Ex Parte Falahee

Board of Patent Appeals and Interferences

Mar 14, 2011

10979021 (B.P.A.I. Mar. 14, 2011)

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.
10/979,021 11/01/2004 Mark H. Falahee USP-11102/29 3168
25006 7590 03/14/2011
GIFFORD, KRASS, SPRINKLE,ANDERSON & CITKOWSKI, P.C
PO BOX 7021
TROY, MI 48007-7021
EXAMINER
PREBILIC, PAUL B
ART UNIT PAPER NUMBER
3774
MAIL DATE DELIVERY MODE
03/14/2011 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 MARK H. FALAHEE
__________

Appeal 2009-015001
Application 10/979,021
Technology Center 3700
__________

Before FRANCISCO C. PRATS, MELANIE L. McCOLLUM, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
vertebral fusion apparatus and a method of implanting an intervertebral cage.
The Patent Examiner rejected the claims on grounds of anticipation and
obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-015001
Application 10/979,021

2
STATEMENT OF THE CASE
Claims 2-10, which are all the pending claims, are on appeal. Claim
10 is representative and reads as follows:
10. Vertebral fusion apparatus, comprising:
a generally C-shaped cage structure having opposing lateral sides,
each with a forward end, a back wall, an open top, an open bottom, and an
open front between the forward ends of the lateral sides;
the back wall being expandable such that the cage structure has a
collapsed state with the lateral sides spaced apart at a first distance for
insertion into an intervertebral disc space, and an expanded state wherein the
lateral sides are spaced apart at a second distance greater than the first
distance for packing the cage with bone graft or biological materials; and
and [sic] a locking gate structure having first and second ends that
engage with the forward ends of the lateral sides in the expanded state,
thereby closing off the open front once packed.

The Examiner rejected the claims as follows:
• claims 2-5 and 8-10 under 35 U.S.C. § 102(b) as anticipated by
Suddaby;2
• claim 6 under 35 U.S.C. § 103(a) as unpatentable over Suddaby and
Castro;3
• claim 7 under 35 U.S.C. § 103(a) as unpatentable over Suddaby and
Errico;4 and
• claim 8 under 35 U.S.C. § 103(a) as unpatentable over Suddaby and
Camino.5

2 Loubert Suddaby, US Patent No. 6,159,244, issued Dec. 12, 2000.
3 Salvatore Castro et al., US Patent No. 6,004,326, issued Dec. 21, 1999.
4 Josseph P. Errico et al., Patent Application Pub. No. US 2003/0069586
A1, filed Oct. 29, 2002, published Apr. 10, 2003.
5 Thomas S. Camino et al., US Patent No. 6,086,613, issued Jul. 11, 2000.
Appeal 2009-015001
Application 10/979,021

3
ANTICIPATION
The Issue
The Examiner’s position is that Suddaby’s description of an
intervertebral fusion implant anticipated Appellant’s vertebral fusion
apparatus. (Ans. 3, identifying Suddaby’s corresponding elements by
number.)
Appellant contends that (1) because Appellant’s cage is laterally
expandable, whereas Suddaby’s cage is vertically expandable, anticipation
has not been shown (App. Br. 2); (2) Suddaby’s cage is not generally C-
shaped (id. at 3); and (3) Suddaby did not describe an expandable back wall
(id. at 4).
The Examiner responds that (1) the argument distinguishing lateral
from vertical expansion turns on an intended use, not a structural difference
(Ans. 5); (2) Suddaby’s “Figure 2 can have a C drawn over it as can the end
of the cage as shown in Figure 1” (id. at 6); and (3) “Suddaby’s implant has
a back wall with a large hole or opening in it” (id.).
The issue with respect to this rejection is whether any one of
Appellant’s three points distinguishes the claimed apparatus from
Suddaby’s.
Findings of Fact
1. Suddaby’s Fig. 1 is reproduced here:
Appeal 2009-015001
Application 10/979,021

4

{Suddaby’s Fig. 1 is an exploded perspective view of a pair of shells
forming an implant according to Suddaby’s invention.
(Suddaby, col. 3, ll. 56-57.)}

2. Suddaby’s Fig. 2 is reproduced here:
Appeal 2009-015001
Application 10/979,021

5

{Suddaby’s Fig. 2 is a side elevation, showing the shells assembled in a
collapsed configuration. (Suddaby, col. 3, ll. 58-59.)}

Principles of Law
“[U]nless a reference discloses within the four corners 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). The requirement that the prior art
elements themselves be “arranged as in the claim” means that claims cannot
be “treated ... as mere catalogs of separate parts, in disregard of the part-to-
part relationships set forth in the claims and that give the claims their
meaning.” Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co.,
730 F.2d 1452, 1458-59 (Fed. Cir. 1984).
Appeal 2009-015001
Application 10/979,021

6
Analysis
Claim 10 defines the vertebral fusion apparatus as “a generally C-
shaped cage structure.” We agree with Appellant that Suddaby’s cage is not
generally C-shaped. We find the Examiner’s contention that a C can be
drawn on Suddaby’s Figure 2 unpersuasive because the device in Figure 2
simply is not C-shaped. The Examiner’s reference to the component shells
shown in Fig. 1 is also unpersuasive because even if parts are C-shaped, the
cage is not. See Lindemann Maschinenfabrik, 730 F.2d at 1458-59.
Because Suddaby did not describe a generally C-shaped cage structure, we
find that the prior art did not describe all the elements claimed arranged as in
the claim.
OBVIOUSNESS
Each of the obviousness rejections relied on a finding that Suddaby
described a generally C-shaped cage structure. Because we do not agree that
the evidence supports that finding, as explained in the Anticipation section,
we reverse the obviousness rejections.
SUMMARY
We reverse the rejection of claims 2-5 and 8-10 under 35 U.S.C.
§ 102(b) as anticipated by Suddaby.
We reverse the rejections of claims 6, 7, and 8 under 35 U.S.C.
§ 103(a) as unpatentable over Suddaby combined with Castro, Errico, and
Camino, respectively.

REVERSED

Appeal 2009-015001
Application 10/979,021

7

lp

GIFFORD, KRASS, SPRINKLE, ANDERSON & CITKOWSKI, P.C
PO BOX 7021
TROY MI 48007-7021