Ex Parte Williams et al

Board of Patent Appeals and Interferences

Jan 19, 2010

10402123 (B.P.A.I. Jan. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte LYTTON WILLIAMS and SUI-KAY WONG
____________________

Appeal 2009-006582
Application 10/402,123
Technology Center 3700
____________________

Decided: January 19, 2010
____________________

Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Lytton Williams et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 50-55, 61-71 and 103-106. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

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SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Appellants’ claimed invention is directed to an intervertebral disc
replacement device that can be implanted in a spine (Spec. 2: ¶¶ [0006] and
[0007]).
Claims 50, 55 and 62, reproduced below, are representative of the
subject matter on appeal.
50. An intervertebral implant system
comprising:
a first anchor plate comprising a bone-
engaging surface configured to face toward and be
secured to a first vertebral body adjacent to an
intervertebral space;
a second anchor plate configured to be
secured to a second vertebral body adjacent to the
intervertebral space, wherein the second anchor
plate is formed separately from the first anchor
plate; and
a first intermediate component rigidly
attachable to the first anchor plate independently
of any conical pres-fitted interface, the first
intermediate component comprising a concave
body having a concave recess shaped to articulate
with a convex surface to permit postoperative
relative motion between the first and second
anchor plates; and
a coupling device actuatable between an
attached position, in which the coupling device is
positioned to block removal of the concave body
from the first anchor plate, and a detached
position, in which the coupling device is
positioned to avoid blocking removal of the
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concave body from the first anchor plate, without
requiring detachment of the first anchor plate from
the first vertebral body and without requiring
access to the bone-engaging surface.

55. The intervertebral implant system of claim
50, wherein the first intermediate component
further comprises a convex body having the
convex surface, wherein the convex body is
configured to be at least one of attached to and
detached from the second anchor plate without
requiring detachment of the second anchor plate
from the second vertebral body.

62. An intervertebral implant system
comprising:
a first anchor plate comprising a bone-
engaging surface configured to face toward and be
secured to a first vertebral body adjacent to an
intervertebral space;
a second anchor plate configured to be
secured to a second vertebral body adjacent to the
intervertebral space;
a first intermediate component having a
substantially rigid structure, wherein the first
intermediate component is rigidly attachable to the
anchor plates to perform a first function; and
a second intermediate component having a
substantially rigid structure, wherein the second
intermediate component is rigidly attachable to the
anchor plates to perform a second function;
wherein the first and second intermediate
components are interchangeably attachable to the
anchor plates;
wherein the first and second functions are
different;
wherein the bone-engaging surface is shaped
to abut the first vertebral body without requiring
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removal of a substantial amount of bone tissue
from the first vertebral body.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Boyd US 5,425,773 Jun. 20, 1995
Eisermann US 2003/0204261 A1 Oct. 30, 2003
Coates US 6,899,735 B2 May 31, 2005

The following rejections by the Examiner are before us for review:
1. Claims 62-71, 105 and 106 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
2. Claims 50-55, 61-66, 69-71 and 103-106 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Boyd.
3. Claims 55, 62-67, 69-71, 105 and 106 are rejected under 35 U.S.C. §
102(e) as being anticipated by Eisermann.
4. Claims 55, 62, 63, 65-71 and 105 are rejected under 35 U.S.C. §
102(e) as being anticipated by Coates.

ISSUES
The issues before us are: (1) whether the Examiner erred in finding
that the limitation “without requiring removal of a substantial amount of
bone tissue from the first vertebral body” as called for in claim 62 is not
supported by Appellant’s Specification or Drawings as required by the
written description requirement of 35 U.S.C. § 112, first paragraph (Reply
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Br. 5, App. Br. 5); (2) whether the Examiner erred in finding that Boyd
describes a coupling device that is actuatable between an attached position
and a detached position without requiring access to the bone engaging
surface as called for in independent claim 50 (Reply Br. 8, App. Br. 7); (3)
whether the Examiner erred in finding that Boyd describes an intermediate
component rigidly attachable to the anchor plates as called for in
independent claim 62 (Reply Br. 9, App. Br. 8); (4) whether the Examiner
erred in finding that Eisermann and Coates are available as prior art against
claim 55 (Reply Br. 12, 15; App. Br. 8, 11); (5) whether the Examiner erred
in finding that Eisermann describes a bone-engaging surface shaped to abut
the first vertebral body without requiring removal of a substantial amount of
bone tissue from the first vertebral body as called for in independent claim
62 (Reply Br. 12, App. Br. 11); and (6) whether the Examiner erred in
finding that Coates describes a second intermediate component rigidly
attachable to the anchor plates as called for in independent claim 62 (Reply
Br. 15, App. Br. 12).

