Ex Parte Michelson

Board of Patent Appeals and Interferences

Apr 26, 2005

09991247 (B.P.A.I. Apr. 26, 2005)

1 Claims 25 through 28, 56 through 59 and 85 through 88 have
been amended subsequent to final rejection.
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte GARY K. MICHELSON
_______________

Appeal No. 2005-1002
Application No. 09/991,247
_______________
ON BRIEF
_______________
Before FRANKFORT, MCQUADE, and NASE, Administrative Patent
Judges.
Per Curiam
Gary K. Michelson appeals from the final rejection (mailed
January 30, 2004) of claims 1 through 3 and 5 through 88, all of
the claims pending in the application.1
THE INVENTION
The invention relates to “bone dowels to be placed across
the intervertebral space left after the removal of a damaged
Appeal No. 2005-1002
Application No. 09/991,247
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spinal disc” (Specification, page 1). Representative claim 1
reads as follows:
1. A system including an interbody spinal implant for
insertion at least in part into an implantation space formed
across a disc space between adjacent vertebral bodies of a human
spine and into at least a portion of the endplates of the
vertebral bodies, said implant comprising:
a body having a leading end for insertion first into the
disc space and a trailing end opposite said leading end;
opposite upper and lower surfaces adapted to be placed in
contact with and to support the adjacent vertebral bodies;
opposite sides between said leading and trailing ends and
between said upper and lower surfaces, said upper and lower
surfaces being arcuate in a direction from one of said opposite
sides to another of said opposite sides;
a plurality of forward-facing projections extending from
said upper and lower surfaces for engaging the adjacent vertebral
bodies, at least one of said projections having a leading face
and a rearward portion, said leading face and said rearward
portion each having a length and a slope, the length of said
leading face being longer than the length of said rearward
portion, the slope of said rearward portion being steeper than
the slope of said leading face;
an opening passing through said upper and lower surfaces for
permitting for the growth of bone from adjacent vertebral body to
adjacent vertebral body through said implant; and
said implant being manufactured from a composite of cortical
bone particles and at least one bioresorbable material, said
cortical bone particles and said at least one bioresorbable
material being combined to form a machinable material from which
said implant is manufactured.
THE PRIOR ART
The references relied on by the examiner to support the
final rejection are:
Michelson 5,484,437 Jan. 16, 1996
(Michelson ‘437)
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Application No. 09/991,247
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Michelson 5,860,973 Jan. 19, 1999
(Michelson ‘973)
Boyce et al. 5,899,939 May 04, 1999
(Boyce ‘939)
Boyce et al. 6,294,187 Sep. 25, 2001
(Boyce ‘187)
THE REJECTIONS
Claims 1 through 3, 5 through 16, 18, 23 through 49, 55
through 78 and 84 through 88 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Michelson ‘973 in view of
Boyce ‘187.
Claims 17, 50 and 79 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Michelson ‘973 in view of Boyce ‘187
and Boyce ‘939.
Claims 19 through 22, 51 through 54 and 80 through 83 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Michelson ‘973 in view of Boyce ‘187 and Michelson ‘437.
Attention is directed to the main and reply briefs (filed
August 04, 2004 and January 04, 2005) and answer (mailed November
04, 2004) for the respective positions of the appellant and
examiner regarding the merits of these rejections.
DISCUSSION
Since the appellant, stating that “[t]he claims stand or
fall together” (main brief, page 5), does not argue separately
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Application No. 09/991,247
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the patentability of any particular claim apart from the others,
all of the other appealed claims shall stand or fall with
representative claim 1. See In re Young, 927 F.2d 588, 590, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991); In re Wood, 582 F.2d 638,
642, 199 USPQ 137, 140 (CCPA 1978).
Michelson ‘973, the examiner’s primary reference, discloses
a spinal fusion implant for insertion into a vacated disc space
between two adjacent vertebrae. The examiner relies on the
embodiment shown in Figure 10 wherein the implant 400 comprises a
body having an arcuate upper surface 402, an arcuate lower
surface 404, flattened side portions 406, openings 408 passing
through the upper and lower surfaces and ratcheting extending
from the upper and lower surfaces.
It is not disputed that Michelson ‘973 teaches, or would
have suggested, a spinal implant system responding to all of the
