Ex Parte Perez-Cruet et al

Patent Trial and Appeal Board

Nov 18, 2016

13226320 (P.T.A.B. Nov. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/226,320 09/06/2011
68779 7590 11/21/2016
MILLER IP GROUP, PLC
MI4 SPINE, LLC
42690 WOODWARD A VE.
SUITE 300
BLOOMFIELD HILLS, MI 48304
FIRST NAMED INVENTOR
Miguelangelo J. Perez-Cruet
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
MI4-00018 3427
EXAMINER
KAMIKA WA, TRACY L
ART UNIT PAPER NUMBER
3775
MAILDATE DELIVERY MODE
11/21/2016 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
Appeal2015-001910
Application 13/226,3201
Technology Center 3700
Before JOHN C. KERINS, STEP AN ST AI CO VICI, and LEE L. STEPINA,
Administrative Patent Judges.
ST AI CO VICI, 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
claims 1,2, 10, 12, 15, 16,and20.2 Wehavejurisdictionoverthisappeal
under 35 U.S.C. § 6(b ).
1 According to Appellants, the real party in interest is MI4Spine, LLC.
Appeal Br. 3 (filed July 31, 2014).
2 Claims 4, 8, 9, 11, 13, 14, and 17-19 are canceled, and claims 3 and 5-7
are withdrawn from consideration. Id.
Appeal2015-001910
Application 13/226,320
We REVERSE.
SUMMARY OF DECISION
INVENTION
Appellants' invention relates to a laminar plate "that reconstructs or
supports the lamina of a vertebra after it has been removed during spinal
surgery and prevents bone growth material from entering the spinal canal."
Spec. para. 12.
Claims 1 and 20 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A laminar plate for bracing a vertebra at a location where
lamina bone has been removed by spinal surgery, wherein the
removed lamina bone creates an opening in the vertebra exposing
a spinal canal, said plate comprising a center plate portion, a first
end portion at a first end of the center plate portion and a second
end portion at a second end of the center plate portion so that the
plate is only a single continuous plate member, wherein at least
one of the first end portion and the second end portion of the plate
is angled other than 180° relative to the center plate portion, and
wherein the first end portion is configured to be coupled to a
spinous process of the vertebra or proximate thereto and the
second end portion is configured to be coupled to a facet of the
vertebra or proximate thereto, and wherein the continuous plate
member is shaped and configured to be attached to the vertebra
so that the center plate portion is recessed within 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, said plate
member being effective to accept and hold a bone graft material
on a surface of the plate member opposite from the spinal canal.
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Appeal2015-001910
Application 13/226,320
THE REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1, 2, 10, 15, 16, and 20 under 35
U.S.C. § 102(e) as being anticipated by Slivka (US 2010/0152854 Al, pub.
June 17, 2010).
II. The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as
being unpatentable over Slivka.
ANALYSIS
Rejection I
The Examiner finds that Slivka discloses "a laminar plate (1) for
bracing a vertebra at a location where lamina bone has been removed by
spinal surgery ... [including] a center plate portion (U-shaped portion 7), a
first end portion (3) ... and a second end portion (5)" and that "the first and
second end portions are each angled other than 180° relative to the center
plate portion, as each end portion (3, 5) extends at an angle away from the
U-shaped center plate portion (U-shaped portion 7)." Final Act. 3--4 (citing
Slivka paras. 41, 87, 88 and Figs. 2, 6).
Appellants assert that "all of the embodiments discussed by Slivka
refer to the implant as being a balloon, a compressible device, an expandable
device, etc.," and that "Figure 3 [of Slivka] shows the implant hanging down
like a deflated balloon." Appeal Br. 8. Appellants argue that "no definition
for a plate includes a fillable balloon like device," and thus, the expandable
device of Slivka "cannot be considered a plate having a center plate portion
and first and second end portions defining a continuous plate member, as
claimed." Id.
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Appeal2015-001910
Application 13/226,320
