Ex Parte Ferree

Board of Patent Appeals and Interferences

Feb 23, 2010

10754042 (B.P.A.I. Feb. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRET A. FERREE
____________

Appeal 2009-001899
Application 10/754,042
Technology Center 3700
____________

Decided: February 23, 2010
____________

Before JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Bret A. Ferree (Appellant) appeals under 35 U.S.C. § 134 (2002) from
the Examiner’s decision rejecting claims 2, 5, 9, and,12-14. Claims 1, 8, 10,
and 11 have been canceled and claims 3, 4, 6, and 7 have been withdrawn
from consideration by the Examiner. We have jurisdiction over this appeal
under 35 U.S.C. § 6 (2002).

THE INVENTION
Appellant’s invention relates to an artificial disc replacement
including endplates 102, 104 having a central thinned region or void 106 and
an articulating disc spacer 110. Spec. 3, ll. 18-21 and figs. 1A and 1B.
Claim 9 is representative of the claimed invention and reads as
follows:
9. An artificial disc replacement (ADR) adapted for installation
between upper and lower vertebral bodies, comprising:

first and second endplate components, each having a first
surface adapted for fixation to a respective vertebral body and a
second surface facing into an intervertebral disk space;

the second surface of each endplate component including a
concavity resulting in a thinned region or a perforation in a
central region of each component;

a disc spacer disposed between the first and second endplate
components, the disc spacer having upper and lower convex
surfaces that cooperate with the concavities of the endplate
components; and

wherein the disc spacer is not rigidly attached to either of the
endplate components.

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Buettner-Janz1 US 4,759,766 Jul. 26, 1988
Büttner-Janz 2 US 5,401,269 Mar. 28, 1995
Zdeblick US 6,881,228 B2 Apr. 19, 2005

The following rejections are before us for review:3
The Examiner rejected claims 5, 9, and 12-14 under 35 U.S.C. § 112,
1st paragraph, for failing to comply with the written description
requirement.4
The Examiner rejected claims 5, 9, 12, and 14 under 35 U.S.C. §
102(b) as anticipated by Büttner-Janz ‘269.5

1 Hereafter Buettner-Janz ‘766.
2 Hereafter Büttner-Janz ‘269.
3 Since claims 10 and 11 were canceled by Appellant’s After-Final
Amendment filed Aug. 27, 2007, the Examiner has withdrawn the rejection
of claims 10 and 11 under 35 U.S.C. § 102(b) as anticipated by Büttner-Janz
‘269 and of claim 10 under 35 U.S.C. § 102(b) as anticipated by Buettner-
Janz ‘766. See Ans. 3.
4 It is unclear to us why the Examiner has omitted claim 2 from this
rejection. Claim 2 depends from independent claim 9, which has been
rejected by the Examiner under 35 U.S.C. § 112, 1st paragraph, for failing to
comply with the written description requirement. Hence, in accordance with
the Examiner’s reasoning, claim 2 should also have been rejected under 35
U.S.C. § 112, 1st paragraph, for failing to comply with the written
description requirement.
5 We note that Appellant is only arguing the rejection of dependent
claims 5 and 14. See Br. 2, footnote [1]. However, since dependent claims
5 and 14 include all the limitations of independent claims 9 and 12 from
which they depend, respectively, for the purpose of this appeal we will
assume that Appellant appeals the Examiner’s rejection of claims 9 and 12
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The Examiner rejected claim 9 under 35 U.S.C. § 102(b) as
anticipated by Buettner-Janz ‘766.6
The Examiner rejected claims 2 and 13 under 35 U.S.C. § 103(a) as
unpatentable over Büttner-Janz ‘269 and Zdeblick.

THE ISSUES
1. Does the originally filed application support the limitation of a “not
rigidly attached” disc spacer, as called for by each of independent
claims 9 and 12?
2. Does the originally filed application support the limitation of “loosely
coupling,” as called for by each of claims 5 and 14?
3. Would the combined teachings of Büttner-Janz ‘269 and Zdeblick
have prompted a person of ordinary skill in the art to provide a
compressible disc spacer as taught by Zdeblick for the artificial disc
replacement of Büttner-Janz ‘269?

