Ex Parte Michelson

Board of Patent Appeals and Interferences

Jul 25, 2011

10669287 (B.P.A.I. Jul. 25, 2011)

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.
10/669,287 09/24/2003 Gary Karlin Michelson 101.0092-02000 6591
22882 7590 07/26/2011
MARTIN & FERRARO, LLP
1557 LAKE O'PINES STREET, NE
HARTVILLE, OH 44632
EXAMINER
SNOW, BRUCE EDWARD
ART UNIT PAPER NUMBER
3738
MAIL DATE DELIVERY MODE
07/26/2011 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 GARY KARLIN MICHELSON
____________________

Appeal 2010-001641
Application 10/669,287
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, CHARLES N. GREENHUT, and
MICHAEL HOELTER, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001641
Application 10/669,287
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
96. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to an expandable push-in arcuate interbody
spinal fusion implant with a tapered configuration during insertion. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A push-in interbody spinal fusion implant for at least in part
linear insertion across the surgically corrected height of a
disc space between two adjacent vertebral bodies of a spine,
said implant comprising:
an upper member having a portion being at least in part
arcuate adapted for placement toward and at least in part
within one of the adjacent vertebral bodies, said upper
member having at least one opening adapted to
communicate with one of the adjacent vertebral bodies, said
upper member having a proximal end and a distal end;
a lower member having a portion being at least in part
arcuate adapted for placement toward and at least in part
within the other of the adjacent vertebral bodies, said lower
member having at least one opening adapted to
communicate with the other of the adjacent vertebral bodies,
said openings of said upper and lower members being in
communication with one another and adapted for permitting
for the growth of bone from adjacent vertebral body to
adjacent vertebral body through said implant and being
sufficiently sized and located to allow for inter-body spinal
fusion through said implant, said lower member having a
proximal end and a distal end corresponding to said
proximal end and said distal end of said upper member,
respectively, and a length between said proximal and distal
ends, said upper and lower members articulating
therebetween adjacent one of said proximal ends and said
distal ends of said upper and lower members and allowing
Appeal 2010-001641
Application 10/669,287
3
for expansion of the height of said implant, said upper and
lower members having a first position relative to one another
allowing for a collapsed implant height during insertion of
said implant into the spine and a second position relative to
one another allowing for an increased height, said arcuate
portions of said upper and lower members in the first
position being angled to one another over a majority of the
length of said implant and forming at least a portion of one
of a frusto-conical shape and the shape of a cylinder split
along a horizontal plane through its mid-longitudinal axis
with said upper member and said lower member being
angled to each other along the length of said implant;
at least a portion of a bone-engaging projection is
adapted for linear insertion formed on the exterior of each of
said opposed arcuate portions of said upper and lower
members for penetrably engaging the adjacent vertebral
bodies and to facilitate securing said implant into the spine;
and
at least one blocker adapted to cooperatively engage and
hold at least a portion of said upper and lower members
apart so as to maintain the increased height of said implant
and resist the collapse of said implant to the collapsed
implant height when said implant is in a final deployed
position. (Emphasis added).

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ray
Michelson
Nolan
US 4,961,740
US 5,785,710
US 6,117,174
Oct. 9, 1990
Jul. 28, 1998
Sep. 12, 2000

REJECTIONS
Claims 1-96 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Appeal 2010-001641
Application 10/669,287
4
Claim 1-72,74-87 and 89-96 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Nolan in view of Michelson .
Claims 73 and 88 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nolan, Michelson, and Ray.

