Ex Parte Farris

Board of Patent Appeals and Interferences

Mar 25, 2011

11118707 (B.P.A.I. Mar. 25, 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.
11/118,707 04/29/2005 Robert A. Farris 4906-084/P0022061.00 6717
62644 7590 03/25/2011
MEDTRONIC
Attn: Noreen Johnson - IP Legal Department
2600 Sofamor Danek Drive
MEMPHIS, TN 38132
EXAMINER
WOODALL, NICHOLAS W
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
03/25/2011 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 ROBERT A. FARRIS
____________

Appeal 2009-012895
Application 11/118,707
Technology Center 3700
____________

Before STEVEN D.A. McCARTHY, MICHAEL W. O’NEILL and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Robert A. Farris (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting under 35 U.S.C. § 103(a) claims 1-7
and 21 as unpatentable over Lin (US 5,330,474, issued Jul. 19, 1994) and
Richelsoph (US 6,171,311 B1, issued Jan. 9, 2001); claim 8 as unpatentable
over Lin, Richelsoph and Krag (US 6,231,575 B1, issued May 15, 2001);
claims 9, 11-18, 20, and 22 as unpatentable over Lin; and claim 19 as
unpatentable over Lin and Krag. Claim 10 has been canceled. We have
jurisdiction over this appeal under 35 U.S.C. § 6.

Appeal 2009-012895
Application 11/118,707

THE INVENTION
Appellant’s invention relates to a spinal fixation system including a
first spinal fixation element that is attachable to a second spinal fixation
element in an end-to-end fashion with a coupling mechanism that axially and
torsionally constrains the first and second fixation elements to one another.
Spec. 2, para. [0003] and fig. 19.
Claim 1 is representative of the claimed invention and reads as
follows:
1. A spinal construct system comprising:

a spinal fixation plate including an elongated flat shape
with a lower surface sized to lie against a portion of a spinal
column, said plate including a length sized to include at least
two transverse bores for receiving bone anchoring elements,
said length greater than a width of said plate and a height of
said plate less than said width, said height of said plate being
less than each of said length and width of said plate;

a fixture element coupled to said spinal fixation plate in
end to end fashion;
a male coupling member formed integrally with one of
said spinal fixation plate and said fixture element, the male
coupling member and one of said spinal fixation plate and said
fixture element comprising a single unitary body; said male
coupling member comprising an externally threaded surface
and a non-threaded contact surface along at least one side
thereof;

a female coupling body associated with the other of said
spinal fixation plate and said fixture element; said female
coupling body comprising a first bore receiving said male
coupling member and threadingly engaging said externally
threaded surface of said male coupling member so as to resist
axial displacement of said spinal fixation plate to said fixture
element; said female coupling body further comprising a
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Appeal 2009-012895
Application 11/118,707

second bore extending through said female coupling body
transverse to said first bore and in communication with said
first bore; and

an engaging member disposed in said second bore and
engaging said contact surface so as to resist relative rotation
between said spinal fixation plate and said fixture element.

SUMMARY OF DECISION
We REVERSE.

OPINION
With regard to the limitation of the male coupling member being
integrally formed with the spinal fixation plate, as per independent claims 1
and 9, the Examiner takes the position that the modification of integrally
forming the male coupling member 20 of Lin with the spinal fixation plate
12 of Lin merely “involves only routine skill in the art.” Ans. 5, 10 and 13.
Similarly, with respect to the limitation of the spinal fixation plate including
at least two transverse bores, as per independent claims 1 and 22, the
Examiner takes the position that the modification of the spinal fixation plate
12 of Lin to include at least two transverse bores is simply a “mere
duplication of the essential working parts of a device.” Ans. 7 and 9-10.
We note that the jurisprudence when used in this manner amounts to a per se
rule of unpatentability. In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995).
Per se rules used in this manner short circuit the Graham inquiry.
These rejections, instead of being based on reasoning with rational
underpinnings, are based on this per se rules. Rejections based on 35 U.S.C.
§ 103 must rest on a factual basis. In making such a rejection, the Examiner
has the initial duty of supplying the requisite factual basis and may not,
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Appeal 2009-012895
Application 11/118,707

because of doubts that the invention is patentable, resort to speculation,
unfounded assumptions or hindsight reconstruction to supply deficiencies in
the factual basis. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
In this case, the Examiner has not provided any factual evidence to
show why a person of ordinary skill in the art would have chosen to
integrally form the male coupling member 20 of Lin with the spinal fixation
plate 12 of Lin. See Lin, fig. 4. The Examiner’s statement that “forming in
one piece an article which has formerly been formed in two pieces and put
together involves only routine skill in the art” (see Ans. 13) is not supported
in the record by underlying factual evidence, and thus can not properly serve
as a basis for concluding that it would have been obvious to a person of
ordinary skill in the art to integrally form the male coupling member of Lin
with the spinal fixation plate of Lin.
Similarly, the Examiner has not provided any factual evidence to
show why a person of ordinary skill in the art would have chosen to include
more than one transverse bore 122 on the spinal fixation plate 12 of Lin. See
Lin, fig. 4. The Examiner’s statement that providing the spinal fixation plate
12 of Lin with at least two transverse bores is a “mere duplication of the
essential working parts of a device [that] involves only routine skill in the
art” (see Ans. 7 and 9-10) is not supported in the record by underlying
factual evidence, and thus can not properly serve as a basis for concluding
that it would have been obvious to a person of ordinary skill in the art to
include more than one transverse bore on the spinal fixation plate of Lin.
In conclusion, for the foregoing reasons, the rejection under 35 U.S.C.
§ 103(a) of independent claim 9 and its dependent claims 11-18 and 20, and
of independent claim 22, as unpatentable over Lin, cannot be sustained. See
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Application 11/118,707

In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (If an independent claim is
nonobvious under 35 U.S.C. § 103, then any claim dependent therefrom is
nonobvious).
With respect to the rejection of claims 1-7 and 21 over the combined
teachings of Lin and Richelsoph, the addition of Richelsoph does not
remedy the deficiencies of the Examiner’s proposed modification of Lin as
described above. Accordingly, the rejection of independent claim 1 and its
dependent claims 2-7, and of claim 21, under 35 U.S.C. § 103(a) as
unpatentable over Lin and Richelsoph likewise cannot be sustained.
Finally, regarding the rejections under 35 U.S.C. § 103(a) of claim 19
as unpatentable over Lin and Krag and of claim 8 as unpatentable over Lin,
Richelsoph, and Krag, the addition of Krag does not remedy the deficiencies
of the Examiner’s proposed modification of Lin and of Lin and Richelsoph
as described supra. Accordingly, the rejections of claim 19 as unpatentable
over Lin and Krag and of claim 8 as unpatentable over Lin, Richelsoph, and
Krag also cannot be sustained.
DECISION
The decision of the Examiner is reversed as to claims 1-9 and 11-22.

REVERSED
JRG

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