SUMMARY OF DECISION
We AFFIRM-IN-PART and ENTER A NEW GROUND OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b).

PRINCIPLES OF LAW
Written Description

under 35 U.S.C. § 102(b) as anticipated by Büttner-Janz, but has merely
chosen not to make any arguments with respect thereto.
6 This rejection is not argued by Appellant. See Ans. 3.
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To satisfy the written description requirement, the disclosure must
convey with reasonable clarity to skilled artisans that the Appellants were in
possession of the claimed invention as of the filing date. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). “The invention is, for
purposes of the ‘written description’ inquiry, whatever is now claimed.” Id.
at 1564.

Indefiniteness
A specification must conclude with claims "particularly pointing out
and distinctly claiming the subject matter which the applicant regards as his
invention." 35 U.S.C. § 112, ¶ 2 (2000). The essence of the requirement
under 35 U.S.C. § 112, second paragraph, that the claims must be definite, is
that the language of the claims must make it clear what subject matter the
claims encompass. In re Hammack, 427 F.2d 1378, 1380-1381 (CCPA
1970).
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether "those skilled in the art would understand what is claimed when the
claim is read in light of the specification." Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
The primary purpose of the definiteness requirement is to ensure that
the claims are written in such a way that they give notice to the public of the
extent of the legal protection afforded by the patent, so that interested
members of the public, e.g., competitors of the patent owner, can determine
whether or not they infringe. All Dental Prodx, LLC v. Advantage Dental
Prods., Inc., 309 F.3d 774, 779-80 (Fed. Cir. 2002)
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Obviousness
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 ("While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.")

OPINION
The anticipation rejection over Büttner-Janz ’269
In the Final Action mailed Jan. 22, 2007, the Examiner rejected claims
9 and 12 under 35 U.S.C. § 102(b) as anticipated by Büttner-Janz ‘269.
Appellant has not furnished any substantive arguments against the
Examiner’s anticipation rejection. See Br. 2 and Ans. 3. Therefore, we
summarily affirm the Examiner’s rejection of claims 9 and 12 under 35
U.S.C. § 102(b) as anticipated by Büttner-Janz ‘269.

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The anticipation rejection over Buettner-Janz ’766
In the Final Action mailed Jan. 22, 2007, the Examiner rejected claim
9 under 35 U.S.C. § 102(b) as anticipated by Buettner-Janz ‘766. Appellant
has not furnished any substantive arguments against the Examiner’s
anticipation rejection. See Ans. 3. Therefore, we summarily affirm the
Examiner’s rejection of claim 9 under 35 U.S.C. § 102(b) as anticipated by
Buettner-Janz ‘766.

Issue (1)
Each of claims 9, 12, and 13 requires a “disc spacer [that] is not
rigidly attached to either of the endplate components.” Emphasis added.
The Examiner takes the position that the Specification does not support the
limitation of “not rigidly attached.” Ans. 5. Appellant points out that the
disc spacer 110 is described as “articulating.” Br. 3. See also Spec. 3, l. 20.
Hence, Appellant concludes that, “the spacer could not articulate if it were to
be rigidly attached to the endplates.” Br. 3. The Examiner responds that,
“articulation and rigidity of attachment are unrelated.” Ans. 8. The
Examiner opines that, “the natural disc is compressible and articulating, yet
it is also rigidly attached to its endplates.” Id.
At the outset, we note that an ordinary and customary meaning of the
term “articulate” is “jointed,” hence an “articulating” disc spacer is a
“jointed” disc spacer. MERRIAM WEBSTER’S COLLEGIATE DICTIONARY (10th
Ed. 1997). A person of ordinary skill in the art would have readily
understood that an articulating disc spacer, i.e., a jointed disc spacer, allows
for slight movement of the vertebraea. However, we do not agree with
Appellant’s position that “the spacer could not articulate if it were to be
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rigidly attached to the endplates.” Br. 3. We find that, just because the disc
spacer is articulating (jointed) does not mean that it is “not rigidly attached.”
For example, as the Examiner opined, although a natural disc is rigidly
attached to vertebraea, nonetheless, the natural disc spacer allows for slight
movement of the vertebraea. See Ans. 8. As such, we find that the disc
spacer can be rigidly attached and still be articulating (jointed) because of
the nature of the material that constitutes the disc spacer, which allows for
slight movement. Notably, Appellant’s Specification does not describe the
spacer as moving or articulating relative to the endplate components.
Accordingly, we agree with the Examiner that the term “articulating” in
Appellant’s Specification does not convey with reasonable clarity to a
person of ordinary skill in the art that Appellant’s disc spacer is “not rigidly
attached,” as called for by claims 9, 12, and 13.
Therefore, the rejection of claims 9 and 12-13 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
is sustained.

