Ex Parte CHATAIGNER et al

Patent Trial and Appeal Board

Sep 27, 2018

14721818 (P.T.A.B. Sep. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/721,818 05/26/2015
104326 7590 10/01/2018
Schwegman Lundberg & Woessner/ Zimmer
P.O. Box 2938
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Herve CHATAIGNER
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.
4394.006US3 5129
EXAMINER
JOHANAS, JACQUELINE T
ART UNIT PAPER NUMBER
3733
NOTIFICATION DATE DELIVERY MODE
10/01/2018 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):
SLW@blackhillsip.com
USPTO@slwip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LDR MEDICAL 1
Appeal2017-008933
Application 14/721,818
Technology Center 3700
Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
RYAN H. FLAX, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims to a system for treatment of and a method for treating a spine. 2 The
Examiner's rejections of claims 37--40, 44--50, 54, and 55 under 35 U.S.C.
§§ 102 and 103 are appealed. 3 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The named inventors are identified as Herve Chataigner, Craig Chebuhar,
Herve Din ville, and Emmanuel Bougere. See BIB Data Sheet of record.
2 We herein refer to the Specification of May 26, 2015 ("Spec."); Final
Office Action Feb. 1, 2016 ("Final Action"); Appeal Brief of Aug. 2, 2016
("Appeal Br."); Examiner's Answer of Mar. 30, 2017 ("Answer"); and
Reply Brief of May 30, 3017 ("Reply Br.").
3 A rejection of claims 50 and 55 for indefiniteness was withdrawn.
Advisory Action dated June 1, 2016.
Appeal2017-008933
Application 14/721,818
STATEMENT OF THE CASE
The Specification states:
The invention simultaneously concerns three groups of objects:
- anchoring devices (1) ( or "anchors"), and/or anchoring
systems comprising plural anchoring devices ( 1) that may be
identical, different, or complementary;
- intervertebral implants (2) configured for receiving one
or more of such anchoring devices (1) or systems, including but
not limited to interbody cages configured for an implantation
through the posterior or transforaminal pathway; and
- instruments (3, 4, 5) for implanting implants (2) between
the vertebrae and fixing implants with one or more anchoring
devices ( 1) or anchoring systems.
Spec. ,r 17.
Illustrative examples of these three objects are provided by the Specification
at Figures IB, IC, 7C, and 8A-8C. Figures IB and IC are reproduced
below:
25
21
25
Figure 1 B
l"
Figure 1C
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Application 14/721,818
The Specification explains Figure lB shows an intervertebral implant 2 with
a passage 21 for an anchoring device 1 ; the passage 21 is shown extending
from a periphery sidewall at the posterior (rear) of the implant 2 to upper
and lower surfaces of the implant 2 and having two anchors 1 passing
therethrough. Spec. ,r 50. The upper and lower surfaces of the implant 2 are
shown to have notches 22 for securing the implant between vertebrae. Id.
,r 59. The Specification explains Figure 1 C shows an anchor 1 having a
body with a curved plate 10 along a longitudinal axis L, designed to
penetrate into a vertebra at its anterior end. Spec. ,r 19. The anchor 1 is
designed to be inserted through a passage 21 of the implant. Id. ,r 20.
Retaining stops 14, 140 arrest penetration into a vertebra once pressed
against a surface 25 of the implant 2. Id. Stops 15, 150 are also provided on
the anchor to retain it within the implant 2. Id. ,r 21. Notches 16 are also
shown, which oppose withdrawal for the anchor once implanted in a
vertebra. Id. ,r 44.
Figure 7C is reproduced below:
Figure 7C
3, /1
34 300
The Specification explains Figure 7C shows a holder 3, which is a part of the
instrumentation used to insert the implant 2 between vertebrae and guide the
anchor 1 into the implant and drive the anchor 1 into a vertebrae. Spec.
,r 71. The holder 3 has a body 300, shown as a generally planar and gently
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Application 14/721,818
pointed guiding surface 30 between two thicker plates 34. Id. ,r 71, 77. The
holder 3 also has a slot between part of the guide surface 30 and one of the
plates (34, but not marked) that is shaped to hold an anchor 1, positioned for
inserting into an implant 2. Id. ,r 78.
