Ex Parte Hovda et al

Patent Trial and Appeal Board

Sep 23, 2016

12255731 (P.T.A.B. Sep. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/255,731 10/22/2008
21971 7590 09/27/2016
WILSON, SONSINI, GOODRICH & ROSATI
650 PAGE MILL ROAD
PALO ALTO, CA 94304-1050
FIRST NAMED INVENTOR
David Hovda
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
29850-719.201 3910
EXAMINER
COTRONEO, STEVEN J
ART UNIT PAPER NUMBER
3733
NOTIFICATION DATE DELIVERY MODE
09/27/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patentdocket@wsgr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DA YID HOVDA and YVES ARRAMON
Appeal2014-006432
Application 12/255,731
Technology Center 3700
Before LINDA E. HORNER, CHARLES N. GREENHUT, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants, David Hovda et al., appeal under 35 U.S.C. § 134 from
the Examiner's decision rejecting claims 1-5, 7-9, 33, and 34. 1 We have
jurisdiction under 35 U.S.C. § 6(b).2
We AFFIRM.
Claims 6, 10-32, and 35 are cancelled. Br. 3.
2 Appellants identify SpinalMotion, Inc. as the real party in interest.
Br. 3.
Appeal2014-006432
Application 12/255,731
THE CLAIMED SUBJECT MATTER
The claims are directed to a method and spacer device for spanning a
space formed upon removal of an intervertebral disc. Spec. 1, Title. Claims
1 and 33 are independent. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method of spanning a space formed by upon removal of
an intervertebral disc, the method comprising:
performing a discectomy to remove disc material between
two adjacent vertebral bodies;
placing an intervertebral spacer between the two adjacent
vertebral bodies, the spacer comprising two end plates, each end
plate having a metallic vertebral body contacting surface and an
inner surface, and a connector interconnecting the inner surfaces
of the two end plates in a rigid manner which limits motion
between the plates to less than a total of 5 degrees, wherein the
vertebral body contacting surfaces of the end plates have no holes
therein or have holes which cover less than 40 percent of the
vertebral body contacting surfaces, wherein the intervertebral
spacer including the two end plates and connector is formed of a
single piece;
maintaining the disc space between the two adjacent
vertebral bodies with the intervertebral spacer without the use of
bone graft or bridging bone; and
cutting at least one slot in at least one of the adjacent
vertebrae and placing a fin on one of the vertebral body
contacting surfaces into the at least one slot, whereby the spacer
is inhibited from rotating.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Frey
Eisermann
Eckhardt
us 4,917,704
US 6,740,118 B2
US 8,092,534 B2
2
Apr. 17, 1990
May 25, 2004
Jan. 10, 2012
Appeal2014-006432
Application 12/255,731
REJECTIONS
The Examiner made the following rejections:
1. Claims 1-5 and 7-9 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Frey and Eisermann.
2. Claims 33 and 34 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Frey and Eckhardt. Ans. 5-6.
Appellants seek our review of these rejections.
ANALYSIS
The Rejection of Claims 1-5 and 7-9
As Unpatentable Over Frey and Eisermann
Appellants argue claims 1-5 and 7-9 as a group. Br. 5-7. We select
claim 1 as the representative claim, and claims 2-5 and 7-9 stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Frey discloses all of the limitations of claim 1
except for "cutting at least one slot in at least one of the adjacent vertebrae
and placing a fin on one of the vertebral body contacting surfaces into the at
least one slot, whereby the spacer is inhibited from rotating." Final Act. 4.
The Examiner finds that Eisermann discloses this cutting step. Id. at 5. The
Examiner determines it would have been obvious to modify the method of
Frey to include this missing limitation in view of Eisermann "in order to
resist migration or displacement or the prosthetic relative to the vertebrae."
Final Act. 5 (citing Eiserman 11 :65-67).
Appellants argue that the Examiner erred for several reasons. First,
Appellants argue that:
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Appeal2014-006432
Application 12/255,731
an addition of a slot cutting step to the method of Frey et al.
would be understood by one of ordinary skill in the art to be
contraindicated because combination of the screws of Frey et al.
with the fin and slot of Eisermann '118 would be expected to
cause excessive damage to the vertebral bodies, weakening the
bone and causing a high risk of bone fracture. This can be clearly
understood when reviewing the cited prior art in which screws or
fins are shown to be used separately to secure implants, but these
bone invasive techniques are not used together.
Br. 6. In response to Appellants' argument, the Examiner finds that column
12, lines 5-14 of Eisermann "teach[] bone screws being used to replace bone
ingrowth on the fins to further add resistance to migration in conjunction
with fins. Therefore the prior art teaches screws being used with fins." Ans.
6. Specifically, Eisermann states: "The bone through-growth and bone on-
growth provide further resistance to the migration or displacement of the
