Ex Parte Loeb

Board of Patent Appeals and Interferences

Jan 19, 2010

11076148 (B.P.A.I. Jan. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARVIN P. LOEB
____________________

Appeal 2009-004566
Application 11/076,148
Technology Center 3700
____________________

Decided: January 19, 2010
____________________

Before LINDA E. HORNER, STEVEN D.A. McCARTHY
and FRED A. SILVERBERG, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s 2
decision finally rejecting claims 14 and 20 under 35 U.S.C. § 102(e) as 3
being anticipated by Goldsmith (US 2005/0119657 A1, publ. Jun. 2, 2005); 4
finally rejecting claims 1, 2 and 4 under § 102(e) as being anticipated by5
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Muhanna (US 2003/0195624 A1, publ. Oct. 16, 2003); and finally rejecting 1
claim 3 under 35 U.S.C. § 103(a) as being unpatentable over Muhanna and 2
Ritland (US 6,966,910 B2, issued Nov. 22, 2005). We have jurisdiction 3
under 35 U.S.C. § 6(b). 4
We AFFIRM. 5
Independent claim 1 recites: 6
7
1. An artificial spinal joint, comprising 8
at least one member whose center portion is 9
flexible and whose distal ends terminate in feet 10
that contain slots through which at least one 11
fastener may be inserted to attach the feet to 12
vertebra whose facets are non-functional. 13
14
ISSUES 15
The Appellant argues independent claim 14 and its dependent claim 16
20 as a group. Claim 14 is representative of the group. See 37 C.F.R. 17
§ 41.37(c)(1)(vii). 18
Claim 14 recites an artificial spinal joint comprising a pair of legs 19
terminating in a pair of feet at the respective ends of the legs. The claim 20
further recites that the feet are flexible about the legs. Goldsmith discloses a 21
one-piece device including legs, two foot plates extending away from the 22
legs and malleable bend zones provided to adjust the angles at which the 23
foot plates extend away from the legs. (Goldsmith 5, para. 0057 and fig. 1.) 24
The Examiner contends that the provision of the malleable bend zones 25
implies that the two foot plates are flexible about the legs. (Ans. 3-4.) The 26
Appellant contends that malleability does not imply flexibility. (Br. 3-4.) 27
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The Appellant argues independent claim 1 and its dependent claims 2 1
and 4 as a group. Claim 1 is representative of the group. 2
Figure 7 of Muhanna depicts a one-piece artificial ligament including 3
oppositely extending web body end portions. The Appellant contends that 4
Muhanna’s artificial ligament lacks a flexible center portion, instead having 5
only a slight arcuate bend intermediate the web body end portions which 6
permits extension but no flexure. (Br. 4.) The Appellant also contends that 7
apertures in the web body end portions of Muhanna’s artificial ligament are 8
not slots through which at least one fastener may be inserted to attach the 9
feet to vertebra whose facets are non-functional. (Id.) 10
In rejecting claim 3, the Examiner concludes that it would have been 11
obvious “to manufacture the device of Muhanna from titanium, titanium 12
alloy, or medical grade stainless steel in view of Ritland in order to provide 13
the strength necessary to withstand the loading from the patient.” (Ans. 6.) 14
The Appellant contends that the Examiner has failed to undertake all of the 15
factual inquiries required before reaching a conclusion of obviousness (Br. 16
5) and that “[n]o motivation for one of ordinary skill, whatever that skill 17
level may be, is present in either [Muhanna or Ritland] to selectively pick 18
therefrom and combine various structural elements.” (Br. 4-5.) 19
This appeal turns on four issues: 20
Has the Appellant shown that the Examiner erred by 21
finding that Goldsmith’s foot plates are flexible about the legs 22
of the central portion of Goldsmith’s device? 23
Has the Appellant shown that the Examiner erred by 24
finding that Muhanna’s artificial ligament includes a member 25
having a flexible central portion and distal ends terminating in 26
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feet containing slots through which at least one fastener may be 1
inserted to attach the feet to vertebra whose facets are non-2
functional? 3
Has the Appellant shown that the Examiner failed to 4
make sufficient findings to support the conclusion that the 5
subject matter of claim 3 would have been obvious? 6