Issue (2)
Each of claims 5 and 14 requires a “member loosely coupling the disc
spacer to at least one of the endplate components.” Emphasis added. The
Examiner takes the position that the Specification does not support the
limitation of “loosely coupling.” Ans. 5. Pointing to Figure 3 of
Appellant’s Drawings, Appellant argues that because the hole 304 is larger
than the tether device 302, “‘tethering’ in this context means ‘loose
coupling.’” Br. 3. The Examiner responds that “it is unclear from figure 3
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how large the hole is that the tether fits [in], and it would additionally be a
stretch to claim ‘loosely’ since this is a relative [term] in itself.” Ans. 8.
For the reasons expressed below in our new ground of rejection, the
Specification does not clearly convey to a person of ordinary skill in the art
what is meant by the limitation of claims 5 and 14 calling for a “loose
coupling” of the disc spacer and at least one of the endplate components. As
noted by the Examiner, the meaning of the term “loosely” has not been
sufficiently defined to permit determination as to whether the disclosure
conveys with reasonable clarity to skilled artisans that Appellant was in
possession of the claimed invention as of the filing date.
We shall not sustain the rejection of claims 5 and 14 under
35 U.S.C. 112, first paragraph, for failing to comply with the written
description requirement. Likewise, we shall not sustain the rejection of
claims 5 and 14 under 35 U.S.C. 102(b) as anticipated by Büttner-Janz ‘269.
For the reasons expressed below, claims 5 and 14 are indefinite. Therefore,
the lack of written description rejection and the prior art rejections must fall
because they are necessarily based on speculative assumptions as to the
meaning of the claim. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962).
It should be understood, however, that our decision in this regard is based
solely on the indefiniteness of the claimed subject matter, and does not
reflect on the adequacy of the prior art evidence applied in support of the
rejections or the Examiner’s position that a “loose coupling” of the disc
spacer and at least one of the endplate components is not adequately
supported in the Specification.

NEW GROUND OF REJECTION
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We make the following new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b)(2007).
Claims 5 and 14 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the invention which applicant regards as the invention.
The definiteness of claim language must be analyzed, not in a
vacuum, but always in light of the teachings of the prior art and the
particular application disclosure as it would be interpreted by one possessing
the ordinary level of skill in the pertinent art. In re Moore, 439 F.2d 1232,
1235 (CCPA 1971).
In this case, Appellant has not identified, nor could we find, disclosure
in the Specification that clearly sets forth the definition of the term
“loosely.” An ordinary and customary meaning of the term “loose” is “not
rigidly fastened; SLACK.” MERRIAM WEBSTER’S COLLEGIATE DICTIONARY
(10th Ed. 1997). Therefore, an ordinary and customary meaning of the
phrase “loosely coupling” is a non-rigidly fastened or slack coupling.
However, Appellant’s Specification does not provide clear guidance or a
standard from which a person ordinarily skilled in the art would be able to
determine what reasonably constitutes “loosely coupling.” Even if a claim
term’s definition can be reduced to words, the claim is still indefinite if a
person of ordinary skill in the art cannot translate the definition into
meaningfully precise claim scope. Haliburton Energy Services, Inc. v. M-I
LLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008). While patentees are allowed to
claim their inventions broadly, they must do so in a way that distinctly
identifies the boundaries of their claims. Id. at 1253. In this case, we cannot
determine what constitutes “loosely coupling” within the context of the
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claimed invention because we cannot ascertain how loose the tethered
coupling actually is. We agree with the Examiner that, “it is unclear from
figure 3 how large the hole is that the tether fits [in].” Ans. 8. Appellant has
not identified, and the disclosure in the Specification has not clearly set forth
a definition of the term “loosely” such that a person ordinarily skilled in the
art would be able to determine what constitutes “loosely coupling.”
In light of the above, we conclude that claims 5 and 14 are indefinite
for failing to particularly point out and distinctly claim the invention which
applicant regards as the invention.

