Ex Parte Kwak et al

Board of Patent Appeals and Interferences

Aug 18, 2011

11160375 (B.P.A.I. Aug. 18, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SEUNGKYU DANIEL KWAK, AMIE BORGSTROM,
JOHN RILEY HAWKINS and WILLIAM DUNBAR
____________

Appeal 2009-010428
Application 11/160,375
Technology Center 3700
____________

Before WILLIAM F. PATE, III, JOHN C. KERINS and STEFAN
STAICOVICI, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

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STATEMENT OF THE CASE
SeungKyu Daniel Kwak et al. (Appellants) seek our review under 35
U.S.C. § 134 of the Examiner’s final rejection of claims 1-5, 10-15 and 18-
20. Claims 6-8, 16 and 17 have been withdrawn from consideration and
claims 9 and 21-28 have been canceled. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Appellants’ invention is directed to a system for stabilizing adjacent
vertebrae. Claim 1, reproduced below, is illustrative:
1. A system for stabilizing adjacent vertebrae,
comprising:

an artificial disc adapted to be implanted between
adjacent vertebrae and having at least one degree
of freedom;

first and second connecting elements adapted to
rigidly couple to adjacent vertebrae;

a rigid body coupled between the first and second
connecting elements; and

a first joint formed between the rigid body and the
first connecting element and a second joint formed
between the rigid body and the second connecting
element such that the first and second connecting
elements and the rigid body kinematically form a
four bar linkage mechanism in a sagittal plane with
the first and second adjacent vertebrae and the
artificial disc when the artificial disc is disposed
between the first and second adjacent vertebrae for
restoring function to the first and second adjacent
vertebrae, the first and second joints each having
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one degree of freedom in the sagittal plane, and at
least one of the first and second joints being a
sliding joint.

THE REJECTIONS
The Examiner has rejected claims 1-5, 10-15 and 18-20 under 35
U.S.C. § 103(a) as being unpatentable over Ritland (US 2004/0002708 A1,
published January 1, 2004) in view of Ferree (US 2003/0220643 A1,
published November 27, 2003) and Petreto (US 5,938,663, issued August
17, 1999).

