Ex Parte Sazy

Board of Patent Appeals and Interferences

Jun 9, 2010

10655571 (B.P.A.I. Jun. 9, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN A. SAZY
____________

Appeal 2009-007953
Application 10/655,571
Technology Center 3700
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Decided: June 9, 2010
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Before WILLIAM F. PATE, III, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
John A. Sazy (Appellant) appeals under 35 U.S.C. § 134 (2006) from
the Examiner’s decision rejecting claims 1, 3, 5, 6, and 10-31. Claims 2, 4,
and 7-9 have been canceled. We have jurisdiction over this appeal under 35
U.S.C. § 6 (2006).

THE INVENTION
Appellant’s invention relates to an intervertebral prosthesis for
implantation between adjacent vertebrae of the human spinal column. Spec.
2, ll. 22-23 and figs. 1 and 4.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. An intervertebral prosthesis for implantation between
adjacent vertebrae of the human spine, comprising:

a unitary body that is banana-shaped as viewed from
above, the unitary body having an exterior surface and an
interior surface, the interior surface defining an interior recess;

the unitary body defining openings that are evenly spaced
about a circumference of the unitary body; and

wherein the banana shape of the unitary body includes a
front arc that has a first radius of curvature and a back arc that
includes a second radius of curvature.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Dove US 4,904,261 Feb. 27, 1990
Harms US 4,820,305 Apr. 11, 1989
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MacMillan US 5,062,850 Nov. 5, 1991
McKay US 5,702,449 Dec. 30, 1997
Schafer US 6,143,032 Nov. 7, 2000
Preissman US 6,231,615 B1 May 15, 2001
Michelson US 6,302,914 B1 Oct. 16, 2001

The following rejections are before us for review:
The Examiner rejected claims 1, 3, 5, 6, 13, 14, 19, and 28 under 35
U.S.C. § 102(e) as anticipated by Schafer.
The Examiner rejected claim 30 under 35 U.S.C. § 102(e) as
anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as
unpatentable, over Schafer.
The Examiner rejected claims 10-12 under 35 U.S.C. § 103(a) as
unpatentable over Schafer and Harms.
The Examiner rejected claims 15-18 and 20 under 35 U.S.C. § 103(a)
as unpatentable over Schafer and Dove.
The Examiner rejected claims 24, 25, and 31 under 35 U.S.C. § 103(a)
as unpatentable over Schafer and Michelson.
The Examiner rejected claim 21 under 35 U.S.C. § 103(a) as
unpatentable over Schafer, Dove and MacMillan.
The Examiner rejected claims 22 and 23 under 35 U.S.C. § 103(a) as
unpatentable over Schafer and Preissman.
The Examiner rejected claims 26, 27, and 29 under 35 U.S.C. § 103(a)
as unpatentable over Schafer and McKay.

OPINION
We shall not sustain the Examiner’s rejection of claims 1, 3, 5, 6, and
10-31 under 35 U.S.C. §§ 102(b) and 103(a). For the reasons expressed
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below, independent claim 1, and dependent claims 3, 5, 6, and 10-31, are
inconsistent with Appellant’s Specification and Drawings. Therefore, the
prior art rejections must fall because they necessarily are based on
speculative assumptions as to the meaning of the claims. See In re Steele,
305 F.2d 859, 862-63 (CCPA 1962). It should be understood, however, that
our decision in this regard is based solely on the indefiniteness of the
claimed subject matter, and does not reflect on the adequacy of the prior art
evidence applied in support of the rejections.

NEW GROUNDS OF REJECTION
We make the following new grounds of rejection pursuant to
37 C.F.R. § 41.50(b)(2007).
Claims 1, 3, 5, 6, and 10-31 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
The definiteness of claim language must be analyzed, not in a
vacuum, but always in light of the teachings of the prior art and the
particular application disclosure as it would be interpreted by one possessing
the ordinary level of skill in the pertinent art. In re Moore, 439 F.2d 1232,
1235 (CCPA 1971). See also In re Cohn, 438 F.2d 989, 993 (CCPA 1971)
(sustaining rejection of claims under 35 U.S.C. § 112, second paragraph, as
being indefinite, where the claims were inherently inconsistent with the
description, definitions, and examples appearing in applicant’s
specification).
Independent claim 1 requires a banana-shaped unitary body as
depicted in Figure 4 of Appellant’s Drawings. See also Spec. 4, l. 3.
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Figure 4 of Appellant’s Drawings is reproduced below:

Figure 4 of Appellant’s Drawings depicts the length “l”, the width
“w”, the front arc radius of curvature “R1”, and the back arc radius of
curvature “R2” of a spinal implant.
Appellant “defines ‘banana’ as follows: ‘the elongated often curved
and usu. tapering fruit of the banana plant.” App. Br. 8. 1 As an example,
of a banana shape, we provide the following Figure:2

The Figure depicts a banana.

1 Like Appellant, we find that an ordinary and customary meaning of
the term “banana” is “an elongated usu. tapering tropical fruit.” MERRIAM
WEBSTER’S COLLEGIATE DICTIONARY (10th Ed. 1997).
2 THE MACMILLAN VISUAL DESK REFERENCE, Tropical fruits 1547
(1993).
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After comparing the shape of Appellant’s claimed “banana-shaped”
unitary body (as per Figure 4 of Appellant’s Drawings) with the definition
provided by Appellant for a banana shape and the Figure, we do not find that
Appellant’s illustrated spinal implant is banana-shaped, as required by
independent claim 1. Although the shape shown in Figure 4 of Appellant’s
Drawings is elongated and curved, it is not tapering.
Hence, claim 1 “do[es] not define the invention (i.e., the subject
matter which the applicant regards as his invention) with a reasonable degree
of particularity.” In re Hammack, 427 F.2d 1378, 1382 (CCPA 1970). In
other words, we conclude that banana-shaped as used in the claims, when
construed in view of Appellant’s Figure 4, lacks sufficient precision so that
one endeavoring to practice the invention could not determine the metes and
bounds thereof.
In light of the above, we conclude that claim 1, which includes the
banana-shaped limitation, and claims 3, 5, 6, and 10-31 which depend from
claim 1, are inherently inconsistent with the description that appears in
Appellant’s Specification and Drawings.

SUMMARY
The decision of the Examiner to reject claims 1, 3, 5, 6, and 10-31 is
reversed.
We enter new grounds of rejection of claims 1, 3, 5, 6, and 10-31
under 35 U.S.C. § 112, second paragraph.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b)(2007). 37 C.F.R. § 41.50(b) provides "[a] new ground of
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rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the proceeding will be
remanded to the examiner. . . .
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .

REVERSED; 37 C.F.R. § 41.50(b)

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