Ex Parte Walder et al

Board of Patent Appeals and Interferences

Feb 16, 2011

09956055 (B.P.A.I. Feb. 16, 2011)

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.
09/956,055 09/18/2001 Reto Walder 1292.1155101 9690
33469 7590 02/16/2011
SEAGER, TUFTE & WICKHEM, LLC
1221 NICOLLET AVENUE
SUITE 800
MINNEAPOLIS, MN 55403-2420
EXAMINER
PHILOGENE, PEDRO
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
02/16/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RETO WALDER and RETO BRAUNSCHWEILER
____________________

Appeal 2009-009545
Application 09/956,055
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and KEN B.
BARRETT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-009545
Application 09/956,055
2
STATEMENT OF THE CASE
Reto Walder and Reto Braunschweiler (Appellants) appeal under 35
U.S.C. § 134 from the Examiner’s decision rejecting claims 1-4, 10, 12, 14-
17, 23, 25, and 26 under 35 U.S.C. § 103(a) as being unpatentable over
Keller (US 6,139,549, iss. Oct. 31, 2000), Grob (US 5,562,660, iss. Oct. 8,
1996), and Schmotzer (US 6,290,700 B1, iss. Sep. 18, 2001). We have
jurisdiction under 35 U.S.C. § 6(b).

THE INVENTION
The claims are directed to a pedicle screw for intervertebral support
elements. See Spec. 1, para. 1. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A pedicle screw for intervertebral support elements,
consisting of a shaft and a head which comprises at least two
parts, with the head being formed as a securing means for at
least one support element, with each support element consisting
of a piece of a cable-like band and an elastical cylindrical
support body with an axial lumen which contains the band, with
the band being securable outside end surfaces of the support
body in the head and with the head being formed with a contact
surface via which a pressure stress can be exerted on the
support body in the band direction, namely using the band and
in cooperation with a further pedicle screw,
wherein a part of the head, which is firmly connected to
the shaft at the one end of the latter, contains a base groove
which is oriented transversally to the shaft and into which the
part of the band to be secured may be introduced during the
securing of the support element by means of a translatory
movement in the direction of the shaft and fixed there,
wherein the head comprises a core part and a separate
sleeve-like part that tightly encloses the core part,
Appeal 2009-009545
Application 09/956,055
3
wherein the core part contains the base groove, and
wherein the band is connectable to the sleeve-like part
prior to the sleeve-like part being pushed onto the core part for
introducing the band into the base groove.

SUMMARY OF DECISION
We REVERSE.

OPINION
Each of Appellants’ independent claims 1 and 14 calls for the head of
the pedical screw to have a core part and a separate sleeve-like part,
“wherein the band is connectable to the sleeve-like part prior to the sleeve-
like part being pushed onto the core part for introducing the band into the
base groove [contained in the core part].” This capability is achieved in
Appellants’ invention, in the embodiments illustrated in figures 8 and 9, by
means of the bore 270 in sleeve-like part 27/27’ and, in the embodiment of
figure 9, by additional fixation with a second screw 22 threaded into a bore
with inner thread 272. Spec. 6-7, paras. 26-27; figs. 8, 9. Appellants argue
that none of the references relied on by the Examiner in the rejection
discloses or suggests the claimed capability. App. Br. 6. Accordingly, an
issue raised in this appeal is whether the combined teachings of Keller,
Grob, and Schmotzer render obvious a pedicle screw as called for in claim 1
or a supporting system as called for in claim 14 having this capability.
The Examiner asserts that this limitation is “not given any patentable
weight.” See Ans. 3. The Examiner goes on to explain, correctly, that “[i]f
the prior art structure is capable of performing the intended use, then it
meets the claim.” See Ans. 4. However, the Examiner has not made any
findings on the record or offered any technical reasoning explaining how
Appeal 2009-009545
Application 09/956,055
4
Keller’s pedicle screw arrangement possesses the capability of having the
band connected to the yoke 7 (on which the Examiner reads the claimed
“sleeve-like part”) prior to pushing the yoke 7 onto the head 2, nor has the
Examiner explained how any of the proposed modifications of Keller in
view of Grob and Schmotzer would afford Keller’s arrangement with such
capability.
Further, we find that Keller’s arrangement does not appear to have the
capability in question. As explained by Keller, in order to obtain the
assembled arrangement illustrated in figure 10, “the fixing device consisting
of the yokes 7, 14, the screw 13 and locking nut 22 must be pushed over the
head of the pedicle screw 1 after the rod 5 has assumed its position in the
receiving seat 4.” Col. 4, ll. 31-34. Indeed, it is not apparent how a support
element, such as a rod or a cable-like band, having a diameter suitable for
receipt in receiving seat 4 of Keller’s head 2 would be connectable to the
yoke 7, which fits over the head 2, prior to the yoke 7 being pushed over the
head 2 for introducing the support element into the receiving seat (the base
groove), as called for in claims 1 and 14. It is also not apparent, and the
Examiner has not explained, how the modifications proposed in the rejection
in view of Grob and Schmotzer would provide the Keller arrangement with
such capability.
For the above reasons, we conclude that the combined teachings of
Keller, Grob, and Schmotzer do not render obvious a pedicle screw as called
for in claim 1 or a supporting system as called for in claim 14 having this
capability. Accordingly, we cannot sustain the Examiner’s rejection of
claims 1 and 14, and of dependent claims 2-4, 10, 12, 15-17, 23, 25, and 26.
Moreover, claim 14 includes the support elements, and additionally
calls for “each support element consisting of a piece of a cable-like band and
Appeal 2009-009545
Application 09/956,055
5
an elastical cylindrical support body” (emphasis ours). The Examiner has
not addressed this claim limitation in the rejection, despite Appellants’
assertion that the Examiner’s proposed combination would not render
obvious a support system having this feature. See App. Br. 5-6. For this
additional reason, we cannot sustain the Examiner’s rejection of claim 14
and the claims depending from claim 14.

DECISION
For the above reasons, the Examiner’s decision is reversed.

REVERSED

hh

SEAGER, TUFTE & WICKHEM, LLC
1221 NICOLLET AVENUE
SUITE 800
MINNEAPOLIS, MN 55403-2420