Has the Appellant shown that the Examiner failed to 7
articulate reasoning with some rational underpinning sufficient 8
to support the conclusion that Muhanna and Ritland would have 9
provided one of ordinary skill in the art reason to fabricate an 10
artificial ligament similar to Muhanna’s from a rigid material 11
such as titanium, titanium alloy or medical grade stainless 12
steel? 13
14
FINDINGS OF FACT 15
The record supports the following findings of fact (“FF”) by a 16
preponderance of the evidence. 17
1. Goldsmith discloses a one-piece device 10 for securing two 18
vertebrae together. Goldsmith’s device 10 includes a V-shaped central 19
portion 22 and two terminal portions or foot plates 24, 26. (Goldsmith 2, 20
paras. 0026 and 0030-31.) Figures 1, 3 and 8A-10W of Goldsmith depict 21
the V-shaped central portion 22 as having a pair of legs. 22
2. Goldsmith discloses providing malleable bend zones to adjust 23
the angles at which the terminal portions 24, 26 extend away from the legs. 24
(Goldsmith 5, para. 0057.) In particular, one of ordinary skill in the art 25
would have understood that the malleable bend zones were provided to 26
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permit adjustment of the angles at which the terminal portions 24, 26 extend 1
away from the legs without breaking the terminal portions 24, 26 from the 2
legs. 3
3. Figure 7 of Muhanna depicts a one-piece artificial ligament 300 4
including an arcuate bend 302 adjacent its intermediate portion. Muhanna 5
describes the arcuate bend 302 as tending to straighten under extension. 6
(Muhanna 2, para. 0024.) 7
4. Muhanna’s artificial ligament 300 includes web body end 8
portions. Each of the web body end portions includes a pair of elongated 9
apertures for receiving screws. The screws serve as anchoring means for 10
securing the ligament body to an adjacent vertebra. (See Muhanna 1-2, para. 11
0017-18 (describing web body end portions similar to those depicted in 12
Figure 7).) 13
5. Ritland discloses an implantable dynamic fixation device 1 for 14
flexibly fusing vertebrae including a flexible rod 10 having end portions 12, 15
16 connected to pedicle screws 20. (Ritland, col. 6, ll. 48-55.) 16
6. Ritland discloses fabricating the flexible rod 10 from strong, 17
biocompatible materials such as titanium, titanium alloy or stainless steel. 18
(Ritland, col. 10, ll. 43-45.) 19
7. The Examiner finds that the ordinary usage of the term 20
“flexible” is sufficiently broad to encompass “capable of being bent without 21
breaking.” (Ans. 6.) This finding is correct. See, e.g., WEBSTER’S THIRD 22
NEW INT’L DICTIONARY 869 (G&C Merriam Co. 1971)(“flexible,” entry 1, 23
def. 1: “capable of being flexed: capable of being turned, bowed, or twisted 24
without breaking”). 25
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8. The Examiner finds that the ordinary usage of the term 1
“malleable” is sufficiently broad to encompass “capable of being shaped or 2
bent or drawn out.” (Ans. 6.) This finding is also correct. See, e.g., 3
WEBSTER’S THIRD NEW INT’L DICTIONARY at 1367-68 (“malleable,” def. 2: 4
“susceptible of being fashioned into a new or different form or shape”). 5
6
PRINCIPLES OF LAW 7
A claim under examination is given its broadest reasonable 8
interpretation consistent with the underlying specification. In re Am. Acad. 9
of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In the absence of 10
an express definition of a claim term in the specification or a clear 11
disclaimer of scope, the claim term is interpreted as broadly as the ordinary 12
usage of the term by one of ordinary skill in the art would permit. In re 13
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re 14
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Properties of preferred 15
embodiments described in the specification which are not recited in a claim 16
do not limit the reasonable scope of the claim. E-Pass Techs., Inc. v. 3Com 17
Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). 18
19
ANALYSIS 20
The Examiner has not erred by finding that Goldsmith’s terminal 21
portions or foot plates 24, 26 are flexible about the legs of the central portion 22
22 of Goldsmith’s device 10. Goldsmith discloses providing malleable bend 23
zones to adjust the angles at which the terminal portions 24, 26 extend away 24
from the legs. (FF 2.) The Appellant provides no definition of the term 25
