Ex Parte MandelDownload PDFPatent Trials and Appeals BoardJun 26, 201311050171 - (D) (P.T.A.B. Jun. 26, 2013) Copy Citation 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 2 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 Appeal 2011-010773 Application 11/050,171 3 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 Appeal 2011-010773 Application 11/050,171 4 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 Appeal 2011-010773 Application 11/050,171 5 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 lp Copy with citationCopy as parenthetical citation