Ex Parte De Villiers et alDownload PDFPatent Trial and Appeal BoardOct 29, 201311187403 (P.T.A.B. Oct. 29, 2013) Copy Citation 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. 11/187,403 07/21/2005 Malan De Villiers 022031-001100US 8289 21971 7590 10/30/2013 WILSON, SONSINI, GOODRICH & ROSATI 650 PAGE MILL ROAD PALO ALTO, CA 94304-1050 EXAMINER BATES, DAVID W ART UNIT PAPER NUMBER 3775 MAIL DATE DELIVERY MODE 10/30/2013 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 REINHARD HAHNLE ____________ Appeal 2012-002661 Application 11/187,403 Technology Center 3700 ____________ Before DONALD E. ADAMS, DEMETRA J. MILLS, and ERIC GRIMES, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL1 This appeal under 35 U.S.C. § 134 involves claims 1, 2, 4-21, and 30-35 (App. Br. 3). Examiner entered rejections under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 The Real Party in Interest is SpinalMotion, Inc. (App. Br. 3). Appeal 2012-002661 Application 11/187,403 2 STATEMENT OF THE CASE The claims are directed to an intervertebral prosthesis placement instrument and system comprising the foregoing instrument. Claims 1 and 13 are representative and are reproduced in the Claims Appendix of Appellants’ Brief. Claims 1, 2, 5-10, 30, 34, and 35 stand rejected under U.S.C. § 102(b) as being anticipated by Keller.2 Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Keller and Fraser.3 Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Keller and Fuss.4 Claims 13-15, 17-21, 31, and 33 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Keller and Frey.5 Claim 16 stands rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Keller, Frey, and Fraser. Claim 32 stands rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Keller and Zucherman.6 Anticipation: ISSUE Does the preponderance of evidence on this record support Examiner’s finding that Keller teaches Appellants’ claimed invention? 2 Keller, US 4,997,432, Mar. 5, 1991. 3 Fraser et al., EP 1 153 582 A2, Nov. 14, 2001. 4 Fuss et al., US 6,599,294 B2, Jul. 29, 2003. 5 Frey et al., US 6,830,570 B1, Dec. 14, 2004. 6 Zucherman et al., US 7,083,649 B2, Aug. 1, 2006. Appeal 2012-002661 Application 11/187,403 3 FACTUAL FINDINGS (FF) FF 1. Keller’s figure 1 is reproduced below: “FIG. 1 shows, in cross-section, an intervertebral endoprosthesis which can be inserted using the instrument set according to … [Keller’s] invention” (Keller, col. 4, ll. 26-28). FF 2. Keller suggests a “surgical instrument set for the insertion of intervertebral endoprostheses, which consist of two stop plates [3] and a sliding core [4] … arranged between them” (id. at Abstract and col. 4, l. 50 – col. 5, l. 2). FF 3. Keller’s figures 2, 4, and 5 are reproduced below: “FIG. 2 shows spreading forceps according to … [Keller’s] invention in side view; … FIG. 4 shows an enlarged representation of … part” of Keller’s forceps in plan view; and “FIG. 5 shows a cross-sectional view along the line V-V in FIG. 4” (id. at col. 4, ll. 29-36). Appeal 2012-002661 Application 11/187,403 4 FF 4. Keller’s instrument [I]s characterized in that it has spreading forceps (9) which have, at their front end on each spreading jaw (10, 11) an essentially U-shaped recess surrounding one stop plate on three sides and gripping the edge, the thickness of the spreading jaws (10, 11) in the spreading direction being essentially identical to the thickness of the stop plates. (id. at Abstract; see also id. at col. 5, ll. 19-30; see generally Ans. 5-6). FF 5. Keller teaches that “stop plates 3 are … only held by the edge in corresponding grooves 20 of the spreading jaws 10, 11” (id. at col. 5, ll. 33- 34; see generally Ans. 5-6). ANALYSIS Appellants’ instrument comprises jaws having opposing inner surfaces, wherein at least one of the opposing surfaces of the jaws includes at least one slot to slidably receive a fin carried by the prosthesis (see e.g., claim 34 (emphasis added); see also claims 1 and 9 (wherein the device and system comprising the device, or instrument, comprises jaws configured to include jaws having slots on the opposing surface of the jaws to slidably receive fins carried by the prosthesis)). Examiner finds that Keller teaches an instrument wherein “each of the opposing surfaces of the jaws include slots … (groove 20) to slidably receive fins (teeth 6) carried by the prosthesis (stop plate 3)” (Ans. 5 (emphasis removed)). We are not persuaded. As Appellants explain, “the grooves 20 of Keller are located on the outside surfaces of the spreading jaws … so that the jaws can press the implant plates apart” (App. Br. 7). We agree. We recognize, but are not persuaded by, Examiner’s assertion that “[i]t can only be assumed that Appellant[s] ha[ve] not appreciated that there Appeal 2012-002661 Application 11/187,403 5 is a second groove 20 present in the opposing jaw as teeth 6 are seen residing directly adjacent to a groove 20 in that figure. The plate is capable of being slid in groove 20 and into an appropriately sized slot formed in a vertebra” (Ans. 11). Grooves 20 of Keller’s instrument are, as Appellants explain, on the outside surface of each spreading jaw 10, 11 (FF 3-5). In this configuration the instrument is placed between the vertebrae and the “teeth” on each of Keller’s stop plates are forced into the opposing vertebrae positioned on either side of the instrument, when the instrument is located in the intervertebral space (see FF 1-5; see App. Br. 6-7). In sum, Examiner failed to establish an evidentiary basis on the record to support a finding that Keller teaches an instrument, wherein at least one of the opposing surfaces of the jaws includes at least one slot to slidably receive a fin carried by the prosthesis as is required by Appellants’ claimed invention. CONCLUSION