Ex Parte CHAPUT et al

Patent Trial and Appeal Board

Sep 14, 2015

11684610 (P.T.A.B. Sep. 14, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/684,610 03/10/2007 CHRISTOPHER CHAPUT 50592-P003US 3155
61060 7590 09/15/2015
WINSTEAD PC
P.O. BOX 131851
DALLAS, TX 75313-1851
EXAMINER
ARAJ, MICHAEL J
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
09/15/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPHER CHAPUT and ROBERT J. JONES
____________

Appeal 2013-002699
Application 11/684,6101
Technology Center 3700
____________

Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
JAMES J. MAYBERRY, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Christopher Chaput and Robert J. Jones (Appellants) appeal under
35 U.S.C. § 134(a) from the Examiner’s final decision rejecting under
35 U.S.C. § 102(b) claims 1–9 and 11–22 as anticipated by Beaurain (US
2004/0243240 A1, pub. Dec. 2, 2004) and under 35 U.S.C. § 103(a) claim
10 as unpatentable over Beaurain. We have jurisdiction over this appeal
under 35 U.S.C. § 6(b).

1 According to Appellants, the real party in interest is SpineSmith
Partners, LP. Br. 2.
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SUMMARY OF DECISION
We AFFIRM-IN-PART.

INVENTION
Appellants’ invention relates to “artificial disc replacement and
related replacement procedures.” Spec. ¶ 36.
Claims 1, 8, and 15 are independent. Claims 1 and 8 are illustrative of
the claimed invention and read as follows:
1. A surgical implant configured to be inserted between two
vertebrae comprising:
a first member configured to be attachable to a first
vertebrae, the first member having a first concave surface;
a second member configured to be attachable to a second
vertebrae, the second member having a second concave surface;
a third member disposed between the first and second
members, the third member having first and second convex
surfaces configured to slidably engage the first and second
concave surfaces, respectively, wherein the first and second
convex surfaces are immovable with respect to each other; and
a protrusion extending from the second member at least
partially through the third member to restrict the movement of
the third member relative to the second member.

8. A surgical implant configured to be inserted between two
vertebrae comprising:
a first member, the first member having a recess formed
therein;
a second member, the second member having a post
extending from the second member, wherein the post extends
into the recess of the first member; and
a collar disposed between the post and the recess,
wherein the recess and the collar restrict movement of the first
member relative to the second member.

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ANALYSIS
Claims 1–7
The Examiner finds that Beaurain teaches a first member 3 having a
first concave surface 32, a second member 1 having a second concave
surface, and a third member 2 having a first convex surface 23 and a second
convex surface that are configured to slidably engage the first and second
concave surfaces, respectively. Final Act. 2. Thus, according to the
Examiner, side 20 and surface 21 of third member 2 form a convex surface
and side 112 and surface 12 of second member 1 form a concave surface that
are configured to slidingly engage. See Final Act. 5, Examiner’s annotated
Figure 1 of Beaurain.
Appellants argue that although Beaurain’s convex surface formed by
side 20 and surface 21 of third member 2 and the concave surface formed by
side 112 and surface 12 of second member 1 engage, “these surfaces do not
slide against one another.” Br. 6. According to Appellants, these surfaces
act as “an end stop that occurs simultaneous with the central stop (4)
touching a wall of the recess (22) of the nucleus (2).” Id. (citing Beaurain,
¶¶ 45–48).
Although we appreciate that a drawing teaches all that it reasonably
discloses and suggests to a person of ordinary skill in the art, we do not
agree with the Examiner’s finding that Beaurain teaches a convex2 surface

2 An ordinary and customary meaning of the term “convex” is “curved
or rounded outward like the exterior of a sphere or circle.” Merriam
Webster’s Collegiate Dictionary (10th ed. 1997).

