Ex Parte de Villiers et al

Patent Trial and Appeal Board

Dec 11, 2013

12759460 (P.T.A.B. Dec. 11, 2013)

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.
12/759,460 04/13/2010 Malan de Villiers 29850-703.303 7011
21971 7590 12/11/2013
WILSON, SONSINI, GOODRICH & ROSATI
650 PAGE MILL ROAD
PALO ALTO, CA 94304-1050
EXAMINER
SNOW, BRUCE EDWARD
ART UNIT PAPER NUMBER
3738
MAIL DATE DELIVERY MODE
12/11/2013 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 MALAN de VILLIERS and ULRICH HAHNLE1
__________

Appeal 2012-005073
Application 12/759,460
Technology Center 3700
__________

Before TONI R. SCHEINER, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-14, directed to an intervertebral prosthetic disc. The Examiner has
rejected the claims on the grounds of anticipation, obviousness, and
nonstatutory obviousness-type double patenting. We have jurisdiction under
35 U.S.C. § 6(b).

1 Appellants identify the Real Party-In-Interest as SpinalMotion, Inc. (App.
Br. 3.)

Appeal 2012-005073
Application 12/759,460
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STATEMENT OF THE CASE
The Specification discloses:
[A]n intervertebral prosthetic disc for insertion between
adjacent vertebrae [which] includes: upper and lower plates
having outer surfaces locatable against the respective vertebrae
and inner, curved surfaces; a core between the plates, the core
having upper and lower curved surfaces complementary in
shape to the inner, curved surfaces of the plates to allow the
plates to slide over the core; and a flexible tie member
extending laterally through the core and having ends outside the
core which are engaged with one or both of the plates to retain
the core between the plates when the plates slide over the core.
. . . In some embodiments, the flexible tie member comprises a
flexible cable or cord.
(Spec. ¶ 17.)
Claims 1-14 are pending and on appeal. Representative claims 1 and
5 are reproduced below:
1. An intervertebral prosthetic disc for insertion between adjacent
vertebrae, the disc comprising:
upper and lower plates having outer surfaces locatable against the
respective vertebrae and inner bearing surfaces;
core between the plates, the core having upper and lower surfaces
complementary in shape to the inner bearing surfaces of the plates to allow
the plates to slide over the core, the core including a lateral surface between
the upper and lower surfaces; and
one of the plates including a retaining structure that projects at least
partly into the lateral surface of the core only at diametrically opposed
regions thereof to hold the core captive between the plates when the plates
slide over the core.
5. The prosthetic disc of Claim 1, wherein retaining structure is a cable.
Claims 1-4 and 6-14 stand rejected under 35 U.S.C. § 102(e) as
anticipated by, or, under 35 U.S.C. § 103(a) as obvious over Ralph et al. (US
7,314,487 B2, issued January 1, 2008).
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Claims 1-4 and 6-14 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Büttner-Janz et al. (US 5,401,269, issued March 28, 1995).
Claims 1-10 stand rejected under the doctrine of nonstatutory
obviousness-type double patenting as unpatentable over Application No.
12/103,210 (now US 8,092,538, issued January 10, 2012).
We reverse the rejections over Ralph and Büttner-Janz, and affirm the
obviousness-type double patenting rejection.
FINDINGS OF FACT
The Invention
1. Figure 7 of the Specification is reproduced below:

Figure 7 is a cross-sectional anterior view of a prosthetic disc that
meets the limitations of claim 1. “In this embodiment, the core 16 is formed
with a lateral passage 50 extending diametrically through it” and “[t]he
passage is provided with a sleeve 52 of . . . wear resistant material” (Spec. ¶
44). Cable 54 passes through the sleeve 52, and the ends of the cable 54 are
anchored in the upper plate 12 (id.). Thus, “[t]he cable 54 holds the core 16
captive during sliding movement of the plates 12,14 over the core, whether
in flexion, extension or translation” (id. at ¶ 45).
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Ralph
2. Ralph discloses “a spinal implant assembly for implantation
into the intervertebral space between adjacent vertebral bones to
simultaneously provide stabilization and continued flexibility and proper
anatomical motion . . . which utilizes a wave washer as a force restoring
element” (Ralph, col. 1, ll. 21-26).
3. Figure 7 of Ralph is reproduced below:

Figure 7 is a side cross-section of Ralph’s spinal implant assembly.
The base plates 100a,100b are disposed in a spaced apart
relationship such that the opposing inner surfaces are
approximately parallel and facing one another. A single ring-
shaped wave washer 130 . . . is disposed between the plates,
and retained therein by the circumferential flanges 108a,108b.
The ring-shaped wave washer 130 . . . is further constrained
against rotational motion by a securing pin assembly 160, and
more particularly by the radially extending thin shafts 166.
(Ralph, col. 7, ll. 57-65.)
4. The pin assembly 160 of Ralph’s implant, with its radially
extending shafts 166, is shown in more detail in Figure 6A, reproduced
below:
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Figure 6A is a top perspective view of the securing pin assembly of
Ralph’s device.
[T]he pin assembly 160 comprises a central hub portion 162
which is flat and includes a threaded hole . . . . The screw 161
is designed to secure the pin assembly to the base plate. The
pin assembly 160 further includes a plurality of radially
extending thin shafts 166. These shafts extend outwardly and
upwardly from the base plate, aligning themselves in the arches
and valleys of the corresponding washer, thereby securing it to
the base plate.
(Id. at col. 7, ll. 36-45.)
Büttner-Janz
5. Büttner-Janz discloses an intervertebral prosthesis “with two
terminal plates which are to be connected to the endplates of the relevant
vertebrae, and with a prosthesis core which cooperates with at least one
terminal plate via an articular surface which permits a pivoting movement”
(Büttner-Janz, col. 1, ll. 5-9).

