Ex Parte Perez-Cruet et al

Patent Trial and Appeal Board

Jun 15, 2017

13226337 (P.T.A.B. Jun. 15, 2017)

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.
MI4-00018A 3452
EXAMINER
KU, SI MING
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
13/226,337 09/06/2011
68779 7590 06/16/2017
MILLER IP GROUP, PLC
MI4 SPINE, LLC
42690 WOODWARD AVE.
SUITE 300
BLOOMFIELD HILLS, MI 48304
Miguelangelo J. Perez-Cruet
06/16/2017 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 and
JOHN R. PEPPER
Appeal 2016-000495
Application 13/226,3371
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Miguelangelo J. Perez-Cruet and John R. Pepper (Appellants) appeal
under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting under
35 U.S.C. § 103(a) claims 1—8, 12, 13, and 16—20 as being unpatentable over
Voellmicke et al. (US 2010/0161056 Al, pub. June 24, 2010)
(“Voellmicke”).2 We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b).
1 According to Appellants, MI4Spine, LLC is the real party in interest.
Appeal Br. 3 (filed May 6, 2015).
2 Claims 9—11, 14, and 15 are withdrawn. Id.
Appeal 2016-000495
Application 13/226,337
SUMMARY OF DECISION
We AFFIRM-IN-PART.
INVENTION
Appellants’ invention relates to “a method for attaching a laminar
plate to a vertebra during spinal surgery.” Spec. para. 12.
Claims 1,16, and 20 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A method for supporting a vertebra, said method
comprising:
removing lamina bone from the vertebra during a lumbar
laminectomy for stenosis surgical procedure to create an
opening in the vertebra that exposes a spinal canal;
providing a single piece continuous laminar plate
including an elongated center plate portion, a first end portion
coupled to a first end of the elongated plate portion and a
second end portion coupled to a second end of the elongated
plate portion; and
coupling the laminar plate to the vertebra to cover the
opening created by the removed lamina bone, wherein the
laminar plate is shaped and configured to be coupled to the
vertebra so that the center plate portion is recessed in the
opening and positioned at a location within the vertebra that is
more inward toward the spinal canal than the first and second
end portions such that the first and second end portions are
angled from the center plate portion away from the spinal canal.
ANALYSIS
Claims 1—5, 7, 8, 12, 13, and 16—18
Appellants argue claims 1—5, 7, 8, 12, 13, and 16—18 as a group and
have not presented arguments for the patentability of any particular claim.
See Appeal Br. 5—9. Therefore, in accordance with 37 C.F.R.
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Application 13/226,337
§ 41.37(c)(l)(iv), we select claim 1 as the representative claim to decide the
appeal of the rejection of these claims, with claims 2—5, 7, 8, 12, 13, and 16—
18 standing or falling with claim 1.
The Examiner finds that the embodiment of Figure 7 of Voellmicke
discloses most of the limitations of claim 1, but “lacks a single piece
continuous laminar plate.” Final Act. 2-4. Nonetheless, the Examiner finds
that the alternative embodiment of Figure 5D of Voellmicke discloses a
single piece continuous laminar plate. Id. at 4—5 (citing Voellmicke para.
59). The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art to modify the laminar plate in the embodiment of
Figure 7 of Voellmicke to be “a single piece continuous laminar plate (i.e.
embodiment of figure 5D) as taught by Voellmicke, since such a
modification would provide an alternative plate as Voellmicke clearly
contemplates various attachment mechanisms/hinges between the hinge
body and hinge plates [of plate 500].” Id.
Appellants argue that the claims are directed to “method for
supporting a vertebra that has been compromised as a result of removing
lamina bone during a lumbar laminectomy for stenosis surgical procedure,”
whereas Voellmicke’s implant relates to “a different surgical method,
namely, to make the spinal canal larger by forming a hole in the lamina and
then forcing sides of the hole apart.” Appeal Br. 7. Appellants assert that
Voellmicke “states that laminectomy and laminoplasty surgical procedures
are somewhat ineffective, and thus the Voellmicke device is used in a
different type of procedure.” Reply Br. 1 (citing Voellmicke para. 5).
We do not find Appellants’ arguments to be persuasive, because
Voellmicke’s disclosure of the term “laminectomy” is in the Background of
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Application 13/226,337
the Invention section of Voellmicke discussing the prior art to Voellmicke.
Voellmicke para. 5. Therein, Voellmicke discloses that a “laminectomy” is
the removal of part of the lamina of the spinal cord to remove pressure, but
that removal alone can lead to instability and spinal deformation. Id.
Voellmicke, similar to the present invention, discloses improving upon the
prior art by inserting an implant into the opening. Compare Voellmicke
para. 10 (“The method can include forming an opening in a first side of a
lamina of a spine, inserting an implant into the opening.) with Spec. 12
(“method for attaching a laminar plate to a vertebra ... to reconstruct the
lamina of the vertebra after it has been removed”). Although we appreciate
that Voellmicke’s method also enlarges the opening, enlargement is not
excluded by the claims, and thus, Appellants have not established
persuasively that Voellmicke performs a procedure that differs from the
claimed method.
Appellants also argue that the plates of Voellmicke do “not define a
center plate portion recessed within an opening in a lamina bone that is more
inward toward the spinal canal than the first and second end portions that are
angled away from the spinal canal, as claimed.” Appeal Br. 7.
In the Answer, the Examiner provides an annotated version of Figure
7 of Voellmicke and considers that the annotated elements meet the claimed
limitations. Ans. 3.
In reply, Appellants assert that:
the part of the implant 500 referred to by the Examiner as the
“elongated center portion” is not recessed within the opening in
the lamina bone and is not more inward toward the spinal canal
526 than the “first and second end portions” identified by the
Examiner in figure 7.
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Application 13/226,337
Reply Br. 2. Appellants contend that “[FJigure 7 shows that the end portions