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formed by side 20 and surface 21 of third member 2 and a concave3 surface
formed by side 112 and surface 12 of second member 1. See In re Aslanian,
590 F.2d 911, 914 (CCPA 1979). In this case, the surface formed by side 20
and surface 21 of third member 2 is inclined, rather than “curved or rounded
outward.” See Beaurain, Fig. 2. Similarly, the surface formed by side 112
and surface 12 of second member 1 is flat, rather than “hollowed or rounded
inward.” Id.
Furthermore, the surface formed by side 20 and surface 21 of third
member 2, which the Examiner describes as a “convex surface,” is part of
surface 21, which is described by Beaurain as a concave surface. See
Beaurain, ¶ 45 and Fig. 2. Similarly, the surface formed by side 112 and
surface 12 of second member 1, which the Examiner describes as a “concave
surface,” is part of surface 12, which is described by Beaurain as a convex
surface. Id.; see also Br. 5 (“[T]he lower second member is itself convex,
not concave.”). We could not find any portion of Beaurain and the
Examiner has not pointed to any portion that describes any area of either
surface 21 or 12 as anything else but a concave or a convex surface,
respectively. Accordingly, the Examiner’s finding contradicts the express
teachings of Beaurain.
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 102(b) of claims 1–7 as anticipated by Beaurain.

3 An ordinary and customary meaning of the term “concave” is
“hollowed or rounded inward like the inside of a bowl.” Id.
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Claims 8, 9, and 11–22
Appellants do not present arguments for the patentability of claims 9
and 11–22 apart from claim 8. See Br. 7–8. Therefore, in accordance with
37 C.F.R. § 41.37(c)(1)(iv) (2014), we select claim 8 as the representative
claim to decide the appeal of the rejection of these claims, with claims 9 and
11–22 standing or falling with claim 8.
The Examiner finds that Beaurain teaches a surgical implant including
a first member 2 having a recess 22 therein, a second member 1 having a
post 4 extending therefrom and into recess 22, and a collar 5 disposed
between post 4 and recess 22 such that “the recess and the collar restrict
movement of the first member relative to the second member by the incline
of the collar.” Final Act. 3 (citing Beaurain, ¶ 58, ll. 9–12); see also
Beaurain, Fig. 5.
Appellants argue that, “Beaurain lacks a collar as recited.” Br. 7.
According to Appellants, the claimed collar “permits a surgeon to adjust
articulation at a moment’s notice without the need of having available
multiple implants with varying post dimensions that each allow[s] different
articulation,” whereas “Beaurain does not teach such a collar.” Id.
We are not persuaded by Appellants’ arguments because “[w]here . . .
the claimed and prior art products are identical or substantially identical . . .
the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product.”
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote
omitted). Therefore, Appellants have the burden of establishing that those
features would not be present. In re Spada, 911 F.2d 705, 708 (Fed. Cir.
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1990) (“[W]hen the PTO shows sound basis for believing that the products
of the applicant and the prior art are the same, the applicant has the burden
of showing that they are not.”). In this case, the artificial disc construction
in Beaurain is similar to the claimed construction so that it would likewise
restrict movement between Beaurain’s members 1 and 2. We thus agree that
the Examiner is on solid ground in finding sufficient structural similarity to
conclude that Beaurain’s block 5 and recess 22 of member 2 would restrict
movement between member 1 relative to member 2, as called for by claim 8.
Moreover, we agree with the Examiner that independent claim 8 fails
to specify the movement that is being restricted. Ans. 7. Accordingly,
because Beaurain’s block 5 is positioned between recess 22 of member 2,
and member 1, and the degree of correction is based on the incline of block
5, we also agree with the Examiner that movement of member 2 relative to
member 1 is restricted by the incline of block 5. Id.; see also Beaurain,
¶¶ 53, 58. Finally, we are not persuaded by Appellants’ argument regarding
the advantages of the claimed collar because limitations not appearing in the
claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344,
1348 (CCPA 1982).
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 102(b) of claim 8, and claims 9 and 11–22 falling with
claim 8, as anticipated by Beaurain.

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Claim 10
Appellants rely on the arguments presented supra with respect to the
rejection of independent claim 8 in support for the patentability of claim 10,
which depends from claim 8. See Br. 8. Therefore, for the same reasons as
described above, we likewise sustain the rejection of claim 10 as
unpatentable over Beaurain.

SUMMARY
The Examiner’s decision to reject claims 1–22 is affirmed as to claims
8–22 and reversed as to claims 1–7.
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).

AFFIRMED-IN-PART

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