Ex Parte Michelson

Patent Trial and Appeal Board

Jun 24, 2013

09792679 (P.T.A.B. Jun. 24, 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.
09/792,679 02/22/2001 Gary K. Michelson 101.0059-01000 5572
22882 7590 06/24/2013
MARTIN & FERRARO, LLP
1557 LAKE O'PINES STREET, NE
HARTVILLE, OH 44632
EXAMINER
WILLSE, DAVID H
ART UNIT PAPER NUMBER
3738
MAIL DATE DELIVERY MODE
06/24/2013 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 GARY K. MICHELSON
____________________

Appeal 2012-003457
Application 09/792,679
Technology Center 3700
____________________

Before: JOHN C. KERINS, PHILLIP J. KAUFFMAN, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-003457
Application 09/792,679

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
7, 11-15, 17, 18, 67-77, 79-94, and 114-140. We have jurisdiction under 35
U.S.C. § 6(b).
We reverse.

The Invention
Appellant’s claimed invention “relates generally to interbody spinal
fusion implants.” Spec. 1. Claims 1 and 76 are the independent claims on
appeal. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A manufactured preformed interbody spinal fusion
implant for insertion at least in part across a surgically corrected
height of a disc space between two adjacent vertebral bodies of
a human spine, the vertebral bodies having an anterior aspect, a
posterior aspect, and to each side a lateral aspect, said implant
comprising:
a leading end for insertion into the disc space, an
opposite trailing end, a lateral side and an opposite medial side,
said sides connecting said leading and trailing ends, said
implant having a length between said leading end and said
trailing end and a maximum width as measured from said
lateral side to said medial side transverse to the length of said
implant;
opposed arcuate portions adapted for placement toward
and into the adjacent vertebral bodies, said implant having a
maximum height between said opposed arcuate portions
defining an implant maximum height greater than the surgically
corrected height of the disc space into which said implant is to
be implanted, the maximum height of said implant being
transverse to the maximum width of said implant, said opposed
arcuate portions each extending from said lateral side to said
medial side along the maximum width of said implant; and
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a mid-longitudinal axis passing through said leading and
trailing ends, the mid-longitudinal axis being perpendicular to
and bisecting each of the maximum height and the maximum
width of said implant into equal parts, said opposed arcuate
portions each including a convex portion across the mid-
longitudinal axis of said implant in a plane transverse to the
mid-longitudinal axis of said implant, said opposed arcuate
portions forming part of the same circle, the circle having a
diameter substantially equal to said implant maximum height,
each of said opposed arcuate portions having at least one
opening, said openings being in communication with one
another to permit for the growth of bone from adjacent vertebral
body to adjacent vertebral body through said implant, said
trailing end having an exterior surface, a majority of said
exterior surface being linear from one of said opposed arcuate
portions to the other of said opposed arcuate portions across the
maximum height of said implant, said trailing end including a
curved portion in a plane parallel to the mid-longitudinal axis of
said implant, said curved portion extending from said medial
side and across the mid-longitudinal axis of said implant, said
curved portion adapted to conform to the peripheral contour of
the vertebral bodies adjacent the disc space in which said
implant is implanted, the length of said implant between said
leading end and said trailing end adapted to permit at least a
portion of said implant proximate said trailing end and at least a
portion of said implant proximate said leading end between said
medial side and the mid-longitudinal axis to each overlie at
least the apophyseal rim of the adjacent vertebral bodies when
said implant is implanted in the disc space, said implant having
a junction of said lateral side and said leading end and a
junction of said lateral side and said trailing end not
substantially protruding from the vertebral bodies when
implanted in the disc space.

Appeal 2012-003457
Application 09/792,679

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The Rejections and Evidence Relied Upon
The following rejections are before us on appeal:
I. Claims 1, 7, 11-15, 17, 18, 67-75, 114, 115, 117-119, 125-128, 133,
135, 137, and 139 under 35 U.S.C. § 102(a) or § 102(e) as anticipated
by Crozet (WO 98/48738; pub. Nov. 5, 1998).1
II. Claims 76, 77, 79-94, 116, 120-124, 129-132, 134, 136, 138, and 140
under 35 U.S.C. § 102(a) or § 102(e) as anticipated by Crozet.2

OPINION3
I. Anticipation by Crozet - embodiment of Figures 1-8
The Examiner makes two interpretations of how Crozet anticipates
independent claim 1. See Ans. 5-6.
The first interpretation relies in part on the Examiner’s finding that
Crozet discloses a spinal fusion implant (body 10 and reinforcement member
20 combined) having a leading end and an opposite trailing end (each on
body 10) that are connected by a lateral and an opposite medial side (each on
member 20) as called for in independent claim 1. Ans. 4. The Examiner
finds that the maximum width of Crozet’s implant is measured from the
lateral side to the opposite medial side (of member 20) along a line that is
transverse to the length of the implant (from leading end to trailing end of
body 10 along a line “defined along the cylindrical geometry of the
anchorage reinforcement member 20”). Id. The Examiner explicitly

1 All references are to the embodiment represented in Figures 1-8 of the
related US Patent (Crozet, US 6,855,168 B2; issued Feb. 15, 2005).
2 All references are to the embodiment represented in Figures 33-35 of the
related US Patent.
3 Application 10/674,971, filed as a division of the application at hand,
includes a Patent Trial and Appeal Board Appeal number 2012-005730.
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Application 09/792,679