limitations in representative claim 1 except for those requiring
the implant to be manufactured from a composite of cortical bone
particles and at least one bioresorbable material combined to
form a machinable material. In this regard, Michelson ‘973
teaches that the spinal fusion implant “is made of material
appropriate for human implantation such as titanium and/or may be
made of, and/or filled and/or coated with a bone ingrowth
inducing material such as, but not limited to, hydroxyapatite or
hydroxyapatite tricalcium phosphate or any other osteconductive,
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osteoinductive, osteogenic, or other fusion enhancing material”
(column 5, line 66, through column 6, line 5).
To remedy the foregoing deficiency in Michelson ‘973, the
examiner turns to Boyce ‘187.
Boyce ‘187 discloses a number of osteoimplants including a
cylinder or dowel 70 similar in type to those disclosed by
Michelson ‘973 for insertion between adjacent vertebrae (see
Figures 1d and 2b; column 1, lines 26 through 30; and column 14,
line 6, through column 15, line 5). To manufacture the implants,
Boyce ‘187 expressly contemplates a machinable composite of
cortical bone particles (see column 4, lines 26 through 52) and
biocompatible components such as bioabsorbable materials (see
column 7, line 55, through column 12, line 10). Boyce ‘187 lists
a number of advantages afforded by such osteoimplants including
load-bearing strength, the presence of pores which permit
revascularization and incorporation by the host, an osteogenic
quality which promotes new host bone tissue formation, and easy
fabrication of osteoimplants having different sizes and/or shapes
(see, for example, column 2, lines 7 through 33).
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure
of the primary reference; nor is it that the claimed invention
must be expressly suggested in any one or all of the references.
Rather, the test is what the combined teachings of the references
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Application No. 09/991,247
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would have suggested to those of ordinary skill in the art. In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
In the present case, the combined teachings of Michelson
‘973 and Boyce ‘187 would have suggested manufacturing the spinal
implant 400 disclosed by Michelson ‘973 from a machinable
composite of cortical bone particles and at least one
bioresorbable material as disclosed by Boyce ‘187, thereby
arriving at the subject matter recited in claim 1. The
appellant’s position that the appealed rejections are unsound
because this reference combination rests on impermissible
hindsight is not persuasive. Michelson ‘973 and Boyce ‘187
pertain to similar spinal implants and one of ordinary skill in
the art would have readily appreciated the implant materials
disclosed by Boyce ‘187 to be art-recognized alternatives to the
implant materials disclosed by Michelson. The description of
such materials by Michelson ‘973 expressly leaves open the
possibility that other materials may be used and does not in any
way teach away from the particular materials disclosed by Boyce
‘187. The advantages described by Boyce ‘187 for these materials
would have furnished the artisan with ample suggestion or
motivation to utilize same, e.g., a machinable composite of
cortical bone particles and at least one bioresorbable material,
to manufacture the implant disclosed by Michelson ‘973.
Accordingly, we shall sustain the standing 35 U.S.C.
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§ 103(a) rejection of claim 1 as being unpatentable over
Michelson ‘973 in view of Boyce ‘187.
As claims 2, 3 and 5 through 88 stand or fall with claim 1,
we also shall sustain the standing 35 U.S.C. § 103(a) rejection
of claims 2, 3, 5 through 16, 18, 23 through 49, 55 through 78
and 84 through 88 as being unpatentable over Michelson ‘973 in
view of Boyce ‘187, the standing 35 U.S.C. § 103(a) rejection of
claims 17, 50 and 79 as being unpatentable over Michelson ‘973 in
view of Boyce ‘187 and Boyce ‘939, and the standing 35 U.S.C.
§ 103(a) rejection of claims 19 through 22, 51 through 54 and 80
through 83 as being unpatentable over Michelson ‘973 in view of
Boyce ‘187 and Michelson ‘437.
SUMMARY
The decision of the examiner to reject claims 1 through 3
and 5 through 88 is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
Appeal No. 2005-1002
Application No. 09/991,247
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AFFIRMED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. MCQUADE ) APPEALS
Administrative Patent Judge ) AND INTERFERENCES
)
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
JPM/kis
Appeal No. 2005-1002
Application No. 09/991,247
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