Ex Parte Ferree

Board of Patent Appeals and Interferences

May 20, 2008

10191639 (B.P.A.I. May. 20, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRET A. FERREE
____________

Appeal 2008-0284
Application 10/191,639
Technology Center 3700
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Decided: May 20, 2008
____________

Before WILLIAM F. PATE III, TERRY J. OWENS, and
JOHN C. KERINS, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Bret A. Ferree (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 1, 3, and 5-8. We have jurisdiction under 35
U.S.C. § 6(b) (2002). Claims 2 and 4 were canceled prior to this appeal.

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SUMMARY OF DECISION
We REVERSE.
THE INVENTION
Appellants’ invention is a reinforced plug for use within an intradiscal
space between adjacent vertebra. The plug has a pair of opposing,
horizontally spaced apart end plates dimensioned to fit within an intradiscal
space, and a mid-section made of rubber, polymeric, elastomeric, or some
other compressible or resilient material. The mid-section has an initial
height between the end plates, and the height is increased as the end plates
are brought closer to one another.
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A reinforced plug for use within an intradiscal
space between adjacent vertebra, the plug
comprising:

a body having a pair of opposing horizontally
spaced-apart end plates dimensioned to fit within
an intradiscal space;

a mid-section composed of rubber, polymeric,
elastomeric or other compressible or resilient
material having a height disposed between the end
plates; and

wherein the height increases as the end plates are
brought closer to one another.

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THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Zdeblick US 6,402,785 B1 June 11, 2002

The following rejections are before us for review1:
1. Claims 1, 3, 5, and 8 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Zdeblick.
2. Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Zdeblick.

ISSUES
A first issue before us is whether Appellant has shown that the
Examiner erred in finding that the Zdeblick patent anticipates the subject
matter of claims 1, 3, 5, and 8. A second issue before us is whether
Appellant has shown that the Examiner erred in concluding that the Zdeblick
patent renders obvious the subject matter of claims 6 and 7.

1 A rejection of claims 1, 3, and 5-8 under 35 U.S.C. § 112, first paragraph
(written description requirement), that was present in the Final Office Action
dated January 4, 2006, was expressly withdrawn by the Examiner in the
course of this appeal. See, Answer, p. 3.
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FINDINGS OF FACT
The following enumerated findings of fact (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
FF 1. The Zdeblick patent discloses an intervertebral device in the
form of an artificial disc implant having two shells or plates disposed in a
horizontal orientation in use, the plates being separated or spaced apart in a
vertical direction by an insert or spacer having elastic properties. (Zdeblick,
Figs. 7, 8; Col. 4, l. 65-Col. 5, l. 4).
FF 2. The height of the Zdeblick artificial disc implant (defined at
Col. 6, ll. 8-10) may be increased, particularly when the insert is a hydrogel,
by hydrating the hydrogel material to fully expand the spacer. (Zdeblick,
Col. 6, ll. 51-64).
FF 3. An expansion of the spacer of Zdeblick to increase the height of
the implant will cause the upper and lower shells or plates to move farther
apart, increasing the distance or spacing between the plates. (Zdeblick, Figs.
7, 8; Col. 6, ll. 51-64).
FF 4. A reinforced plug structure bounded by two horizontally
spaced-apart end plates, and having a compressible or resilient midsection is
capable of increasing the height of the midsection upon bringing the
endplates closer together. (Specification, p. 15, ll. 13-21; Figs. 21A-C).
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PRINCIPLES OF LAW
Anticipation of a claim exists when each and every element set forth
in the claim is found, either expressly or inherently described, in a single
prior art reference. Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631
(Fed. Cir.), cert. denied, 484 U.S. 827 (1987); In re Cruciferous Sprout
Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). Once a prima facie case of
anticipation has been established, the burden shifts to the Appellant to prove
that the prior art product does not necessarily or inherently possess the
characteristics of the claimed product. In re Best, 562 F.2d 1252, 1255
(CCPA 1977); In re Spada, 911 F.2d 705, 708-09 (Fed. Cir. 1990).
Claims on appeal are not to be confined to specific embodiments
described in the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323
(Fed. Cir. 2005) (en banc). During ex parte prosecution, claims must be
interpreted as broadly as their terms reasonably allow, since Applicants have
the power during the administrative process to amend the claims to avoid the
prior art. In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). The broadest
reasonable meaning of claim terms will be in accord with their ordinary
usage as they would be understood by one of ordinary skill in the art, taking
into account whatever enlightenment by way of definitions or otherwise that
may be afforded by the written description. In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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Section 103 precludes 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., 127 S.Ct. 1727, 1734
(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, 127 S.Ct. at 1734 (Graham factors continue to define the inquiry
that controls).

