Ex Parte Weng et al

Patent Trial and Appeal Board

Mar 29, 2016

12436010 (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/436,010 0510512009
24267 7590 04/19/2016
CESARI AND MCKENNA, LLP
88 BLACK FALCON AVENUE
BOSTON, MA 02210
FIRST NAMED INVENTOR
Yu-Shi Weng
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
218022-0018U 4526
EXAMINER
WOZNICKI, JACQUELINE
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
04/19/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docket@c-m.com
USPTOMail@c-m.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YU-SHI WENG, YI-HUNG LIN, YA-JEN YU,
SHAN-CHANG CHUEH, I-CHING WU, and
CHRIS I. HUANG
Appeal2013-002562
Application 12/436,010
Technology Center 3700
Before LINDA E. HORNER, JAMES J. MAYBERRY, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
MAYBERRY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Yu-Shi Weng et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner's rejection of claims 1--4, 6, 8-11, and 14--19 under
35 U.S.C. § 102(b) as anticipated by Parsons (US 2005/0277930 Al,
published Dec. 15, 2005). 1 Claims 5, 7, 12, and 13 have been withdrawn.
Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
1 The Examiner's rejection fails to list claim 11. See Final Act. 2. The
rejection, however, includes the subject matter of claim 11. See id. at 4
(discussing Parsons's disclosure of U-shaped surfaces). We treat the
Appeal2013-002562
Application 12/436,010
We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to an interspinous stabilization device. Spec.
1:6. Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. An apparatus comprising:
a supporting member defining an upper surface and a
lower surface, the upper and lower surfaces being of a shape
and dimension to support spinous processes of two adjacent
vertebrae of a vertebral column;
a left side member having a proximal end and a distal
end, the proximal end of the left side member being connected
to a left side of the supporting member,
a right side member having a proximal end and a distal
end, the proximal end of the right side member being connected
to a right side of the supporting member,
wherein the left side member and the right side member
are configured such that the distal end of the left side member
and the distal end of the right side member can be fastened to
each other when the apparatus is implanted between two
adjacent spinous processes.
Appeal Br. 13, Claims App.
ANALYSIS
Independent Claim 1
Independent claim 1 recites, in relevant part, "a supporting member
defining an upper surface and a lower surface, the upper and lower surfaces
being of a shape and dimension to support spinous processes of two adjacent
vertebrae of a vertebral column." Appeal Br. 13, Claims App. The
Examiner's omission as a typographical error and include claim 11 in our
review.
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Appeal2013-002562
Application 12/436,010
Examiner finds that core 34 of Parson's disc replacement component 1 Ob
corresponds to the recited supporting member. Final Act. 2 (depicting an
annotated version of Parson's Figure 6B, which depicts disc replacement
component 1 Ob). The Examiner further finds that endplate members 26, 30
correspond to the recited left and right side members. Id. at 3; Parsons Fig.
6B. The Examiner's annotated version of Parson's Figure 6B is reproduced
below:
The image shows Parson's disc replacement component lOb annotated
to indicate certain limitations of claim 1. Final Act. 2 (Annotated Fig. 6B);
see Parsons Fig. 6B. The Examiner indicates that "the visible surface [of the
supporting member] is the upper surface, the bottom surface not being
visible from this angle." Final Act. 2-3. We understand this statement to
mean that the surface of core 34 (the alleged supporting member) that faces
out of the page is the recited "upper surface" and the surface of core 34 that
faces into the page is the recited "lower surface." With this understanding,
the upper and lower surfaces would be curved, as core 34 has a rounded
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Appeal2013-002562
Application 12/436,010
surface. See, e.g., Parsons Fig. 1 (depicting core 34' s edges as circular in
shape). The Examiner, however, further finds that "the upper surface is flat"
but that the edges of these surfaces form arcs. Answer 8. This statement
suggests that the Examiner finds that the interfaces between core 34 and
endplate members 26, 30 (the alleged left side member and right side
member) are the upper and lower surfaces and that these structures have
curves at their edges. See id. ("[T]he two surface do 'define an arc' and are
