Ex Parte Laubert

Patent Trial and Appeal Board

Feb 27, 2019

13944545 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/944,545 07/17/2013 Nikolay Laubert
39083 7590 03/01/2019
KENEALY VAIDYA LLP
3000 K Street, N.W.
Suite 200
Washington, DC 20007
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.
5031-0006 5080
EXAMINER
JOHANAS, JACQUELINE T
ART UNIT PAPER NUMBER
3773
NOTIFICATION DATE DELIVERY MODE
03/01/2019 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):
avaidya@kviplaw.com
uspto@kviplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NIKOLAY LAUBERT
Appeal2018-002210
Application 13/944,545 1
Technology Center 3700
Before STEFAN STAICOVICI, JAMES P. CALVE, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision in the Final Office Action (dated Sept. 23, 2016, hereinafter "Final
Act.") rejecting claims 18-24. 2 We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
1 Aesculap Implant Systems, LLC is identified as the real party in interest in
Appellant's Appeal Brief (filed Mar. 21, 2017, hereinafter "Appeal Br.").
Appeal Br. 3.
2 Claims 1, 2, and 4--17 are withdrawn from consideration and claims
3, 25, and 26 are canceled. Appeal Br. 3, 12, and 17 (Claims App.).
Appeal2018-002210
Application 13/944,545
SUMMARY OF DECISION
We AFFIRM-IN-PART.
INVENTION
Appellant's invention relates to a "spinal interbody device" and its
method of manufacturing. Spec. para. 1.
Claims 18 and 24 are independent. Claim 18 is illustrative of the
claimed invention and reads as follows:
18. A spinal interbody system configured to be inserted
between adjacent vertebrae of a spinal column, comprising:
a cage;
a plate configured to be attached to the cage;
a keyway associated with one of the cage and the plate,
the keyway having a non-uniform outer circumference located
in a plane perpendicular to a central axis of the keyway; and
a key located adjacent one of the cage and the plate,
wherein
the key and keyway are configured such that the plate
can be moved between an unlocked position and a locked
position relative to the cage, and such that the plate is prevented
from rotational movement relative to the cage during a first
linear movement portion where the plate moves linearly
towards the cage to an engaged position, and such that the plate
is prevented from linear movement relative to the cage during a
second rotational movement portion of the plate relative to the
cage while the plate and cage are located at the engaged
position.
2
Appeal2018-002210
Application 13/944,545
REJECTIONS
I. The Examiner rejects claims 18-21 and 24 under 3 5 U.S. C.
§ I02(a)(l) as being anticipated by LeHuec et al. (US 2002/0147450
Al, pub. Oct. 10, 2002, hereinafter "LeHuec"). 3
II. The Examiner rejects claims 18, 22, and 23 under 35 U.S.C.
§ I02(a)(l) as being anticipated by Rinner (US 5,683,394, iss. Nov. 4,
1997).
ANALYSIS
Rejection I
Claims 18-21
Appellant does not present arguments for the patentability of claims
19-21 apart from claim 18. See Appeal Br. 7-8. Therefore, in accordance
with 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv), we select claim 18 as the representative
claim to decide the appeal of the rejection of these claims, with claims 19-
21 standing or falling with claim 18.
The Examiner finds that LeHuec discloses a spinal interbody system
including, inter alia, "a cage (7)," "a plate (132) configured to be attached to
the cage," a "keyway having a non-uniform outer circumference," "and a
key ... located adjacent one of the cage and the plate." Final Act. 2-3
( citing LeHuec, para. 52, Figs. 2, 8a, and 8b ). To better illustrate the above
mentioned elements of LeHuec' s device, the Examiner provides annotated
Figures 4 and 7b of LeHuec reproduced below:
3 The Examiner lists claims 18, 22, and 23 in the heading of the Rejection,
but then discusses claims 18-21 and 24 in the body of the Rejection. We
consider this discrepancy to be a typographical error.
3
Appeal2018-002210
Application 13/944,545
'V" Ji t'ig,,"'
~ -~
C..:\.,
3i
-ir,~
~
The Examiner's annotated Figures 4 and 7b of LeHuec illustrate "keyway"
129, 130, 131 of "cage" 107 and "key" 138 of "plate" 132. Id. at 4.
Appellant argues that
[T]here is no disclosure or teaching in LeHuec of at least
the features of a "keyway having a non-uniform outer
circumference located in a plane perpendicular to a central axis
of the keyway ... the plate is prevented from rotational
movement relative to the cage during a first linear movement
portion where the plate moves linearly towards the cage to an
engaged position," as recited in claim 18.
