Ex Parte Ray et al

Board of Patent Appeals and Interferences

Aug 19, 2002

09286047 (B.P.A.I. Aug. 19, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte CHARLES D. RAY and
ROBERT L. ASSELL
___________
Appeal No. 2001-2516
Application No. 09/286,047
__________
ON BRIEF
__________
Before ABRAMS, CRAWFORD and BAHR, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner’s final rejection of claims 1 to 20,
which are all of the claims pending in this application.
The appellant’s invention relates to a prosthetic spinal disc nucleus for
implantation into a nucleus cavity of a spinal disc and a method of making same.
(Specification, page 1). A copy of the claims under appeal is set forth in the appendix
to the appellants’ brief.
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Application No. 09/286,047
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The prior art
The prior art references of record relied upon by the examiner in rejecting the
appealed claim are:
Bao et al. (Bao) 5,534,028 Jul. 9, 1996
Ray et al. (Ray) 5,824,093 Oct. 20, 1998
The rejections
Claims 1 to 3, 5 to 11 and 20 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Ray.
Claims 4, 12 to 18 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Ray.
Claim 19 stand rejected under 35 U.S.C. § 103 as being unpatentable over ray in
view of Bao.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellants regarding the above-noted rejections, we make reference to the answer
(Paper No. 12, mailed February 26, 2001) and the supplemental answer (Paper No. ,
mailed ) for the examiner’s complete reasoning in support of the rejections, and to the
brief (Paper No. 11, filed December 8, 2000) and reply brief (Paper No. 13, filed April
23, 2001) for the appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants’ specification and claims, to the applied prior art references, and to the
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Application No. 09/286,047
Page 3
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determination which follow.
We turn first to the examiner’s rejection of claims 1 to 3, 5 to 11 and 20 under
35 U.S.C. § 102(b). We initially note that to support a rejection of a claim under
35 U.S.C. § 102(b), it must be shown that each element of the claim is found, either
expressly described or under principles of inherency, in a single prior art reference.
See Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir.
1983), cert. denied, 465 U.S. 1026 (1984).
The examiner states:
Ray et al. teaches a prosthetic spinal disc nucleus
comprising a hydrogel core 12 surrounded by a flexible yet
inelastic constraining jacket 14 which allows the core to
hydrate to a predetermined generally fixed volume. The
prosthetic nucleus is designed such that pressure on the
nucleus cavity will deform the presthetic nucleus preventing
its volume from increasing to one larger than that of the
cavity. The central portion of the presthsis of Ray et al. is
generally linear and the height of both the central portion
and the leading edge are relatively uniform. [Final rejection,
p. 2]
The appellants argue that Ray does not disclose:
. . . the hydrogel core being configured to have a dehydrated
shape in the dehydrated state . . . generally different from
the hydrated shape of the hydrated state. . .
as is recited in claim 1. Appellants’ argument has two components. Firstly, appellants
argue that the hydrogel core in Ray does not have different shapes in the hydrated and
dehydrated states. Secondly, appellants argue that Ray does not teach that the
hydrogel core itself has different shapes in the dehydrated and hydrated states, and that
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Application No. 09/286,047
Page 4
if any shape change occurs, it occurs because of the action of the jacket on the hydrogel
core 22.
We agree with the examiner that the hydrogel core 22 in Ray does have different
shapes in the hydrated and dehydrated conditions. Ray discloses (col. 9, lines to 17 to
20) that once hydrated the oxal spinal disc nucleus will be more circular. In our view this
clearly teaches that the disc nucleus has a different shape in the hydrated state than in
the dehydrated state.
In regard to the second component of appellants’ argument, the appellants’
specification discloses that the desired dehydrated and hydrated shape is different from
the dehydrated shape (specification, p. 14). As such, we interpret the term “configure”
recited in claim 1 to mean that the core is formed or manufactured to have a shape in
the hydrated state whcih is different.
Ray teaches that the jacket forces the hydrogel core to become more circular (col.
9, lines 11 to 13).
We turn next to the examiner’s rejection of claims 4, 12 and 13 to 18 under 35
U.S.C. § 103 as being unpatentable over Ray. We initially note that the test for
obviousness is what the combined teachings of the references would have suggested to
one of ordinary skill in the art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089,
1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981). Moreover, in evaluating such references it is proper to take into account not only
the specific teachings of the references but also the inferences which one skilled in the
art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826,
159 USPQ 342, 344 (CCPA 1968).
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In regard to claim 4, the examiner is of the opinion that the specific shapes recited
in this claim are an obvious matter of design in the art depending on the possible use.
We will not sustain the rejection because Ray does not disclose or suggest a hydrogel
core which is configured to have a shape in a hydrated shape which is different from the
dehydrated shape as is recited in claim 1 from which claim 4 depends.
In regard to claim 12, the examiner states that the method steps of claim 12 are
inherent in the apparatus of Ray as presented above in the 35 U.S.C. § 102 rejection.
The appellants argue that step of reshaping the hydrogel core to have a second
shape in the dehydrated shape is not taught or suggested by Ray.
The examiner argues that the claims do not contain the language about
“reshaping” the dehydrated shape. This is not true. Claim 12 recites:
. . . reshaping the hydrogel core to have a second shape in
the dehydrated state. . .
In addition, Ray does not disclose or suggest a core which is configured. We
agree with the appellants that Ray does not disclose or suggest this reshaping step. As
such, we will not sustain this rejection as it is directed to claim 12 or claims 13 to 18
dependent thereon.
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We turn next to claim 19 is dependent upon claim 12 we have reviewed the
disclosure of Bao and determined that Bao dos not cure the deficiencies noted above for
Ray. As such we will not sustain this rejection.
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
MURRIEL E. CRAWFORD ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )

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