'semicircle shaped' since the edges of the upper and lower surface are
curved in an arc (i.e. a semicircle)").
Appellants argue that Parsons's core 34 does not satisfy the
requirements of the recited "support member." Appeal Br. 4--5.
Specifically, Appellants argue that the Examiner has failed to adequately
explain how Parsons's core 34 "defin[es] ... upper and lower surfaces being
of a shape and dimension to support spinous processes of two adjacent
vertebrae of a vertebral column" as required by claim 1. Id. at 5.
The Examiner responds that Parsons's core "is able to fit between two
adjacent spinous processes (see Parsons Figure 9B) and so is capable of
'supporting' them and notes that the shape does not need to 'conform' to the
spinous processes in order to support them as Appellant[ s] suggest[]."
Answer 5. In reply, Appellants explain that Parsons's core 34 is not
positioned between two spinous processes and that Parsons's Figure 9B
depicts core 34 positioned between two vertebral endplates. Reply Br. 2.
A "prior art reference-in order to anticipate under 35 U.S.C. § 102-
must not only disclose all elements of the claim within the four comers of
the document, but must also disclose those elements 'arranged as in the
claim."' Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir.
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Appeal2013-002562
Application 12/436,010
2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed.
Cir. 1983)). The Examiner has failed to adequately explain how Parsons
meets this requirement. As an initial matter, we cannot determine from the
record which aspects of core 34 the Examiner finds correspond to the recited
upper and lower surfaces. The Examiner seems to indicate the
circumferential surfaces of core 34 correspond to the upper and lower
surfaces in the Final Action, but then indicates that the corresponding upper
and lower surfaces are flat in the Answer. Compare Final Act. 2-3 with
Answer 8.
Also, the Examiner fails to adequately support a finding that Parsons's
disc replacement component lOb (which includes core 34 and endplate
members 26, 30) fits between two adjacent spinous processes such that the
upper and lower surfaces are "of a shape and dimension to support spinous
processes of two adjacent vertebrae" or a finding that placing disc
replacement component 1 Ob between two adjacent vertebral endplates serves
to support two adjacent spinous processes. Indeed, from the record before
us, we are unsure which of these two positions, if either, the Examiner takes
in the proposed rejection. That is, the record is unclear as to whether the
Examiner finds that Parsons's disc replacement component 1 Ob is capable of
directly supporting two adjacent spinous processes by being placed between
the spinous processes or if the Examiner finds that, by placing Parsons's disc
replacement component 1 Ob between two vertebral endplates, the structure
indirectly supports the two adjacent spinous processes. Even if the
Examiner had clearly relied upon one or both rationales, neither of these
potential findings is adequately supported by evidence or articulated
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Application 12/436,010
reasoning in the Final Otlice Action. Without such an adequately supported
finding, we cannot sustain the rejection.
Accordingly, we do not sustain the Examiner's rejection of
independent claim 1 under 35 U.S.C. § 102(b) as anticipated by Parsons.
We also do not sustain the rejection of claims 2--4, 6, 8-11, 14, 15, 18, and
19, which depend, directly or indirectly, from claim 1.
Independent Claim 16
Independent claim 16 recites " [a] method of maintaining an
anatomical height of adjacent spinous processes, comprising implanting the
interspinous stabilization device of claim 1 between two adjacent spinous
processes in a subject." Appeal Br. 14, Claims App. In rejecting claim 16,
the Examiner relies on the findings that Parsons discloses the interspinous
stabilization device of claim 1. As discussed above in connection with our
analysis of independent claim 1, we find that the Examiner fails to
adequately support the finding that Parsons anticipates claim 1.
Accordingly, we do not sustain the Examiner's rejection of
independent claim 16 under 35 U.S.C. § 102(b) as anticipated by Parsons.
We also do not sustain the rejection of claim 17, which directly depends
from claim 16.
DECISION
For the above reasons, we reverse the Examiner's rejection of claims
1--4, 6, 8-11, and 14--19.
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Appeal2013-002562
Application 12/436,010
REVERSED
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