ISSUE
Whether the Examiner erred in concluding that the combination of the
teachings of Ritland, Ferree and Petreto renders obvious a system for
stabilizing adjacent vertebrae having first and second connecting elements
and a rigid body that, with first and second adjacent vertebrae having an
artificial disc disposed therebetween, kinematically form a four bar linkage
mechanism, as set forth in independent claims 1 and 15?
Whether the Examiner erred in concluding that the combination of the
teachings of Ritland, Ferree and Petreto renders obvious a system for
stabilizing adjacent vertebrae having a first joint formed between a rigid
body and a first connecting element coupled to a first vertebrae, and a
second joint formed between the rigid body and a second connecting
element rigidly coupled to a second vertebrae adjacent to the first vertebrae,
with one of the joints being a sliding joint, as set forth in independent claim
12?
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ANALYSIS
Appellants argue claims 1, 2, 4, 5, 10 and 11 as a first group; argue
claim 3 separately from independent claim 1, from which it depends; argue
claims 12-14 as a second group, and argue claims 15-20 as a third group.
(Appeal Br. 7-12). We will treat claim 1 as being representative of the first
group; claim 12 as representative of the second group; and claim 15 as
representative of the third group.
Appellants contend that the combined teachings of the references do
not teach or suggest the provision of a stabilization system that forms a four
bar linkage mechanism. (Appeal Br. 7-10). Appellants define, in their
Specification, that a four bar linkage mechanism is a “mechanism that lies in
a plane and consists of four linkages that are connected by four joints that
allow movement in the plane of the mechanism.” (Spec., p. 10, ll. 2-5 (para.
[0043])).
Appellants present an analysis purporting to establish that the Ritland
stabilization system illustrated in Figures 7b and 7c, the embodiment cited to
and relied on by the Examiner, together with an artificial disc as taught by
Ferree implanted between adjacent vertebrae, discloses a mechanism having
six linkages and seven joints, and thus does not meet the claim limitation
calling for a four bar linkage mechanism. (Appeal Br. 7-10). In response,
the Examiner maintains, since claim 1 employs the open-ended transitional
phrase “comprising”, that “a six bar linkage anticipates a four bar linkage.”
(Ans. 5). The Examiner further maintains that Ritland discloses
embodiments with both less than and more than six bars. (Id.).
Because Appellants have explicitly defined that a four bar mechanism
consists of four linkages connected by four joints, we conclude that the
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Examiner erred in relying on the presence of the transitional term
“comprising” to interpret the claimed four bar linkage mechanism as being
sufficiently broad so as to encompass a mechanism having six linkages
having seven joints. As noted by Appellants (Reply Br. 2), “[t]he open-
ended transition ‘comprising’ does not free the claim from its own
limitations.” Kustom Signals, Inc. v. Applied Concepts, Inc., 264 F.3d 1326,
1332 (Fed. Cir. 2001). Here, while the term “comprising” connotes that the
claimed system may have elements in addition to those specifically set forth
in claim 1, the first and second connecting elements and the rigid body, in
concert with the adjacent vertebrae to which the connecting elements are
rigidly coupled and an artificial disc disposed between the vertebrae, form a
four bar linkage mechanism, as that term is defined in Appellants’
Specification.
The Examiner’s observation, if accurate, that Ritland also discloses
embodiments with both more and less than six bars, does not, without more,
establish the obviousness of the subject matter of claim 1. Ritland’s other
embodiments are precisely that, other embodiments, and the Examiner has
not shown how the principal embodiment relied on (Ritland, Figs. 7b, 7c)
could obviously have been modified to operate with a four bar linkage
mechanism.
We are unable to conclusively determine whether the Examiner, in
taking the position noted above, was actually agreeing with Appellants’
contention that Ritland discloses an implant having six linkages and seven
joints, or whether the Examiner instead responded on the basis that, even
assuming the Appellants’ interpretation of Ritland is correct, the Ritland
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disclosure was still effective in rendering claim 1 obvious. Thus, we will
also consider the Examiner’s actual ground of rejection.
The Examiner regards Ritland as disclosing a vertebrae stabilizing
system that includes, inter alia, a first joint that is a slidable joint. (Ans. 3).
More specifically, the Examiner cites to paragraph [0063] as disclosing a
slidable joint in a stabilizing system. However, not only does paragraph
[0063] of Ritland pertain to the embodiment disclosed in Figure 3a, in
contrast to the Examiner’s reliance on the embodiment in Figures 7a and 7b,
that paragraph does not support the proposition that Ritland teaches a
stabilizing system that employs a sliding joint. That paragraph notes that:
. . . one or both of the connectors can be a separate
type of connector that can be selectively positioned
along the length of first rod end 14 or second rod
end 16, respectively, such that first rod end 14 and
second rod end 16 are adjustable (e.g., slidably)
within the connectors prior to tightening the
connectors to fixedly interconnect the device 10 to
the pedicle screws 20.
(Ritland, p. 5, para. [0063])(emphasis added).
Ritland thus does not envision that this sliding adjustability will
provide a sliding joint in the stabilization device once the device is fully
assembled. Throughout the embodiments disclosed in Ritland, the devices
appear to be designed to provide a degree of constraint as the pedicle screws
move apart, and providing a sliding joint at the juncture of the device and the
pedicle screw would appear to impair the ability of the device to restrain
movement. Rather, this sliding movement between the rod ends and the
connectors appears to be provided to afford the ability to adjust the device as
necessary to permit use with pedicle screws that might be set at different
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spacings from patient to patient, with the adjustability being provided prior
to fixedly connecting the device to the pedicle screws.
Accordingly, the Examiner’s ground of rejection is deficient in
establishing the presence of a sliding joint in the Ritland device.
The rejection of claim 1, and of claims 2-5, 10 and 11, as being
unpatentable over Ritland, Ferree and Petreto, will not be sustained.
Appellants present essentially the same arguments for the patentability
of claims 15-20 as are presented for claim 1. Independent claim 15 contains
the same limitations directed to providing a four bar linkage mechanism, and
that at least one of the first and second joints is to be a sliding joint. For the
same reasons discussed above with respect to claim 1, we will not sustain
the rejection of claims 15-20.
Independent claim 12 does not explicitly require that the stabilization
device have a four bar linkage mechanism. Appellants argue, however, that
using the Examiner’s interpretation of the Ritland device as applied to the
claim, the device does not have a first joint formed between a rigid body and
a first connecting element coupled to a first vertebrae, and a second joint
formed between the rigid body and a second connecting element rigidly
coupled to a second vertebrae adjacent to the first vertebrae, with one of the
joints being a sliding joint.
While we generally find ourselves in agreement with Appellants’
detailed explanation of their position, we note that, as above, the Ritland
patent does not disclose a stabilization device that includes a sliding joint in
the manner claimed. Accordingly, we will not sustain the rejection of claims
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15-20 as being unpatentable over the combination of Ritland, Ferree and
Petreto.

CONCLUSION
The Examiner erred in concluding that the combination of the
teachings of Ritland, Ferree and Petreto renders obvious a system for
stabilizing adjacent vertebrae having first and second connecting elements
and a rigid body that, with first and second adjacent vertebrae having an
artificial disc disposed therebetween, kinematically form a four bar linkage
mechanism, as set forth in independent claims 1 and 15.
The Examiner erred in concluding that the combination of the
teachings of Ritland, Ferree and Petreto renders obvious a system for
stabilizing adjacent vertebrae having a first joint formed between a rigid
body and a first connecting element coupled to a first vertebrae, and a
second joint formed between the rigid body and a second connecting
element rigidly coupled to a second vertebrae adjacent to the first vertebrae,
with one of the joints being a sliding joint, as set forth in independent claim
12.

DECISION
The decision of the Examiner to reject claims 1-5, 10-15 and 18-20 is
reversed.

REVERSED

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