Ex Parte Perez-Cruet et al

Patent Trial and Appeal Board

Nov 29, 2016

13355028 (P.T.A.B. Nov. 29, 2016)

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.
MI4-00013DA 3075
EXAMINER
MERENE, JAN CHRISTOP L
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
13/355,028 01/20/2012
68779 7590 11/29/2016
MILLER IP GROUP, PLC
MI4 SPINE, LLC
42690 WOODWARD AVE.
SUITE 300
BLOOMFIELD HILLS, MI 48304
Miguelangelo J. Perez-Cruet
11/29/2016 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
Appeal 2015-000926
Application 13/355,028
Technology Center 3700
Before JENNIFER D. BAHR, GEORGE R. HOSKINS, and
FREDERICK C. LANEY, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Miguelangelo J. Perez-Cruet and John R. Pepper (“Appellants”)1
appeal under 35U.S.C. § 134 from the Examiner’s decision rejecting
claims 1—20 in this application. The Board has jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The Appeal Brief identifies MI4Spine, LLC as the real party in interest.
Appeal Br. 3.
Appeal 2015-000926
Application 13/355,028
CLAIMED SUBJECT MATTER
The independent claims are claims 1, 9, and 17. Claim 1 illustrates
the subject matter on appeal, and it recites:
1. A method for placement of a pedicle screw and rod
system, said method comprising:
providing a pedicle screw including a body and a ball­
shaped head;
providing a cannulated post including a tube portion and
a head portion attached thereto, said head portion including an
opening and a planar portion;
positioning the head portion of the cannulated post on the
ball-shaped head of the pedicle screw so that the cannulated
post is mounted to the pedicle screw in a multi-axial
engagement;
providing a rod having a slot; and
sliding the rod down the cannulated post so that the tube
portion extends through the slot and the head portion is
positioned within the slot so that the planar portion of the head
portion causes the post to be locked within the slot.
Appeal Br. 14 (Claims App.).
REJECTIONS ON APPEAL2
Claims 1—3, 5—11, 13—17, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lim (US 2008/0021458 Al, pub. Jan. 24,
2008), Richelsoph (US 2004/0193160 Al, pub. Sept. 30, 2004), and Pond
(US 2007/0191840 Al, pub. Aug. 16, 2007). See Non-Final Act. 6-24.3
2 The rejection of claim 16 under 35 U.S.C. § 112, second paragraph, as
being indefinite, has been withdrawn. See Ans. 23.
3 The office action on appeal is the Non-Final Office Action mailed
January 27, 2014.
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Application 13/355,028
Claims 4, 12, and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lim, Richelsoph, Pond, and Jackson (US 6,716,214 Bl,
iss. Apr. 6, 2004). See Non-Final Act. 25—27.
ANALYSIS
A. Obviousness based on Lim, Richelsoph, and Pond—
Claims 1—3, 5—11, 13—17, 19, and 20
Independent Claims 1, 9, and 17
Appellants argue for the patentability of independent claims 1, 9, and
17 together as a group. Appeal Br. 9—11. Accordingly, we select claim 1 to
decide the appeal of the rejection of these claims, with claims 9 and 17
standing or falling with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
In rejecting claim 1, the Examiner finds Lim’s Figures 2 and 3
illustrate a pedicle screw having a body (bone engaging portion 54a) and a
head (not shown in the Figures). Non-Final Act. 6—7; see Lim 127. The
Examiner finds Lim discloses a cannulated post (receiver 52a) including a
head portion having an opening that is positioned on the screw head in a
multi-axial engagement. Non-Final Act. 6—7 (citing Lim || 20, 27 as
indicating “the head portion of the screw is pivotally received in the
opening” of the post head portion in a multi-axial engagement4). The
Examiner finds Lim discloses a rod (connecting member 10) having a slot
(window 22) that receives post 52a. Id.', Ans. 24; see Lim 123. The
4 Lim’s paragraph 27 correspondingly indicates bone engaging portion 54a
“can include a proximal head (not shown) pivotally captured in a lower
receptacle of’ receiver 52a, so that portion 54a “is pivotal about an axis
and/or along a plane to assume any one of a plurality or infinite number of
orientations relative to receiver 52a.” Lim 127 (emphasis added).