prosthetic joint 30 and prevent expulsion of the prosthetic joint 30 from the
intervertebral space S .... [O]ther means of engaging the prosthetic joint 30
to the upper and lower vertebrae Vu, VL are also contemplated, such as, for
example, by bone screws, staples, an adhesive, or by other methods of
engagement." Eisermann 12:5-14. In light ofEisermann's explicit
teachings of using bone screws with fins, Appellants' argument does not
show error by the Examiner.
Second, Appellants argue that the combination of Frey and Eisermann
is "improper:"
Modification of the prosthesis of Frey et al. with the fin of
Eisermann '118' s artificial disc would not have been obvious to
one of ordinary skill in the art as the bone contact surfaces on
these two different devices serve very different functions. The
[Eisermann] artificial disc uses the fin to prevent motion of the
disc in the early stages after surgery when the bone has not grown
onto the disc (called acute fixation). The [Frey] fusion spacer has
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Appeal2014-006432
Application 12/255,731
no need for the fin because the patient rece1vmg a fusion
procedure is immobilized following surgery until bone has
grown onto the spacer. Once bone has grown onto the implant,
acute fixation is no longer needed ....
Appellants have found that where a spacer is designed
having a fin which is inserted into a slot in the adjacent vertebrae,
no bridging bone is needed and recovery time for a fusion like
procedure can be reduced from the 6-12 months required to grow
bridging bone to a much shorter recovery period. This discovery
of a significant advantage of the use of a fin in a fusion like
device without the use of bridging bone is not taught of suggested
in the prior art.
Br. 6-7. However, "in determining whether the subject matter of a patent
claims is obvious, neither the particular motivation nor the avowed purpose
of the patentee controls. What matters is objective reach of the claim." KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). "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 420 (holding it was error to look
only to the problem the patentee was trying solve). Here, the Examiner finds
that "Eisermann et al. is concerned with maintaining an endplate against the
vertebra and inhibiting the spacer from rotating to resist migration or
displacement. Frey is also concerned with the attachment of a device to a
vertebra." Ans. 7. The Examiner also reasoned that it would have been
obvious to one of ordinary skill in the art to modify the method of Frey to
include a fin and slot in view of Eisermann "in order to resist migration or
displacement or the prosthetic relative to the vertebrae." Final Act. 5; see
also, e.g., Eisermann 12:6-14. Appellants do not explain why Eisermann's
stated purpose of using a fin to resist migration or displacement between the
prosthetic and the vertebrae is inconsistent with immobilizing a patient in
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Application 12/255,731
Frey which also seeks to resist such migration and displacement between the
prosthetic and vertebrae. Appellants do not address the rejection as
articulated by the Examiner and, thus, do not show Examiner error.
We sustain the Examiner's rejection of claim 1under35 U.S.C.
§ 103(a) as unpatentable over Frey and Eisermann, and claims 2-5 and 7-9
fall with claim 1.
The Rejection of Claims 33 and 34
As Unpatentable Over Frey and Eckhardt
In the Final Action, the first sentence of this rejection refers to "claims
1-5 and 7-9," but the substantive basis and explanation of the rejection
refers to the language of claims 33 and 34. Final Act. 5-6. The Examiner
corrected this typographical error in the Answer. Ans. 5-6.
The Examiner finds that Frey discloses all of the limitations of claims
33 and 34 except for plates and connector being formed of PEET. Ans. 5-6;
see also Final Act. 5-6. The Examiner finds that Eckhardt discloses a spinal
implant made of PEET, and determines that one skilled in the art would find
it obvious to "modify the device of Frey et al. [to] make the plates and
connector out of PEEK in view of Eckhardt in order to be biocompatible."
Id. at 6. Appellants argue that the Examiner erred because it would not have
been obvious to modify Frey to include the fin of Eckhardt. Br. 7-8. As
noted above, however, the Examiner did not propose to include the fin of
Eckhardt in the device of Frey. Because Appellants do not address the
rejection as articulated by the Examiner, we summarily sustain the
Examiner's rejection of claims 33 and 34 under 35 U.S.C. § 103(a) as
unpatentable over Frey and Eckhardt.
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Application 12/255,731
DECISION
For the above reasons, the Examiner's rejections of claims 1-5 and 7-
9 under 35 U.S.C. § 103(a) as unpatentable over Frey and Eisermann is
AFFIRMED.
The Examiner's rejections of claims 33 and 34 under 35 U.S.C.
§ 103(a) as unpatentable over Frey and Eckhardt is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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