ANALYSIS
Rejection of claims 62-71, 105 and 106 under 35 U.S.C. § 112, first
paragraph
Claim 62 calls for, inter alia, “wherein the bone-engaging surface is
shaped to abut the first vertebral body without requiring removal of a
substantial amount of bone tissue from the first vertebral body.”
Appellants contend that the limitation “without requiring removal of a
substantial amount of bone tissue from the first vertebral body” as called for
in claim 62 is fully supported by Appellants’ disclosure, specifically in
Provisional Application 60/368,783, which is incorporated by reference
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(Reply Br. 5, App. Br. 6). Appellants further contend that “[n]o removal of
bone tissue or ‘tissue of the endplates of the vertebral bones’ is disclosed.”
(Reply Br. 7). In support thereof, Appellants reference page 13 of
Provisional Application 60/368,783, which describes that (1) “[t]he
anchoring elements 18 are preferably introduced into vertebrae V1 and V2
without first creating one of [sic] more holes in the vertebrae for the
anchoring elements 18” and (2) that “[c]are should be taken not to violate
the endplates E1 and E2.” (App. Br. 6). In further support thereof
Appellants contend that “one skilled in the art would also understand that in
this instance, ‘substantial’ does not have any special meaning and therefore
carries its common meaning as ‘of ample or considerable amount quantity,
size etc.’” (Reply Br. 7).
The Examiner found that the limitation “without . . . body” is not
supported by Appellants’ Specification or Drawings (Ans. 4). The Examiner
further found in regard to Appellants’ invention, that it is “difficult to
conclude that such a method does not require removal of bone tissue.” (Ans.
9). The Examiner still further found that Appellants’ Specification does not
define how much a “substantial amount” is (Ans. 9).
Appellants’ Application on appeal was filed on March 28, 2003, and
incorporated by reference in its entirety Provisional Application 60/368,783,
filed on March 30, 20021.
Appellants’ Specification describes that “[d]ebris, such as osteophytes
or residual disc material may be removed from the disc space.” Spec. 20, ¶

1 See page 1, paragraph [0001] of Appellants’ Specification.
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[0084].2 “With the disc space cleared of debris, the components of the
intervertebral device 10 may be inserted in the patient’s spine.” (Spec. 20, ¶
[0085]) (emphasis added). Further, Provisional Application 60/368,783,
page 13 states that the integrity of the endplates E1 and E2 is a concern.
We find that Appellants’ proffered definition of “substantial” is
consistent with its ordinary meaning3.
A person having ordinary skill in the art would understand the phrase
“substantial amount,” as called for in claim 62 and in light of the ordinary
meanings of the words used in the phrase, to refer to a considerable amount.
A person having ordinary skill in the art would understand that the
removal of debris and residual material, while also maintaining the integrity
of the endplates, is not the removal of a considerable amount, that is, a
substantial amount of bone tissue from the first vertebral body.
Therefore, we find that the limitation “without requiring removal of a
substantial amount of bone tissue from the first vertebral body” as called for
in claim 62 is fully supported by Appellants’ original disclosure. See Enzo
Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 969 (Fed. Cir. 2002) (“[T]he
written description requirement is satisfied by the patentee’s disclosure of
‘such descriptive means as words, structures, figures, diagrams, formulas,
etc., that fully set forth the claimed invention.’”).
Accordingly, we conclude that Appellants have demonstrated that the
Examiner erred in rejecting claim 62 as failing to comply with the written

2 Citations to the “Spec.” are to the Substitute Specification, filed on May
16, 2005.
3 The ordinary meaning of the word “substantial” includes “considerable in
quantity, significantly great.” MERRIAM-WEBSTER’S COLLEGIATE
DICTIONARY (10th ed. 1996).

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description requirement of 35 U.S.C. § 112, first paragraph. Appellants
have likewise demonstrated error in the Examiner’s rejection of claims 63-
71, 105 and 106, which depend from claim 62.

