Ex Parte Messerli et al

Board of Patent Appeals and Interferences

Sep 26, 2003

09497123 (B.P.A.I. Sep. 26, 2003)

1Appellants’ amendment subsequent to the final rejection was
refused entry by the examiner (see the amendment dated Jan. 28,
2002, Paper No. 10, refused entry as per the Advisory Action
dated Feb. 28, 2002, Paper No. 11; see also the Brief, page 2).
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte DOMINIQUE D. MESSERLI and DAVID C. PAUL
___________
Appeal No. 2003-1395
Application No. 09/497,123
__________
ON BRIEF
_________
Before WALTZ, KRATZ, and PAWLIKOWSKI, Administrative Patent
Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the primary examiner’s
final rejection of claims 1, 2, 7, 9, 14, 15 and 17 through 19.1
Claim 4 is the only other claim pending in this application and
stands withdrawn from further consideration by the examiner as
drawn to a non-elected invention (final Office action dated Oct.
Appeal No. 2003-1395
Application No. 09/497,123
2
26, 2001, Paper No. 8, page 2). The examiner has indicated that
the rejections involving claims 18 and 19 have been withdrawn,
and thus the examiner objects to these claims as being dependent
on a rejected claim but allowable if rewritten in independent
form including all of the limitations of the base claim and any
intervening claims (Answer, page 3, ¶(3) and ¶(6)). Accordingly,
claims 1, 2, 7, 9, 14, 15 and 17 remain as the claims on appeal
(Reply Brief, page 1). We have jurisdiction pursuant to 35
U.S.C. § 134.
According to appellants, the invention is directed to an end
member for use with a bone fusion implant (Brief, page 2).
Representative independent claim 1 is reproduced below:
1. An end member for use with an implant for fusing bone
comprising:
a first portion with a top surface adopted and configured to
engage the bone and having an edge and a first channel extending
from the edge for receiving a surgical instrument;
a second portion configured and dimensioned to be inserted
into a bore of the implant; and
a shoulder joining the first and second portions and sized
to rest on an edge of the implant when the second portion is
inserted in the bore of the implant.
Appellants state that claims 1, 7, 9, 14, 15, 17 and 19
stand or fall together, with claim 2 and claim 18 standing alone
(Brief, page 4). We note that claim 18 is not the subject of any
Appeal No. 2003-1395
Application No. 09/497,123
3
rejection on appeal and thus its separate grouping is immaterial
(Reply Brief, page 2). Contrary to the examiner’s assertions
(Answer, page 3), appellants do present reasonably specific,
substantive reasons for the separate patentability of claim 2
(e.g., Brief, page 6). Therefore we select claim 1 as
representative of the first group of claims and consider claim 2
separately to the extent of appellants’ arguments. See 37 CFR
§ 1.192(c)(7)(2000); In re McDaniel, 293 F.3d 1379, 1383, 63
USPQ2d 1462, 1465 (Fed. Cir. 2002).
The examiner relies upon the following references as support
for the rejections on appeal:
Biedermann et al. (Biedermann) 5,702,451 Dec. 30, 1997
Rabbe et al. (Rabbe) 5,776,197 Jul. 07, 1998
Claims 1, 7, 9, 14, 15 and 17 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Biedermann (Answer, page 4). Claims
1, 2, 9 and 14 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Rabbe (Answer, page 5). We affirm both of the
examiner’s rejections for reasons stated in the Answer and those
reasons set forth below. Accordingly, the decision of the
examiner is affirmed.
Appeal No. 2003-1395
Application No. 09/497,123
4
OPINION
A. The Rejection over Biedermann
The examiner finds that Biedermann discloses an end member
with a top surface “adopted and configured to engage bone” as
shown in Figure 3 since the end member has holes for tissue
ingrowth and permits bone to be “pushed into it.” Answer, page
4. The examiner further finds that Figure 6 of Biedermann
illustrates an end member having a flat planar surface, with two
sections 12 and 19 that can be construed as first and second
portions, with an integral shoulder that supports teeth 15 and
“is sized to rest on and [sic, an] edge of the implant.” Id.
The examiner further cites Figure 7 of Biedermann, interpreting
the figure as showing a first channel extending from the edge
such that it is formed between the teeth 15 that protrude outward
from the edge, said channel being capable of receiving a surgical
instrument. Id. We agree.
Appellants argue that the holes 14 in Biedermann are
circular in shape and are located on the interior of the plate,
spaced a distance from the edge of the top surface, and thus do
not form a channel or longitudinal groove for receiving a
surgical instrument. This argument is not well taken since the
examiner does not rely upon the holes 14 as forming a “channel”
Appeal No. 2003-1395
Application No. 09/497,123
5
(see the Answer, page 4). Similarly, appellants’ argument that
the examiner cites the space between prongs 21 as a “channel” is
not well taken (Brief, page 5).
Appellants argue that the examiner does not show a top
surface having a channel as expressly recited in claim 1, merely
citing Figure 7 of Biedermann to purportedly show a channel
formed between the teeth 15 that protrude outward from the edge
(Reply Brief, pages 2-3). This argument is not persuasive since
claim 1 on appeal does not require a top surface having a
channel. The end member of claim 1 on appeal comprises a first
portion “with a top surface ... having an edge and a first
channel extending from the edge...”. Claim language, in its
ordinary usage, must be given its broadest reasonable
