction force on said opposing
vertebral bodies from within said intradiscal space;
applying a second distraction force on said opposing
vertebral bodies externally of said intradiscal space;
introducing said curable biomaterial through said
annulus access directly into said intradiscal space, and
maintaining said second distraction force until said
biomaterial is substantially cured.

(Claim 1, U.S. Patent Application 11/169,405, Amdt. 8/20/09.)
16. Claim 1 of U.S. Patent 7,556,650 is reproduced below:
Claim 1. A method for treating a diseased or damaged
intervertebral spinal disc having an inner nucleus pulposus
and an outer annulus, comprising the steps of:
providing access to the nucleus pulposus through the
annulus;
removing at least a portion of said nucleus pulposus to
create an intradiscal space;
determining the integrity of said annulus by sealably
injecting a fluid under pressure directly into the intradiscal
space; and then
sealably introducing under pressure a curable
biomaterial, different from said fluid under pressure, through
said annulus access directly into said intradiscal space.

(Claim 1, U.S. Patent 7,556,650.)
17. Claim 1 of U.S. Patent Application 11/170,577 is reproduced
below:
Claim 1. A method of treating a diseased or damaged
spinal disc having an inner nucleus pulposus and an outer
annulus, comprising the steps of:
providing access to the nucleus pulposus through the
annulus;
removing at least a portion of said nucleus pulposus to
create an intradiscal space;
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determining the size of said intradiscal space by
substantially filling said intradiscal space with a fluid
solution, removing said solution and measuring the volume
of the removed solution; and then
sealably introducing under pressure a quantity of a
curable biomaterial, different from said fluid solution,
through said annulus directly into said intradiscal space, said
quantity based on said determining step.

(Claim 1, U.S. Patent Application 11/170,577, Amdt. 9/21/09.)

Principles of Law
“Often, it will be necessary . . . to look to interrelated teachings of
multiple [references] . . . and the background knowledge possessed by a
person having ordinary skill in the art, all in order to determine whether
there was an apparent reason to combine the known elements in the fashion
claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “[T]his
analysis should be made explicit,” and it “can be important to identify a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does.”
Id.
An obviousness “analysis need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” Id.
In assessing a claim’s obviousness, “a court must ask whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id. at 417. “The combination of familiar
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elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” Id. at 416.
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference,
or would be led in a direction divergent from the path that
was taken by the applicant. The degree of teaching away
will of course depend on the particular facts; in general, a
reference will teach away if it suggests that the line of
development flowing from the reference’s disclosure is
unlikely to be productive of the result sought by the
applicant.