ANALYSIS
Anticipation rejection of claims 1, 3, 5, and 8
Appellant argues claims 1, 3, 5, and 8 as a single group. We will
address herein claim 1, as it is the only independent claim in that group.
The Examiner rejects claim 1 under 35 U.S.C. § 102(b), asserting that
the Zdeblick patent discloses each and every element of that claim. (Answer
4). Appellant counters that the Examiner has failed to give patentable
weight to certain claim limitations, and that the Examiner has failed to
properly interpret the cited Zdeblick patent in applying that reference to the
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claims, and, as a result, has failed to establish a prima facie case of
anticipation of the claims. (Appeal Br. 3-4).
The Examiner’s reading of the Zdeblick device on the “pair of
horizontally spaced-apart end plates” (Appeal Br., Claims Appendix) recited
in claim 1 is premised on an assertion that,
…(this limitation is met because Zdeblick’s end
plates are in the horizontal position and they are
spaced apart. Applicant has not defined in which
axis (horizontal or vertical) or how they are
horizontally spaced apart) …

Answer 4.
We disagree with the Examiner’s position here. The Examiner, on the
one hand, finds that the plates in Zdeblick are in a horizontal position
(orientation), while, on the other hand, contends that it can not be
determined what constitutes horizontal or vertical in the claim, because
Appellant has not defined this. The Examiner has no apparent problem
accepting and applying the common and ordinary meaning of the term
“horizontal” in reference to the Zdeblick patent, yet seems to be attempting
to hold Appellant’s claim to some higher standard.
Consistent with the application drawings, and the common and
ordinary understanding of “horizontal”, end plates that are “horizontally
spaced apart” are spaced apart in a horizontal direction. The plates in the
Zdeblick patent are spaced apart in a vertical direction. (FF 1). That the
commonly accepted meaning of “horizontal” is intended is also evidenced in
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the fact that claim 1 recites that the reinforced plug is to be used in between
vertebra, with the human vertebral column being disposed substantially
vertically. A horizontal spacing of end plates would be a spacing
substantially perpendicular to this.
This difference between the Zdeblick device and the device set forth
in claim 1 accounts for a further difference between the reference and the
claim. Claim 1 requires that a mid-section element that is composed of
rubber, polymeric, elastomer or other compressible or resilient material,
have a particular height, and that the height is to increase as the end plates
are brought closer to one another.2 (Appeal Br., Claims Appendix). In the
Zdeblick device, a height of the device may be increased, as was also
pointed out by the Examiner, by hydrating the mid-section when it is made
of a hydrogel. (FF 2). However, the increase in the height of the device
comes with an increase in the distance or separation of the plates in
Zdeblick, which is the opposite of what is required by the claim. (FF 3).

2 The Examiner asserts that the claim language, “wherein the height
increases as the end plates are brought closer to one another” is not to be
afforded any patentable weight, in the absence of any distinguishing
structure, in that it involves intended use and is functional language.
(Answer 4). There is not, however, an absence of distinguishing structure,
in that the claim calls for the presence of two horizontally spaced apart end
plates with the compressible or resilient mid-section. That structure alone is
capable of bringing about the claimed structural change of increasing the
height of the mid-section with the end plates being brought together. (FF 4).
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The Examiner has failed to establish a prima facie case of anticipation
with respect to claim 1. The rejection of claims 1, 3, 5, and 8 under 35
U.S.C. § 102(b) will, accordingly, be reversed.

Obviousness rejection of Claims 6 and 7
Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) in view of the
Zdeblick patent. Both claims depend, either directly or indirectly, from
claim 1. The Examiner contends that the elements found in those claims
would have been obvious variants or modifications of the artificial disc
implant construction disclosed in Zdeblick.
We found above, with respect to claim 1, that the Zdeblick patent
failed to identically disclose the claimed reinforced plug having horizontally
spaced-apart end plates and a resilient midsection that increases in height as
the end plates are brought closer together. We see no evidence or logical
reasoning presented in this rejection under 35 U.S.C. § 103(a), that tends to
show that it would have been obvious to modify the Zdeblick device such
that it would include this claimed feature.
The rejection of Claims 6 and 7 under 35 U.S.C. § 103(a) will be
reversed.
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CONCLUSION
We conclude that reversible error exists in the rejection of claims 1, 3,
5, and 8 under 35 U.S.C. § 102(b), and that reversible error exists in the
rejection of claims 6 and 7 under 35 U.S.C. § 103(a).

DECISION
The decision of the Examiner to reject claims 1, 3, and 5-8 is reversed.

REVERSED

vsh

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