Issue (3)
The Examiner found that Büttner-Janz ‘269 discloses all the features
of independent claims 9 and 12. Ans. 6 and 7. However, with respect to
claims 2 and 13, which depend from independent claims 9 and 12,
respectively, the Examiner found that Büttner-Janz ‘269 fails to disclose a
compressible disc spacer. Ans. 7. The Examiner turned to Zdeblick to show
an artificial disc replacement “formed of compressible materials in order to
better mimic the properties similar to a natural disc.” Id. Finally, the
Examiner concluded that:
It would have been obvious to one having
ordinary skill in the art at the time the invention
was made to combine Buttner- Janz's ADR
having two endplates and a spacer, with the
teaching of Zdeblick's to make the spacer of
ADR's of a compressible material, in order to
provide an ADR which more mimics the
properties of the natural disc in which it replaces.
Ans. 7.
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Appellant argues that it would not have been obvious to make the
artificial disc replacement of Büttner-Janz ‘269 from a compressible material
according to the disclosure of Zdeblick because the artificial disc
replacement of Büttner-Janz ‘269 requires good sliding properties and not
compressibility. Br. 4. According to Appellant, the Examiner’s proposed
modification would not “better mimic the properties similar to a natural
disc,” but would rather change the principle of operation of the artificial disc
replacement of Büttner-Janz ‘269. Id. In response, the Examiner takes the
position that because Büttner-Janz ‘269 does not teach away from
compressibility, a compressible core can also provide for good sliding
properties. Ans. 9. The Examiner concludes that, “it would be obvious to
substitute this compressible spacer [of Zdeblick] into Buttner-Janz’s [‘269]
implant.” Id.
It is our finding that Büttner-Janz ‘269 discloses an artificial disc
replacement including metallic bottom and top plates 1, 2 having a rim 8 and
a plastic (such as high density polyethyelene) prosthetic core 3 (disc spacer)
having a collar 7. Büttner-Janz ‘269, col. 2, l. 63 through col. 3, l. 16 and
figs. 1-4. Zdeblick discloses an artificial disc implant 10 including a bio-
compatible upper shell 12, a bio-compatible lower shell 14, and a spacer 16
that has “elastic properties substantially equivalent to the natural elastic
properties equivalent to the natural elastic properties of the human body’s
intervertebral disc,” such as various hydrogels. Zdeblick, col. 5, ll. 5-9; col.
6, ll. 54-55; and fig. 3.
Although we agree with the Examiner that a compressible core can
also provide for good sliding properties, for the following reasons we find
that substituting Zdeblick’s hydrogel spacer 16 for the high density
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polyethylene prosthetic core 3 (disc spacer) of Büttner-Janz ‘269 would
change the principle of operation of the artificial disc replacement of
Büttner-Janz ‘269. See Br. 4. If the proposed modification or combination
of the prior art would change the principle of operation of the prior art
invention being modified, then the teachings of the references are not
sufficient to render the claims prima facie obvious. In re Ratti, 270 F.2d 810
(CCPA 1959).
The artificial disc replacement of Büttner-Janz ‘269 is designed such
that on rotation the prosthesis core 3 rises at the flanks of articular surfaces
6. This in turn forces the plates 1, 2 apart helically against the load of the
body weight on them. Hence, the body weight causes a counteracting
moment that attempts to rotate the plates back into the neutral position.7
Büttner-Janz ‘269, col. 3, ll. 31-39. The artificial disc replacement of
Zdeblick, however, has a spacer 16 whose height H2 varies according to the
applied load and its elastic properties. Specifically, Zdeblick discloses that
more than 50% of the spacer height is unconstrained by the upper and lower
shells 12, 14, thereby “permitting substantial movement in the spacer to
absorb compressive loads applied to implant 10.” Zdeblick, col. 6, ll. 23-30.
Emphasis added. As such, the principle of operation for the artificial disc
replacement of Büttner-Janz requires a slidable disc spacer, whereas the disc
spacer of Zdeblick is compressible.
It is not apparent to us whether the disc spacer of Zdeblick, which
permits movement in the spacer to absorb compressive loads, would be able
to slide in the disc replacement of Büttner-Janz so as to create a

