Ex Parte Ferree

Board of Patent Appeals and Interferences

May 15, 2007

10426995 (B.P.A.I. May. 15, 2007)

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for publication in and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BRET A. FERREE
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Appeal 2006-0423
Application 10/426,995
Technology Center 3700
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Decided: May 15, 2007
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Before TERRY J. OWENS, STUART S. LEVY and ANTON W. FETTING,
Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF CASE
This appeal involves claims 1-9, the only claims pending in this application.
We have jurisdiction over the appeal pursuant to 35 U.S.C. §§ 6 and 134.

We AFFIRM-IN-PART.

Appeal 2006-0423
Application 10/426,995

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The Appellant invented an artificial intervertebral disc replacement and repair.
An understanding of the invention can be derived from a reading of exemplary
claim 1, which is reproduced below.
1. Apparatus for limiting the movement of a prosthetic device situated
between opposing bones, comprising:
an articulating device;
an anchoring unit adapted for fastening to at least one of the bones;
and
a link member coupling the articulating device to the anchoring unit,
thereby facilitating a limited degree of movement of the device.
This appeal arises from the Examiner’s final rejection, mailed June 30, 2005.
The Appellant filed a brief in support of the appeal on December 7, 2005, and the
Examiner mailed an answer to the appeal brief on October 5, 2006. The Appellant
presented an oral argument on Apr. 24, 2007.

PRIOR ART
The prior art references of record relied upon by the Examiner in rejecting the
appealed claims are:
Doty US 4,599,086 Jul. 8, 1986
Michelson US 6,190,388 B1 Feb. 20, 2001
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REJECTION 1
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Claims 1-5 and 7-9 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Doty.
Claims 1-4, 6, and 7 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Michelson.
Claims 1-4 and 7-9 stand provisionally rejected1 under the judicially created
doctrine of obviousness-type double patenting as claiming the same subject matter
as claims 5 and 8 of copending Application No. 10/754,042.

ISSUES
The issues pertinent to this appeal are
• Whether the Examiner was correct in rejecting claims 1-5 and 7-9 under 35
U.S.C. § 102(b) as anticipated by Doty.
o Whether Doty’s artificial disk replacement (Doty, Fig. 1:12), plate
(Doty, Fig. 7:66), and screw (Doty, Fig. 7:68) are an articulating
device, anchoring unit, and link member.
o Whether Doty’s screw (Doty, Fig. 7:68) as a link member is capable
of facilitating a limited degree of movement of the device.

1 The Appellant did not raise this as an issue in the Brief.
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Application 10/426,995

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• Whether the Examiner was correct in rejecting claims 1-4, 6, and 7 under 35
U.S.C. § 102(b) as anticipated by Michelson.
o Whether Michelson’s cylindrical fusion implant (Michelson, Fig.
1:10), variable angle screw (Michelson, Fig. 1:30), and spinal rod
(Michelson, Fig. 3:50) are an articulating device, anchoring unit, and
link member.
o Whether Michelson’s spinal rod (Michelson, Fig. 3:50) as a link
member is capable of facilitating a limited degree of movement of the
device.
In particular, the Appellant contends that a person of ordinary skill in the art
would understand an articulating device to be moveable in operation.

FACTS PERTINENT TO THE ISSUES
The following Findings of Fact (FF), based upon a preponderance of
substantial evidence, are pertinent to the above issues.
01. The Specification does not contain a lexicographic definition of the word
“articulating” or the phrase “articulating device.” Indeed the only use of
the word “articulating” in the disclosure as filed is in the claims.
02. The use of the phrase “articulating device” in the only independent
claim, claim 1, would clearly be construed by a person of ordinary skill
in the art as within the anatomical context because of the preamble
reference to “movement of a prosthetic device situated between
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opposing bones” coupled with the reference to those bones in the body
of claim 1 relative to the anchoring unit.
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03. There are several definitions for the word “articulate,” but a person of
ordinary skill in the art would understand it to be among those within an
anatomical context.
04. The pertinent definitions are, as a transitive verb, to unite by forming a
joint, and as an intransitive verb, to form a joint. Because this definition
merely describes articulating in terms of joints, the definition of joint
becomes material. Again, there are many definitions, but that within an
anatomical context is, as a noun, a point of articulation between more or
less moveable parts, as between bones or between segments in the leg of
an arthropod2.
05. Thus, in an anatomical context, articulating means joining moveable
parts.
06. Doty’s artificial disk replacement (Doty, Fig. 1:12), plate (Doty, Fig.
7:66), and screw (Doty, Fig. 7:68) are a device placed between bones,
anchoring unit, and link member. Once installed, Doty’s artificial disk
replacement forms a joint that does not move relative to the bones to
which it is attached. However, during installation, until all the anchoring
screws and pins are in place, while the artificial disk replacement is in
place, it forms a joint that does move relative to the bones between
which it is placed.

