Ex Parte Perez-Cruet

Patent Trial and Appeal Board

Feb 19, 2013

11756274 (P.T.A.B. Feb. 19, 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.
11/756,274 05/31/2007 Miguelangelo J. Perez-Cruet MI4-00011 1567
68779 7590 02/19/2013
MILLER IP GROUP, PLC
MI4 SPINE, LLC
42690 WOODWARD AVE.
SUITE 200
BLOOMFIELD HILLS, MI 48304
EXAMINER
IP, JASON M
ART UNIT PAPER NUMBER
3777
MAIL DATE DELIVERY MODE
02/19/2013 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 MIGUELANGELO J. PEREZ-CRUET
__________

Appeal 2011-007030
Application 11/756,274
Technology Center 3700
__________

Before ERIC GRIMES, STEPHEN WALSH, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a method for providing an in vivo model of disc
degeneration. The Patent Examiner rejected the claims for obviousness. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
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Application 11/756,274

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STATEMENT OF THE CASE
Claims 1-15 and 17-20 are on appeal. Claim 1 illustrates the subject
matter on appeal and reads as follows:
1. A method for providing an InVivo model of disc degeneration, said
method comprising:
providing a non-human animal; and
percutaneously inserting a needle into the animal so that the needle
ruptures an annulus of a disc between vertebrae in the animal where the
rupture induces disc degeneration.

The Examiner rejected the claims as follows:
A. claims 1-9 and 11-13 under 35 U.S.C. § 103(a) as unpatentable over
Masuda1 and Sluijter2 (Ans. 4-6); and
B. claims 10, 14, 15 and 17-20 under 35 U.S.C. § 103(a) as unpatentable
over Masuda, Sluijter, and Crevensten3 (Ans. 6-8).4

A
Principles of Law
“Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless

1 Koichi Masuda et al., A Novel Rabbit Model of Mild, Reproducible Disc
Degeneration by an Anulus Needle Puncture: Correlation Between the
Degree of Disc Injury and Radiological and Histological Appearances of
Disc Degeneration, 30 SPINE 5-14 (2004).
2 Menno E. Sluijter et al., US 5,433,739, issued July 18, 1995.
3 Gwen Crevensten et al., Intervertebral Disc Cell Therapy for
Regeneration: Mesenchymal Stem Cell Implantation in Rat Intervertebral
Discs, 32 ANNALS OF BIOMEDICAL ENGINEERING 430-434 (2004).
4 Although the Examiner separated these claims into two groups, we group
them together because the rejections are the same, and Appellant addresses
them together.
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of the problem addressed, and (2) if the reference is not within the field of
the inventor’s endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved.” In re Clay,
966 F.2d 656, 658-9 (Fed. Cir. 1992). “‘A reference is reasonably pertinent
if, even though it may be in a different field from that of the inventor’s
endeavor, it is one which, because of the matter with which it deals,
logically would have commended itself to an inventor’s attention in
considering his problem.’ In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
In other words, ‘familiar items may have obvious uses beyond their primary
purposes.’ KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, [402], 127 S.Ct.
1727, 1742 (2007).” In re ICON Health and Fitness, Inc., 496 F.3d 1374,
1379-80 (Fed. Cir. 2007) (finding a reference describing a folding bed
analogous to appellant’s folding treadmill).

Analysis
It is undisputed that Masuda described an in vivo model of disc
degeneration comprising inserting a needle into a disc so that the needle
ruptures an annulus of a disc and the rupture induces disc degeneration.
Masuda, however, described first exposing the disc by surgery, rather than
inserting the needle percutaneously. The Examiner cited Sluijter as evidence
that percutaneous insertion of a needle into a disc was a skill known in the
art. The rejection concluded that simplifying Masuda’s needle model by
eliminating the surgical step of exposing the disc, and inserting the needle
through the skin and into the disc, would have been obvious “to provide a
means of not having to surgically expose tissue prior to insertion of a
needle.” (Ans. 4.)
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Appellant contends that Sluijter is not analogous art because “there
must be a structural or functional similarity or overlap between the reference
and the claimed invention for the reference to be analogous.” (App. Br. 6.)
We find this argument unpersuasive for several reasons. First, the
“percutaneous injection of chemicals into the intervertebral disc” (Sluijter,
col. 1, ll. 8-18) necessarily requires percutaneously inserting a needle into a
disc, as recited in claim 1. Inserting a needle into a disc between vertebrae
in the animal is done in both the known method Sluijter described and the
claimed method. Thus, structural or functional similarity or overlap exists
between Sluijter and the claimed method, which meets Appellant’s test.
Second, because inserting a needle into a disc is the same step, a person of
ordinary skill in Masuda’s art would have found Sluijter’s information
reasonably pertinent, which meets the Clay test. Third, dependent claim 10
adds a step of injecting stem cells into the ruptured disc “to regenerate the
disc.” Sluijter’s col. 1 discussion concerned methods of treating a disc and
rehabilitation therapy. Claim 1 must be interpreted as open to that subject
matter, and Sluijter is again reasonably pertinent to that problem.
Appellant also argues that Sluijter is not analogous art because Sluijter
particularly discloses relieving back pain using an electrode. (App. Br. 6-7.)
This argument is unpersuasive because the rejection relied on Sluijter’s
disclosure that percutaneous insertion of a needle into a disc was known.
Appellant waived arguing that the invention would not have been
obvious even if Sluijter were analogous art. On the evidence of record, we
affirm, as the Examiner’s reasoning is consistent with precedent:
While the omission of an element in a combination may
constitute invention if the result of the new combination be the
same as before, yet, if the omission of an element is attended by
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Application 11/756,274

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a corresponding omission of the function performed by that
element, there is no invention if the elements retained perform
the same function as before.

Richards v. Chase Elevator Co., 159 U.S. 477, 486 (1895). See also, In re
Karlson, 311 F.2d 581, 584 (CCPA 1963) (“It is well settled, however, that
omission of an element and its function in a combination is an obvious
expedient if the remaining elements perform the same functions as before.”);
In re Luce, 304 F.2d 899, 901 (CCPA 1962) (similar, citing Richards); In re
Miller, 197 F.2d 340, 341 (CCPA 1952) (similar, citing Richards).
Claims 2-9 and 11-13 have not been argued separately and therefore
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

B
The Examiner entered rejection B, combining the Masuda, Sluijter,
and Crevensten disclosures, to address the additional step “injecting stem
cells” recited or included in claims 10, 14, 15, and 17-20. Appellant argues
only that Crevensten does not induce disc degeneration, and “cannot provide
the teaching missing from Masuda and Sluijter.” (App. Br. 8.) As explained
in part A above, we do not agree that there is a teaching missing from the
underlying rejection based on Masuda and Sluijter, and we therefore affirm
rejection B as well.

SUMMARY
We affirm the rejection of claims 1-9 and 11-13 under 35 U.S.C.
§ 103(a) as unpatentable over Masuda and Sluijter.
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Application 11/756,274

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We affirm the rejections of claims 10, 14, 15 and 17-20 under
35 U.S.C. § 103(a) as unpatentable over Masuda, Sluijter, and Crevensten.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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