Ex Parte McGraw et al

Board of Patent Appeals and Interferences

Feb 13, 2012

11057209 (B.P.A.I. Feb. 13, 2012)

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.
11/057,209 02/15/2005 J. Kevin McGraw HATCH-005 5385
21884 7590 02/13/2012
WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
EXAMINER
CARTER, TARA ROSE E
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
02/13/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte J. KEVIN McGRAW and DIRK V. HOYNS
__________

Appeal 2010-010178
Application 11/057,209
Technology Center 3700
__________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a system and method for percutaneous stabilization of
adjacent vertebrae. The Patent Examiner rejected the claims for
obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
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Application 11/057,209

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STATEMENT OF THE CASE
Claims 1, 2, 7, 10-13, 18, and 22-26 are on appeal. Claim 1 is
representative and reads as follows:
1. A system for the percutaneous stabilization of adjacent vertebrae,
comprising:
a plurality of elongated stabilization devices, each of the stabilization
devices being made of a shape memory or super elastic material which is
substantially straight prior to deployment and takes a desired curved
configuration upon entering the vertebrae;
each stabilization device includes a radius of curvature, each
stabilization device further including a leading end and a trailing end
wherein the leading end is pointed for penetration through a vertebral body;
an introducer needle shaped and dimensioned for penetration within
pedicles of vertebrae, wherein the introducer needle includes a lumen sized
for the passage each of the stabilization devices therethrough; and
an introducer rod shaped and dimensioned for passage through the
introducer needle, the introducer rod including a driver rod having a
proximal end and a distal end, the distal end being threadingly secured to a
trailing end of each of the stabilization devices, the driver rod and
stabilization device selectively extending through a lumen of the introducer
rod for releasably securing the introducer rod to each of the stabilization
devices, the introducer rod including a keying element adapted for
engagement with a keying element at the trailing end of each of the
stabilization devices for ensuring the introducer rod is properly oriented
during placement of each of the stabilization devices.

The Examiner rejected all the claims under 35 U.S.C. § 103(a) as
unpatentable over Keith,
1
Carl,
2
and Jackson.
3

Claims 2, 7, 10-13, 18, and 22-26 have not been argued separately and
therefore stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

1
Peter T. Keith et al., US 6,579,291 B1, issued June 17, 2003.
2
Allen Carl et al., US 6,607,530 B1, issued Aug. 19, 2003.
3
Roger P. Jackson, US 6,258,090 B1, issued July 10, 2001.
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Application 11/057,209

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OBVIOUSNESS
The Issue
The Examiner’s position is that Keith described the claimed invention
except for three elements: (i) “wherein the leading end [of the stabilization
device] is pointed for penetration through a vertebral body;” (ii) “a keying
element adapted for engagement with a keying element at the trailing end of
the stabilizing device;” and (iii) “the distal end of the driver end being
threadingly secured to a trailing end of each of the stabilization devices.”
(Ans. 4.) The Examiner found that Carl suggested elements (i) and (ii), and
Jackson suggested element (iii). (Id. at 4-5.) The Examiner concluded it
would have been obvious to (a) modify Keith’s system and method
according to Carl’s suggestions “to orient the stabilization device,” and
(b) adopt Jackson’s threaded fitting “to lock the driver rod and stabilization
device together during installation thus giving the user better control and
grip of the stabilization device during installation.” (Id.)
Appellants state that “Carl discloses a pointed holding end and a key
and notch type arrangement,” but contend that “[t]here is no suggestion in
either Carl or Keith as to why one would want to apply such an arrangement
to the device of Keith” (App. Br. 11), and “there is no reason why one would
add the keying element of Carl to the device and method disclosed by Keith”
(id. at 12).
Appellants argue that there was no reason for combining the teachings
of Jackson with Keith:
[t]he Office Action suggests the motivation is to properly align
and retain the stabilization device. However, this assumes there
was a need for alignment and stabilization to improve the
devices of Keith and Carl. There is no need for such an
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Application 11/057,209

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improvement to the devices of Keith and Carl. As such, this
rationale is merely made up to create a rejection which appears
to only be based upon impermissible hindsight.