Figures 8A-8C are reproduced below:
Figure 88
Figure 8C
The Specification explains Figures 8A-8C show the holder 3 with the
anchor 1 provided with an impactor 4 and a guide 5, which are shown as two
generally rod-shaped instruments configured to fit together to form a single
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Application 14/721,818
instrument. Spec. ,r 71. The impactor 4 has a head 40 that receives the
holder 3; from the head 40 extend two arms 401, 402 that are configured to
extend on either side of the holder 3 to allow them to push the anchor 1 held
on the slot 30 of the holder 3. Id. The guide 5 is configured to hold the
implant 2. When the impactor 4 and guide 5, respectively supporting the
holder 3 and implant 2, are put together, the anchor 1 can be pushed via the
impactor 4 and inserted through the implant 2 and into a vertebrae. Id. ,r 71-
72.
Independent claim 37, reproduced below, is representative:
37. A system for treatment of a spine comprising:
an intervertebral implant comprising
and
a first vertebral endplate contact surface,
a second vertebral endplate contact surf ace,
a side surface extending between an edge of the first
vertebral endplate contact surface and an edge of the
second vertebral end plate contact surface,
a first passage extending from an opening on the side
surface toward the first vertebral endplate contact surface,
a first insertion stop surface proximate to the first passage,
a first withdrawal stop surface proximate to the first
passage;
an anchor having a tip, a tail, and a longitudinal axis extending
between the tip and the tail, the anchor comprising
an elongated anchor plate that is curved along a
longitudinal axis of the anchor and that has a width
transverse to the longitudinal axis of the anchor,
a second insertion stop surface oriented angularly to the
longitudinal axis of the anchor, and
a second withdrawal stop surface; and
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Application 14/721,818
instrumentation adapted and configured for insertion of the
implant into an intervertebral space, for insertion of the
anchor in the implant, and for fixation of the implant to the
first vertebral endplate, the instrumentation comprising
a holder for the anchor comprising a first support plate having
a first surface, a second support plate having a second surf
ace facing the first surf ace and separated from the first
surface by a gap, a body extending between the first and
second surfaces across the gap, and a guide slot formed in
the body that corresponds to the curvature of the anchor
plate, and
an impactor having first and second arms spaced apart to
receive the body.
Appeal Br. 23 (Claims Appendix) ( emphasis added to highlight contentious
claim elements).
The following rejections are on appeal:
Claims 37--40, 44, 45, 47-50, 54, and 55 stand rejected under 35
U.S.C. § I02(b) as anticipated by Allain. 4 Final Action 3.
Claim 46 stands rejected under 35 U.S.C. § I03(a) over Allain. Id. at
15.
DISCUSSION
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting aprimafacie case ofunpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
"Anticipation requires that all of the claim elements and their
limitations are shown in a single prior art reference." In re Skvorecz, 580
F.3d 1262, 1266 (Fed. Cir. 2009). "[D]ependent claims are [not anticipated]
4 US 2009/0105832 Al (pub. Apr. 23, 2009) ("Allain").
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Application 14/721,818
if the independent claims from which they depend are [not anticipated]." In
re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992). "In determining whether
the subject matter of a patent claim is obvious, ... [ w ]hat matters is the
objective reach of the claim. If the claim extends to what is obvious, it is
invalid under§ 103." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,419
(2007). However, "obviousness requires a suggestion of all limitations in a
claim." CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir.
2003) (citing In re Royka, 490 F.2d 981,985 (CCPA 1974)). When
determining whether a claim is obvious, an Examiner must make "a
searching comparison of the claimed invention - including all its limitations
-with the teachings of the prior art." In re Ochiai, 71 F.3d 1565, 1572 (Fed.
Cir. 1995).
