Ex Parte Ferree

Board of Patent Appeals and Interferences

May 24, 2010

10652842 (B.P.A.I. May. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRET A. FERREE
____________

Appeal 2009-006515
Application 10/652,842
Technology Center 3700
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Decided: May 24, 2010
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Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and FRED A.
SILVERBERG, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-006515
Application 10/652,842

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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 20-25, 29, and 31. Claims 17, 18,
and 26 have been canceled. Claims 1-16, 19, 27, 28, 30, 32, and 33 have
been withdrawn from consideration. We have jurisdiction over this appeal
under 35 U.S.C. § 6 (2002).

The Invention
Appellant's claimed invention is directed to cemented artificial disc
replacements. Spec. 2:2-4.
Claim 20, reproduced below, is illustrative of the claimed invention.
20. A system including an artificial disc
replacement (ADR) configured for placement
within a vertebral disc space between opposing
vertebral endplates, the ADR comprising:
a component forming a cavity between the
component and one of the vertebral endplates; and
a path to fill the cavity with cement after the
component is installed.

The Rejections
Appellant seeks review of the Examiner's rejections of claims 20-25
and 31 under 35 U.S.C. § 102(b) as anticipated by U.S. 4,759,766 issued to
Buettner-Janz (Jul. 26, 1988)1; and of claims 20-25, 29, and 31 under §

1 The Examiner states the rejection as "anticipated by or, in the alternative
… as obvious over Buettner-Janz." Ans. 3. However, the rejection that
follows does not have an obviousness analysis. The Examiner then provides
an obviousness analysis with Buettner-Janz in view of Masini. Ans. 4-5.
Thus, we understand the "alternative" obviousness rejection to be the
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103(a) as unpatentable over Buettner-Janz and U.S. 6,273,891 B1 issued to
Masini (Aug. 14, 2001).

SUMMARY OF DECISION
We AFFIRM.

ISSUES
Claim 20 requires an artificial disc replacement having a component
forming a cavity and a path to fill the cavity with cement after the
component is installed. The Examiner found that Buettner-Janz describes an
artificial disc having a cavity and teeth that define a channel capable of
being used to fill the cavity with cement. Ans. 3. Thus, the Examiner
rejected claim 20 as being anticipated by, or in the alternative, obvious in
view of Buettner-Janz. Id. Appellant argues that cement could not be filled
between the spikes (teeth) because the teeth in Buettner-Janz would be fully
embedded into the bone in a complete installation; a partial installation
would be counter to the intended use set forth by Buettner-Janz. Appeal Br.
3. Appellant argues this rejection of claims 20-25 and 31 as a group.
Appeal Br. 2. We select claim 20 as representative of this group, with
claims 21-25 and 31 standing or falling with claim 20. 37 C.F.R. §
41.37(c)(1)(vii) (2007).
Thus, the first issue presented in this appeal is whether the end plate
of Buettner-Janz, with its cavity below the plane guide rim 2 and the teeth 3,
describes a system including an artificial disc replacement component

obviousness rejection of claims 20-25, 29, and 31 as unpatentable over
Buettner-Janz and Masini. See Ans. 4-5.
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having a path for filling the cavity with cement after the component is
installed.
The Examiner alternatively rejected claim 20, and claims 21-25, 29,
and 31 as obvious over the combined teachings of Buettner-Janz and Masini.
Ans. 4. In this rejection, the Examiner additionally found that Masini
teaches an injection system including an instrument for pressurizing the
cement to fill and seal the space (cavity) between a prosthetic and a bone.
Ans. 4, 6. The Examiner concluded that it would have been obvious to
modify the prosthetic of Buettner-Janz to include an injection system as
taught in Masini in order to fill and seal the space between the bone and
prosthetic with cement. Ans. 4. Appellant argues that there is no teaching
or suggestion in Masini to utilize the cement pressurization system in
Buettner-Janz. Appeal Br. 4. Appellant argues claims 20-25, 29, and 31
together as a group. We select claim 20 as representative of this group, with
claims 21-25, 29, and 31 standing or falling with claim 20. 37 C.F.R. §
41.37(c)(1)(vii) (2007).
Thus, the second issue presented in this appeal is whether the
Examiner has articulated a reason with rational underpinning supporting the
proposed combination of Buettner-Janz's prosthetic disc and Masini's cement
injecting system.

ANALYSIS
Buettner-Janz
Appellant's argument is essentially that the device of Buettner-Janz
would have to be installed incorrectly or incompletely in order for cement to
be filled in between the teeth. Appeal Br. 2-3; Reply Br. 1. Thus, according
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to Appellant, Buettner-Janz fails to meet the "after the component is
installed" limitation because the anchors (teeth) must be "fully imbedded"
for one of ordinary skill in the art to consider the component "installed."
Reply Br. 1. However, claim 20 merely requires that the system have a path
with a function of allowing the cavity to be filled with cement "after the
component is installed." Notably, claim 20 does not require that the
component have any particular shape or be installed in any particular way.
We find that Buettner-Janz describes an artificial disc replacement
component (end plate) formed in such a shape as to have a cavity, below the
plane guide rim 2, which can be filled with bone cement, and a number of
teeth 3, which give the end plate anchorage in the vertebrae. Col. 4, l. 66 to
col. 5, l. 2, col. 5, ll. 27-30, figs. 5-7. The Examiner's proposed reading of
the claimed subject matter on Buettner-Janz is that the teeth of the
component can be implanted into the vertebrae while leaving a path between
the teeth for cement to be introduced into the cavity. Ans. 3, 5-6. Thus,
when used as proposed by the Examiner, the component in Buettner-Janz is
fully "installed" when the teeth are in the bone, but not in so far as to close
off the cement path. The teaching in Buettner-Janz that anchorage can be
effected by edge teeth or with bone cement (col. 5, ll. 1-2) belies Appellant's
argument that cement could not be filled between the spikes (teeth) because
the teeth in Buettner-Janz would be fully embedded into the bone in a
complete installation or that a partial installation would be counter to the
intended use set forth by Buettner-Janz. While the introduction of cement
into the path may be required to fully install the artificial disc as a whole,
claim 20 is not so limited as to preclude the Examiner's particular reading of
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the artificial disc replacement of claim 20 on the artificial disc replacement
of Buettner-Janz.