Rejection of claims 50-55, 61-66, 69-71 and 103-106 under 35 U.S.C. §
102(b) as being anticipated by Boyd
Regarding independent claim 50: Claim 50 calls for, inter alia, a
coupling device actuatable between an attached position and a detached
position without requiring access to the bone-engaging surface.
Appellants contend that Boyd does not describe a coupling device
actuatable between an attached position and a detached position without
requiring access to the bone-engaging surface as called for in claim 50, as
Boyd’s screw 78 is only accessible to be actuated from the space directly
adjacent to the bone-engaging surface 76 (App. Br. 7).
The Examiner contends that prior to implantation, Boyd’s device is
actuatable between an attached position and a detached position (Ans. 9).
Boyd describes, inter alia, an insert cup 170 having an engaging
surface 176, and a screw (coupling device) 78 counter-sunk in the engaging
surface 176 of the insert cup 170 (col. 8, l. 54-col. 9, l. 20; and figs. 18-20).
We find that in Boyd, regardless of whether the device is implanted,
the only access to the screw head is by way of the engaging surface 176.
Therefore, Boyd does not describe a coupling device actuatable
between an attached position and a detached position without requiring
access to the bone-engaging surface as called for in claim 50. Appellants
have likewise demonstrated error in the Examiner’s rejection of claims 51-
55, 61, 103 and 104, which depend from claim 50.
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Regarding independent claim 62: Claim 62 calls for, inter alia, “a
first intermediate component . . . rigidly attachable to the anchor plates to
perform a first function; and a second intermediate component . . . rigidly
attachable to the anchor plates to perform a second function; wherein the
first and second intermediate components are interchangeably attachable to
the anchor plates.”
Appellants contend: (1) that Boyd does not describe a first and second
intermediate component as called for in claim 62 (App. Br. 8); (2) that claim
62 is intended to and “explicitly requires the first intermediate [component]
to be attachable simultaneously to the plates (plural) to perform a function”
(Reply Br. 9); (3) that “[i]f the intent had been that the intermediate
component could be attachable to either plate to perform a first function, the
claim would have been written that way” (Reply Br. 9); and (4) that neither
of Boyd’s components 24, 44 are capable of simultaneously attaching to
both of the anchor plates (Reply Br. 9).
The Examiner contends: (1) that claim 62 does not require that the
intermediate components be attachable to both of the anchor plates at the
same time (Ans. 10-11); and (2) that Boyd describes a first intermediate
component 24 and a second intermediate component 44, wherein the
intermediate components 24, 44 are interchangeably attachable to each one
of the anchor plates (Ans. 10-11).
Appellants have stated that claim 62 is intended to and “explicitly
requires the first intermediate [component] to be attachable simultaneously
to the plates (plural) to perform a function.” (Reply Br. 9).
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Claim 62 calls for a first intermediate component performing a first
function when the first component is attachable to the anchor plates, that is,
plural anchor plates and not an anchor plate.
In view of the anchor plates being called for in claim 62 in the plural,
a person having ordinary skill in the art would understand the language
“attachable to the anchor plates” as called for in claim 62 as requiring the
first intermediate component to be capable of being attached simultaneously
to both of the anchor plates to perform the first function, and the second
intermediate component to be interchangeable with the first intermediate
component and likewise capable of being attached simultaneously to both of
the anchor plates to perform the second function. We will also interpret
claim 62 in that manner. See Toro Co. v. White Consolidated Indus., Inc.,
199 F.3d 1295, 1299 (Fed. Cir. 1999) (In judicial “claim construction” the
court must achieve the same understanding of the patent, as a document
whose meaning and scope have legal consequences, as would a person
experienced in the technology of the invention. Such a person would not
rely solely on a dictionary of general linguistic usage, but would understand
the claims in light of the specification and the prior art, guided by the
prosecution history and experience in the technologic field.). See also In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (holding
that when construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art.).
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Boyd describes an upper assembly (anchor plate) 20, a lower
assembly (anchor plate) 22, a first member (first component) 24 and a
second member (second component) 44 (col. 4, l. 57-68; col. 5, ll. 12-28).
Boyd shows in Figure 3 that the first and second members 24, 44 can only
be attached to one of the assemblies at a time.
Therefore, Boyd does not describe a first intermediate component
attachable simultaneously to both of the anchor plates, and a second
intermediate component attachable simultaneously to both of the anchor
plates as called for in claim 62. Appellants have likewise demonstrated error
in the Examiner’s rejection of claims 63-66, 69-71, 105 and 106, which
depend from claim 62.

