Ex Parte Talwar

Patent Trial and Appeal Board

Dec 28, 2016

13592178 (P.T.A.B. Dec. 28, 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.
11084.101 3479
EXAMINER
SIPP, AMY R.
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
13/592,178 08/22/2012
12/29/201641689 7590
BRADLEY P. HEISLER
HEISLER & ASSOCIATES
3017 DOUGLAS BOULEVARD, SUITE 300
ROSEVILLE, CA 95661
Vikram Talwar
12/29/2016 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 VIKRAM TALWAR
Appeal 2015-003263
Application 13/592,178
Technology Center 3700
Before EDWARD A. BROWN, JAMES P. CALVE, and
SEAN P. O’HANLON, Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35U.S.C. § 134 from the final rejection of
claims 1—6, 9, 10, 21, and 22. Appeal Br. 2, 4. Claims 7, 8, and 11—20 are
cancelled. Id. at27 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Although the Answer lists rejections of claims 8, 11, 13, and 14 (Ans. 2),
those claims were cancelled by an amendment filed with the Appeal Brief.
See id. The Examiner entered that amendment. See Advisory Action,
mailed Sept. 3, 2014. Therefore, the rejections of those claims in the Final
Office Action are not before us for review.
Appeal 2015-003263
Application 13/592,178
CLAIMED SUBJECT MATTER
Claims 1 and 10 are independent. Claim 1 is reproduced below.
1. A combination interbody implant and vertebral
screw guide, comprising in combination:
an implant having an anterior surface and a cephalid
surface opposite a caudal surface;
said implant having at least one bore extending into said
cephalid surface thereof, along a bore centerline extending from
said cephalid surface toward said caudal surface and away from
said anterior surface;
a guide removably attachable to said implant;
said guide having a guide bore extending along a portion
of said bore centerline outside of said implant; and
wherein the combination further includes a hybrid screw
with a proximal end opposite a distal end, said proximal end
having a head with a torque applying interface thereon and said
distal end having male threads thereon, said at least one bore in
said cephalid surface of said implant having female threads
therein, said male threads engaging said female threads, said
hybrid screw having a bone engagement structure on a proximal
side of said male threads and spaced from said male threads for
engagement of a vertebra adjacent said cephalid surface of said
implant.
REJECTIONS
Claims 1—4, 10, 21, and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kuslich (US 6,056,749, iss. May 2, 2000) and Trail (US
2004/0210227 Al, pub. Oct. 21, 2004).
Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Kuslich, Trail, and Zdeblick (US 2004/0153089 Al, pub. Aug. 5,
2004).
Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Kuslich, Trail, and Vaughan (US 2009/0118764 Al, pub. May 7, 2009).
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Appeal 2015-003263
Application 13/592,178
ANALYSIS
Claims 1—4, 10, 21, and 22 unpatentable over Kuslich and Trail
The Examiner found that Kuslich teaches an implant and guide as
recited in claims 1 and 10, with the implant having bore 22 extending into a
cephalid surface, where the bore has threads. Final Act. 5—6. The Examiner
based these findings on Figure 14 of Kuslich, which is reproduced below,
and Kuslich’s disclosure that a threaded hole is drilled in the bone on either
side of the implant in situ. Ans. 2—4. The Examiner relied on Trail to teach
a hydric screw, as claimed. Final Act. 7.
Figure 14 shows vertebrae held in alignment via a disk cage (implant)
20 and screw 100. Kuslich, 2:34—37. The Examiner reasoned that hole 92 is
drilled in vertebrae 14, 16 and may be threaded or unthreaded, and therefore,
the hole in implant 20 must be threaded because the holes 92 in the bone on
either side of the implant 20 were threaded and Figure 14 shows the hole in
the implant in the same way as the hole in vertebrae 14, 16. Ans. 3.
16
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Appeal 2015-003263
Application 13/592,178
Appellant argues that Kuslich does not disclose an implant having a
bore with threads therein as claimed, and does not disclose the bores having
any threads therein. Appeal Br. 5. Appellant also argues that Figure 14 of
Kuslich does not disclose threads on the bore 22 and a proper interpretation
of that drawing shows a gap in a portion of the bore sized to a depth of the
threads on screw 100 indicating guide hole 22 is not threaded. Id. at 5—6.
The Examiner has not established by a preponderance of evidence that
Kuslich teaches an implant with at least one bore in a cephalid surface where
the bore has threads on it that engage threads on hybrid screws, as recited in
claims 1 and 10. Drawings in utility patents can be cited against claims of a
utility patent application even though the features shown in the drawings are
unintended or unexplained in the specification of the prior art patent (In re
Aslanian, 590 F.2d 911, 914 (CCPA 1979)). However, a preponderance of
evidence does not support the Examiner’s findings that Kuslich teaches a
threaded bore in disk cage 20 (the implant) or that Figure 14 shows threaded
bores in disk cage 20. Figure 14 appears to show screw 100 superimposed
over implant 20 in the partial cut-away view of Figure 14. While some
portions of the cross-section of disk cage 20 appear to be shown extending
into the threads of screw 100, other portions are spaced apart to form a gap
between the bores 22 of disk cage 20 and screw 100. Kuslich describes that
hole 92 in vertebrae 14, 16 may be threaded or unthreaded, but Kuslich does
not describe Figure 14 as depicting a threaded bore. Some threads of screw
100 appear to be embedded in vertebrae 14, 16, but other threads do not
touch the inner surface of the dashed lines depicting hole 92 in the vertebrae
in Figure 14. Thus, it cannot be said that Figure 14 necessarily discloses
threaded bores in disk cage 20.
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Appeal 2015-003263
Application 13/592,178
Kuslich discloses bores as “guide holes” 22 that are smooth and non-
threaded just like the bore in guide tube 96. Kuslich, Figs. 1, 2, 7, 13. The
Examiner has not explained why a guide hole or bore would be threaded in
situ in Kuslich even if the holes drilled in vertebrae using such guide bores
are themselves threaded. The Examiner’s finding that the threaded holes in
the vertebrae necessarily require threads to be formed in guide bores 22 of
disk cage 20 is not supported by a preponderance of evidence or technical or
scientific reasoning. Kuslich discloses upper and lower surfaces 28, 30 of
disk cage 20 (implant) with threads 32, as shown in Figures 1, 2, and 14
above. Kuslich, 2:48—63. Kuslich discloses that threads 32 cause surfaces
28, 30 to grip better to bone. Id. at 2:32—58. Upper and lower surfaces 28,
30 are disclosed as including threads 32, but guide bores 22 are not.
Thus, we do not sustain the rejection of claims 1, 2—4, 21, and 22.
Claims 5, 6, and 9 unpatentable over Kuslich, Trail, and Zdeblick/Vaughan
The Examiner determined claims 5, 6, and 9 to be unpatentable over
Kuslich, Trail, and Zdeblick or Vaughan, relying on Zdeblick or Vaughan to
teach features of claims 5, 6, and 9. Final Act. 9-10, 12—14. Appellant
argues the patentability of claims 5, 6, and 9 based on their dependence from
claim 1. Appeal Br. 7. Because Zdeblick and Vaughan do not remedy the
deficiencies of Kuslich discussed above as to claim 1, we do not sustain the
rejections of claims 5, 6, and 9.
DECISION
We reverse the rejections of claims 1—6, 9, 10, 21, and 22.
REVERSED
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