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6. Figure 9 of Büttner-Janz is reproduced below:

Figure 9 is a median section through Büttner-Janz’s prosthesis. In this
embodiment, “the prosthesis core is provided with a rib 11 which runs in the
median plane and which engages in a groove 12 which runs correspondingly
in the assigned articular surface of the prosthesis plate(s)” (Büttner-Janz, col.
3, ll. 65-68).
DISCUSSION
Anticipation by Ralph
Claim 1 requires, in relevant part, that one of the plates includes a
retaining structure that projects “at least partly into the lateral surface of the
core only at diametrically opposed regions thereof to hold the core captive
between the plates when the plates slide over the core.”
The Examiner finds that Ralph discloses an intervertebral prosthetic
disc comprising, in relevant part, a core (Ralph’s ring-shaped wave washer
130) “having upper and lower surfaces” and “including a lateral surface” and
a retaining structure (one of a plurality of Ralph’s radially extending shafts
166) “that projects at least partly into the lateral surface of the core at
diametrically opposed regions thereof to hold the core captive” (Ans. 5-6).
The Examiner adds that, if “the thin shafts 166 of the retaining
structure” do not inherently “project into/out at only diametrically opposed
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regions” (id. at 6), then “it would have been obvious to one having ordinary
skill in the art with predictable results” (id.).
Nevertheless, even if we accept that Ralph’s wave-shaped washer 130
could be considered a core “having upper and lower surfaces complementary
in shape to the inner bearing surfaces of the plates” (see claim 1), we agree
with Appellants that “[t]he only structure of the wave-shaped washer 130
that can reasonably be considered to be a lateral surface between upper and
lower surfaces is the thin edge of the material from which the wave washer
is formed” (App. Br. 6).
That being the case, we agree with Appellants that “[t]he shafts 166 of
Ralph et al. do not project into any surface of the wave-shaped washer 130”
(id.), much less the lateral surface of the washer. Moreover, we agree with
Appellants that the configuration of Ralph’s shafts 166 “cannot meet the
claim language ‘only at diametrically opposed regions’” (Reply Br. 2). As
shown in Figure 6a, when the number of shafts is uneven, none of the shafts
are diametrically opposed (FF4). But even if the number of shafts is even,
there will always be at least some shafts that are not diametrically opposed,
as shown in Figure 5C of Ralph (as annotated by Appellants on page 2 of
their Reply Brief), reproduced below:

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Figure 5C of Ralph shows a spiral-shaped wave washer 150 with four
valleys 156, which would accommodate four shafts 166, arranged as shown
by Appellants’ annotations.
Finally, with respect to the Examiner’s obviousness analysis, we agree
with Appellants that the Examiner has not given any reason “for removal of
all but two diametrically opposed shafts, particularly in view of the fact that
Ralph et al. discloses shafts disposed in each of the valleys” (App. Br. 7).
The rejection of claims 1-4 and 6-14 as anticipated by, or obvious
over, Ralph is reversed.
Anticipation by Büttner-Janz
The Examiner finds that Büttner-Janz discloses an intervertebral
prosthetic disc that meets all the limitations of claims 1-4 and 6-14. In
particular, the Examiner finds that element 12 in Figure 9 is “a retaining
structure that projects at least partly into the lateral surface . . . of the core at
diametrically opposed regions thereof to hold the core captive” (Ans. 7).
Having reviewed Figure 9 of Büttner-Janz (see FF6), we agree with
Appellants that:
The lateral surfaces of the core of Büttner-Janz et al.
FIGS. 8-10, as understood by those of ordinary skill in the art
would be at the exterior surfaces of the core (at the perimeter of
the core). These exterior surfaces are formed by the collar 7 of
Büttner-Janz et al. and serve the function of preventing
excessive twisting (Büttner-Janz et al., column 7, lines 51-52).
There are no retaining structures that project into the lateral
surfaces of the core of Büttner-Janz et al.
(App. Br. 10.)
Thus, we agree with Appellants that Büttner-Janz “fails to disclose
any embodiment wherein a plate includes a retaining structure that projects
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at least partly into the lateral surface of the core only at diametrically
opposed regions thereof, as claimed” (id.).
The rejection of claims 1-4 and 6-14 as anticipated by Büttner-Janz is
reversed.
Double Patenting
Claims 1-10 stand rejected under the doctrine of nonstatutory
obviousness-type double patenting as unpatentable over all the claims of
Application No. 12/103,210 (now US 8,092,538, issued January 10, 2012).
Appellants contend that the patented claims “define, inter alia ‘a
flexible tie member extending laterally through the core.’ The present
application defines ‘a retaining structure that projects at least partially into
the lateral surfaces of the core only at diametrically opposed regions thereof
to hold the core captive between the plates.’” (App. Br. 14.)
Nevertheless, Appellants have failed to consider various overlapping
permutations of the present and patented claims. For example, present claim
2 recites that the retaining structure is located within a channel in the core.
Patented claim 3 recites that the flexible tie member comprises a flexible
cable or cord, while present claim 5 recites that the retaining structure is a
cord.
In any case, Appellants have “indicated a willingness to file a terminal
disclaimer to overcome the obviousness type double patenting rejection in
an effort to advance prosecution upon an indication that the claims are
otherwise allowable” (App. Br. 14).
The rejection of claims 1-10 under the doctrine of nonstatutory
obviousness-type double patenting is affirmed.
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SUMMARY
The rejection of claims 1-4 and 6-14 as anticipated by, or as obvious
over Ralph is reversed.
The rejection of claims 1-4 and 6-14 as anticipated by Büttner-Janz is
reversed.
The rejection of claims 1-10 under the doctrine of nonstatutory
obviousness-type double patenting is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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