“flexible,” either in the Appellant’s Specification or in the Appeal Brief. 26
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The ordinary usage of the term “flexible” is sufficiently broad to include 1
“capable of being bent without breaking.” (FF 7.) Thus, the ordinary usage 2
of the term “flexible” is sufficiently broad to encompass malleability. 3
(Compare FF 7 with FF 8.) 4
The Appellant does not refer to any disclosure in the Specification 5
which might be inconsistent with this interpretation. Although certain 6
preferred embodiments in the Specification appear to exhibit either elasticity 7
or shape memory (see, e.g., Spec. 5, l. 30 – 6, l. 8), the Specification does 8
not disclaim an interpretation of the term “flexible” which encompasses 9
structures not exhibiting these behaviors. 10
One of ordinary skill in the art would have understood that Goldsmith 11
provides the malleable bend zones to permit adjustment of the angles at 12
which the terminal portions 24, 26 extended away from the legs without 13
breaking the terminal portions 24, 26 from the legs. (FF 2.) This 14
understanding would have implied that Goldsmith’s terminal portions or foot 15
plates 24, 26 were flexible about the legs within the ordinary usage of the 16
term “flexible.” 17
The Examiner has not erred by finding that Muhanna’s artificial 18
ligament includes a member having a flexible central portion. The central 19
portion or arcuate bend 302 of Muhanna’s artificial ligament 300 tends to 20
straighten under extension. (FF 3.) This tendency implies that the central 21
portion or arcuate bend 302 is “flexible” within the ordinary usage of the 22
term, that is, that the central portion is capable of being bent without 23
breaking. The ordinary usage of the term “flexible” is sufficiently broad to 24
encompass a decrease as well as an increase in curvature. 25
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The Examiner has not erred by finding that the distal ends of the 1
arcuate bend of Muhanna’s artificial ligament terminate in feet containing 2
slots through which at least one fastener may be inserted to attach the feet to 3
vertebra whose facets are non-functional. Each of the web body end 4
portions of Muhanna’s artificial ligament 300 includes a pair of elongated 5
apertures or slots for receiving screws. The screws serve as anchoring 6
means for securing the ligament body to an adjacent vertebra. (FF 4.) Even 7
a relatively narrow reading of claim 1 requires only that the at least one 8
fastener which may be inserted through the slots be capable of attaching the 9
claimed structure to a vertebra, not that the at least one fastener affix the 10
claimed structure to the vertebra. The screws disclosed by Muhanna do this, 11
even if the screws are left free to move in the aperture so as to allow the 12
claimed structure to slide relative to the vertebra. 13
Even if claim 1 did recite that the slots must be capable of enabling 14
the at least one fastener to affix the claimed structure to a vertebra, one of 15
ordinary skill in the art would recognize that sufficient tightening of the 16
screws would affix the claimed structure to the adjacent vertebra. The 17
Appellant has not asserted, much less provided evidence to show, that the 18
screws disclosed by Muhanna could not be tightened into a vertebra whose 19
facets are non-functional sufficiently to affix Muhanna’s artificial ligament 20
to the vertebra. 21
The Examiner has made sufficient findings to support the rejection of 22
claim 3 under § 103(a). The Examiner made findings concerning the scope 23
and content of the prior art. In particular, the Examiner made specific 24
findings as to the content of Muhanna while explaining the rejection of 25
parent claim 1 under § 102(e). (See Ans. 4-5.) The Examiner also made 26
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specific findings as to the content of Ritland and as to the differences 1
between the content of Muhanna and the claimed subject matter. (See Ans. 2
5.) Although the Examiner made no explicit finding regarding any 3
secondary indicium of obviousness, the Appellant identifies no objective 4
evidence which might have supported such a finding. 5
Although the Examiner made no explicit findings as to the level of 6
ordinary skill in the art, the level of ordinary skill in the art is apparent from 7
the descriptions of Goldsmith, Muhanna and Ritland. The Appellant fails to 8