Appeal Br. 7. According to Appellant, because opening 129 ofLeHuec "has
a uniform cut-out circumference," "the alleged 'cage' 107 and alleged
4
Appeal2018-002210
Application 13/944,545
'plate' 132 of LeHuec are free to rotate during insertion relative to each
other and continue to be free to rotate once they are fully engaged ... under
force of a tool." Id. at 8. Hence, Appellant contends that "in LeHuec, there
is nothing to restrict rotation of the 'plate' 132 either while it is inserted into
the 'cage' 107 as well as once it has been inserted so as to engage the 'cage'
107." Id. (emphasis added).
We appreciate Appellant's position that keyway 15 has "a non-
uniform circumference" because "flange opening 15a ... runs along an
interior face of the keyway 15 and [is] parallel with the longitudinal axis of
the cylindrical aperture." Reply Brief ( filed Dec. 21, 2017, hereinafter
"Reply Br.") at 3. However, limitations not appearing in the claims cannot
be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA
1982). In this case, claim 18 merely requires "a keyway ... having a non-
uniform outer circuniference located in a plane perpendicular to a central
axis of the keyway." See Appeal Br. 15 (Claims App.) (emphasis added).
As LeHuec's retaining elements 130, 131 are located in a plane
perpendicular to a central axis of central opening 129, we agree with the
Examiner that the outer circuniference of central opening 129 is not
uniform. See Examiner Answer ( dated Oct. 31, 2017, hereinafter "Ans.") at
9-10. The Examiner is correct in that the outer circumference ofLeHuec's
central opening 129 with retaining elements 130, 131 is similar to
Appellant's central opening 15 with flange openings 15a. See id. at 10;
compare LeHuec, Fig. 4, with Appellant's Drawings, Fig. 3A.
5
Appeal2018-002210
Application 13/944,545
Furthermore, as LeHuec discloses that plate 132 is retained in its
position by stud 151 engaging retaining element 13 04 and that a tool is
needed for rotating plate 132 (see LeHuec, para. 52, Figs. 8a, 8b ), we also
agree with the Examiner that "plate [132] is not free to rotate on its own
during the initial linear movement claimed." Ans. 10 ( emphasis added).
Hence, even though retaining element 130 does not extend through central
opening 129, as Appellant argues, nonetheless, as stud 151 comes into
contact and is retained by element 130, LeHuec's keyway 129, 130 is
configured to prevent rotation of plate 132 (via stud 151) "during a first
linear movement portion."
Claim 18 does not require that plate 132 be prevented from rotational
movement during its entire linear movement, but rather during a "linear
movement portion." In other words, during the portion of the linear
movement of plate 132 when stud 151 comes into contact and is retained by
element 130 of cage 107, plate 132 is prevented from rotational movement,
as required by claim 18.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 102(a)(l) of claim 18 as anticipated by LeHuec. Claims
19--21 fall with claim 18.
4 Although LeHuec's paragraph 52 states that stud 151 engages retaining
element 131 in Figure 8a, upon a closer review of Figures 4 and 8a we note
that stud 151 of tongue 149 appears to engage element 130. See also
LeHuec, para. 51 ("The end of tongue 149 has a stud 151 on its posterior
face.").
6
Appeal2018-002210
Application 13/944,545
Claim 24
Independent claim 24, requires, inter alia, "that the key is insertable
into the keyway in a specific rotational orientation of the key with respect to
the keyway and such that the key is not insertable into the keyway in another
specific rotational orientation of the key with respect to the keyway."
Appeal Br. 17 (Claims App.).
The Examiner finds that
[T]he key includes a shaft (cylindrical portion) and at least one
flange extending from the shaft such that the key is insertable
into the keyway in a specific rotational orientation of the key
with respect to the keyway and such that the key is not
insertable into the keyway in another specific rotational
orientation of the key with respect to the keyway.
Final Act. 5-6.
Appellant argues that LeHuec fails to disclose "that the key is
insertable into the keyway in a specific rotational orientation of the key with
respect to the keyway." Reply Br. 4. According to Appellant, LeHuec's
"retaining element 13 2 can be pushed through the opening regardless of its
orientation" because "there is nothing to restrict rotation of the retaining
element 132 while it is inserted into the opening 129, as well once it has
been inserted so as to engage the plate 107." J d.; see also Appeal Br. 7 ("in
LeHuec, the retaining element [132] can be pushed into the opening 129
regardless of its orientation.").
Although we appreciate that LeHuec's plate 132 is insertable into
central opening 129 such that retaining element 130 of cage 107 contacts
and retains stud 151, we do not agree that this orientation constitutes a
"specific rotational orientation," as called for by claim 24. In other words,
7
Appeal2018-002210
Application 13/944,545
even though retaining element 130 of LeHuec's cage 107 is configured to
contact and retain stud 151, this does not mean that retaining plate 132 can
only be inserted into opening 129 in an orientation where stud 151 contacts
element 130. For example, retaining plate 132 could just as well be inserted
into opening 129 in an orientation where retaining element 131 contacts and
retains stud 151, and then rotated using a tool inserted into openings 145,
146, and 147, such that stud 151 contacts and is retained by element 130.
