Ex Parte Michelson

Patent Trials and Appeals Board

Jun 24, 2013

10674971 - (D) (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.
10/674,971 09/30/2003 Gary K. Michelson 101.0059-02000 4939
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 2012-005730
Application 10/674,971
Technology Center 3700
____________________

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

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
29-59 and 62-68. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

The Invention
Appellant’s claimed invention “relates generally to interbody spinal
fusion implants.” Spec. 1. Claims 29 and 39 are the independent claims on
appeal. Claim 29, reproduced below, is illustrative of the claimed subject
matter:
29. A method of inserting an artificial implant into a disc
space between two adjacent vertebral bodies, the method
comprising:
providing an artificial implant having an upper surface
and a lower surface, the implant having a lateral side and an
opposite medial side and a maximum width therebetween, the
upper and lower surfaces being arcuate from the lateral side to
the medial side along the maximum width of said implant and
in a plane transverse to a mid-longitudinal axis of the implant,
the implant having generally non-linear leading and trailing
ends, the mid-longitudinal axis of the implant passing through
said leading and trailing ends, the mid-longitudinal axis being
perpendicular to and bisecting the maximum width into two
equal parts, the trailing end being configured to generally
conform to at least a portion of the natural anatomical curvature
of at least one of the anterior, posterior, and lateral aspects of
the vertebral bodies, the implant having a length between the
leading and trailing ends adapted to allow at least a portion of
the implant proximate the leading end and at least a portion of
the implant proximate the trailing end to each overlie respective
portions of a peripheral rim of the densely compacted bone of
the apophyseal rim along the anatomical curvature of the
adjacent vertebral bodies when the implant is implanted in the
disc space;
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forming an opening across a height of the disc space and
into a portion of each of the adjacent vertebral bodies, the
opening in the portion of each of the adjacent vertebral bodies
being at least in part curved;
inserting, after the forming of the opening, the implant
into the opening with the lateral side of the implant facing one
of the anterior and lateral aspects of the vertebral bodies;
positioning the leading end of the implant so that at least
a portion of the implant proximate the leading end between the
medial side and the mid-longitudinal axis overlies the
apophyseal rim without substantially protruding from the spine;
and
positioning the trailing end of the implant so that at least
a portion of the implant proximate the trailing end between the
medial side and the mid-longitudinal axis overlies the
apophyseal rim when said at least a portion of the implant
proximate the leading end overlies the apophyseal rim without
substantially protruding from the spine.

The Rejections and Evidence Relied Upon
The following rejections are before us on appeal:
I. Claims 29, 30, 33-36, 39, 40, 41, 44-47, 50-59, 62, 63, and 65-67
under 35 U.S.C. § 102(b) as anticipated by Kenna (US 4,714,469; iss.
Dec. 22, 1987).
II. Claims 31, 32, 42, 43, 64, and 68 under 35 U.S.C. § 103(a) as
unpatentable over Kenna and Brantigan (US 5,192,327; iss. Mar. 9,
1993).
III. Claims 37, 38, 48, and 49 under 35 U.S.C. § 103(a) as unpatentable
over Kenna and Crozet (WO 98/48738; pub. Nov. 5, 1998).1

1 All references are to the related US Patent (Crozet, US 6,855,168 B2;
issued Feb. 15, 2005).
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OPINION2
I. Anticipation by Kenna
Claims 29, 30, 33-36, 50, 51, 54, 56, 58, 62, and 633
There are two issues in dispute with regard to claim 29: whether
Kenna discloses upper and lower surfaces being arcuate as claimed, and
whether Kenna discloses positioning the leading end as claimed.
- Upper and Lower Surfaces
Claim 29 includes the step of providing an implant having upper and
lower surfaces being arcuate from the lateral to the medial side of the
implant, along the maximum width of the implant and in a plane transverse
to a mid-longitudinal axis of the implant. The Examiner makes two
interpretations of how Kenna discloses this limitation.
In the first interpretation, the Examiner finds that Kenna’s elongated
protuberances 5 correspond to arcuate upper and lower surfaces as claimed,
and finds that the flat portion4 of first and second surfaces 1 and 2, combined
with either third surface 3 or straight side 6 corresponds to the lateral and
medial sides as claimed. Ans. 4. These findings are based upon the
Examiner’s interpretation that a lateral or medial side as claimed is not
limited to a surface; rather, it more broadly refers to a place with respect to a
line of division. Ans. 6.