In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
“[A] reference may teach away from a use when that use would render
the result inoperable.” In re ICON Health and Fitness, Inc., 496 F.3d 1374,
1381 (Fed. Cir. 2007).
Analysis
Claim 1
Claim 1 is drawn to a method of treating an intervertebral disc by
removal of the nucleus pulposus to expose a disc endplate and injecting a
fluent material including a decalcifying agent to contact the endplate prior to
introduction of a disc prosthesis or graft.
The Examiner found that Felt and the claims of the cited patents and
patent applications teach removal of the nucleus pulposus, exposure of an
endplate, and grafting material onto the endplate, with the difference that
Felt and the claims of the cited patents and patent applications do not teach
the use or injection of a decalcifying agent (Ans. 8, 13). However, the
Examiner found that Baogan taught that “with age, the normally
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cartilaginous vertebral end-plates undergo calcification, followed by
resorption and replacement by bone. This calcification and subsequent bone
formation causes a thickening of the end-plates, impeding the passage of
nutrients from blood to the disc” (id. at 9). The Examiner also found that
Boyer taught “[m]eans of decalcifying mineralized bone” (id.).
The Examiner determined that persons of ordinary skill in the art
would have had reason to apply Boyer’s technique to discs exposed during
the disc surgery of Felt and the claims of the cited patents and patent
applications for two reasons: (1) “to reduce calcification on the vertebral
end-plates for the predictable result of restoring, or at least improving,
passage of nutrients from the blood to the disc through the end-plates” (id. at
10) and (2) “demineralization of the end-plates would further expose
collagen fibers in the vertebrae and expose BMPs (per teaching of Boyer II
et al), both of which would enhance incorporation of the prosthesis
subsequently introduced into the intervertebral space” (id. at 10).
Appellant argues that “there is no apparent reason to combine each of
these references in the manner set forth in the rejection. Applicant further
contends that even if the references are combined they fail to disclose every
limitation of the rejected claims” (App. Br. 13). Appellant argues that Felt
“did not exhibit any concern over the condition of the vertebral endplates,
and did not suggest that the condition of the endplates may have any bearing
on the subsequently introduced prosthesis. The authors of the Boagan [sic]
reference did not suggest any treatments for a calcified endplate” (App. Br.
19). Appellant argues that the “Boagan [sic] does not disclose or suggest
that anything other than the known treatments is acceptable for a disc that
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has degenerated due to endplate calcification” (id. at 17). Appellant argues
that “none of the art of record discloses an in situ chemical or fluent
treatment of the disc endplates” (id. at 17-18).
In making an obviousness determination, the Examiner is not required
to identify explicit teachings in the prior art that would have led persons of
ordinary skill in the art to the claimed subject matter. KSR, 550 U.S. at 418.
Rather, as long as the Examiner provides a plausible reason as to why the
skilled worker would have been prompted to have made the claimed
invention, his burden is met. Id.
In this case, although Felt and the claims of the cited patents and
patent applications made no mention of the use of decalcifying agents to
improve nutrient passage to the disc and to improve the incorporation of the
prosthesis, the Examiner properly took “account of the inferences and
creative steps that a person of ordinary skill in the art would employ,” and
reasoned that the skilled worker would have found it obvious to apply
Boyer’s technique of decalcifying to the disc surgery of Felt and the claims
of the cited patents and patent applications (see Ans. 10). The Examiner’s
determination is supported by evidence because Baogan explicitly teaches
that “calcification of the cartilage end-plate is a key initiating factor of disc
degeneration” (Baogan 311, col. 2; FF 12). Further, Boyer teaches means to
demineralize bone for purposes of grafting (FF 13). Persons of ordinary
skill in the art therefore would have reasonably extrapolated Boyer’s
teaching to address the calcification concerns raised by Baogan and to
improve the grafting desired by Felt and the claims of the cited patents and
patent applications.
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Appellant also argues that “[i]t is unreasonable to suggest that anyone
would introduce a hazardous acidic decalcifying agent into a living being.
Certainly a person of ordinary skill in this art - a physician or surgeon -
would never contemplate implementing the demineralization procedures
disclosed in Boyer in a living patient” (App. Br. 20).
However, Boyer teaches that decalcification can be performed using
chelating agents (FF 13) which do not pose the hazards of hydrochloric acid.
As the Examiner noted, Boyer “contemplates use of known chelating agents
for demineralization of bone” (Ans. 19).
Claim 22
While the Examiner withdrew the obviousness rejections over Claim
19 (see Ans. 5, 21), the Examiner did not withdraw the obviousness
rejections over Claim 22, which contains the identical limitations of Claim
19, but depends from Claim 21.
Appellant argues that “[n]o excerpt from the applied combination of
references was cited as showing, suggesting or rendering inherent restricting
the fluent treatment in the manner recited in claims 19 and 22” (App. Br.
25).
The Examiner notes that “claim 19 requires that the fluent treatment
be limited to a portion of the endplate ‘that is less than the entire exposed
end-plate’” and that “claim 22 fails to recite such a limitation” (Ans. 21).
The Examiner interprets Claim 22 to only require “restriction of the fluent
treatment to a substantially enclosed volume around ‘a portion of the
exposed endplate’” (Ans. 21).
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We think that Appellant has the better position. While Claim 22 is
undoubtedly broader than Claim 19, Claim 22 still requires restricting the
fluent treatment to a substantially enclosed volume, a limitation for which
the Examiner has identified no teaching or suggestion in the prior art. Even
if we accept the Examiner’s interpretation that “a portion” of the endplate
encompasses the entire endplate, Claim 22 is reasonably interpreted to
require that the fluid is restricted from touching the surrounding tissue, a
requirement not found in Claim 21, from which Claim 22 depends. The
Examiner does not identify teachings or suggestion to restrict the fluent
treatment in any way whatsoever.

