Ex Parte Kuras

Board of Patent Appeals and Interferences

Apr 23, 2009

10457589 (B.P.A.I. Apr. 23, 2009)

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.
10/457,589 06/09/2003 James Michael Kuras AXM-5820-1 8269
26294 7590 04/24/2009
TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300 EAST NINTH STREET, SUITE 1700
CLEVEVLAND, OH 44114
EXAMINER
RAMANA, ANURADHA
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
04/24/2009 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 JAMES MICHAEL KURAS
__________

Appeal 2008-0151
Application 10/457,589
Technology Center 3700
__________

Decided: April 23, 2009
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and ERIC GRIMES,
Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF CASE
We have jurisdiction under 35 U.S.C. § 6(b). See also 37 C.F.R.
41.52(a)(1) (2008).
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The following claims from the pending application are representative.
1. An artificial disc to replace a damaged spinal disc in a spinal
column, said artificial disc comprising:
a resilient core having an upper surface and a lower surface;
an upper retaining member having an outer surface engageable with a
first vertebra of the spinal column and an inner surface immovably affixed to
said upper surface of said resilient core; and
a lower retaining member having an outer surface engageable with a
second vertebra of the spinal column and an inner surface immovably
affixed to said lower surface of said resilient core;
one of said upper and lower retaining members having an opening
extending through said outer and inner surfaces of said one of said upper and
lower retaining members, said opening being located between the first and
second vertebrae when said outer surfaces of said upper and lower retaining
members engage the first and second vertebrae.

14. An artificial disc to replace a damaged spinal disc in a spinal
column, said artificial disc comprising:
a resilient core having an upper surface and a lower surface;
an upper retaining member having an outer surface engageable with a
first vertebra of the spinal column and an inner surface immovably affixed to
said upper surface of said resilient core; and
a lower retaining member having an outer surface engageable with a
second vertebra of the spinal column and an inner surface immovably
affixed to said lower surface of said resilient core;
one of said upper and lower retaining members having an opening
extending through said inner surface of said one of said upper and lower
retaining members into which said resilient core deflects upon relative
movement between said upper and lower retaining members.

Claims 1, 15, 17, and 18 of Kuras ‘181 read as follows:
1. An artificial disc to replace a damaged spinal disc in a spinal column,
said artificial disc comprising:
an upper retaining member having an outer surface engageable with a
first vertebra of the spinal column and an inner surface;
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a lower retaining member having an outer surface engageable with a
second vertebra of the spinal column and an inner surface; and
a resilient core interconnecting said upper and lower retaining
members, said resilient core having an upper surface immovably
affixed to said inner surface of said upper retaining member, said
resilient core having a lower surface immovably affixed to said inner
surface of said lower retaining member, said resilient core having a
surface extending from one of said upper and lower surfaces toward
another of said upper and lower surfaces and at least partially defining
an empty space extending from said one of said upper and lower
surfaces.
15. An artificial disc as defined in claim 1 wherein one of said upper and
lower retaining members has an opening extending through said inner and
outer surfaces of said one of said upper and lower retaining members.
17. An artificial disc as defined in claim 1 wherein said upper retaining
member has an opening extending through said inner and outer surfaces of
said upper retaining member, said lower retaining member having an
opening extending through said inner and outer surfaces of said lower
retaining member.
18. An artificial disc as defined in claim 15 wherein said opening extends
axially through said one of said upper and lower retaining members.
Cited References
Serhan US 5,824,094 Oct. 20.1997
Weber US 6,533,818 Mar. 18, 2003
Kuras (‘181) US 7,169,181 Jan. 30, 2007
Bray WO 97/20526 Jun. 12, 1997

Grounds of Rejection
1. Claims 1-6, 8-19 and 21-22 stand rejected under 35 U.S.C. §103(a) over
Weber in view of Bray.
2. Claims 1-3, 7, 13-16, 20 and 22 stand provisionally rejected under
the judicially created doctrine of obviousness-type double patenting as being
unpatentable over claims 15, 17 and 18 of copending Application No.
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10/315,373 (now U.S. Patent No. 7,169,181 issued Jan. 30, 2007) in view of
Serhan.
Appellant does not point to any issue that was overlooked or
misapprehended with respect to our affirmance of the obviousness rejection
with respect to claims 1-6, 8, 11, and 13. See 37 C.F.R. § 41.52(a)(1).
Therefore, we only review the obviousness-type double patenting rejection.

ISSUE
Has Appellant established that we misapprehended or overlooked a
relevant issue with respect to the obviousness-type double patenting
rejection addressed in the Decision dated September 24, 2008?

ANALYSIS
Appellant contends with respect to the obviousness-type double
patenting rejection over Kuras in view of Serhan that
The Board's opinion does not explain, nor is Appellant able to
ascertain from the Board's opinion, how or why the existence of
a resilient core and an opening in one of two retaining
members, as recited in claims 1 and 14 of the present
application, would inherently result in the resilient core having
a surface that both (a) extends from one of the upper and lower
surfaces of the core toward another of the upper and lower
surfaces and (b) at least partially defines an empty space
extending from the one of the upper and lower surfaces.

