Ex Parte Dalton

Board of Patent Appeals and Interferences

Jan 19, 2010

10642976 (B.P.A.I. Jan. 19, 2010)

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.
10/642,976 08/18/2003 Brian E. Dalton 4389 3409
7590 01/19/2010
Floyd B. Carothers
CAROTHERS AND CAROTHERS
Suite 200
445 Fort Pitt Blvd.
Pittsburgh, PA 15219
EXAMINER
SWIGER III, JAMES L
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
01/19/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BRIAN E. DALTON
____________________

Appeal 2009-005706
Application 10/642,976
Technology Center 3700
____________________

Decided: January 19, 2010
____________________

Before TONI R. SCHEINER, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b)
(2002). We reverse.

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STATEMENT OF THE CASE
The claims are directed to a cervical compression plate assembly that
is used to assist the bone grafting process. (Spec. 6: 1-12). The assembly is
secured to adjacent vertebra and provides continuous compressive loading
on bone graph material deposited between the vertebral elements after
removal of a vertebral disc. (Id.).
Claims 1 and 10 are the only independent claims in the application.
Exemplary claim 1 reads as follows:
1. A cervical compression plate assembly having screw
receiving elements at opposite ends thereof configured for
engaging bone fixation screws extending from respective
vertebral elements, means for permitting the distance between
said screw receiving elements at opposite ends to be shortened
but preventing said distance from increasing;
the improvement comprising compression spring means
housed in said assembly and configured for continuously urging
said screw receiving elements at opposite ends together for
thereby providing continuous compressive loading on bone
graft material disposed between the vertebral elements.

(App. Br. 13, Claims App’x.)(Additional indentation added.
See 37 C.F.R. §1.75(i)).

Figures 1 and 4 from the application, reproduced below,
illustrate one embodiment of the claimed cervical compression plate
assembly. (Spec.10: 5-14).

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{Fig. 1 illustrates the cervical compression plate assembly of the
invention and Fig. 4 illustrates a bottom or top view of the coronal
curve allowing the plate assembly to fit with the contour of the
cervical spine. (Id.).}

THE EVIDENCE

The Examiner relies upon the following as evidence in support of the
rejections:
Beer 5,458,642 Oct. 17, 1995
Serbousek 6,066,142 May 23, 2000
Richelsoph 6,695,846 B2 Feb. 24, 2004
Sevrain 7,008,427 Mar. 07, 2006

THE REJECTIONS

The following rejections are before us for review:
1. Claims 1-2, 5-6, 8, 10-11, 14-15 and 17 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Beer.
2. Claims 1-2, 5-6, 8, 10-11, 14-15 and 17 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Sevrain.
3. Claims 3-4 and 12-13 stand rejected under 35 U.S.C. § 103(a) over
the combination of Sevrain and Richelsoph.
4. Claims 7 and 16 stand rejected under 35 U.S.C. § 103(a) over the
combination of Sevrain and Serbousek.
We REVERSE.
ISSUES
Has Appellant established that the Examiner erred in determining that
the prior art anticipates a cervical compression plate assembly comprising
compression spring means configured for continuously urging said screw
receiving elements at the opposite ends together for thereby providing
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continuous compressive loading on bone graft material disposed between the
vertebrae?
Has Appellant established that the Examiner erred in determining that
dependent claims 3, 4, 7, 12, 13 and 16 would have been obvious to one of
ordinary skill in the art at the time the invention was made in view of the
combined prior art?
FINDINGS OF FACT
1. Beer described a synthetic intervertebral disc comprising disc-
shaped plates 11a and 11b joined by springs along the inside of the outer
perimeter. (Beer, Abstract).
2. Beer Fig. 4 is reproduced below:

{Fig. 4 illustrates a front view of the synthetic
intervertebral disc of Beer’s invention. (Id. at 3:41-43).}