2 The case at hand is a divisional application of Application 09/792,679,
which includes Patent Trial and Appeal Board Appeal number 2012-003457.
Generally, the claims of Application 09/792,679 are directed to an implant,
and the claims of the application at hand are directed to a method of utilizing
an implant.
3 Appellants argue claims 29, 30, 33-36, 50, 51, 54, 56, 58, 62, and 63 as a
group, and we select claim 29 as representative. Br. 6-8; see 37 C.F.R.
§ 41.37(c)(1)(vii)(2011).
4 The portion other than protuberances 5.
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Appellant argues that it is unreasonable to construe a portion of
Kenna’s upper and lower surfaces (first and second surfaces 1 and 2) as
corresponding to a lateral or medial side as claimed because these surfaces
are oriented transverse to the sides.5 Br. 7.
Undermining Appellant’s claim interpretation, claim 29 does not
recite that the lateral and medial sides may not be comprised of surfaces that
are orthogonal. Nor does the Specification define the lateral and medial
sides in such a manner.
Further, Appellant does not argue that the ordinary meaning of “side”
put forth by the Examiner is incorrect or inconsistent with the Specification.
Nor do we discern anything in the Specification inconsistent with the
Examiner’s interpretation that a side as claimed refers to a place with respect
to a line of division. See Ans. 6; 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’”). In other
words, the lateral and medial sides of the implant are places with respect to
the mid-longitudinal axis (line of division).
For these reasons, Appellant’s contention is not commensurate in
scope with claim 29, and therefore is unpersuasive. See In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset
because . . . they are not based on limitations appearing in the claims.”).
In the second interpretation, the Examiner finds that the combination
of Kenna’s first surface 1 and elongated protuberance 5 corresponds to the

5 This argument is inapplicable to the Examiner’s second interpretation,
which does not rely upon the flat portion of Kenna’s first and second
surfaces 1 and 2 as corresponding to lateral and medial sides as claimed. See
Ans. 4.
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claimed upper surface, and the combination of Kenna’s second surface 2 and
elongated protuberance 5 corresponds to the claimed lower surface. This
interpretation also relies upon the finding that Kenna’s third surface 3 and
straight side 6 correspond to the medial and lateral sides as claimed. Ans. 4;
see also Br. 7 (Appellant’s annotated version of Kenna’s Figures 1 and 2).
These findings are based upon the Examiner’s interpretation that upper and
lower surfaces as claimed need not be arcuate along the entirety of the
maximum width of the implant. Ans. 4, 6.
Appellant argues with respect to this interpretation that Kenna’s
elongated protuberances 5 do not “extend from” the lateral (third surface 3)
to the medial side (straight side 6). Br. 7 (citing Kenna fig. 2).
Contrary to the construction suggested by Appellant, claim 29 does
not explicitly recite that the upper and lower surfaces “extend from” the
lateral to the medial side along the maximum width. Rather, claim 29 calls
for the upper and lower surfaces to be arcuate from the lateral to the medial
side along the maximum width of the implant.
Notably, claim 62, which depends from claim 29, recites “providing
of the implant includes providing the implant with at least in part arcuate
upper and lower surfaces extending from the lateral side to the medial side
of the implant,” and claim 63, which also depends from claim 29, recites,
“the providing of the implant includes providing the implant with upper and
lower surfaces each having an arcuate portion extending across the mid-
longitudinal axis of the implant.” The presence of these limitations in the
dependent claims suggests that such limitations are not present in claim 29.
See Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1538 (Fed. Cir. 1991)
(differences among claims can also be a useful guide in understanding the
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meaning of particular claim terms); Liebel-Flarsheim Co. v. Medrad, Inc.,
358 F.3d 898, 910 (Fed. Cir. 2004) (the presence of a dependent claim that
adds a particular limitation gives rise to a presumption that the limitation in
question is not present in the independent claim).
Therefore, the upper and lower surfaces of claim 29 need not be
entirely arcuate, and need not extend fully from the lateral to the medial side.
See Ans. 6. As such, Appellant’s contention regarding the Examiner’s
second interpretation is not commensurate in scope with claim 29, and
therefore is unpersuasive.
- Positioning the Leading End
Claim 29 includes the step of positioning the leading end of the
implant “so that at least a portion of the implant proximate the leading end
between the medial side and the mid-longitudinal axis overlies the
apophyseal rim without substantially protruding from the spine.”
Appellant argues that Kenna does not disclose positioning the leading
end of the implant as claimed because “Kenna teaches that ‘[w]hen the
grooves are drilled each drill bit is removed and replaced by a spacer to
maintain the spaces between the vertebrae.’” Br. 7-8 (quoting Kenna, col. 5,
ll. 66-68).
The portion of the reference cited by Appellant relates to creating
grooves and placing spacers in those grooves. See Kenna, col. 5, ll. 66-68.
Appellant’s argument ignores that Kenna goes on to disclose that the spacers
are subsequently removed, leaving clearance for the implants, following
which the implants are inserted. See Ans. 6, see also Kenna, col. 1, ll. 41-
56; col. 2, ll. 4-17; col. 5, ll. 3-13; fig. 4 (depicting the spinal implant
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overlying the apophyseal rim without substantially protruding from the spine
as called for in claim 29).
As such, Appellant has failed to demonstrate error in the rejection of
claim 29, and claims 30, 33-36, 50, 51, 54, 56, 58, 62, and 63 fall with claim
29.