Conclusion of Law
The evidence of record supports the Examiner’s conclusion that it
would have been obvious to “inject[] the fluent treatment material into the
disc space” where the fluent material includes a decalcifying agent as
required by Claim 1?
The evidence of record does not support the Examiner’s conclusion
that it would have been obvious to “restricting the fluent treatment to a
substantially enclosed volume around a portion of the exposed endplate” as
required by Claim 22?

E. Obviousness-type double patenting rejection
The Examiner provisionally rejected claims 1-8, 10, 11, 17-18, and
21-25 on the ground of nonstatutory obviousness type double patenting over
claims 37-39, 45-47, 52, 53, and 92 of U.S. Patent Application 10/667,540,
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Baogan, Boyer II, and Merck Index (Ans. 12-16). This rejection is now
moot, since claims 37-39, 45-47, 52, 53, and 92 of U.S. Patent Application
10/667,540 (now U.S. Patent 7,575,577) were canceled prior to issuance.

SUMMARY
In summary, we reverse the rejection of claim 19 under 35 U.S.C. §
112, first paragraph.
We affirm the rejections of:
claims 1-8, 10, 17-19, 21, and 23-25 under 35 U.S.C. § 103(a)
as being obvious over Felt, Stedman’s Medical Dictionary, Baogan and
Boyer II,
claims 1-8, 10, 11, 17-19, 21, and 23-25 under 35 U.S.C. §
103(a) as being obvious over Felt, Stedman’s Medical Dictionary, Baogan,
Boyer II, and Merck Index,
claims 1-8, 10, 11, 17-18, 21, and 23-25 on the ground of
nonstatutory obviousness type double patenting over claims 1-4 and 17-18
of U.S. Patent 7,004,945, Baogan, Boyer II, and Merck Index,
claims 1-8, 10, 11, 17-18, 21, and 23-25 on the ground of
nonstatutory obviousness type double patenting over claims 1, 4, 5, and 14
of U.S. Patent Application 11/169,405, Baogan, Boyer II, and Merck Index,
claims 1-8, 10, 11, 17-18, 21, and 23-25 on the ground of
nonstatutory obviousness type double patenting over claims 1, 4, 6, 8, 21,
30-32, 45, and 46 of U.S. Patent Application 11/170,382, Baogan, Boyer II,
and Merck Index,
Appeal 2009-013341
Application 10/282,666

21
claims 1-8, 10, 11, 17-18, 21, and 23-25 on the ground of
nonstatutory obviousness type double patenting over claims 1, 4, 5, and 28-
30 of U.S. Patent Application 11/170,577, Baogan, Boyer II, and Merck
Index, and
claims 1-6, 10, 11, 17-18, and 21, and 23-25 on the ground of
nonstatutory obviousness type double patenting over claims 21, 27, 29-32 of
U.S. Patent Application 11/049,820, Baogan, Boyer II, and Merck Index.

We reverse the rejection of claim 22
under 35 U.S.C. § 103(a) as being obvious over Felt, Stedman’s
Medical Dictionary, Baogan and Boyer II,
under 35 U.S.C. § 103(a) as being obvious over Felt, Stedman’s
Medical Dictionary, Baogan, Boyer II, and Merck Index,
on the ground of nonstatutory obviousness type double
patenting over claims 1-4 and 17-18 of U.S. Patent 7,004,945, Baogan,
Boyer II, and Merck Index,
on the ground of nonstatutory obviousness type double
patenting over claims 1, 4, 5, and 14 of U.S. Patent Application 11/169,405,
Baogan, Boyer II, and Merck Index,
on the ground of nonstatutory obviousness type double
patenting over claims 1, 4, 6, 8, 21, 30-32, 45, and 46 of U.S. Patent
Application 11/170,382, Baogan, Boyer II, and Merck Index,
on the ground of nonstatutory obviousness type double
patenting over claims 1, 4, 5, and 28-30 of U.S. Patent Application
11/170,577, Baogan, Boyer II, and Merck Index, and
Appeal 2009-013341
Application 10/282,666

22
on the ground of nonstatutory obviousness type double
patenting over claims 21, 27, 29-32 of U.S. Patent Application 11/049,820,
Baogan, Boyer II, and Merck Index.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).

AFFIRMED-IN-PART

cdc

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