Ex Parte Ferree

Board of Patent Appeals and Interferences

Oct 31, 2007

10422282 (B.P.A.I. Oct. 31, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRET FERREE
____________

Appeal 2007-3762
Application 10/422,282
Technology Center 3700
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Decided: October 31, 2007
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Before TONI R. SCHEINER, DONALD E. ADAMS, and DEMETRA J.
MILLS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 1, 2, 5-8, and 10,
the only claims pending in this application. We have jurisdiction under 35
U.S.C. § 6(b).

Appeal 2007-3762
Application 10/422,282

INTRODUCTION
The claims are directed to a disc spacer. Claims 1 and 10 are
representative:
1. A disc spacer, comprising:
a device having at least one spherical interface involving convex and
concave surfaces, and wherein the device is configured to articulate with
respect to at least one vertebral endplate.

10. The disc spacer of claim 1, wherein the device is adapted to
articulate with an upper and a lower vertebral endplate.

The Examiner relies on the following prior art references to show
unpatentability:

Büttner-Janz 5,556,431 Sep. 17, 1996

The rejection as presented by the Examiner is as follows:
Claims 1, 2, 5-8, and 10 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Büttner-Janz.
We affirm.

DISCUSSION
Claims 1, 2, 5-8, and 10 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Büttner-Janz. Appellant provides separate arguments
for two groups of claims: (1) claims 1, 2, and 5-8 and (2) claim 10.
Accordingly, we limit our discussion to claims 1 and 10. Claims 2 and 5-8
will stand or fall together with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

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Claim 1:
Claim 1 is drawn to a disc spacer. The disc spacer comprises a device
that:
(1) has at least one spherical interface involving convex and concave
surfaces, and
(2) is configured to articulate with respect to at least one vertebral
endplate.
The Examiner finds that Büttner-Janz teaches a disc spacer that meets
the requirements of Appellant’s claim 1 (Answer 4). For clarity we
reproduce Büttner-Janz’s Figure 1 below:

Figure 1 is stated to show “a median section of a first embodiment of the
prosthesis[ ]1 between two vertebrae” (Büttner-Janz, col. 2, ll. 28-29).
With reference to Figure 1, the Examiner finds that Büttner-Janz
teaches a disc spacer having two interfaces – one at the bottom surface of 3
and one at the top surface of 3 (Answer 4). More specifically, the Examiner

1 According to Büttner-Janz, the prosthesis is an “intervertebral disc
endoprosthesis” (Büttner-Janz, Abstract, see also Title) - a disc spacer.
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Application 10/422,282

finds that Büttner-Janz teaches that these interfaces are convex (id).
According to Büttner-Janz, the “prosthesis plates 1, 2 and the prosthesis core
3 cooperate via spherical articular surfaces 4” (Büttner-Janz, col. 2, l. 42,
emphasis removed). In other words, the convex surfaces of element 3,
interact with the concave surfaces of elements 1 and 2 (Answer 4). We
agree and note that Appellant does not dispute this finding. Accordingly, we
agree with the Examiner that Büttner-Janz teaches a disc spacer comprising
a device that has at least one spherical interface involving convex and
concave surfaces.
Büttner-Janz’s device is inserted between two vertebrae and is
connected to the endplates of the vertebrae (Büttner-Janz, Abstract). In
addition, Büttner-Janz teaches that, as illustrated in Figure 3, “[t]he center of
articulation of the prosthesis is displaced towards the rear relative to the
center of the vertebral endplates . . .” (Büttner-Janz, Abstract). For clarity
we reproduce, Figure 3 below

According to Büttner-Janz, the displacement of the centre of articulation
towards the rear reduces the forces which push the prosthesis towards the
front as a result of the wedge-shaped opening of the vertebral space
(Büttner-Janz, col. 1, ll. 44-47), in addition to providing sufficient space in
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Application 10/422,282

the ventral edge area of the prosthesis plates 1, 2 to receive the bone screws
9 (Büttner-Janz, col. 2, ll. 57-61).
According to the Examiner, Büttner-Janz’s device is configured to
articulate with respect to at least one vertebral endplate, or relative to both
vertebrae (Answer 4-5: bridging sentence). In contrast, Appellant asserts
that “the device of Büttner-Janz includes two components which articulate
with each other, but neither one of them articulate with respect to at least one
vertebral endplate. Rather, they are fused to the endplates using spikes for
attachment purposes” (Br. 4). Therefore, the issue on this appeal is whether
Büttner-Janz teaches a disc spacer that is configured to articulate with
respect to at least one vertebral endplate.
According to claim 1, Appellant’s device is configured to articulate
with respect to (e.g., relative to2) at least one vertebral endplate. However,
as the Examiner points out, there is no requirement in Appellant’s claimed
invention “that the device contact[s] the vertebrae” (Answer 5). To the
contrary, the Examiner finds that Appellant’s claim 1 simply requires that
the device “move relative to the vertebrae” (id.).
Accordingly, the issue distills down to what is encompassed by
Appellant’s use of the phrase “articulate with respect to” as it appears in
claim 1. Our mandate is to give claims their broadest reasonable
interpretation.
Giving claims their broadest reasonable construction ‘serves the
public interest by reducing the possibility that claims, finally
allowed, will be given broader scope than is justified.’
Yamamoto, 740 F.2d at 1571; accord Hyatt, 211 F.3d at 1372;
In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989) (‘An essential