(Id. at 13.) As the argument against adapting Keith’s system to use a
threaded fitting suggested by Jackson is based only on the alleged error of
combining Keith and Carl teachings, the issue to be decided is whether there
was a proper reason to combine the Keith and Carl teachings.
Findings of Fact
1. We adopt the Examiner’s findings concerning the scope and content
of the prior art.
2. Keith stated:
[t]he reinforcement members 100/200/300 may be
oriented generally parallel to the periphery of the annulus 52
(e.g., reinforcement members 100A, 100C, 200, 300), generally
radial to the annulus 52 (e.g., reinforcement member 100B), or
any other orientation suitable for stabilizing and/or compressing
the desired portion(s) of the annulus 52. Generally, the closer
the reinforcement members 100/200/300 are to the periphery of
the annulus 52, the greater the amount of support and
stabilization provided to the disc 50. As such, the
reinforcement members 100/200/300 preferably have a
curvature conforming to the periphery of the annulus 52 such
that they may be implanted as close to the periphery of the
annulus 52 as possible. The reinforcement members
100/200/300 may have such a curvature in the relaxed (zero
stress) state, or the curvature may be imparted by the insertion
path or defined by the insertion tools used.

(Keith, col. 8, ll. 15-21, emphasis added.)
Principles of Law
“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
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devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007). “One of the ways in which a patent’s subject matter
can be proved obvious is by noting that there existed at the time of invention
a known problem for which there was an obvious solution encompassed by
the patent’s claims.” Id. at 419-420.
Analysis
The rejection explained why a person of ordinary skill in the art would
have modified Keith’s system to gain the orientation advantages of Carl’s
system. We agree that the rejection proposed a reasonable application of
Carl’s teachings. Appellants contend that there would have been no need for
modification because, according to Appellants, Keith’s system achieved
orientation via the insertion pathway. Even if Keith’s system achieved
orientation via the insertion pathway, we see no error in a belt and
suspenders approach combining reliance on the insertion path and on
insertion tools to ensure proper orientation.
Appellants more specifically argue that
when one looks to the deployment methodology disclosed by
Keith with reference to the various embodiments presented
therein, there is no need for a keying element which will control
the orientation of reinforcement member relative to the tools
410, 420, 430 and 440. Rather, a pathway for the reinforcement
member 100 is pre-made utilizing the deployment assembly and
there is, therefore, no need for the utilization of a keying
element for controlling positioning of the reinforcement
member 100 with reference to the various tools 410, 420, 430
and 440.

(App. Br. 11-12.) Appellants do not direct attention on this point to any
portion of Keith’s disclosure, but we find Keith’s column 8 is pertinent.
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Application 11/057,209

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Specifically, Keith stated that the curvature, i.e., the orientation, of the
reinforcement member 100 “may be . . . defined by the insertion tools used.”
(FF 2.) As Keith explicitly stated that a deployment method using insertion
tools to define the orientation of the reinforcement members 100 could be
used, we find Appellants’ argument unpersuasive because it contradicts
Keith’s specific teachings concerning the deployment methodology.
Because Keith taught defining curvature with insertion tools, we also
disagree with Appellants’ contention that “orienting as taught by Carl . . .
has no relevance to Keith.” (App. Br. 12.)
Appellants’ sole argument concerning the obviousness of adapting
Keith’s system to use a threaded fitting suggested by Jackson is that the
Keith and Carl teachings were improperly combined. As we have concluded
the Keith and Carl teachings were properly combined, Appellants have not
persuaded us that the rejection improperly relied on the Jackson teachings.
SUMMARY
We affirm the rejection of claims 1, 2, 7, 10-13, 18, and 22-26 under
35 U.S.C. § 103(a) as unpatentable over Keith, Carl, and Jackson.
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

cdc