interpretation during ex parte prosecution, as it would have been
understood by one of ordinary skill in the art when read in light
of the specification. See In re Morris, 127 F.3d 1048, 1054, 44
USPQ2d 1023, 1027 (Fed. Cir. 1997). The language quoted above
from claim 1 on appeal does not require a longitudinal channel,
or a channel on the top surface, but merely a channel extending
from an edge of the top surface. A “channel” is formed between
adjacent noses or teeth 15 of Biedermann, with the channel
extending from the edge of ring 12, which is an edge of the top
Appeal No. 2003-1395
Application No. 09/497,123
6
surface of the ring, with the channel extending in a downward
direction (see Figures 2, 3 or 3A).
In view of the foregoing claim construction and
interpretation of Biedermann, we determine that the examiner has
shown an end member of Biedermann with a first and second
portion, the first portion having an edge and a first channel
extending from the edge, a second portion configured and
dimensioned to be inserted into the bore of the implant (see col.
3, ll. 1-8), and a shoulder joining the first and second portions
sized to rest on an edge of the implant (see Figure 6). The
intended capability of the first channel (“for receiving a
surgical instrument”) is clearly within the capability of the
channel shown by Biedermann. See In re Schreiber, 128 F.3d 1473,
1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
For the foregoing reasons and those stated in the Answer, we
determine that the examiner has established a prima facie case of
anticipation which has not been sufficiently rebutted by
appellants’ arguments. Accordingly, we affirm the examiner’s
rejection of claim 1, and claims 7, 9, 14, 15 and 17 which stand
or fall with claim 1, under 35 U.S.C. § 102(b) over Biedermann.
Appeal No. 2003-1395
Application No. 09/497,123
7
B. The Rejection over Rabbe
The examiner finds that Rabbe, as shown in Figure 3,
discloses an end member 22 for a bone implant having a first
portion 35 and a second portion 37 with a shoulder integral with
the first portion and capable of being sized to rest on an edge
of the implant (Answer, page 5). The examiner further finds that
the top surface of the end member of Rabbe is a flat planar
surface that has first and second channels 47 extending from an
edge and these channels are fully capable of receiving an
instrument. Id. The examiner also notes that Rabbe teaches a
plurality of teeth 120 in a two dimensional array on the top
surface. Id.
Appellants argue that element 35, which the examiner
alleges to be a shoulder, is not sized to rest on an edge of the
implant since flange 35 has internal threading which goes outside
of threaded cylindrical body 21, with flange 35 never contacting
body 21 (Brief, pages 5-6; Reply Brief, page 4). This argument
is not persuasive since Rabbe teaches that the threading can be
reversed, i.e., the internal threads may be on the cylindrical
body 21 while the external threads may be on the cylinder 37,
thus resulting in a cylindrical body 21 slightly larger in
diameter than the diameter of the cylinder 37 (see col. 7, ll.
Appeal No. 2003-1395
Application No. 09/497,123
8
10-16). Therefore the flange 35 would be sized to rest on an
edge of the implant cylinder 21.
Appellants argue that Rabbe does not disclose, teach or
suggest a “first channel” in the top surface “extending from the
edge for receiving a surgical instrument” as required by claim 1
since the mounting slots 47 disclosed by Rabbe are configured to
support a separate end cap 23 which would prevent a surgical
instrument from being received in slots 47 (Brief, page 6; Reply
Brief, page 3). This argument is not persuasive since Rabbe
teaches that the end cap 23 “can be eliminated if bone growth
between the adjacent vertebrae and through the replacement body
is preferred.” Col. 6, l. 65-col. 7, l. 2. Thus mounting slots
47 would clearly be capable of receiving a surgical instrument.
See In re Schreiber, supra.
With respect to the rejection of claim 2 on appeal,
appellants argue that teeth 91 in Rabbe form a single ring and
not a two dimensional array as claimed (Brief, page 6; Reply
Brief, page 4). This argument is not well taken since the spikes
91 taught by Rabbe must be considered as at least a “two
dimensional array” as this language is ordinarily used (Answer,
page 6). Furthermore, Rabbe teaches that the end face 86 of the
flange 85 includes “a number of spikes 91 projecting therefrom”
Appeal No. 2003-1395
Application No. 09/497,123
9
with the configuration to penetrate the end plate of the adjacent
vertebral bodies “to help maintain the position of the implant in
situ” (col. 9, ll. 48-52). Accordingly, Rabbe describes any
number of spikes in any configuration necessary to maintain the
implant in position.
For the foregoing reasons and those stated in the Answer, we
determine that the examiner has established a prima facie case of
anticipation in view of Rabbe which has not been sufficiently
rebutted by appellants’ arguments. Accordingly, we affirm the
examiner’s rejection of claims 1 and 2, and claims 9 and 14 which
stand or fall with claims 1 and 2, under 35 U.S.C. § 102(e) over
Rabbe.
Appeal No. 2003-1395
Application No. 09/497,123
10
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED

Thomas A. Waltz )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Peter F. Kratz ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
Beverly A. Pawlikowski )
Administrative Patent Judge )
TAW/tdl

Appeal No. 2003-1395
Application No. 09/497,123
11
Pennie & Edmonds LLP
1667 K Street, N.W.
Suite 1000
Washington, DC 20006