3. Beer taught that the device is fit between the concave surfaces of
two vertebrae. (Id. Abstract).
4. Beer taught that the device has a spring means 13 comprising a
plurality of springs 13a-13i with each spring attached to the upper plate and
lower plate. (Id. at 4:30-34).
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5. Beer taught that “[t]he spring system distributes forces acting on
the disc between the springs and allows normal movement of the vertebrae
during flexion and extension of the spine in any direction.” (Id. Abstract.)
6. Additionally, Beer taught that during movement, “while some of
the springs 13h and 13f are in compression, others 13d and 13c are in
expansion, thus allowing the [synthetic] disc to mimic the operation of a
natural disc that has been replaced.” (Id. at 5:12-17).
7. Beer did not describe using the synthetic disc in conjunction with
bone graft material.
8. Beer did not disclose that the springs of the synthetic disc are
configured to provide continuous compressive loading on bone graft
material disposed between the vertebral elements.
9. Sevrain described an inter-vertebral disc prosthesis comprising
upper and lower plates 30 and 32 adapted to be mounted with screws 34 to
adjacent upper and lower vertebrae. (Sevrain at 6:23-27.)
10. Sevrain Fig. 2A is reproduced below:

{Fig. 2A illustrates a perspective view of the
disc prosthesis of Sevrain’s invention. (Id. at 4:60-61).}
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11. Sevrain taught that the disc prosthesis provides “stability by
connecting the two adjacent vertebrae, allows for some relative movements
therebetween, e.g., flexion and extension, and [provides] for damping when
subjected to axial loads.” (Id. at 5:28-32).
12. Sevrain taught: “More than one spring may be used for
maintaining, at rest, the joint 16 in an intermediate position, i.e., in a
‘floating’ position such that the joint 16 is capable of opening or closing,
with the spring forces always bringing it back to its at rest position.”
(Id. at 5:60-65).
13. Sevrain did not disclose that the springs of the disc prosthesis are
configured to provide continuous compressive loading on bone graft
material disposed between the vertebral elements.
PRINCIPLES OF LAW
To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or
inherently. Anticipation is an issue of fact, and the question
whether a claim limitation is inherent in a prior art reference is
a factual issue.

In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations
omitted).
[C]hoosing to define an element functionally, i.e., by what it
does, carries with it a risk. As our predecessor court stated in
[In re] Swinehart, 439 F.2d [210,] 213 [CCPA 1971]:

where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
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be in the prior art does not possess the characteristic relied on.

Id. at 1478.
ANALYSIS
I. The Anticipation Rejections.
A. Beer
The Examiner found that Beer described a spinal assembly having
plates with screw-receiving elements at opposite ends configured for
engaging bone fixation screws extending from respective vertebral elements.
(Fin. Rej. 2 dated Sep. 7, 2007,). The Examiner also found that Beer
described a means for permitting the distance between the elements at the
ends to be shortened, i.e., springs 13c-13g, wherein the springs are capable
of providing a continuous compression because they are attached to the
plates. (Id. at 2-3)(citing Beer 4:31-35). According to the Examiner, Beer’s
assembly was capable of providing loading on graft material disposed
between the vertebral elements. (Id. at 3). The Examiner also found that
Beer’s core/border 14 was capable of preventing the distance of the
assembly from increasing. (Id.).
Appellant challenges the Examiner’s rejection by asserting that Beer
did not disclose an assembly capable of “loading on graph material (12)
disposed between adjacent vertebral elements.” (App. Br. 12). Rather, Beer
described a prosthesis element that was “designed only to absorb
compression and provide cushioning between adjacent vertebra in
substitution of the removed disc.” (Id.) Further, Beer’s “device does not
even provide space for inserting a bone graph between his upper and lower
plates 11a and 11b or between adjacent vertebra.” (Id. at 13).
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We agree with Appellant that the Examiner failed to establish that
Beer described an assembly with spring means configured for urging the
opposite ends of the assembly together. Instead, Beer’s assembly
“distributes forces . . . during flexion and extension of the spine in any
direction.” (Beer, Abstract). While Beer described some non-continuous
conditions where some of the springs were in compression (which would
urge the assembly ends apart, not together), Beer explained that other
springs were in expansion (but not necessarily in continuous tension), so as
to mimic the operation of the natural disc that has been replaced. (Beer,
5:12-17). See e.g., Beer Fig. 4, which does not show a spring configured for
continuously urging the opposite ends of the assembly together, or for
continuous compression on graft material between the vertebral elements.
Beer did not explicitly describe Appellant’s assembly. The evidence does
not support the Examiner’s finding that Beer’s assembly inherently
possessed the functionally defined limitations of Appellant’s assembly. Cf.
Schreiber, 128 F.3d at 1478.

