Ex Parte Kuslich et alDownload PDFPatent Trial and Appeal BoardSep 16, 201311282910 (P.T.A.B. Sep. 16, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte STEPHEN D. KUSLICH and JOHN E. KUSLICH __________ Appeal 2012-003185 Application 11/282,910 Technology Center 3700 __________ Before ERIC GRIMES, FRANCISCO C. PRATS, and MELANIE L. McCOLLUM, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants request rehearing of the decision entered July 3, 2013 (“Decision”). We have considered Appellants’ arguments but are not persuaded that they show that we misapprehended or overlooked any relevant issues of fact or law in reaching the conclusions set out in the Decision. The request for rehearing is denied. Appeal 2012-003185 Application 11/282,910 2 Appellants argue that the Decision “misapprehended or overlooked the fact that Ray’s auger tip of the introducer cannot create a ‘cavity’ in the vertebral body because the bore of the tip remains clogged with vertebral material until evacuated by inflation of the balloon. Thus, no ‘hollow space’ exists within the vertebral body that the Board could properly characterize as a ‘cavity.’” (Req. Reh’g 2.) Appellants argue that “[b]ecause the bore is just a passage through the auger … the bore will become clogged such that there is no hollow space inside of the bore” (id. at 4). This argument is unpersuasive. In the Decision, we “agree[d] with the Examiner … that Ray’s tool 20 creates a cavity when it ‘bites into and penetrates the outer cortex of the vertebra’” (Decision 6, citing Answer at 7). The Examiner found that “since screwing the tool 20 into the vertebra bites into and penetrates the outer cortex of the vertebra, a cavity is created” (Answer 6-7). Consistent with the Examiner’s finding, Ray discloses that a “bore” is created by the introducer (Ray1 12:10-13). A “cavity,” as recited in the claims, reads on the bore that is disclosed in the prior art. Appellants have not provided evidence or sound technical reasoning to support their argument that the bore disclosed by Ray remains clogged until evacuated by inflation of the balloon. Indeed, Ray discloses that guide needles are placed into the collapsed vertebra (id. at 11:18-19), and “[o]nce both guide needles 12 are in a correct position, an introducer 20 with auger tip 22 and sealing member 24 is inserted over each needle 12 and subsequently screwed into the vertebral body 10” (id. at 11:21 to 12:1). 1 Ray, WO 99/02214, published Jan. 21, 1999. Appeal 2012-003185 Application 11/282,910 3 Thus, the bore of the auger tip would be occupied by a guide needle while the auger tip is being screwed into the vertebra. The guide needle is then removed (id. at 12:17-18), which is reasonably understood to result in a hollow bore or cavity where the guide needle had been. Although Appellants have asserted that the bore will become clogged such that there is no hollow space inside it, they have not pointed to evidence to support this position. “Attorneys’ argument is no substitute for evidence.” Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989). See also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”) Here, Ray’s disclosure that the auger tip is passed over a guide needle, which is subsequently removed, provides evidence that a cavity is created in the vertebral body; specifically, the bore within the auger tip. Appellants argue that “Ray specifically recognizes that vertebral material fills the bore when the auger tips are screwed into the vertebra because Ray provides an elastic seal 24b to prevent material from ‘leaking out through the bore created by the introducer 20.’” (Req. Reh’g 4.) This argument is also unpersuasive. As noted above, Ray states that the introducer is inserted over a guide needle when it is screwed into the vertebra. Thus, Ray’s statement that the elastic seal prevents escape of material “[d]uring insertion of the auger tip 22 within the vertebra 10” (Ray 12:10), refers to its function at a time when the guide needles are in place and occupying at least part of the volume in the center of the auger tip. The Appeal 2012-003185 Application 11/282,910 4 cited sentence therefore is best understood to refer to leakage around the circumference of the auger tip, where the threads are biting into the vertebral material, rather than leakage from the central bore of the tip where the guide needle is. In any event, as discussed above, it is reasonable to expect that subsequent removal of the guide needles would create a cavity. Appellants also argue that the Decision “did not explicitly identify whether it was applying Appellant’s definition of ‘cavity’ or some other definition” (Req. Reh’g 4). Appellants argue that “[i]f the Board did apply an alternate definition, then such definition should be made explicit for the appeal record and an explanation given for why that alternate definition is the proper broadest reasonable construction” (id.). To clarify, our analysis is based on the ordinary meaning of the word “cavity.” Since Appellants’ Specification does not expressly define the term cavity, and appears to use the term in a manner consistent with its ordinary meaning, there does not appear to be any genuine dispute about the meaning of the word “cavity.” TIME PERIOD FOR RESPONSE 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 cdc Copy with citationCopy as parenthetical citation