Ex Parte Foley

Board of Patent Appeals and Interferences

Jun 7, 2012

11451836 (B.P.A.I. Jun. 7, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte KEVIN T. FOLEY
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Appeal 2010-001218
Application 11/451,836
Technology Center 3700
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Before JENNIFER D. BAHR, LINDA E. HORNER and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s 2
final decision rejecting claims 41, 50-54 and 56-68. The Examiner has 3
withdrawn claim 55 from consideration. Claims 1-40 and 42-49 are 4
cancelled. We have jurisdiction under 35 U.S.C. § 6(b). 5

1 The Appellant identifies the real party in interest as Warsaw
Orthopedic, Inc., a subsidiary of Medtronic Sofamor Danek, Inc.
Appeal No. 2010-001218
Application No. 11/451,836

2
In the Answer, the Examiner provisionally rejected claims 41 and 58-1
65 under the doctrine of obviousness-type double patenting as being 2
unpatentable over “current claims 1 and 6 and 49-51 of copending 3
Application No. 11091738.” Subsequent to the mailing of the Answer, 4
Application 11/091,738 issued as Peterman (US 7,749,269, issued Jul. 6, 5
2010). During prosecution subsequent to the mailing of the Answer in the 6
present appeal, independent claim 1 of Application 11/091,738 was amended 7
to incorporate the subject matter of then-dependent claim 9. (Response to 8
Final Office Action dated Jan. 14, 2009 at 3, 4 and 12, entered with Request 9
for Continued Examination dated Feb. 18, 2009.) This amendment also 10
affected dependent claim 6, which depended from claim 1. Then-dependent 11
claims 49-51 were cancelled. (Response to Non-Final Office Action dated 12
Dec. 24, 2009 at 6 and 13.) Since Peterman does not include claims 13
identical to claims 1, 6 and 49-51 of Application 11/091,738 as those claims 14
existed as of the mailing date of the Answer in the present appeal, the 15
provisional obviousness-type double patenting rejection is moot. 16
We do not sustain the final rejection of claims 41, 50-54 and 56-68 17
under 35 U.S.C. § 103(a) as being unpatentable over Vryonides (EP 1 099 18
429 A1, publ. May 16, 2001) and Bryan (US 6,443,987 B1, issued Sep. 3, 19
2002). 20
Claims 41, 64 and 66 are independent claims. Each independent 21
claim recites a kit including a set of trial instruments and “a set of implants 22
positionable in the spinal disc space, each of said implants including [a body 23
or an elongated body] sized and shaped to correspond in size and shape to a 24
respective one of said trial bodies of said trial instruments.” In particular, 25
claim 41 recites in full: 26
Appeal No. 2010-001218
Application No. 11/451,836

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41. A kit, comprising: 1
a set of trial instruments, at least two of said 2
trial instruments of said set having a trial body at a 3
distal end thereof, each of said trial bodies having 4
a leading end portion adapted for insertion in a 5
collapsed spinal disc space and being insertable 6
into the collapsed spinal disc space to provide a 7
restored disc space height; and 8
a set of implants positionable in the spinal 9
disc space, each of said implants including a body 10
sized and shaped to correspond in size and shape 11
to a respective one of said trial bodies of said trial 12
instruments, each of said bodies having a leading 13
end portion adapted for insertion in a collapsed 14
spinal disc space and opposite vertebral endplate 15
contacting surfaces convexly curved from said 16
leading end portion to a proximal end wall of said 17
body, wherein a desired one of said set of implants 18
is selected for insertion into the spinal disc space 19
upon an indication to the surgeon of a desired fit in 20
the spinal disc space provided by the respective 21
trial body. 22
The Examiner correctly finds that Vryonides describes an implant but 23
does not describe a kit comprising sets of trial instruments and implants. 24
(Ans. 4.) Bryan describes a procedure for placing one or more implants 25
between adjacent vertebrae. The procedure includes forming facing slot 26
portions 36A, 36B and 38A, 38B which together define angled slots 36, 38 27
between the adjacent vertebrae. (Bryan, col. 8, l. 59 – col. 9, l. 4 and col. 9, 28
ll. 12-14.) Next, implants 10 comprising solid pieces of bone are driven into 29
the slots 36, 38. (Bryan, col. 5, ll. 18-19 and 42-44.) Bryan teaches the use 30
of one or more spacer tools 70 chosen from a set of spacer tools to “fine 31
tun[e]” the configuration of the intervertebral space 54. (Bryan, col. 10, ll. 32
41-45.) Bryan teaches that one or more instruments, together with one or 33
Appeal No. 2010-001218
Application No. 11/451,836

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more implants, may form a kit for filling an intervertebral space 54 with 1
materials enabling fusion of the adjacent vertebrae. (Bryan, col. 2, l. 66 – 2
col. 3, l. 2.) 3
Bryan describes the implants 10 as each including a base section 12 4
and a nose section 14 extending integrally from the base section 12. The 5
nose sections 14 of the implants 10 taper distally and inwardly from the 6
widths of the base sections 12 to form generally pointed or rounded tip 7
portions. (Bryan, col. 5, ll. 10-11 and 13-17; id., fig. 1B.) 8
Once the slots 36, 38 are formed, progressively larger spacer tools 70 9
are inserted into the intravertebral space 54 to provide successively greater 10
degrees of distraction until the height of the intravertebral space 54 is 11
sufficient to receive the implants 10. (Bryan, col. 10, ll. 49-51 and 55-57; 12
id., fig. 5A.) Bryan further teaches that the “tip of the spacer tool 70 can be 13
shaped similarly to the tapering nose section 14 of the implant 10 of the 14
present invention.” (Bryan, col. 10, ll. 51-54.) 15
Neither Vryonides nor Bryan describes a kit including a set of trial 16
instruments and a set of implants positionable in the spinal disc space, each 17
of said implants including a body sized and shaped to correspond in size and 18
shape to a respective one of said trial bodies of said trial instruments. (See 19
App. Br. 9.) For example, Bryan does not disclose any correspondence 20
between the sizes of the trial bodies of the spacer tools or trial instruments 21
70 in a kit and the sizes of one or more implants 10 in the kit. Neither does 22
Bryan disclose any correspondence between the overall shapes of the trial 23
bodies of the spacer tools 70 and the implants 10. Bryan does disclose that a 24
portion of a spacer tool 70, namely, the tip, is shaped similarly to a portion 25
of an implant 10, namely, the tapering nose section 14. On the other hand, 26
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Application No. 11/451,836

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Bryan does not describe the shapes of the tapering nose sections 14 as 1
varying from implant-to-implant. Although the tip of each spacer tool 70 2
may be similar in shape to the tapering nose sections 14 of all of the 3
implants 10 in a kit, no implant 10 corresponds in shape to a respective trial 4
body of any spacer tool 70. 5
The Examiner articulates no persuasive reasoning to explain why a kit 6
including a set of trial instruments and a set of implants positionable in the 7
spinal disc space, each of said implants including a body sized and shaped to 8
correspond in size and shape to a respective one of said trial bodies of said 9
trial instruments would have been obvious in view of the combined 10
teachings of Vryonides and Bryan. (See, e.g., Ans. 7.) We do not sustain 11
the rejection of claims 41, 50-54 and 56-68 under § 103(a) as being 12
unpatentable over Vryonides and Bryan. 13
14
DECISION 15
We REVERSE the Examiner’s final decision rejecting claims 41, 50-16
54 and 56-68 under 35 U.S.C. § 103(a). 17
We do not reach the Examiner’s provisional rejection of claims 41 18
and 58-65. 19
20
REVERSED 21
22
Klh 23