ANTICIPATION
The Examiner determined that claims 37--40, 44, 45, 47-50, 54, and
55 are anticipated by Allain. Final Action 3-14, 16-17 and Answer 2-14
and 16-20 (collectively citing Allain ,r,r 36, 37, 49, 52, Figures IA-ID, 2A-
4D, 5A-7D). Of particular importance here, the Examiner determined that
the claimed instrumentation was disclosed by Allain at Figures 5A-7D,
specifically that the claimed holder was disclosed as feature 30, 310, the
claimed body portion being 310, and that the claimed impactor was
disclosed at Figures 6A and 7 A as 4, 32, 33, and 34, where the claimed first
and second arms are features 32. See Final Action 5-7; Answer 4--7, 16-18.
Appellant argues that the Examiner has interpreted the claim term
impactor too broadly so as to encompass structures of Allain beyond its
identified impactor so that it might have two arms. Appeal Br. 8-15.
Appellant argues that the Examiner improperly interpreted the term impactor
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Application 14/721,818
in this way so as to include the two tubes 32 of the handle 33 of the Allain
guide 3, which Appellant argues is not an impactor. Id. Appellant argues
Allain specifically discloses an impactor as structure 4 therein, which does
not have two arms. Id.
Appellant fails to set forth an explicit interpretation of "impactor," but
Appellant's argument is nonetheless persuasive.
"[C]laims are interpreted with an eye toward giving effect to all terms
in the claim." Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir.
2006). "[A] claim must be read in view of the specification of which it is a
part." Renishaw PLC v. Marposs Societa'per Azioni, 158 F.3d 1243, 1248
(Fed. Cir. 1998).
There is no evidence of record that the term "impactor" is a term of art
in the relevant field imbued with a specific meaning so that the term might
carry some ordinary meaning for those of ordinary skill in the art.
Therefore, we look to the Specification for guidance on the term's meaning.
The Specification does not expressly define the term "impactor." However,
it does discuss the feature in detail. The Specification explains that the
impactor is a structure distinct and separate from the other structures making
up the instrumentation of the invention, those other structures being a holder
3 and a guide 5, which have been shown in the figures reproduced from the
Specification and discussed above. The Specification explains that the
impactor is a structure that pushes the ( claimed) anchor through the passage
of the guide and through the (claimed) implant and into a vertebrae, i.e., it
impacts the anchor and pushes it into place. Spec. ,r,r 71-72. Therefore, we
interpret the claim term "impactor" in accordance with this explanation in,
and in the context of, the Specification. The claim requires that this
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Application 14/721,818
structure has first and second arms. It is to such a structure that we compare
the disclosure of Allain.
[U]nless a [prior art] reference discloses within the four comers
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).
We find Appellant has the better argument and that Allain does not disclose
an impactor as claimed.
Appellant provides the following visual comparison between an
embodiment disclosed in the Specification having a two-armed impactor as
claimed (below left) and the device disclosed by Allain (below right):
FIGURE PJA
(simplified version)
GU1DE3 ThIPACTOR4
(simplified version)
11\lPACTOR 4 GUIDE 5
The graphic above shows the Specification's Figure 6A at left and Allain's
Figure 8A, each stripped of excess labeling to show what the Specification
and Allain describe as guides 3 and impactors 4. As shown by Appellant's
graphic, each of the Specification and Allain reference discloses a device or
system having an impactor 4 and a guide 3, where the guide holds an
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Application 14/721,818
implant and anchor and the impactor engages the anchor to push it into
position. See also Spec. Figures 9 A and 9B ( showing the guide and
impactor combined and holding an anchor); Allain Figures 7 A-7D (showing
its guide and impactor combined and engaging an anchor and implant). It is
clear that the Allain impactor has, and engages an anchor with, a single arm
(head 40). See Allain ,r,r 48-53. No other embodiment is disclosed.
Therefore, Allain does not disclose a two-armed impactor and does not
anticipate the claims, each of which requires such an impactor.
OBVIOUSNESS
The Examiner determined that claim 46 would have been obvious
over Allain for essentially the same reasons the other claims were
determined to be anticipated by the reference. We have explained above
why Allain does not anticipate the claims. The Examiner has not established
why modifying Allain's single-armed impactor to have two arms would
have been obvious. Therefore, we conclude the Examiner has not
established a prima facie case that claim 46 would have been obvious, as it,
like claim 37, requires "an impactor having first and second arms."
SUMMARY
The anticipation rejection is reversed.
The obviousness rejection is reversed.
REVERSED
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