Ex Parte Falahee

Patent Trial and Appeal Board

Dec 19, 2013

11532731 (P.T.A.B. Dec. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARK H. FALAHEE
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Appeal 2011-007152
Application 11/532,731
Technology Center 3700
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Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-007152
Application 11/532,731
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claim 9.
App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claim is directed to steering an interbody fusion cage:
9. A method of fusing vertebrae, comprising the steps of:
providing a steerable intervertebral cage comprising:
a distal portion having front, back, top, bottom, inner and
outer surfaces;
a proximal portion having a front, back, top, bottom,
inner and outer surfaces, and
a hinge joining the front of the proximal portion to the back of
the distal portion, such that the cage has a first, straightened
shape with the hinge open and a second, crescent shape with the
hinge closed;
introducing the cage in the first, straightened shape into
an anterior-central position within an intervertebral disc space
using a posterior lumbar interbody fusion (PLIP) or transverse
lumbar interbody fusion (TLIF) approach;
steering or allowing the cage to assume the second,
crescent shape once within the intervertebral disc space; and
wherein the method further includes the steps of:
using a first instrument to maintain the cage in the
straightened shape for introduction; and
switching to a different instrument that facilitates
articulation and final positioning.

REJECTION
Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Colleran (US 2006/0142858 A1 pub. Jun. 29, 2006) in view of Bagga
(US 2006/0265065 A1 pub. Nov. 23, 2006) in further view of Stone
(6,387,130 B1 iss. May 14, 2002).

Appeal 2011-007152
Application 11/532,731
3
OPINION
The Examiner and Appellant appear to agree that Colleran discloses a
cage implant having a structure indistinguishable from that used in the
method of claim 9. Ans. 3-4 (citing Colleran figs. 12A-E). While Colleran
contains a general discussion of implantation using a posterior or transverse
approach (paras. [0054] – [0055]), the Examiner and Appellant also agree
that Colleran is silent with regard to the specific steps used to position the
implant between vertebrae. The Examiner found Bagga to disclose and
encourage anterior-central positioning of the implant. Ans. 4. However, this
finding does not accurately reflect Bagga’s disclosure. Reply Br. 2. Bagga
prefers an anterior approach to the operative site (para. [0004]), but this is
not necessarily a teaching of introducing an implant into an anterior-central
position within an intervertebral disc space, particularly not while using a
posterior or transverse approach as is required by the claims. As Appellant
points out, Bagga’s implant is very different from that of the embodiment of
Colleran depicted in Figures 12A-E. We do not see how Bagga supports the
Examiner’s position.
We recognize that Stone teaches positioning an implant “at a location
around the anterior perimeter of a vertebral endplate 50, as shown in FIGS. 1
and 5.” Col. 4, ll. 13-16; figs 3, 10. However, the Examiner relies on Stone
only for the aspects of the claimed method associated with using two
different instruments. Ans. 5. Stone is not relied upon by the Examiner to
cure the deficiencies of the Examiner’s combination of Colleran and Bagga
discussed above.

Appeal 2011-007152
Application 11/532,731
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DECISION
The Examiner’s rejection is reversed.

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