2 Webster’s II New Riverside University Dictionary, 1994.
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07. Michelson’s cylindrical fusion implant (Michelson, Fig. 1:10), variable
angle screw (Michelson, Fig. 1:30), and spinal rod (Michelson, Fig.
3:50) are a device placed between bones, anchoring unit, and link
member. Once installed, Michelson’s cylindrical fusion implant forms a
joint that does not move relative to the bones between which they are
installed. However, during installation, until all the anchoring screws
and the rod are secured in place, while the cylindrical fusion implant is
in place, it forms a joint that does move relative to the bones between
which it is placed.
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08. Therefore, in neither Doty nor Michaelson does the device placed
between bones move in operation, i.e. neither device joins moveable
parts (FF 05), and therefore the device cannot be said to be articulating.
09. Similarly, it cannot be said that they facilitate a limited degree of
movement of the device, since there is no movement of the device.

ANALYSIS
Claims 1-5 and 7-9 rejected under 35 U.S.C. § 102(b) as anticipated by Doty.
From the above Findings of Fact, supported by a preponderance of substantial
evidence, we conclude that
o Doty’s artificial disk replacement (Doty, Fig. 1:12) is not an
articulating device, although plate (Doty, Fig. 7:66), and screw (Doty,
Fig. 7:68) are an anchoring unit and link member (FF 08).
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o Doty’s screw (Doty, Fig. 7:68), as a link member that precludes
movement, is not capable of facilitating a limited degree of movement
of the device (FF
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09).
Although Doty’s artificial disk replacement may be moveable during
installation as argued by the Examiner, it is clear that it must be moveable in
operation to be considered articulating in an anatomical context. Although the
Appellant provided no definition in the Specification, or other evidence in the
record for this definition, the ordinary and customary meaning of the term in an
anatomical context clearly requires movement in operation (FF05).
As to the Examiner’s contention that functional language in a thereby clause is
a field of use limitation and does not have to be explicitly recited in prior art to
negate patentability (Answer 7), the prior art must exhibit the capacity to meet that
functional language. Accordingly we do not sustain the Examiner's rejection of
claims 1-5 and 7-9 under 35 U.S.C. § 102(b) as anticipated by Doty.

Claims 1-4, 6 and 7 rejected under 35 U.S.C. § 102(b) as anticipated by
Michelson.
From the above Findings of Fact, supported by a preponderance of substantial
evidence, we conclude that
o Michelson’s cylindrical fusion implant (Michelson, Fig. 1:10) is not
an articulating device, although, variable angle screw (Michelson, Fig.
1:30), and spinal rod (Michelson, Fig. 3:50) are an anchoring unit and
link member (FF 08).
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o Michelson’s spinal rod (Michelson, Fig. 3:50), as a link member that
precludes movement, is not capable of facilitating a limited degree of
movement of the device (FF
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09).
The Examiner’s contentions are essentially the same as in the rejections under
Doty and our findings are therefore the same. Accordingly we do not sustain the
Examiner's rejection of claims 1-4, 6 and 7 under 35 U.S.C. § 102(b) as anticipated
by Michelson.

Claims 1-4 and 7-9 provisionally rejected under the judicially created doctrine of
obviousness-type double patenting as claiming obvious subject matter over claims
5 and 8 of copending Application No. 10/754,042.
The Appellant did not raise this as an issue for appeal. Accordingly we sustain,
pro forma, the Examiner's provisional rejection of claims 1-4 and 7-9 under the
judicially created doctrine of obviousness-type double patenting as claiming
subject matter that would have been obvious to one of ordinary skill in the art over
the subject matter of claims 5 and 8 of copending Application No. 10/754,042.
DECISION
To summarize, our decision is as follows:
• The rejection of claims 1-5 and 7-9 under 35 U.S.C. § 102(b) as anticipated
by Doty is not sustained.
• The rejection of claims 1-4, 6 and 7 under 35 U.S.C. § 102(b) as anticipated
by Michelson is not sustained.
• The provisional rejection of claims 1-4 and 7-9 under the judicially created
doctrine of obviousness-type double patenting as claiming subject matter
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that would have been obvious to one of ordinary skill in the art over the
subject matter of claims 5 and 8 of copending Application No. 10/754,042 is
sustained.
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).

AFFIRMED-IN-PART 7
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JRG

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Application 10/426,995

John G. Posa
Cifford, Krass, Groh, Sprinkle, Anderson
& Citkowski, P.C.
P.O. BOX 7021
Troy, MI 48007
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