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Application 13/355,028
Examiner determines Lim does not disclose, as required by claim 1: its
screw head being “ball-shaped;” or its post having “a tube portion” and “a
planar portion;” or the action of sliding rod 10 down post 52a “so that [a]
tube portion extends through the slot and the [post] head portion is
positioned within the slot so that the planar portion of the head portion
causes the post to be locked within the slot.” Non-Final Act. 8; Ans. 25.
The Examiner finds Richelsoph’s Figures 10, 12A, and 12B illustrate
a pedicle screw (screw 12) having a ball-shaped head (head 14). Non-Final
Act. 9. The Examiner finds Richelsoph discloses a cannulated post having a
head portion (fixing mechanism 18), with the head portion including a
seating portion (rod seating mechanism 28) and a planar portion (flexible
portion 46). Id. The Examiner finds Richelsoph’s seating portion 28 and
planar portion 46 allow operative engagement of screw head 14 with rod 16
within seating portion 28. Id.
The Examiner finds Pond’s Figures 1—3 illustrate a pedicle screw
(anchor 120a) attached to a cannulated post, wherein the post has a head
portion (distal implantation portion 52) attached to a tube portion (proximal
guide portion 54). Non-Final Act. 9. The Examiner also finds tube
portion 54 guides placement of connecting member 100 to a position
adjacent vertebra VI—V3 of a spinal column, and tube portion 54 is then
broken off via a weakened portion. Id. at 9-10.
The Examiner determines it would have been obvious to configure the
head of Lim’s screw 54a which is received in cannulated post 52a to be ball
shaped as taught by Richelsoph, and further to modify Lim’s cannulated
post 52a to include Richelsoph’s seating portion and planar portion. Non-
Final Act. 10. This would have been done, according to the Examiner,
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Application 13/355,028
“because a ball shaped head is a known way to provide polyaxial movement
between a head portion and [a] screw, [and Richelsoph’s] seating portion
and planar portion allows operative engagement and locking of the screw
head and mounting portion.” Id. The Examiner determines it would have
been obvious, further, to modify the combined assembly of Lim and
Richelsoph to include a tube portion as disclosed in Pond, “because it allows
one to guide the placement of a mounting member ... to a position adjacent
the spinal column that is broken off after use.” Id. The Examiner further
determines, with this combination, “the tube portion would extend through
and above the slot, [and] the head portion would be in the slot.” Id.
Appellants object to the Examiner’s reliance on Lim, on the basis that
“Lim does not disclose that the heads of the [screws 54a] can be ball-shaped
heads or that the heads of the [screws 54a] provide a multi-axial engagement
to any device.” Appeal Br. 10. These arguments are not persuasive of
Examiner error. Lim’s failure to disclose screws 54a having ball-shaped
heads is not responsive to the rejection, which expressly finds Lim’s
screws 54a do not have ball-shaped heads, and determines the use of ball­
shaped heads would have been an obvious modification of Lim in light of
Richelsoph’s ball-shaped heads 14 on screws 12. Non-Final Act. 8, 10.
Further, a preponderance of the evidence supports the Examiner’s finding
that Lim’s screw 54a heads—even though not expressly described as ball­
shaped—provide a multi-axial engagement to receivers 52a. See Lim || 20,
27.
Appellants further argue “nowhere in Lim does it teach or suggest any
type of cannulated post, i.e., a post having a central opening extending
therethrough, and especially a cannulated post having a tube portion and a
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head portion as claimed.” Appeal Br. 10. These arguments are not
persuasive of Examiner error. A preponderance of the evidence supports the
Examiner’s finding that Lim’s receiver 52a is a post having a central
opening extending therethrough to receive screw 54a. See Lim || 20, 27
(screw 54a is “pivotally captured in a lower receptacle of’ receiver 52a).
Lim’s failure to disclose receiver 52a having a tube portion is not responsive
to the rejection, which expressly finds Lim’s receiver 52a does not have a
tube portion, and determines the use of a tube portion would have been an
obvious modification of Lim in light of Pond’s disclosure of tube portion 54.
Non-Pinal Act. 6—10; Ans. 25—28.
Appellants object to the Examiner’s reliance on Richelsoph, on the
basis that “nowhere in Richelsoph does it teach or suggest a cannulated post
and especially a cannulated post including a tube portion and a head
portion.” Appeal Br. 10. The Examiner finds Richelsoph’s fixing
mechanism 18 and rod seating mechanism 28 together form a cannulated
post having, as claimed, a head portion including an opening (gripping
portion 22 of mechanism 18 that receives screw head 14) and a planar
portion (flexible portion 46 of mechanism 28). Non-Final Act. 9.