Buettner-Janz in view of Masini
Appellant first argues that the Examiner's rejection of claims 20-25,
29, and 31 as unpatentable over Buettner-Janz and Masini is actually only a
rejection of claim 29. Appeal Br. 3. However, the Examiner lists claims 20-
25, 29, and 31 in the statement of the rejection, and provides findings and
analysis pertinent to the limitations of claims 20-25, 29, and 31. Ans. 4-5.
The Examiner's rejection is a proposed combination of Buettner-Janz
and Masini. Ans. 4-5. In particular, the Examiner finds that Masini
discloses a "system (fig. 3) including an instrument (43) for pressurizing the
cement" (Ans. 4), the system being "the teaching of Masini to use an injector
(43) and a path (45)" (Ans. 6). These findings are relevant to how the
injector is used - a path - which is a limitation of claim 20. The Examiner
makes explicit findings regarding claims 21-25 and 31. Ans. 5. Clearly, the
Examiner discusses the injector of Masini to address claim 29. Ans. 4.
Therefore, the Examiner has made the pertinent findings and analysis, albeit
tersely, regarding all of claims 20-25, 29, and 31, as unpatentable over
Buettner-Janz and Masini.
Appellant argues that the prior art does not teach or suggest the use of
cement pressurization in Buettner-Janz. Appeal Br. 4. This argument is not
persuasive. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007)
("[w]e begin by rejecting the rigid [TSM] approach of the Court of
Appeals."). The Examiner concluded that it would have been obvious to
modify the prosthetic (artificial disc) of Buettner-Janz to include an injection
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system and instrument as taught in Masini. Ans. 4. More specifically, the
Examiner proposes to modify the system of Buettner-Janz to use an injector
43 and path 45, as taught by Masini, as a substitute for filling the cavity with
cement prior to implantation. Ans. 6. The reason for this modification,
according to the Examiner, is "to fill and seal [the] space between prosthetic
and bone with the cement." Id. The Examiner noted that the modification
"amounts to mere substitution of one functionally equivalent cement
delivery system for another." Id.
We find that Buettner-Janz teaches to fix the artificial disc implant to
bone using cement (col. 5, ll. 1-2, 27-30) but does not describe how to fill
the cavity or anchor the disc component with the cement. We find that
Masini teaches an implant that is affixed to a bone using cement. Col. 5, ll.
28-42. In particular, we find that the cement is introduced between the
implant and the bone by way of port 34 or stem 45, which serves as a path to
distribute the cement, and that a particular injector device 43 may be used to
inject the cement (col. 5, ll. 28-42, 44-55, figs. 3, 4).
The Examiner classifies the proposed combination "to modify the
prosthetic of Buettner-Janz . . . to include an[] injection system as taught by
Masini" as a "substitution" to "fill and seal [the cavity]." Ans. 4. While the
Examiner's rejection may not be a model of clarity, a reading of Masini
suggests an "injector system," as alluded to by the Examiner, is the injector
device 43 and the pathway 45 that serves to inject and direct cement into the
cavity between the prosthetic and the bone. The Examiner's discussion of
Masini's teaching to use an injector 43 and a path 45 as a substitute for
filling the cavity with cement (Ans. 6) further clarifies that this is what was
meant by the Examiner. Buettner-Janz is silent as to how to add the cement
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but Masini explicitly describes a method and structure for adding cement.
Thus, the Examiner's proposed combination ("substitution") appears to be
nothing more than taking a known prosthetic disc component that has a
cavity requiring bone cement (Buettner-Janz) and utilizing a known method
for injecting bone cement into prosthetic cavities (Masini). See KSR, 550
U.S. at 417 ("if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.").

CONCLUSIONS
The end plate of Buettner-Janz, with its cavity below the plane guide
rim 2 and the teeth 3, is an artificial disc replacement component having a
cavity and a path for filling the cavity with cement after the component is
installed. Thus, the Examiner did not err in finding that Buettner-Janz
describes each limitation of claim 20. Likewise, we are not persuaded of
error in the Examiner's rejection of claims 21-25 and 31.
The Examiner, in rejecting claims 20-25, 29, and 31, has articulated a
reason with rational underpinning for combining the disc of Buettner-Janz
and the cement injection system of Masini. Thus, we are not persuaded of
error in the Examiner's rejection of claims 20-25, 29, and 31.
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DECISION
We affirm the Examiner's decision as to claims 20-25, 29, and 31.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

AFFRIMED

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