See LeHuec, paras. 51-52, Figs. 4, 7a, 7b, 8a, and 8b. Moreover, due to the
inclined sidewall of central opening 129, and because LeHuec's elastic tabs
137 can extend into central opening 129 prior to stud 151 contacting cage
107, retaining plate 132 appears to be insertable into opening 129 in any
orientation and then rotated into position such that stud 151 contacts either
element 130 or 131. See LeHuec, Fig. 4. As such, LeHuec's retaining
element 132 is not insertable into central opening 129 in a "specific
rotational orientation," and is not prevented from being inserted into the
central opening in another specific rotational orientation, as called for by
claim 24. Accordingly, we do not sustain the anticipation rejection of
independent claim 24.
Rejection II
Appellant does not present arguments for the patentability of claims
22 and 23 apart from claim 18. Therefore, we select claim 18 as the
representative claim to decide the appeal of the rejection of these claims,
with claims 22 and 23 standing or falling with claim 18.
The Examiner finds that Rinner discloses a spinal interbody system
including, inter alia, "a cage (1 )," "a plate (2) configured to be attached to
8
Appeal2018-002210
Application 13/944,545
the cage," "a keyway (9) having a non-uniform outer circumference," "and a
key (109) located adjacent one of the cage and the plate." Final Act. 6
(citing Rinner, col. 3, 11. 36-38, Figs. 1, 2, and 4).
Appellant argues that
[NJ either the blades 109 ( alleged "key") nor the slots 9
(alleged "keyway") are "configured such that the 'plate' (main
body portion 1) is prevented from rotational movement relative
to the 'cage' ( end cap 2) during a first linear movement portion
where the 'plate' ( main body portion 1) moves linearly towards
the 'cage' ( end cap 2) to an engaged position," as required in
claim 18.
Appeal Br. 10. According to Appellant, Rinner's "end cap 2 can be pushed
into the inner cavity 7 regardless of its orientation" and "then retained until
the fingers 18 engage with the pair of blades 109." Id. Thus, Appellant
contends that "the rotational movement of the end cap 2 is not limited when
the end cap 2 is engaging or being inserted into the inner cavity 7 of the
main body 1." Id.
We are not persuaded by Appellant's arguments because the
Examiner is correct that Rinner's "plate [2] is linearly advanced towards the
cage [1] until plate element (105) is received by the cage, and the blades
[ 109] are maintained horizontally with respect to the cage during the first
linear movement." Ans. 11 (citing Rinner, col. 3, 11. 36-38, Fig. 1). We
further agree with the Examiner that "notches 10 along slot 9 make the outer
circumference of the keyway [9] non-uniform." Ans. 12.
Furthermore, as discussed supra, claim 18 does not require that plate
2 be prevented from rotational movement during its entire linear movement,
but rather during a "linear movement portion." In other words, because of
the orientation of fingers 18 and notches 10, the Examiner is correct that
9
Appeal2018-002210
Application 13/944,545
during the portion of linear movement of plate 2, when blades 109 come into
contact and are retained by notches 10 of fingers 18 in an engaged position,
plate 2 is prevented from rotational movement, as required by claim 18.
Ans. 11; see also Rinner, Fig. 1. Accordingly, we do not agree with
Appellant's assessment that Rinner's "end cap 2 can be freely rotated as it
approaches and contacts the body portion 1." See Reply Br. 4 ( emphasis
added).
We are also not persuaded by Appellant's position that the ability to
rotate Rinner's end cap 2 so that blades 109 become oriented vertically
represents evidence that "the rotational movement of end cap 2 is not
limited," as required by claim 18. Reply Br. 5. Rather, we agree with the
Examiner's finding that the rotation of Rinner's plate 2 corresponds to "a
second rotational movement portion of the plate [2] relative to the cage [ 1]
while ... [they] are located at the engaged position," such that plate 2 is
prevented from linear movement relative to cage 1. Final Act. 6.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 102(a)(l) of claim 18 as anticipated by Rinner. Claims 22
and 23 fall with claim 18.
SUMMARY
The Examiner's decision to reject claims 18-21 and 24 under 35 U.S.C.
§ 102( a )(1) as anticipated by LeHuec is affirmed as to claims 18-21 and
reversed as to claim 24.
The Examiner's decision to reject claims 18, 22, and 23 under 35 U.S.C.
§ 102( a)( 1) as anticipated by Rinner is affirmed.
10
Appeal2018-002210
Application 13/944,545
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
11