2 Answer 5.
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purpose of patent examination is to fashion claims that are
precise, clear, correct, and unambiguous. Only in this way can
uncertainties of claim scope be removed, as much as possible,
during the administrative process.’).

In re American Academy of Science Tech Center, 367 F.3d 1359, 1364, 70
USPQ2d 1827, 1830 (Fed. Cir. 2004).
To articulate is to “join to allow movement: to form the kind of joint
or connection that allows movement” (http://encarta.msn.com/encnet/
features/dictionary/DictionaryResults.aspx?refid=1861586978). Therefore
the device of Appellant’s claim 1 is configured so that the device and
vertebrae are connected in a manner that allows movement. There is no
dispute on this record that Büttner-Janz’s device is configured in a manner
that allows movement. The question is whether Büttner-Janz’s device
moves with respect, reference, or in relation3 to at least one vertebral
endplate.
As discussed above, and illustrated in Büttner-Janz’s Figure 1,
Büttner-Janz’s device is inserted between two vertebrae and is connected to
the endplates of the vertebrae. Therefore, we agree with Appellant that
Büttner-Janz’s device comprises two components (elements 1 and 24) which
articulate with respect to each other (Br. 4). Accordingly, with reference to
Büttner-Janz’s Figure 1, as the lower vertebrae moves - element 2 articulates
with respect to the upper vertebrae’s base plate to which element 1 is

3 Merriam-Webster’s defines the phrase “with respect to” as “with reference
to” or “in relation to” (http://www.m-w.com/cgi-bin/dictionary?book=
Dictionary&va=with+respect+to).

4 The two components to which Appellant refers are those which “are fused
to the endplates using spikes for attachment purposes” (Br. 4) - specifically
elements 1 and 2.
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attached. Therefore, if element 1 articulates with respect to element 2,
element 1 will necessarily articulate with respect to the vertebral base plate
to which element 2 is attached. The same is true of element 2 and the
vertebral base plate to which element 1 is attached. Stated differently,
Büttner-Janz’s device is configured to articulate with respect to at least one
vertebral endplate. Therefore, we disagree with Appellant’s assertion that
Büttner-Janz’s components do not articulate with respect to at least one
vertebral endplate (Br. 4).
The burden is on the Examiner to set forth a prima facie case of
unpatentability. In re Glaug, 283 F.3d 1335, 1338, 62 USPQ2d 1151, 1152
(Fed. Cir. 2002). To anticipate, every element and limitation of the claimed
invention must be found in a single prior art reference, arranged as in the
claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383, 58
USPQ2d 1286, 1291 (Fed. Cir. 2001). For the foregoing reasons we find no
error in the Examiner’s prima facie case of anticipation. Accordingly, we
affirm the rejection of claim 1 under 35 U.S.C. § 102(b) as being anticipated
by Büttner-Janz. Claims 2 and 5-8 fall together with claim 1.

Claim 10:
Claim 10 depends from and further limits the disc spacer of claim 1,
wherein the device is adapted to articulate with an upper and a lower
vertebral endplate. The Examiner relies on Büttner-Janz as discussed above.
Appellant asserts that Büttner-Janz’s device is not “adapted to articulate with
an upper and a lower vertebral endplate” (Br. 4).
As discussed above, if element 1 articulates with respect to element 2,
element 1 will necessarily articulate with respect to the vertebral base plate
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to which element 2 is attached. The same is true of element 2 and the
vertebral base plate to which element 1 is attached. Stated differently,
Büttner-Janz’s device is adapted to articulate with an upper and a lower
vertebral endplate.
For the foregoing reasons we affirm the rejection of claim 10 under 35
U.S.C. § 102(b) as being anticipated by Büttner-Janz.

CONCLUSION
In summary, we affirm the rejection of claims 1 and 10 under 35
U.S.C. § 102(b) as being anticipated by Büttner-Janz. Claims 2 and 5-8 fall
together with claim 1.
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

Ssc

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

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