Rejection of claim 55 under 35 U.S.C. § 102(e) as being anticipated by
Eisermann or Coates
Regarding claim 55: Claim 55 calls for, inter alia, that both the
concave body and the convex body are attachable and detachable.
Appellants contend that: (1) the present invention claims priority to
Provisional Application 60/368,783, filed March 30, 2002 (Reply Br. 4, 12,
15; App. Br. 8, 11); (2) Provisional Application 60/368,783 describes and
shows in the last two figures the invention called for in claim 55, that is, that
both the concave body and the convex body are attachable and detachable
(App. Br. 8, 11); (3) the invention called for in claim 55 is entitled to the
filing date of the Provisional Application 60/368,783, that is, March 30,
2002 (Reply Br. 4, 12; App. Br. 8); and (4) Eisermann and Coates are not
available as prior art against claim 55 (Reply Br. 12, 15).
The Examiner contends that: (1) Provisional Application 60/368,783
does not describe in one embodiment that both the concave and convex
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inserts are removable (Ans. 12, 14); (2) the invention called for in claim 55
is only entitled to a filing date of March 28, 2003; and (3) both Eisermann
and Coates are available as prior art against the invention called for in claim
55 (Ans. 12, 15).
Appellants’ Application on appeal was filed on March 28, 2003.
Appellants’ Specification claims the benefit of the earlier-filed Provisional
Application 60/368,783, filed March 30, 2002.
Eisermann’s invention, filed on October 30, 2003, contains a claim for
the benefit of an earlier-filed provisional application filed April 25, 2002.
Coates’ invention was filed on October 2, 2002.
A non-provisional application shall have the same effect as though it
was filed on the date of the provisional application to which benefit has been
claimed. 35 U.S.C. § 119(e)(1).
We find that Provisional Application 60/368,783, in particular, the last
two figures, describes and shows, in one embodiment, that both the concave
body and the convex body (1) are attached to the anchor plates by being slid
into ‘T’ slots and (2) are secured to the anchor plates by two screws. In
particular, the next to last figure of the provisional application contains the
wording “[m]ovement subassembly slide into ‘T’ slots in this direction &
then secure with 2 screws.” The last figure of the provisional application
denotes the convex body as an “upper movement convex half” and part of
the concave body as a “lower movement half.”
Since the concave body and the convex body are held in place by
screws, we find that both the concave body and the convex body are
attachable and detachable. Thus, we find that Provisional Application
60/368,783 describes the invention called for in claim 55.
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Therefore, the invention called for in claim 55 is entitled to the benefit
of the filing date of March 30, 2002, the filing date of the provisional
application. The claim 55 filing date of March 30, 2002 predates both
Eisermann’s priority date of April 25, 2002 and Coates’ filing date of
October 2, 2002. Accordingly, both Eisermann and Coates are not available
as prior art against claim 55.
Therefore, we conclude that Appellants have demonstrated that the
Examiner erred in rejecting claim 55 as being anticipated by Eisermann and
as being anticipated by Coates.

Rejection of claims 62-67, 69-71, 105 and 106 under 35 U.S.C. § 102(e) as
being anticipated by Eisermann
Claim 62 calls for, inter alia, that the bone-engaging surface is shaped
to abut the first vertebral body without requiring removal of a substantial
amount of bone tissue from the first vertebral body.
Appellants contend: (1) that Eisermann does not describe shaping the
bone-engaging surface without requiring removal of a substantial amount of
bone tissue from the first vertebral body as called for in claim 62 (Reply Br.
12); (2) that Eisermann’s system requires removal of a substantial amount of
bone tissue from the first vertebral body, as is evidenced by Eisermann’s
elongate recesses 300 (Reply Br. 12; App. Br. 11); and (3) that since
Eisermann describes in paragraph [0058] that recesses 300 are formed by
reaming, drilling and chiseling; substantial amounts of bone tissue are being
removed from the vertebral bodies (Reply Br. 13).
The Examiner found that:
It is true, Eisermann shows removal of some bone
tissue from the endplates in fig. 14 in order to
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provide a flush fit with the implant anchor plates.
This removal shown in fig. 14 however is not
considered by the examiner to be a “substantial
amount”, as only a small portion of the vertebral
endplate surface is removed compared to the entire
endplate (Vu or Vl [sic, VL]).
(Ans. 13).
Eisermann describes that to accommodate the insertion of the disc
prosthesis 20 within the intervertebral space S, preparation of the upper and
lower vertebrae VU, VL is required. (p. 6, col. 1, ¶ [0057]). Eisermann’s
intervertebral space S is enlarged by forming elongate openings or recesses
300. (p. 6, col. 1, ¶ [0057]). Eisermann’s elongate recesses 300 are formed
by reaming, while other methods of forming the recesses 300 are also
contemplated, e.g., drilling and chiseling. (p. 6, col. 1, ¶ [0058]).
A person having ordinary skill in the art would understand that the
limitation “without requiring removal of a substantial amount of bone tissue
from the first vertebral body” called for in claim 62 is not broad enough to
cover reaming, chiseling and drilling.
Therefore, we conclude that Appellants have demonstrated that the
Examiner erred in rejecting claim 62 as being anticipated by Eisermann.
Appellants have likewise demonstrated error in the Examiner’s rejection of
claims 63-67, 69-71, 105 and 106, which depend from claim 62.