Appellants’ conclusory objection to that finding fails to apprise us of
Examiner error—for example, Appellants do not provide any reason why
two separate components may not together form the claimed cannulated
post. Richelsoph’s fixing mechanism 18 has a tube-shaped receptacle for
receiving screw head 14, and is therefore cannulated. See Richelsoph
Figs. 2, 10. Further, Richelsoph’s failure to disclose a tube portion is not
responsive to the rejection, which expressly finds Richelsoph’s cannulated
post does not have a tube portion, and determines the use of a tube portion
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would have been an obvious modification in light of Pond’s disclosure of
tube portion 54. Non-Final Act. 10; Ans. 25—27.
Appellants object to the Examiner’s reliance on Pond, on the basis
that Pond’s receivers 50 are not cannulated posts. Appeal Br. 11.
Appellants particularly contend “receivers 50 accept the rod 100 internal
thereto, which at least for medical nomenclature makes the [receivers] not
cannulated.” Id. Appellants also contend that, because Pond’s rod 100 is
received internally to receivers 50, Pond fails to meet the claim limitations
reciting “a slotted rod” that is “positioned over the cannulated post so that
the head portion of the post is within the rod and is positioned within the slot
in a locking engagement.” Id.
These arguments are not persuasive of Examiner error. As discussed
at length above, a preponderance of the evidence supports the Examiner’s
finding that the combination of Lim and Richelsoph discloses a cannulated
post meeting all the requirements of claim 1, except for the tube portion.
The Examiner relies on Pond as disclosing the usefulness of an elongated
tube portion 54 to guide the placement of a member, such as connecting
member 100, to connect posts 52 together. Non-Final Act. 9—10. We
appreciate Pond’s posts 52 have slots for receiving connecting member 100
(see Pond Fig. 7), rather than posts 52 being “positioned within” a slot of
connecting member 100, as claim 1 requires. Nonetheless, as noted by the
Examiner, Lim’s posts 52 have head portions “positioned within” slot 22 of
connecting rod 10. Non-Final Act. 6—8; see Lim Figs. 2, 4. Appellants have
not shown error in the Examiner’s determination that, when modifying
Lim’s posts 52 to include a guiding tube portion, “the tube portion would
extend through and above the slot [of rod 10, and] the head portion [of
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Application 13/355,028
post 52] would be in the slot.” Non-Final Act. 10; see In re Keller, 642 F.2d
413, 425 (CCPA 1981) (“The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of the
primary reference .... Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in the art.”).
For the foregoing reasons, we sustain the rejection of independent
claims 1, 9, and 17 as unpatentable over Lim, Richelsoph, and Pond.
Dependent Claims 6 and 14
Appellants argue for the patentability of dependent claims 6 and 14
separately from their respective parent claims, and together as a group.
Appeal Br. 12. Accordingly, we select claim 6 to decide the appeal of the
rejection of these claims, with claim 14 standing or falling with claim 6.
37C.F.R. §41.37(c)(l)(iv).
Claim 6 depends from claim 1, and adds “the rod includes a transverse
bar extending across the slot.” Appeal Br. 15 (Claims App.). The Examiner
finds Lim’s Figure 2 discloses such a bar as mounting portion 26 in slot 22.
Non-Final Act. 11. Appellants argue “the mounting portion 26 is not a bar
that extends across a slot in [the] rod as claimed.” Appeal Br. 12. The
Examiner answers that Lim’s Figure 1 shows mounting portion 26 “is a
cylindrically shaped bar that extends at least partially across the slot along
the longitudinal axis ‘A’,” and claim 6 does not specify “the direction in
which the bar extends” or “that the bar ‘extends completely across the slot.’”
Ans. 28.
We are not persuaded of Examiner error. We agree with the
Examiner’s understanding of the scope of claim 6, which Appellants do not
dispute. With that understanding, Lim’s mounting portion 26 satisfies the
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requirements of claim 6. We therefore sustain the rejection of claims 6 and
14 as unpatentable over Lim, Richelsoph, and Pond.