7 The neutral position is when the articular surfaces 6 of plates 1, 2, and
core 3 are congruent. Büttner-Janz, col. 3, ll. 5-7 and figs. 1 and 3.

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counteracting moment that attempts to rotate the plates of Büttner-Janz back
into the neutral position. In other words, we find that if the compressible
disc spacer of Zdeblick is substituted into the artificial disc replacement of
Büttner-Janz ‘269, as proposed by the Examiner, it would tend to absorb the
applied compressive loads by movement in the spacer and not by sliding,
that is, by movement of the spacer itself. Therefore, we agree with
Appellant that the Examiner’s proposed combination would change the
mode of operation of Büttner-Janz ‘269. Accordingly, the modification
proposed by the Examiner of providing the compressible disc spacer of
Zdeblick to the artificial disc replacement of Büttner-Janz ‘269 would not
have been obvious to the person of ordinary skill in the art. For the above
stated reasons, we conclude that the Examiner has not discharged the initial
burden of establishing a prima facie case of obviousness of the subject
matter of claims 2 and 13. The rejection cannot be sustained.

CONCLUSIONS
1. The originally filed application does not support the limitation of a
“not rigidly attached” disc spacer, as called for by each of independent
claims 9 and 12.
2. We enter a new ground of rejection of claims 5 and 14 under 35
U.S.C. § 112, second paragraph because the scope of the limitation
“loosely coupling” is not clear, and that, accordingly, we cannot
determine whether the limitation “loosely coupling” lacks written
description support.
3. The combined teachings of Büttner-Janz ‘269 and Zdeblick would not
have prompted a person of ordinary skill in the art to provide a
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compressible material as taught by Zdeblick for the artificial disc
replacement of Büttner-Janz ‘269.

DECISION
The Examiner’s decision to reject claims 9, 12, and 13 under 35
U.S.C. § 112, 1st paragraph, for failing to comply with the written
description requirement is affirmed.
The Examiner’s decision to reject claims 5 and 14 under 35 U.S.C. §
112, 1st paragraph, for failing to comply with the written description
requirement is reversed.
The Examiner’s decision to reject claims 9 and 12 under 35 U.S.C. §
102(b) as anticipated by Büttner-Janz ‘269 is affirmed.
The Examiner’s decision to reject claims 5 and 14 under 35 U.S.C. §
102(b) as anticipated by Büttner-Janz ‘269 is reversed.
The Examiner’s decision to reject claim 9 under 35 U.S.C. § 102(b) as
anticipated by Buettner-Janz ‘766 is affirmed.
The Examiner’s decision to reject claims 2 and 13 under 35 U.S.C. §
103(a) as unpatentable over Büttner-Janz ‘269 and Zdeblick is reversed.
We enter a new ground of rejection of claims 5 and 14 under 35
U.S.C. § 112, second paragraph.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2007). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the proceeding will be
remanded to the examiner. . . .
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

mls

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