Ex Parte Ferree

Board of Patent Appeals and Interferences

Nov 29, 2007

10419378 (B.P.A.I. Nov. 29, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte BRET A. FERREE
___________

Appeal No. 2006-3014
Application No. 10/419,378
Technology Center 3700
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Decided: November 29, 2007
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Before WILLIAM F. PATE, III, TERRY J. OWENS and JENNIFER D. BAHR,
Administrative Patent Judges.
PATE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is an appeal from the examiner's refusal to allow claims 1-6 as amended
after final rejection. These are the only claims in the application. We have
jurisdiction under 35 U.S.C. §§ 134 and 6.
The claimed invention is directed to an artificial disc replacement to be
inserted in the spine. The disc replacement is characterized by one or more spacer
bodies which are laterally movable between two plates that are secured to the
Appeal 2006-3014
Application 10/419,378
facing surfaces of two vertebrae. Claim 1, reproduced below, is further illustrative
of the claim subject matter.
1. A mobile bearing artificial disc replacement (ADR) for use in the disc
space between the inferior endplate of an upper vertebral body and the superior
endplate of a lower vertebral body, the ADR comprising:
a first plate having an upper surface adapted to be attached to an inferior
endplate of an upper vertebral body and a lower surface facing into a disc space;
a second plate having a lower surface adapted to be attached to a superior
endplate of a lower vertebral body and an upper surface facing into the disc space;
and
one or more spacers laterally moveable between the surfaces of the plates
facing into the disc space.

The references of record relied upon by the examiner as evidence of
anticipation and obviousness are:
Baumgartner 5,370,697 Dec. 6, 1994
Bryan 5,865,846 Feb. 2, 1999
Weber (as translated) DE 30 23 353 A1 Oct. 3, 1979

Claims 1-3 and 6 stand rejected under 35 U.S.C. § 102 as anticipated by
Weber.
Claim 4 stands rejected under 35 U.S.C. § 103 as unpatentable over Weber
in view of Baumgartner.
Claim 5 stands rejected under 35 U.S.C. § 103 as unpatentable over Weber
in view of Bryan.
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Application 10/419,378
FINDINGS OF FACT
Weber discloses a mobile bearing artificial disc replacement for use in the
disc space between an inferior endplate of an upper vertebral body 3 and a superior
endplate of a lower vertebral body 3. The bearing is composed of a first and second
plate 4, 4 which are attached to the vertebral endplates with anchoring lugs 2. A
spacer 5 is provided in a pan-like recess in the facing surfaces of the first and
second plates. The translation states (with reference numerals added in brackets):
Given the prior-art design of these prostheses, which are
predominantly used as cervical disk prostheses, there is the risk that,
because of the relatively high mobility of the cervical disks, the spacer
body [5], which conventionally is preferably shaped so as to be
substantially convexly lenticular, is dislodged from the acetabula [7]; the
spacer body can relatively easily slip rearwardly out of the prior-art
bearing pans, especially when movement known as "nodding the head"
are made. Thus, the problem to be solved by the present invention is to
make available a total intervertebral disk prosthesis that provides
increased certainty that the spacer body cannot slip out of the pan-like
recesses of the bearing bodies.
According to the present invention, this problem is solved in that
each bearing body has a depression [6] in one of its long sides when
viewed from the level of the edge of its acetabulum [7] and a projecting
lobe [8] on the long side parallel thereto, with the depression and the lobe
being designed one relative to the other so that the lobe of one of the
bearing bodies mates with the depression of the other bearing body when
the spacer body [5] is inserted.
According to the new design, the dorsal and ventral sides of the two
bearing bodies mate with each other. Thus, their sliding movement on the
spacer body is largely controlled so that forward and rearward
displacements of the prosthetic components relative to each other are
rendered more difficult. Furthermore, the spacer body [5] is "captured" by
the lobe [8] of one of the bearing bodies that overlaps the other bearing
body in its depression [6] even when nodding movements are made, thus
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Application 10/419,378
ensuring that the spacer body [5] cannot slide out of the bearing pans [7].
Weber (as translated) p. 2, ll. 6-25 (emphasis supplied).
Thus, as Weber makes clear, the spacers 5 are allowed sliding movement
between the surfaces of the plates, albeit the sliding movement is controlled.
Baumgartner has been cited by the examiner as showing an artificial disc
replacement in which the upper and/or lower first and second plates can be made
as a wedge for correcting lordosis or other anatomical problems. See particularly
Figure 2 and wedge shaped endplates at 14 and 15 therein.
Bryan has been cited by the examiner to show an artificial disc replacement
which is provided with a protective guard or seal member 110 in the form of a
flexible sheet material. Once the flexible sheet material 110 is glued in place it
performs a perfect waterproof guard, sealing the retaining structure therein. (See
col. 4, ll. 33-54).
PRINCIPLES OF LAW
The prior art may anticipate a claimed invention, and thereby render it
non-novel, either expressly or inherently. In re Cruciferous Sprout Litig., 301 F.3d
1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir. 2002), cert. denied, 538 U.S. 907
(2003). Express anticipation occurs when the prior art expressly discloses each
limitation (i.e., each element) of a claim. Id.
A claimed invention is unpatentable if the differences between it 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.”
35 U.S.C. § 103(a) (2000); KSR Int’l v. Teleflex Inc., 127 S.Ct. 1727 (2007);
Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966).
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Application 10/419,378
In Graham, the Court held that that the obviousness analysis is bottomed on
several basic factual inquiries: “[(1)] the scope and content of the prior art are to be
determined; [(2)] differences between the prior art and the claims at issue are to be
ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383
U.S. at 17. See also KSR Int’l v. Teleflex Inc., 127 S.Ct. at 1734. “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR, at 1739.
“When a work is available in one field of endeavor, design incentives and
other market forces can prompt variations of it, either in the same field or in a
different one. If a person of ordinary skill in the art can implement a predictable
variation, § 103 likely bars its patentability.” Id. at 1740, 82 USPQ2d at 1396.
“For the same reason, 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.” Id.
“Under the correct analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a reason
for combining the elements in the manner claimed.” Id. at 1742.
ANALYSIS
As noted above, Weber discloses the structure of Appellant’s claims 1-3 and
6. Appellant’s argument that Weber does not support spacers that are laterally
moveable is clearly contradicted by the disclosure of Weber which expressly
mentions the sliding movement of the plates on the spacer body in a controlled
manner. Therefore, we find that Weber anticipates claims 1-3 and 6.
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Turning to a consideration of claim 4, we note that Baumgartner clearly
teaches using wedge shaped plates for the correction of lordosis or other posture
problems. The use of such wedge shaped plates in the prosthesis of Weber is
simply the combination of prior art elements according to known methods to yield
predictable results. See KSR at 1739.
Likewise, Bryan discloses the use of a flexible guard around a prosthesis. It
would have been obvious to include such a guard in the prosthesis of Weber as a
combination of prior art elements yielding predictable results.
Appellant’s arguments have been carefully considered. However, we agree
with the examiner that the expressed disclosure of Weber, as translated, shows that
Appellant’s claims 1-3 and 6 lack novelty thereover.
With respect to Appellant’s arguments in the brief and at oral hearing
concerning when the Appellant received the English translation of Weber, we
merely note that it is not in the Board’s purview to act in a supervisory manner
over the Examining Corps. We further note that there is nothing to preclude an
Appellant from obtaining his or her own translation.
CONCLUSION
The rejections on appeal are affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED
JRG

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