(Reh’g 6.)

We are not convinced by Appellant’s argument. Pages 9-11 of
the Decision set forth the relevant facts. In an obviousness-type
double patenting rejection, the Examiner need only establish, in an
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analysis comparable to that under 35 U.S.C. § 103, that one of
ordinary skill would have considered the rejected claims obvious over
the patented claims. See In re Braat, 937 F.2d 589, 592-93 (Fed. Cir.
1991).1 Appellant appears to argue that claims 1 and 14 of the present
application must inherently result in or describe the claim limitations
of claim 1 of the ‘181 patent. (Reh’g 5.)
We are not persuaded that this represents an issue that we
overlooked or misapprehended. Appellant’s argument is tantamount
to arguing that the claims of the present application must suggest
limitations (a) and (b) of the ‘181 patent claims. This argument is the
reverse of and contrary to the obviousness-type double patenting legal
requirement that the rejected claims must be shown to be obvious
over the conflicting patent claims. See In re Braat, 937 F.2d at 592-
93. For the reasons indicated in our original decision we find that
pending claims 1 and 14 are obvious in view of claims 15, 17 and 18
of copending Application No. 10/315,373 (now U.S. Patent No.
7,169,181 issued Jan. 30, 2007) in view of Serhan.

1 If the application at issue is the later filed application or both are filed on
the same day, only a one-way determination of obviousness is needed in
resolving the issue of double patenting, i.e., whether the invention defined in
a claim in the application would have been anticipated by, or an obvious
variation of, the invention defined in a claim in the patent. See, e.g., In re
Berg, 140 F.3d 1438 (Fed. Cir. 1998). Appellant does not argue other legal
authority applies. Arguments not made are waived. See 37 C.F.R. §
41.37(c)(1)(vii) (“Any arguments or authorities not included in the brief or a
reply brief ... will be refused consideration by the Board, unless good cause
is shown.”).

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Appellant argues that the composition of the core in the present
application cannot be included in any proper comparison of the claims of the
present application with those of the ‘181 patent. (Reh’g 10-11.)
While the conflicting patent’s specification cannot be used as prior
art, it can nonetheless be used in certain circumstances “as a dictionary to
learn the meaning of terms in a claim.” In re Vogel, 422 F.2d 438, 441
(CCPA 1970). The conflicting patent’s disclosure may also be consulted to
clarify the patented claims’ scope, by referring to tangible embodiments of
the patented claims that are disclosed in the specification. See id. at 442.
Nonetheless, “only the disclosure of the invention claimed in the patent may
be examined.” Id. In an obviousness-type double patenting analysis, one
may only consult those portions of the conflicting patent’s disclosure that
support the subject matter recited in the conflicting claims. Id.
In our original Decision we consulted the disclosure of the ‘181 patent
to define the term “resilient” and determine the scope of and types of
materials encompassed by the term “resilient” in the ‘181 patent claims,
consistent with relevant, applicable case law.
Moreover, Appellant has failed to present evidence that the “resilient”
core material described in the claims of the ‘181 patent (claims 1, 6, and 11)
would not inherently deflect into the opening of the upper and lower
retaining members, such as by showing that the materials encompassed by
the term “resilient” in the pending claims are different from the materials
encompassed by the term “resilient” in the patented claims.
Appellant argues that he has separately argued in the Reply Brief
claims 14-22 with respect to the obviousness-type double patenting rejection
and that the Decision did not address these separate arguments. (Reply Br.
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4-5; Reh. 11-12.) Appellant argued claims 14-22 in the Reply Brief, as a
single group. (Reply Br. 4.) Appellant argued that pending claims 14-22
“do not recite an opening extending through outer and inner surfaces of one
of upper and lower retaining members.” (Reply Br. 4.) Contrary to
Appellant’s assertion, pending claim 14 does recite the limitation that “one
of said upper and lower retaining members having an opening extending
through said inner surface of said one of said upper and lower retaining
members into which said resilient core deflects upon relative movement
between said upper and lower retaining members.” Furthermore, we
addressed the limitation of “deflection of the core…” in representative
pending claim 14 in our Decision pages 9-10 and 12. We stand by our
comments in the Decision that the resilient core of the patented device and
that of the device of claim 14 would inherently have the same properties and
would deflect toward or into the opening in the upper and lower retaining
members.
Therefore, we find no error in our decision.
We find that Appellant has not shown that we misapprehended or
overlooked any relevant issues in our original Decision, we stand by our
original Decision and the request for rehearing is denied.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REHEARING - DENIED

LP

Appeal 2008-0151
Application 10/457,589

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TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300 EAST NINTH STREET, SUITE 1700
CLEVEVLAND OH 44114