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identified Crozet’s implant as “having a maximum width (of the member
20)” (Ans. 4), and as “the diameter across member 20” (Ans. 5).
Appellant argues, and we agree, that the maximum width of member
20, which is a subpart of Crozet’s implant comprised of body 10 and
member 20 as found by the Examiner, is not relevant to the maximum width
of the implant as a whole. App. Br. 6-7; Reply Br. 2. In other words, the
Examiner’s finding is in error in that it interprets that Crozet’s body 10 and
member 20 together correspond to the claimed implant, and then with regard
to the maximum width of that implant, the Examiner looks only to member
20 and ignores body 10. See Ans. 4-5. Specifically, member 20 is screwed
into orifice 18 of body 10 until the outer face of its proximal solid part 24 is
substantially aligned with the outer face 14 of body 10. Crozet, col. 7, ll. 58-
61. In this position, there is no point along the length of member 20 where
the diameter of member 20 represents the maximum width of Crozet’s
implant (member 20 and body 10 combined).
The second interpretation relies in part on the Examiner’s finding that
the convex portions of member 20 correspond to opposed arcuate portions as
called for in independent claim 1. Ans. 6. This finding is based upon the
interpretation that opposed arcuate portions as claimed “need not be entirely
arcuate and can be interrupted by openings.” Id.
The Examiner is correct that each of the opposed arcuate portions of
claim 1 have at least one opening. However, Appellant is not arguing that
the arcuate portions may not include an opening; rather, Appellant argues
that the claimed arcuate portion must reach all the way from a point on the
lateral side to a point on the medial side along the maximum width. App.
Br. 5-6. In other words, the Examiner has focused on the continuity of the
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Application 09/792,679

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arcuate portion while Appellant argues based upon the extent of the arcuate
portion.
Claim 1 recites, “said opposed arcuate portions each extending from
said lateral side to said medial side along the maximum width of said
implant.” The ordinary meaning of “extending,” in this context, is reaching
from one specified point to another.4 Those points are defined by claim 1 as
the lateral side at the maximum width and the medial side at the maximum
width.5 We discern nothing in the Specification inconsistent with this
interpretation.6 Thus, although the arcuate portions of claim 1 include at
least one opening, those portions reach from the point on the lateral side to
the point on the medial side at the maximum width of the implant.
Therefore, the Examiner’s finding is not based upon a proper claim
construction. Further, the arcuate portions of Crozet’s member 20 do not
reach the corresponding lateral and medial sides of body 10 at the maximum
width of the implant.
Because both of the Examiner’s interpretations are in error, we do not
sustain the rejection of claim 1 and its dependent claims 7, 11-15, 17, 18, 67-
75, 114, 115, 117-119, 125-128, 133, 135, 137, and 139.

4 Extend means “to cause to stretch out or reach (as from one point to
another).” WEBSTER’S UNABRIDGED (1996) (“extend,” vb. definition 5a)
(Available at: http://lionreference.chadwyck.com/). See also Phillips v.
AWH Corp., 415 F.3d 1303, 1312-1313 (Fed. Cir. 2005) (en banc) (citations
omitted) (“the words of a claim ‘are given their ordinary and customary
meaning’”).
5 Claim 1 defines the maximum width of the implant as a measurement
“from said lateral side to said medial side” transverse to the length of the
implant.
6 Appellant’s embodiments all have arcuate portions that reach from the
lateral to the medial side at the points of maximum width. See, e.g., figs.
6C, 7A, 7B, 12C, 12D, 13B, 14B.
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II. Anticipation by Crozet - embodiment of Figures 33-35
Independent claim 76 is similar to claim 1, but differs in that it calls
for the trailing end to include a curved portion, in a plane parallel to the mid-
longitudinal axis of the implant, that extends “from said medial side and
across the mid-longitudinal axis of said implant.”
The Examiner found that the trailing end (the end opposite distal end
101) of Crozet’s implant (body 10 and member 20 combined) in the
embodiment of Figures 33-35 is rounded in all three planes. Ans. 6; see also
Crozet, col. 9, ll. 53-54; fig. 33. In support of this finding, the Examiner
stated that
one of ordinary skill in the art (along with other reasonable,
unbiased persons) would have inferred from the drawings of
Figures 33-35 that the implant trailing surface is rounded in all
three of the sagittal, transverse, and frontal planes, particularly
since there are no lines to denote any supposed planar or
“linear” (e.g., cylindrical) surfaces in this region.
Ans. 8.
Appellant argues that Crozet’s trailing end does not include a curved
portion that extends from the medial side across the mid-longitudinal axis as
claimed. App. Br. 14.
To begin, the Examiner’s finding that Crozet’s trailing end is rounded
in all three planes is deficient because claim 76 more specifically calls for
the curved portion to extend from the medial side across the mid-
longitudinal axis.
Further, Crozet’s body 10 is “a general U shape with two lateral
branches 102 and 103 connected via a distal end wall 101.” Crozet, col. 12,
ll. 33-35; figs. 33-35. Thus, the trailing end (end opposite distal end 101) of
Crozet’s implant (body 10 and member 20) at the point of intersection with
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Application 09/792,679

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the mid-longitudinal axis (the longitudinal axis of member 20) is comprised
only of member 20 (as threaded into the gap between lateral branches 102
and 103). The proximal part 24 of member 20 is not depicted nor described
as curved. Crozet, col. 7, ll. 47-49; figs. 33-35. Therefore, we cannot find
by a preponderance of the evidence that Crozet’s implant includes a curved
portion that extends from the medial side across the mid-longitudinal axis as
claimed.
Accordingly, we do not sustain the rejection of independent claim 76
and its dependent claims 77, 79-94, 116, 120-124, 129-132, 134, 136, 138,
and 140.

DECISION
We reverse the Examiner’s decision to reject claims 1, 7, 11-15, 17,
18, 67-77, 79-94, and 114-140.

REVERSED

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