Dependent Claims 7 and 15
Claim 7 depends from claim 1, and adds “the rod includes open end
portions.” Appeal Br. 15 (Claims App.). The Examiner finds Lim’s
Figure 2 illustrates rod 10 as including “open end portions (top and bottom
end portions, as seen in [the Figure]).” Non-Final Act. 11. Appellants argue
Lim’s Figure 2 does not illustrate the claimed open end portions. Appeal
Br. 13. The Examiner does not address claim 7 in the Answer.
We determine the Examiner has applied an overly broad construction
of claim 7. In particular, the Examiner finds the top and bottom openings of
Lim’s slot 22 correspond to the open end portions of claim 7. This
overlooks that claim 1, from which claim 7 depends, recites that the tube
portion “extends through” the slot so the head portion is positioned within
the slot. Appeal Br. 14 (Claims App.). In order for the tube portion to
extend through the slot, as claimed, the slot must have two open ends. Thus,
in order for claim 7 to add a limitation to its parent claim 1, the open end
portions must be something different from the open ends of the slot. This
understanding is consistent with Appellants’ Specification. See Spec.,
Fig. 8,1121,30.
Thus, we do not sustain the rejection of claim 7 as unpatentable over
Lim, Richelsoph, and Pond. Claim 15 includes the same limitation as
claim 7, so we likewise do not sustain the rejection of claim 15.
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Dependent Claims 8, 16, and 20
Claims 8, 16, and 20 depend from different independent claims and
add “the planar portion of the head portion includes opposing flat surfaces.”
Appeal Br. 15, 16, 17 (Claims App.). Appellants admit Richelsoph’s rod
seating mechanism 28 “includes opposing flat surfaces 46,” but contend
mechanism 28 “is not a cannulated post including a head portion as
claimed.” Appeal Br. 13. That is, Appellants merely incorporate their
arguments against the independent claim rejections. For the reasons
provided above, those arguments are not persuasive, and we sustain the
rejection of claims 8, 16, and 20 as unpatentable over Lim, Richelsoph, and
Pond.
Dependent Claims 2, 3, 5, 10, 11, 13, and 19
Appellants do not argue for the patentability of dependent claims 2, 3,
5, 10, 11, 13, and 19 separately from their respective parent claims. For the
reasons provided above, we sustain the rejection of these claims as
unpatentable over Lim, Richelsoph, and Pond.
B. Obviousness based on Lim, Richelsoph, Pond, and Jackson—
Claims 4, 12, and 18
Claim 4 depends from claim 1, and adds that the screw head includes
tabs which are “snap fitt[ed]” into slots in the post. Appeal Br. 14 (Claims
App.). The Examiner finds Jackson correspondingly discloses a screw
including tabs 24 which are snap fitted into slots 62 in a post. Non-Final
Act. 25 (citing Jackson, Fig. 1, 7:60-68, 8:1—15, 9:32—10:20). According to
the Examiner, Jackson discloses a snap fit because retainer ring 8 (in which
slots 62 are formed) has “sufficient ‘resiliency’ and ‘elasticity’ to provide
snap fit arrangement when engaged with the ball shaped head.” Ans. 28.
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The Examiner determines it would have been obvious, in light of such
disclosures in Jackson, to incorporate tabs being snap fitted into slots in the
combined system of Lim, Richelsoph, and Pond. Non-Final Act. 25.
Appellants argue Jackson fails to disclose “snap fitting tabs into
slots,” because Jackson’s “splines 24 and . . . recesses 62 appear to provide
an alignment mechanism and not a snap fit locking mechanism.” Appeal
Br. 12. We agree with Appellants. While we appreciate that Jackson’s
ring 8 is made of a resilient and elastic material, it does not appear that such
properties play a role in the fitting of tabs 24 into slots 62. See Jackson,
7:60-68, 8:1—15, 9:32—10:20. Thus, the Examiner’s finding that Jackson
discloses the claimed snap fit connection is not supported by a
preponderance of the evidence.
For the foregoing reasons, we do not sustain the rejection of claim 4
as unpatentable over Lim, Richelsoph, Pond, and Jackson. Claims 12 and 18
include the same limitation as claim 4, so we likewise do not sustain the
rejection of those claims.
DECISION
The Examiner’s decision to reject claims 1—20 is affirmed as to
claims 1—3, 5, 6, 8—11, 13, 14, 16, 17, 19, and 20, and is reversed as to
claims 4, 7, 12, 15, and 18.
No time period for taking any subsequent action in connection with
this appeal maybe extended, under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
11