and the elongated center portion specifically identified by the Examiner are
along the same general plane and outside of the recess formed in the lamina
bone.” Id.
Appellants’ arguments are not persuasive because the laminar plate
500 of Voellmicke is “recessed” consistent with Appellants’ claimed
invention. Specifically, Appellants depict “open area 34” as a dotted line
with the center plate portion “recessed” in the open area. See Spec. Figs. 3,
We reproduce below Figure 7 of Voellmicke as annotated by the
Examiner.
5, 6.
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Application 13/226,337
Figure 7 of Voellmicke as annotated by the Examiner shows a
perspective view of the laminar plate 500, with the first end portion, the
second end portion, and the elongated central portion as labeled by the
Examiner.
Figure 7 of Voellmicke depicts the top of center plate 500 below the
top of the opening (the open area) in the lamina and closer to spinal canal
526 than the first and second end portions. See Fig. 7, above. Specifically,
the Examiner’s lead line for the “elongated center portion” denotes a part of
the center portion that is below the top of the opening where the “first end
portion” is connected to lamina 520. See id. At the second end portion,
since the connection angle to the center portion is less than 180 degrees, the
center portion is also below or recessed in the opening, because an angle of
180 degrees would make the center portion tangent to or level with the
opening. Hence, the elongate center plate portion of Voellmicke is
“recessed” in the opening more inward toward the spinal canal than the first
and second end portions, consistent with how the term “recessed” would be
understood by a person of ordinary skill in the art in light of the
Specification.
In addition, we note that no part of the first and the second end
portions of Voellmicke’s laminar plate 500 extends toward the spinal canal.
Any line extending the first end portion or the second end portion would not
pass through the spinal canal. Thus, each end portion is angled away from
the spinal canal.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claim 1 as unpatentable over Voellmicke.
Claim 2—5, 7, 8, 12, 13, and 16—18 fall with claim 1.
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Claims 6, 19, and 20
Independent claim 20 recites, in relevant part, “depositing bone
growth material on the laminar plate to reinforce the vertebra.” See Appeal
Br. 13—14 (Claims App.). Claims 6 and 19 depend from claims 1 and 16,
respectively, and include a substantially similar limitation. See id. at 11, 13.
The Examiner finds that because Voellmicke discloses allograft
materials on the laminar plate, coupling the laminar plate to the vertebra
would meet the depositing step. Final Act. 10 (citing Voellmicke para. 53).
Appellants argue that Voellmicke discloses that “the implant itself can
be made of allograft materials derived animal or human cortical or
cancellous bone.” Appeal Br. 8. Appellants assert that “the bone growth
material is deposited on the plate opposite to the spinal canal, which would
require that the plate is already secured to the vertebra.” Id.
The Examiner responds that the claims do not “impose a specific
order on the performance of the method steps,” and that Voellmicke’s
disclosure of depositing bone growth material on the implant when the
implant is mounted to the vertebra meets the claims. Ans. 4.
Appellants reiterate that “the fact that the bone graph material is
deposited on the plate opposite from the spinal canal, [means] that the bone
growth material is clearly deposited after the laminar plate is secured to the
lamina bone.” Reply Br. 3. Appellants assert that “Voellmicke only teaches
that the device can be made of a bone growth material and not that the bone
growth material is ‘deposited’ on the device.” Id.
Appellants’ arguments are persuasive because Voellmicke does not
disclose depositing bone growth material on the laminar plate to reinforce
the vertebra as recited. Paragraph 53 of Voellmicke, upon which the
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Application 13/226,337
Examiner relies, discloses that “[t]he implantable device can be formed of a
variety of implantable materials, including . . . allograft materials derived
from animal or human cortical or cancellous bone, and/or any combination
thereof.” Voellmicke para. 53. Thus, as Appellants correctly note,
Voellmicke’s device 300 is formed of a bone graft material, and the
Examiner does not point to any section of Voellmicke that discloses
depositing bone graft material on the laminar plate 300 (hinge body 344,
hinged plates 346). See id. para. 59. Nor does the Examiner explain
adequately how forming a device from bone graft material constitutes
depositing bone graft material on the device.
Although we appreciate that paragraph 55 of Voellmicke discloses
pre-attaching HEALOS3 to the implantable device, the HEALOS is attached
to “the edges of the shaft [104] that will contact the interior walls of a bone
opening.” Id. para. 55, Fig. 1A. The shaft 104 is adjacent the spinal canal
whereas the head 102, to which laminar plate is attached, is on a side
opposite the spinal canal. Id. para. 59, Figs. 3A, 3B. The Examiner does not
point to any portion of Voellmicke that discloses depositing bone graft
material on the head 102, or the laminar plate attached to the head 102.
Accordingly, in view of the above, the Examiner has not established by a
preponderance of the evidence that Voellmicke deposits bone growth
material on the laminar plate, as called for by claims 6, 19, and 20.
3 “HEALOS is an osteoconductive matrix constructed of cross-linked
collagen fibers that are fully coated with hydroxyapatite.” Voellmicke para.
55.
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Application 13/226,337
Therefore, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 103(a) of claims 6, 19, and 20 as unpatentable over
Voellmicke.
SUMMARY
The Examiner’s decision to reject under 35 U.S.C. § 103(a) claims 1—
5, 7, 8, 12, 13, and 16—18 as unpatentable over Voellmicke is affirmed.
The Examiner’s decision to reject under 35 U.S.C. § 103(a) claims 6,
19, and 20 as unpatentable over Voellmicke is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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