identify any evidence relevant to the level of ordinary skill which the 9
Examiner failed to consider or to explain what bearing any particular finding 10
as to the level of ordinary skill might have had on the legal conclusion of 11
obviousness. Indeed, the Appellant’s only other substantive argument is that 12
“[n]o motivation for one of ordinary skill, whatever that skill level may be, is 13
present in either of these two reference to selectively pick therefrom and 14
combine various structural elements.” (Br. 4-5 [emphasis added].) See 15
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence 16
of specific findings on the level of skill in the art does not give rise to 17
reversible error where the prior art itself reflects an appropriate level and a 18
need for testimony is not shown.” [internal quotation marks omitted].) 19
The Appellant objects that there is no motivation for the Examiner’s 20
proposed modification of Muhanna’s artificial ligament in either Muhanna 21
or Ritland. An examiner need not find a motivation disclosed in one of the 22
combined references in order to support a conclusion of obviousness. In 23
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007), the Supreme Court 24
explained that it often will be necessary “to look to interrelated teachings of 25
multiple patents; the effects of demands known to the design community or 26
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present in the marketplace; and the background knowledge possessed by a 1
person having ordinary skill in the art, all in order to determine whether 2
there was an apparent reason to combine the known elements in the fashion 3
claimed . . . .” 4
The Examiner must articulate some reasoning with some rational 5
underpinning to support the legal conclusion of obviousness. Id.; In re 6
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In the present case, however, the 7
Examiner concludes that it would have been obvious “to manufacture the 8
device of Muhanna from titanium, titanium alloy, or medical grade stainless 9
steel in view of Ritland in order to provide the strength necessary to 10
withstand the loading from the patient.” (Ans. 6.) The Appellant provides 11
no reason why the Examiner’s reasoning might lack rational underpinning. 12
The Examiner need provide no more to support the conclusion of 13
obviousness. 14
15
CONCLUSIONS 16
The Appellant has not shown that the Examiner erred by finding that 17
Goldsmith’s foot plates are flexible about the legs of the central portion of 18
Goldsmith’s device. Therefore, the Appellant has not shown that the 19
Examiner erred in rejecting claims 14 and 20 under § 102(e) as being 20
anticipated by Goldsmith. 21
The Appellant has not shown that the Examiner erred by finding that 22
Muhanna’s artificial ligament includes a member having a flexible central 23
portion and distal ends terminating in feet containing slots through which at 24
least one fastener may be inserted to attach the feet to vertebra whose facets 25
are non-functional. Therefore, the Appellant has not shown that the 26
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Examiner erred in rejecting claims 1, 2 and 4 under § 102(e) as being 1
anticipated by Muhanna. 2
The Appellant has not shown that the Examiner failed to make 3
sufficient findings to support the conclusion that the subject matter of claim 4
3 would have been obvious. 5
The Appellant has not shown that the Examiner failed to articulate 6
reasoning with some rational underpinning sufficient to support the 7
conclusion that Muhanna and Ritland would have provided one of ordinary 8
skill in the art reason to fabricate an artificial ligament similar to Muhanna’s 9
from a rigid material such as titanium, titanium alloy or medical grade 10
stainless steel. Therefore, the Appellant has not shown that the Examiner 11
erred in rejecting claim 3 under § 103(a) as being unpatentable over 12
Muhanna and Ritland. 13
14
DECISION 15
We AFFIRM the Examiner’s decision rejecting claims 1-4, 14 and 20. 16
No time period for taking any subsequent action in connection with 17
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 18
§ 1.136(a)(1)(iv) (2007). 19
20
AFFIRMED 21
22
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24
25
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mls 1
2
OLSON & CEPURITIS, LTD. 3
20 NORTH WACKER DRIVE 4
36TH FLOOR 5
CHICAGO, IL 60606 6