OF LAW The preponderance of evidence on this record fails to support Examiner’s finding that Keller teaches Appellants’ claimed invention. The rejection of claims 1, 2, 5-10, 30, 34, and 35 under 35 U.S.C. § 102(b) as being anticipated by Keller is reversed. Obviousness: ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 6. Examiner relies on Keller as set forth above (Ans. 7-10). Appeal 2012-002661 Application 11/187,403 6 FF 7. Examiner relies on Fraser to suggest “a medical installation tool having opposed jaws … having ribs with slots formed in the ribs” (id. at 7). FF 8. Examiner relies on Fuss to suggest an “instrument having slots which extend all the way through the jaws” (id.). FF 9. Examiner relies on Frey to suggest “the production of slots cut into the vertebra … which slot is configured to slidably receive and guide the fin of the prosthesis” (id. at 8). FF 10. Examiner relies on Zucherman to suggest “a pivoting artificial vertebral disk replacement implant … with an elongate fin … aligned with the direction of insertion” (id. at 10). ANALYSIS The combination of Keller and Fraser: Based on the combination of Keller and Fraser, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious to “incorporate the ribs and slots of Fraser … with the device of Keller due to the fact that doing so would have provided for smooth and efficient movement of the pusher block upon insertion of the implant” (Ans. 7). We are not persuaded. Examiner failed to establish an evidentiary basis on this record to support a conclusion that Fraser makes up for Keller’s failure to suggest an instrument, wherein at least one of the opposing surfaces of the jaws includes at least one slot to slidably receive a fin carried by the prosthesis as is required by Appellants’ claimed invention (see App. Br. 9). Appeal 2012-002661 Application 11/187,403 7 The combination of Keller and Fuss: Based on the combination of Keller and Fuss, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious to “incorporate the slots through the jaws of Fuss … with the device of Keller due to the fact that these slots are useful for providing a window to assist in insertion of the implant” (Ans. 7). We are not persuaded. Examiner failed to establish an evidentiary basis on this record to support a conclusion that Fraser makes up for Keller’s failure to suggest an instrument, wherein at least one of the opposing surfaces of the jaws includes at least one slot to slidably receive a fin carried by the prosthesis as is required by Appellants’ claimed invention (see App. Br. 10). The combination of Keller and Frey: Based on the combination of Keller and Fraser, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious to “incorporate the grooves correlating with the vertebrae of Frey … with the device of Keller dues to the fact that these grooves serve to prevent posterior and anterior migration of the implant” (Ans. 8-9). We are not persuaded. Examiner failed to establish an evidentiary basis on this record to support a conclusion that Fraser makes up for Keller’s failure to suggest an instrument, wherein at least one of the opposing surfaces of the jaws includes at least one slot to slidably receive a fin carried by the prosthesis as is required by Appellants’ claimed invention (see App. Br. 10- 11). Appeal 2012-002661 Application 11/187,403 8 The combination of Keller, Frey, and Fraser: Based on the combination of Keller and Fraser, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious to “incorporate the ribs and slots of Fraser … with the device [suggested by the combination of Keller and Frey] due to the fact that doing so would have provided for smooth and efficient movement of the pusher block upon insertion of the implant” (Ans. 10). We are not persuaded. Examiner failed to establish an evidentiary basis on this record to support a conclusion that Fraser makes up for Keller’s failure to suggest an instrument, wherein at least one of the opposing surfaces of the jaws includes at least one slot to slidably receive a fin carried by the prosthesis as is required by Appellants’ claimed invention (see App. Br. 11). The combination of Keller and Zucherman: Based on the combination of Keller and Zucherman, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious to “incorporate the [elongate fins, or] keels of Zucherman … with the implant of Keller … due to the fact that the keels of Zucherman … were known to anchor the device into the vertebral body at the time of the invention” (Ans. 11). We are not persuaded. Examiner failed to establish an evidentiary basis on this record to support a conclusion that Zucherman makes up for Keller’s failure to suggest an instrument, wherein at least one of the opposing surfaces of the jaws includes at least one slot to slidably receive a fin carried by the prosthesis as is required by Appellants’ claimed invention (see App. Br. 12). Appeal 2012-002661 Application 11/187,403 9 CONCLUSION OF LAW The preponderance of evidence relied upon by Examiner fails to support a conclusion of obviousness. The rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable over the combination of Keller and Fraser is reversed. The rejection of claims 11 and 12 under 35 U.S.C. § 103(a) as unpatentable over the combination of Keller and Fuss is reversed. The rejection of claims 13-15, 17-21, 31, and 33 under 35 U.S.C. § 103(a) as unpatentable over the combination of Keller and Frey is reversed. The rejection of claim 16 under 35 U.S.C. § 103(a) as unpatentable over the combination of Keller, Frey, and Fraser is reversed. The rejection of claim 32 under 35 U.S.C. § 103(a) as unpatentable over the combination of Keller and Zucherman is reversed. REVERSED lp Copy with citationCopy as parenthetical citation