Ex Parte KurasDownload PDFBoard of Patent Appeals and InterferencesApr 23, 200910457589 (B.P.A.I. Apr. 23, 2009) Copy Citation 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). Appeal 2008-0151 Application 10/457,589 2 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; Appeal 2008-0151 Application 10/457,589 3 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. Appeal 2008-0151 Application 10/457,589 4 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 Appeal 2008-0151 Application 10/457,589 5 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.â€). Appeal 2008-0151 Application 10/457,589 6 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. Appeal 2008-0151 Application 10/457,589 7 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 8 TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P. 1300 EAST NINTH STREET, SUITE 1700 CLEVEVLAND OH 44114 Copy with citationCopy as parenthetical citation