Ex parte Pisharodi

Board of Patent Appeals and Interferences

Nov 17, 1999

08210229 (B.P.A.I. Nov. 17, 1999)

Application for patent filed March 18, 1994. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not binding
precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MADHAVAN PISHARODI
____________
Appeal No. 1997-1145
Application No. 08/210,2291
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ON BRIEF
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Before ABRAMS, STAAB, and GONZALES, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1-4, 16 and 17. Claims 7-15 have been
withdrawn from consideration as being directed to a non-elected
invention, claims 18 and 19 have been canceled, claims 21 and
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Application No. 08/210,229
22 have been allowed, and claims 5, 6 and 20 have been
indicated as containing allowable subject matter.
The appellant's invention is directed to a vertebral disk
stabilizer. The claims before us on appeal have been
reproduced in an appendix to the Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Kuntz 4,349,921 Sep. 21, 1982
Meyers 5,324,292 Jun. 28, 1994
(Filed Feb. 10, 1993)
THE REJECTIONS
Claim 4 stands rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite in that it fails to particularly
point out and distinctly claim the subject matter which the
appellant regards as the invention.
Claims 1-4, 16 and 17 stand rejected under 35 U.S.C. §
102(e) as being anticipated by Meyers.
Claims 1-3, 16 and 17 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Kuntz.
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Application No. 08/210,229
Rather than attempt to reiterate the examiner’s full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and the
appellant regarding the rejections, we make reference to the
Examiner’s Answer (Paper No. 21 ) for the reasoning in support
of the rejections, and to the Briefs (Papers Nos. 18 and 22),
for the opposing viewpoints of the appellant.
OPINION
The Rejection Under 35 U.S.C. § 112
Claim 1 is directed to a vertebral disk stabilizer
comprising an elongate implant having threads on its outer
surface and an elongate applicator detachably mounted to the
implant. Claim 4, which depends from claim 1, is directed to
“[a] kit including the stabilizer of claim 1 and a spreader for
use in connection therewith . . . .” The examiner has taken
the position that claim 4 is indefinite “because it is unclear
whether the kit includes all the limitations of claim 1 or not”
and therefore “claim 4 is broader in scope that the claim it
depends from” (Answer, page 3). While claim 4 may not present
its subject matter in what the examiner believes to be the
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conventional format, from our perspective it is not indefinite
insofar as setting forth the metes and bounds of the invention
is concerned.
This rejection is not sustained.
The Rejections Under 35 U.S.C. § 102
Anticipation under 35 U.S.C. § 102 is established only
when a single prior art reference discloses, either expressly
or under the principles of inherency, each and every element of
the claimed invention. See In re Paulsen, 30 F.3d 1475, 1480-
1481, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994) and In re Spada,
911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990).
The first rejection under Section 102 set out by the
examiner is that independent claim 1 and dependent claims 2-4,
16 and 17 are anticipated by Meyers. This reference is
directed to a fracture fixation assembly for skeletal
structures such as femurs and hips, and not to a vertebral disk
stabilizer. Nevertheless, in the examiner’s view, the subject
matter of claim 1 reads on the Meyers device. In particular,
the examiner takes the position that screw 4 and the
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Application No. 08/210,229
screwdriver intended for use in installing implant 20
(disclosed but not illustrated) together constitute the
required elongate applicator. We cannot agree with this
reasoning.
Screw 4 is disclosed as a compression fixture which
functions to attach together implant 20 and supporting tube
plate member 10. Not only is screw 4 not disclosed as being
involved in the placement of the implant in position relative
to the skeletal structure with which it is to interact, but it
does not appear that screw 4 can even be installed until after
the implant is in place. The only element disclosed as being
used in installing the implant is the screwdriver, which
engages slot 22 on the proximal end of the implant. In any
event, it is our opinion that screw 4 and the screwdriver
cannot be considered as the claimed “applicator” because they
are not capable of performing in the manner required by the
claim. Specifically, claim 1 requires that the “applicator”
perform three functions, the first of which is “inserting said
implant into the region from which a portion of the
intervertebral disk has been removed.” One of ordinary skill
in the art would understand from the explanation of the
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Application No. 08/210,229
invention in the specification that the applicator must
affirmatively engage the implant to facilitate handling it
until it is the desired position between two vertebrae (pages
6-8). In the Meyers system there is no affirmative engagement
between the screwdriver and the slot in the screw (or the slot
in the implant, for that matter) and there need not be, because
while there is no precise explanation on this point in the
patent, it would appear that the implant is guided during
insertion at least by the hollow barrel (14) of the plate
member. In addition, the second function of the applicator,
the task of rotating the implant, cannot be accomplished by
engaging the screwdriver with screw 4 and then rotating it. As
we perceive the Meyers invention, this would serve to rotate
only screw 4 with respect to the implant until the implant and
the plate member are locked together, and would not cause the
implant to rotate (column 3, lines 5-8).
It is our opinion that, at the very least, considerable
speculation concerning the operation of the Meyers device is
necessary to support the examiner’s position that claim 1 is
anticipated thereby, and it is axiomatic that a rejection
cannot be based upon speculation. We therefore will not
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Application No. 08/210,229
sustain this rejection of independent claim 1 or, it follows,
of dependent claims 2-4, 16 and 17.
The second rejection under Section 102 is based upon
Kuntz. This rejection fails at the outset because the Kuntz
implant fails to have threads on its outside surface, as is
required by independent claim 1. We therefore will not sustain
this rejection of claims 1-3, 16 and 17.
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Application No. 08/210,229
SUMMARY
None of the rejections are sustained.
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
NEA/jlb
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Application No. 08/210,229
MARK R. WISNER
SROUFE, PAYNE & LUNDEEN, L.L.P.
1700 WEST LOOP SOUTH, SUITE 1230
HOUSTON, TX 77027-3008