The Examiner responds that "under broadest reasonable interpretation,
a plate in the context of orthopedic surgery requires only a structure lending
support to underlying or neighboring bone." Ans. 4. The Examiner
"submits that Slivka's implant, under broadest reasonable interpretation,
may be considered a plate due to its support of the neighboring lamina bone,
in particular in its final hardened shape." Id. The Examiner points out that
"Slivka's implant provides more definitive structure than a balloon," and
that "Slivka shows a final form of the implant in Fig. 2 (and, as argued by
Appellants, in Fig. 7), which form meets the structural limitations of the
plate as claimed (e.g. a center plate portion and first and second end portions
defining a continuous plate member)." Id. at 5.
In reply, Appellants argue that "filling a balloon with a hardenable
material does not make the balloon a plate." Reply Br. 1. Appellants, thus,
assert that "it is not reasonable for the Examiner to assert that ... [Slivka's]
balloon is a plate." Id.
The Examiner does not provide evidence to support the position that a
person of ordinary skill in the art of orthopedic surgery would understand
the term "plate" to mean "a structure lending support to underlying or
neighboring bone." Accordingly, it is appropriate to consult a general
dictionary definition of the word "plate" for guidance in determining the
ordinary and customary meaning of the claim term as viewed by a person of
ordinary skill in the art when reading the term in light of Appellants'
Specification. See Comaper Corp. v. Antee, Inc., 596 F.3d 1343, 1348 (Fed.
Cir. 2010). In this case, an ordinary and customary meaning of the term
"plate" is "a smooth flat thin piece of material." Merriam Webster's
Collegiate Dictionary (11th ed. 2005). Such an interpretation is consistent
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Appeal2015-001910
Application 13/226,320
with Appellants' Specification, which describes laminar plate 48 as
"primarily a flat elongated plate member having a bend at each end." Spec.
para. 41; see also id. at Fig. 7. As such, in the instant case, an ordinary and
customary meaning of the term "plate," when read in light of the
Specification, is "a flat thin piece of material."
In contrast, Slivka discloses expandable laminoplasty implant 1 as
having first and second end portions 3, 5 extending from intermediate
portion 7 that includes "a concave side 17 [bottom] and an opposed convex
side 19 [top]," as well as "first 8 and second 10 endfaces," and "caudal and
cephalad sides 12, 14" that together define an enclosed cavity 9. Slivka,
paras. 37-39, Figs. 1 and 2. As such, intermediate portion 7 of Slivka is
box-shaped, and end portions 3, 5 extend from endfaces 8, 10 of the box.
See id., Fig. 1. Although we appreciate that Slivka's box-shaped structure
with extending ends 3, 5 may lend support in its hardened state to underlying
or neighboring bone (see Slivka, Fig. 7), nonetheless, as a box-shape is not
flat and thin, a person of ordinary skill in the art would not reasonably
interpret Slivka's box-shaped structure 7 as a "plate." Therefore, we agree
with Appellants that when reading the term "plate," in light of Appellants'
Specification, Slivka's intermediate portion 7 with extending ends 3, 5 does
not constitute a "plate" having bent end portions, as called for by
independent claims 1 and 20. See Appeal Br. 8.
In conclusion, for the foregoing reasons, we do not sustain the
rejection of claims 1, 2, 10, 15, 16, and 20 under 35 U.S.C. § 102(e) as being
anticipated by Slivka.
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Appeal2015-001910
Application 13/226,320
Rejection II
The Examiner's modification of Slivka does not remedy the
deficiencies of Slivka as described supra. See Final Act. 7. Accordingly,
for the same reasons discussed above, we also do not sustain the rejection
under 35 U.S.C. § 103(a) of claim 12 as unpatentable over Slivka.
SUMMARY
The Examiner's decision to reject claims 1, 2, 10, 15, 16, and 20
under 35 U.S.C. § 102(e) as anticipated by Slivka is reversed.
The Examiner's decision to reject claim 12 under 35 U.S.C. § 103(a)
as unpatentable over Slivka is reversed.
REVERSED
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