Ex Parte Ferree

Board of Patent Appeals and Interferences

Oct 6, 2010

11099090 (B.P.A.I. Oct. 6, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/099,090 04/05/2005 Bret A. Ferree BAF-20702/29 9862
25006 7590 10/07/2010
GIFFORD, KRASS, SPRINKLE,ANDERSON & CITKOWSKI, P.C
PO BOX 7021
TROY, MI 48007-7021
EXAMINER
CUMBERLEDGE, JERRY
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
10/07/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRET A. FERREE
____________

Appeal 2009-008568
Application 11/099,090
Technology Center 3700
____________

Before, JOHN C. KERINS, STEVEN D.A. McCARTHY, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-008568
Application 11/099,090

2
STATEMENT OF THE CASE
Bret A. Ferree (Appellant) appeals under 35 U.S.C. § 134 (2002) from
the Examiner’s decision finally rejecting under 35 U.S.C. § 103(a) claims 5
and 6 as unpatentable over McLeod (US 6,093,205, issued Jul. 25, 2000) and
Jobe (US Patent 5,634,926, issued Jun. 3, 1997) and claim 7 as unpatentable
over McLeod, Jobe, and Sohn (US 5,674,247, issued Oct. 7, 1997). Claims
1-4 and 8-10 have been canceled. We have jurisdiction over this appeal
under 35 U.S.C. § 6 (2002).

THE INVENTION
Appellant’s invention relates to a surgical apparatus for preventing
movement through artificial disc replacements. Spec. 1:6-8.
Claim 5 is representative of the claimed invention and reads as
follows:
5. Arthroplasty apparatus, comprising:

an endplate component forming part of an artificial disc
replacement (ADR), the endplate being adapted for attachment
to the endplate of a vertebral body; and

a staple that holds the implant in position, the staple
including prongs that converge or diverge upon entry into a
vertebral body.

SUMMARY OF DECISION
We AFFIRM.
Appeal 2009-008568
Application 11/099,090

3
ANALYSIS
The obviousness rejection over McLeod and Jobe
The Examiner found that McLeod discloses all the limitations of
independent claim 5 “except for the staple including prongs that converge or
diverge upon entry into a vertebral body.” Ans. 3. The Examiner further
found that Jobe discloses a surgical staple having prongs “that converge or
diverge upon entry into a bone.” Id.
Pointing to column 7, lines 24-45 of Jobe, Appellant argues that, “the
prongs of Jobe do not ‘converge or diverge upon entry into a vertebral
body.’” Br. 3. Rather, Appellant argues, the prongs of Jobe “converge
when tool 41 is released.” Br. 4. In other words, Appellant appears to argue
that the prongs of Jobe converge because tool 41 is released and not because
the prongs enter converging holes 24 in the bone.
When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). In this case, we find that an ordinary and customary meaning of the
term “upon” is “ON.” MERRIAM WEBSTER’S COLLEGIATE DICTIONARY (10th
Ed. 1997). We further find that that an ordinary and customary meaning of
the term “on” is “a function word [used] to indicate the cause or source.” Id.
Hence, we construe the phrase “upon entry” to indicate that the act of
entering the vertebral body causes the prongs to converge. Such an
interpretation of the phrase “upon entry” is consistent with Appellant’s
Specification, which states that “[t]he holes in the ADR force the arms of the
Appeal 2009-008568
Application 11/099,090

4
staple to converge as the staple is driven into the ADR.” Spec. 12, ll. 27-28.
Therefore, we agree with the Examiner that “[s]ince the holes [of Jobe] are
configured in an angled, converging manner, the holes will necessarily cause
the staple to assume an angled, converging configuration as it enters the
bone as well.” Ans. 6.
In conclusion, we agree with the Examiner that the orientation of the
holes of Jobe lead the prongs of Jobe’s staple to converge. See Ans. 6.
Since Appellant does not contest the Examiner’s conclusion of obviousness
and does not present any additional arguments, the rejection of claim 5 under
35 U.S.C. § 103(a) as unpatentable over McLeod and Jobe is sustained.
With respect to claim 6, Appellant makes the same argument that “the
apertures of Jobe do not cause any prongs to converge or diverge upon
entry.” Br. 4. Therefore, for the reasons discussed supra, the rejection of
claim 6 under 35 U.S.C. § 103(a) as unpatentable over McLeod and Jobe is
likewise sustained.

The obviousness rejection over McLeod, Jobe, and Sohn
Claim 7 adds the limitation that “the prongs are composed of a shape-
memory material.” Br., Claims Appendix. The Examiner found that, “Sohn
discloses a staple made from shape memory material.” Ans. 4. The
Examiner then concluded that it would have been obvious for a person of
ordinary skill in the art to manufacture the staple and the prongs of McLeod
and Jobe out of shape-memory material, as taught by Sohn, “in order to
enable the staple to assume a secondary form when activated by body heat,
which would enable the staple to be securely anchored to the bone.” Ans. 4-
5.
Appeal 2009-008568
Application 11/099,090

5
Appellant argues that “[i]f the prongs of Jobe were made of a shape-
memory material, Jobe’s principle of operation would be undermined.” Br.
4. Pointing to column 7, lines 39-45 of Jobe, Appellant further argues that,
“[r]eplacing the instrument 41 of Jobe with shape memory-prongs would not
allow surgical instrument 41 to bend the plate 14 and hold the plate as
shown in FIG. 8.” Br. 5.
We find Appellant’s arguments unpersuasive because they are not
commensurate with the Examiner’s proposed combination of the teachings
of McLeod, Jobe, and Sohn. Specifically, the Examiner proposes to
manufacture the staple and the prongs of McLeod and Jobe from a shape-
memory material, as taught by Sohn, and not the insertion tool. See Ans. 7.
We could not find any portion in the Examiner’s Answer, and Appellant has
not pointed to any portion, that describes manufacturing Jobe’s tool 41 from
a shape-memory material. Moreover, Appellant has not provided any
evidence to show that the tool 41 of Jobe can not be used with a staple and
its prongs manufactured from a memory-shape material. An attorney's
arguments in a brief cannot take the place of evidence. In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974).
Finally, since Appellant does not contest the Examiner’s conclusion of
obviousness and does not present any additional arguments, the rejection of
claim 7 under 35 U.S.C. § 103(a) as unpatentable over McLeod, Jobe, and
Sohn is sustained.

Appeal 2009-008568
Application 11/099,090

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SUMMARY
The decision of the Examiner to reject claims 5-7 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

mls

GIFFORD, KRASS, SPRINKLE,ANDERSON & CITKOWSKI, P.C
PO BOX 7021
TROY, MI 48007-7021