Ex Parte Mandel

Patent Trial and Appeal Board

Jun 26, 2013

11050171 (P.T.A.B. Jun. 26, 2013)

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.
11/050,171 02/04/2005 Shlomo Sam Mandel SM-001 1892
7590 06/27/2013
David W. Schumaker
5436 Chanto Dr.
Clarkston, MI 48346
EXAMINER
DORNA, CARRIE R
ART UNIT PAPER NUMBER
3735
MAIL DATE DELIVERY MODE
06/27/2013 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 PATENT TRIAL AND APPEAL BOARD
__________

Ex parte SHLOMO SAM MANDEL
__________

Appeal 2011-010773
Application 11/050,171
Technology Center 3700
__________

Before LORA M. GREEN, JACQUELINE WRIGHT BONILLA, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal1 under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-15. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

1 The Real Party in Interest is Shlomo Sam Mandel (App. Br. 3).
Appeal 2011-010773
Application 11/050,171

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STATEMENT OF THE CASE
Claim 1 is the only independent claim on appeal, and reads as follows:
1. A spinal root nerve protection barrier comprising:
a compression resistant covering composed of a tough, strong outer
layer or sheath adapted to surround and protect a portion of said root nerve
from compression or distortion caused by intervertebral disc material
displacement, ligamentum flavum, facet joint arthritis, osteophytes, or
postoperative scarring;
said compression resistant covering adapted to have a radial
dimension which is larger than the outer diameter of said root nerve to be
protected, and an axial dimension which is long enough to protect at least a
portion of said root nerve which is at risk of compression or distortion by
surrounding tissues;
said protection barrier adapted to allow for normal flexion, rotation,
side bending and extension motion of the spire, as well as freedom of
movement for the root nerve itself;
said compression resistant covering forming a physical barrier
providing rigid protection that resists compression or distortion of the
protected root nerve by the surrounding bone and, bulging vertebral disc
material;
said compression resistant covering being resistant to compression in
the radial dimension, while being flexible in the axial dimension;
said compression resistant covering being formed from one or more
bio-compatible materials selected from the group consisting of polymers,
metals, alloys, ceramics and composites thereof.

The following grounds of rejection are before us for review:
I. Claims 1-4, 8, and 9 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Stensaas2 (Ans. 4).

2 Stensaas et al., US 4,778,467, Oct. 18, 1988
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II. Claims 1 and 5 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Dellon3 (Ans. 5).
III. Claims 1, 6, 7, and 12 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Barrows4 (Ans. 6).
IV. Claims 1 and 10 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Kuhn 5(Ans. 8).
V. Claims 1 and 13-15 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Aebischer6 (Ans. 9).
VI. Claim 11 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Stensaas and
Mallapragada7 (Ans. 10).

ANALYSIS
We agree with the rejections and responses to Appellant’s arguments
that are set out in the Examiner’s Answer, and therefore adopt the
Examiner’s reasoning as our own.
For example, Appellant’s primary argument with respect to all of the
rejections is that none of the references teach a cover or sheath that is “rigid
enough to resist compression or distortion of the protected root nerve by the
surrounding bone and, bulging vertebral disc material” (see App. Br. 12).

3 Dellon et al., US 4,870,966, Oct. 3, 1989
4 Barrows, US 4,883,618, Nov. 28, 1989
5 Kuhn, US 3,916,905, Nov. 4, 1975
6 Aebischer et al., US 5,011,486, Apr. 30, 1991
7 Mallapragada et al., US 6,676,675 B2, Jan. 13, 2004
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We recognize that “[a] patent applicant is free to recite features of an
apparatus either structurally or functionally.” In re Schreiber, 128 F.3d
1473, 1478 (Fed. Cir. 1997). However, to do so carries a risk, when “‘the
Patent Office has reason to believe that a functional limitation asserted to be
critical for establishing novelty in the claimed subject matter may, in fact, be
an inherent characteristic of the prior art, it possesses the authority to require
the applicant to prove that the subject matter shown to be in the prior art
does not possess the characteristic relied on.’” Id. (quoting In re Swinehart,
439 F.2d 210, 213 (CCPA 1971); see also Leggett & Platt, Inc. v. Vutek,
Inc., 537 F.3d 1349, 1354-55 (Fed. Cir. 2008).
In the instant case, Appellant has chosen to define the claimed
apparatus of a spinal root nerve protection barrier using primarily functional
limitations. While independent claim 1 defines certain materials out of
which the nerve protection barrier may be comprised, the materials are
claimed very broadly in that the materials are “formed from one or more bio-
compatible materials selected from the group consisting of polymers, metals,
alloys, ceramics and composites thereof.” Moreover, while claim 1 requires
that the barrier provide “rigid protection that resists compression or
distortion of the protected root nerve by the surrounding bone and, bulging
vertebral disc material,” the Specification provides no guidance as to the
strength of the forces involved. And the protection required would appear to
be relative, based on the severity of the condition of the patient. Stated
differently, some patients may have a low level of compression against the
nerve, while other patients may have a higher level of compression against
the nerve, but the claims encompass a device that would be used in patients
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having a low level of compression against the nerve. Thus, Appellants do
not persuade us that the cited references fail to teach and/or suggest a barrier
or covering that is “rigid” (or “tough” or “strong”) enough in relation to
what is recited in claim 1 (App. Br. 11-12).
Regarding Appellants’ arguments as to the rejected dependent claims,
we again adopt the Examiner’s reasoning as our own.
The Examiner’s rejections are affirmed.

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).

AFFIRMED

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