Claims 39, 40, 44-47, 52, 53, 55, 57, 59, and 65-676
There are two issues in dispute with regard to claim 39: whether
Kenna discloses lateral and medial sides being at least in part straight as
claimed, and whether Kenna discloses positioning the leading end as
claimed.
- Lateral and Medial Sides
Independent claim 39 includes the step of providing an implant that
includes lateral and medial sides that are each “at least in part straight in a
direction from the leading end to the trailing end along at least a portion of
the length of the first implant.”
As explained in the analysis of claim 29, supra, the Examiner’s first
interpretation includes a finding that the flat portion of first and second
surfaces 1 and 2 combined with either third surface 3 or straight side 6
corresponds to the lateral and medial sides as claimed. Ans. 4. The
Examiner also made a finding that the flat portion of first and second
surfaces 1 and 2 are straight as claimed. Ans. 5 (citing Kenna, figs. 1, 2, 4).

6 Appellants argue claims 39, 40, 44-47, 52, 53, 55, 57, 59, and 65-67 as a
group, and we select claim 39 as representative. See Br. 8-9.
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Appellant argues that Kenna’s first and second surfaces 1 and 2
correspond to the claimed upper and lower surfaces, and Kenna’s medial
side is not at least in part straight as claimed.7 Br. 8.
Appellant is essentially repeating the argument that Kenna’s first and
second surfaces 1 and 2 combined with the either third surface 3 or straight
side 6 cannot correspond to lateral and medial sides as claimed. This
argument is unpersuasive for the reasons given in the analysis of the first
interpretation of the Examiner’s rejection of claim 29, supra.
- Positioning the Leading End
Appellant repeats the argument that Kenna does not disclose
positioning the leading end of the implant as claimed. Br. 8-9 (again citing
Kenna, col. 5, ll. 66-68). The limitation at issue is similar in claims 29 and
39, and the analysis of this argument with regard to claim 29, supra, is
applicable here.
As such, Appellant has failed to demonstrate error in the rejection of
claim 39, and claims 40, 44-47, 52, 53, 55, 57, 59, and 65-67 fall with claim
39.

Claim 41
Claim 41 depends from claim 29 and recites, “wherein the providing
of the implant includes providing an implant with a symmetrical trailing
end.” The Examiner finds that Kenna’s implant is symmetrical about a
transverse plane bisecting the trailing end as seen in Figure 2. Ans. 7.