OPINION
The Examiner’s rejection of claims 1-96 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
reversed.
Recognizing that new or amended claims which introduce elements or
limitations which are not supported by the as-filed disclosure violate the
written description requirement (See, e.g., In re Lukach, 442 F.2d 967
(CCPA 1971)) the Examiner rejected claims 1-96 under 35 U.S.C. § 112,
first paragraph. The Examiner found that “[t]he specification fails to disclose
an implant with upper and lower members having arcuate portions that in the
first position are angled to one another over a majority of the length of the
implant as recited in independent claim 1.” Ans. 3. The Examiner contends
that “Appellant’s specification provides support for a ‘substantial portion of
the length’ whereas claim 1 claims ‘over a majority of the length’ [thus]
Appellant is arbitrarily defining a narrower range within a larger range
which is new matter.” Ans. 5; See Spec. 5:25-28. The Examiner additionally
contends that “the supported range (substantial) does not include the new
larger range (majority) which too is new matter.” Ans. 5-6.
The latter of the Examiner’s contentions is based on physical length,
not the breadth of the claim terms. A “substantial portion of the length” may
or may not be “a majority of the length” of the implant but a “majority of the
length” of the implant will always be a substantial portion. Thus, the newly
Appeal 2010-001641
Application 10/669,287
5
inserted limitation narrows the scope of the claim. We recognize that, under
certain circumstances, the description requirement of 35 USC §112, first
paragraph may operate to defeat the patentability of a narrow but not a
broader claim. See In re Smith, 458 F.2d 1389 (CCPA 1972).
Appellant’s Specification need not describe the claimed invention in
ipsis verbis to comply with the written description requirement. In re
Edwards, 568 F.2d 1349 (CCPA 1978). “[T]he test for sufficiency [of the
written description] is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(citations omitted). The inquiry is fact-specific, and the necessary level of
detail of the disclosure will vary depending on the context. Id. This is not an
instance where there is any unpredictability. See, e.g., Id. (citing Capon v.
Eshhar, 418 F.3d 1349, 1359 (Fed. Cir. 2005). “A specification may, within
the meaning of 35 U.S.C. § 112 ¶ 1, contain a written description of a
broadly claimed invention without describing all species that claim
encompasses.” Utter v. Hiraga, 845 F. 2d 993, 998 (Fed. Cir. 1988).
In addition to an implant having angled portions angled to one another
over a substantial portion of its length, the Specification also discloses that
the implant itself, i.e., over its entire length, may “hav[e] a shape that is
generally frusto-conical or generally that of a cylinder split along a
horizontal plane through its mid-longitudinal axis wedging the upper half
from the lower half by an inclined plane when inserted.” Spec. 2:17-18; fig.
4; Reply Br. 2-3. This demonstrates that Appellant possessed an implant
having a structure falling within the bounds defined by claim 1, that is,
wherein “arcuate portions of said upper and lower members in the first
Appeal 2010-001641
Application 10/669,287
6
position [are] angled to one another over a majority of the length of said
implant” as recited in claim 1. Thus, the Specification as originally filed
provides descriptive support for the claimed subject matter

The Examiner’s rejections of claim 1-72,74-87 and 89-96 as being
unpatentable over Nolan and Michelson and of claims 73 and 88 as being
unpatentable over Nolan, Michelson, and Ray are reversed.
The Examiner erred in rejecting claim 1 by finding that because the
widths 26 and 28 in figure 3 of Nolan can be of different sizes, Nolan
discloses a frusto-conical implant, that is, an implant having “arcuate
portions of said upper and lower members in the first position being angled
to one another over a majority of the length of said implant” as required by
claim 1. Reply Br. 4-5.
The Examiner contends that “[o]ne having ordinary skill in the art
would not interpret [the fact that widths 26 and 28 are not necessarily equal]
to merely the extreme ends having a different width as stated by appellant,
possibly implying a stepped configuration.” Ans. 6. However, “a stepped
configuration” is, in fact, a possibility and, apparently at least one of the
embodiments contemplated by Nolan. See e.g., Fig. 11, col. 5, ll. 12-14
(Legs 18’, 20’ diverging over only a portion of the implant). Thus, contrary
to the Examiner’s assertion, Nolan’s implant is not necessarily frusto-
conical. As Appellant points out, the Examiner has misinterpreted the term
“substantially cylindrical profile” used by Nolan to mean something that it
does not—frustoconical. Reply Br. 4. Nolan expressly defines “substantially
cylindrical” as cylindrical except for flats 35. Reply Br. 4; Nolan col. 6, ll. 4-
6.
Appeal 2010-001641
Application 10/669,287
7
We note that the figure 17 embodiment cited by the Examiner (Ans.
3), shows implant arms 18, 20 angled from a somewhat different position as
compared to that same embodiment depicted in figure 12. See Nolan col. 3,
ll. 54-56. “[I]t is well established that patent drawings do not define the
precise proportions of the elements and may not be relied on to show
particular sizes if the specification is completely silent on the issue.”
Hockerson-Halberstadt, Inc. v. Avia Group Int'l, 222 F.3d 951, 956 (Fed.
Cir. 2000).
Although Nolan recognizes that prior art implants may have a frusto-
conical shape (see Nolan, col. 1, ll. 36-38, describing “one-piece frusto-
conical shaped implants”), the Examiner has not established that Nolan uses
such a shape formed by arcuate portions angled to each other over a majority
of the length of the implant as required by claim 1. Nor has the Examiner
articulated any reason with a rational underpinning for modifying Nolan’s
implant to include such a feature. Neither Michelson nor Ray, as applied by
the Examiner cures this deficiency. Accordingly, we are constrained to
reverse the Examiner’s rejection of independent claim 1 and those claims
depending therefrom.

DECISION
The Examiner’s rejection of claims 1-96 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
reversed.
The Examiner’s rejections of claim 1-72,74-87 and 89-96 as being
unpatentable over Nolan and Michelson and of claims 73 and 88 as being
unpatentable over Nolan, Michelson, and Ray are reversed.
Appeal 2010-001641
Application 10/669,287
8
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

REVERSED

mls