B. Sevrain
The Examiner found that Sevrain described a plate assembly having at
least two plates with screw-receiving elements and a tension spring 39
capable of holding the plates in a compressed position. (Fin. Rej. 3)(citing
Sevrain Fig. 2A and 5:60-65). According to the Examiner, spring 39 was
capable of shortening “the distance between the two portions.” (Id.).
Appellant challenges the Examiner’s rejection by asserting that
Sevrain did not disclose that tension spring 39 is capable of holding the plate
in a compressed position. (App. Br. 15). According to Appellant, Sevrain
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“merely describ[ed] a prosthetic device for providing a cushioning between
adjacent vertebra in substitution of the original cushioning of the natural disc
which has been removed.” (Id.). Appellant argues that the springs in
Sevrain “provide a ‘floating’ so that the spring forces always bring it back to
its at rest position.” (Id.).
We agree with Appellant. The portion of Sevrain specifically relied
upon by the Examiner does not support the rejection. (See Fin. Rej. 3)(citing
Sevrain 5:60-64). Specifically, Sevrain states, “More than one spring may
be used for maintaining, at rest, the joint 16 in an intermediate position, i.e.,
in a ‘floating’ position such that the joint 16 is capable of opening or closing,
with the spring forces always bringing it back to its at rest position.”
(FF12)(emphasis added). The evidence does not support the Examiner’s
finding that Sevrain’s assembly provided “continuous compressive loading.”
Cf. Schreiber, 128 F.3d at 1478.

II. The Obviousness Rejections.
Principles of Law
When determining whether a claim is obvious, an Examiner must
make “a searching comparison of the claimed invention – including all its
limitations – with the teaching of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995).

Analysis
Appellant argues that the Examiner misapplied the teachings of
Sevrain in the same manner as in the anticipation rejections.
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We agree. The evidence does not support the Examiner’s finding that
Sevrain described each and every element set forth in claims 1 and 10. The
obviousness rejections do not explain how the prior art suggests an assembly
configured to apply “continuous compressive loading.”

CONCLUSION
On the record before us, Appellant has shown error on the part of the
Examiner. The prior art did not describe each limitation of the claimed
invention, and the Examiner did not establish that an assembly having all the
limitations of the claims would have been obvious to one of ordinary skill in
the art at the time the invention was made.

DECISION
1. The rejection of claims 1-2, 5-6, 8, 10-11, 14-15 and under 35 U.S.C.
§ 102(b) as being anticipated by Beer is REVERSED.
2. The rejection of claims 1-2, 5-6, 8, 10-11, 14-15 and 17 under 35
U.S.C. § 102(e) as being anticipated by Sevrain is REVERSED.
3. The rejection of claims 3-4 and 12-13 under 35 U.S.C. § 103(a) over
the combination of Sevrain and Richelsoph is REVERSED.
4. The rejection of claims 7 and 16 under 35 U.S.C. § 103(a) over the
combination of Sevrain and Serbousek is REVERSED.

REVERSED

lp
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FLOYD B. CAROTHERS
CAROTHERS AND CAROTHERS
SUITE 200
445 FORT PITT BLVD.
PITTSBURGH PA 15219