7 We interpret Appellant reference to Kenna’s medial side as “side 4,” to
mean curved portion 4 of third surface 3. See Kenna, col. 3, ll. 35-39; fig. 4.
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Appellant argues that Figure 3 of Kenna shows that the trailing end of the
implant is asymmetrical.8 Br. 9.
Claim 41 does not specify a reference axis or plane for the symmetry
of the trailing end. The Specification states that trailing end 204 might, in a
preferred embodiment, be symmetrical left and right of the mid-longitudinal
axis. However, because the language of claim 41 is broader than this
example, that limitation is not imported into claim 41. Spec. 16:11-13; see
also Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed.
Cir. 2004) (“Though understanding the claim language may be aided by the
explanations contained in the written description, it is important not to
import into a claim limitations that are not a part of the claim. For example,
a particular embodiment appearing in the written description may not be
read into a claim when the claim language is broader than the
embodiment.”). Therefore, Appellant’s argument is unpersuasive because it
is not commensurate in scope with claim 41.

II. Obviousness over Kenna and Brantigan
Appellant presents a single argument against this rejection, namely,
that the rationale provided by the Examiner of enhancing long-term stability
is insufficient because Kenna already discloses that, “placement of the
implant between adjacent vertebrae tissue/bone ingrowth into the porous
coating provides long-term stability.” Br. 9 (quoting Kenna, col. 4, ll. 14-
17); see also Br. 9-11 (repeating this argument for the remaining claims
subject to this ground of rejection).

8 Appellant mistakenly refers to claim 41 as depending from independent
claim 39 rather than independent claim 29.
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Appellant correctly points out that Kenna’s device provides long-term
stability. See Kenna, col. 4, ll. 14-17. However, a person of ordinary skill in
the art, knowing this disclosure, would not have been discouraged from
further enhancing long-term stability as Appellant suggests. To the contrary,
Kenna’s disclosure that long-term stability is a desired outcome suggests to a
person of ordinary skill in the art that further improvement in long-term
stability would be advantageous. For that reason, Appellant’s contention is
unpersuasive.
Further, Appellant does not contest the Examiner’s finding that
openings communicating with a hollow space containing fusion promoting
material were features common in the art at the time of the claimed
invention. See Ans. 5, 7. In light of this, Appellant has not cogently
explained why the Examiner’s conclusion that the proposed modification
would have led to a predictable result is in error. See Ans. 5; see also KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[W]hen the question is
whether a patent claiming the combination of elements of prior art is
obvious” the relevant inquiry is “whether the improvement is more than the
predictable use of prior art elements according to their established
functions.”).
Accordingly, we sustain the rejection of claims 31, 32, 42, 43, 64, and
68.

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III. Obviousness over Kenna and Crozet
Claim 37 depends from claim 29 and calls for rotating the implant into
the opening. The remaining claims contain similar limitations regarding
rotation of the implant.9
The Examiner proposed to modify Kenna’s implant by replacing the
elongated protuberances 5 with Crozet’s screw or screws (member 20). Ans.
5-6. Therefore, in the proposed combination, Crozet’s member 20 is
threaded into Kenna’s implant. However, Appellant asserts, and we agree,
that the proposed implant itself (Kenna’s implant and Crozet’s member 20)
would be inserted linearly, and the implant would not be inserted by rotating
or screwing as claimed. App. Br. 11. Consequently, we do not sustain the
rejection of claims 37, 38, 48, and 49.

DECISION
We affirm the Examiner’s decision to reject claims 29, 30, 33-36, 39,
40, 41, 44-47, 50-59, 62, 63, and 65-67 under 35 U.S.C. § 102(b) as
anticipated by Kenna.
We affirm the Examiner’s decision to reject claims 31, 32, 42, 43, 64,
and 68 under 35 U.S.C. § 103(a) as unpatentable over Kenna and Brantigan.
We reverse the Examiner’s decision to reject claims 37, 38, 48, and 49
under 35 U.S.C. § 103(a) as unpatentable over Kenna and Crozet.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

9 Claims 38 and 49, inserting the implant by screwing; claim 48, inserting
the implant by rotating.
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AFFIRMED-IN-PART

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