Rejection of claims 62, 63, 65-71 and 105 under 35 U.S.C. § 102(e) as being
anticipated by Coates
Claim 62 calls for, inter alia, first and second intermediate
components performing different functions, and being rigidly and
interchangeably attachable to the anchor plates.
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Appellants contend that Coates does not describe a second
intermediate component rigidly attachable to the anchor plates as called for
in independent claim 62 (Reply Br. 15, App. Br. 12). Appellants further
contend that Coates’ additional inserts 70a do not perform a second function
as they are nothing more than a duplicate of the first insert 70a (Reply Br.
16).
The Examiner contends that in Coates, the different sized or shaped
additional inserts 70a or fusion inserts 70b are a second intermediate
component which is rigidly attachable to the anchor plates (Ans. 15). The
Examiner further contends that Coates’ fusion inserts 70b are rigidly
attachable by rigid stabilizers or by bone growth (Ans. 15).
Coates’ describes: (1) two types of inserts 70, an articulating insert
70a and a fusion insert 70b (col. 3, ll. 1-51); (2) that other forms of the
inserts 70 may be employed without departing from the broadest forms of
the present invention (col. 3, ll. 25-32); (3) that “while fusion-type inserts
70b may be readily removable immediately after installation, the insert 70b
may become fixed in place over time” (col. 5, ll. 11-14); and (4) means to
promote the fusion process of insert 70b (col. 5, ll. 14-17).
We find that Coates only describes two types of inserts 70, an
articulating type 70a performing a first function and a fusion type 70b
performing a second function. We find that while Coates’ articulating type
of insert 70a may take different forms, or be of a different size or shape, all
of the articulating inserts will articulate, and therefore, will all perform the
same function. Further, Coates’ fusion type inserts 70b may also be of
different size or shape, but will all perform the same function of fusing (fig.
2).
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We find that replacing an articulating insert 70a (a first intermediate
component) with another articulating insert 70a will not provide a second
intermediate component having a different function as called for in claim 62.
Since Coates has denoted inserts 70b as fusion inserts and describes
means to promote the fusion process, Coates intends that the inserts 70b
become fixed in place. Therefore, we find that Coates’ inserts 70b are not
interchangeably attachable to the anchor plates as called for in claim 62.
Assuming arguendo that one could consider the insert 70b to be
interchangeably attachable since it is removable immediately after
installation, Coates further describes and shows an aperture 60 closed off by
arms 52 and linking bridge member 58 to hold insert 70b in a mating
relationship to the baseplate 20 (col. 2, ll. 49-64, col. 4, ll. 56-59; and fig. 1).
Further, Coates describes that “[o]nce the proper insert 70 has been selected
and installed, the surgeon may add an optional flexible or rigid element (not
shown) secured to the exterior of the mounting sections 30 of the two
baseplates 20, if desired.” (col. 4, l. 65-col. 5, l. 1).
We find that the Examiner has misinterpreted Coates’ fusion insert
70b, in view of the addition of the rigid element, as being rigidly attachable
to the anchor plates. As Coates’ rigid element is secured to the mounting
sections 30, not the insert 70b, Coates’ insert 70b is only secured to the
baseplates 20 by a mating relationship (fig. 1). Therefore, Coates’ fusion
insert 70b is not rigidly attachable to the anchor plates as called for in claim
62.
Therefore, we conclude that Appellants have demonstrated that the
Examiner erred in rejecting claim 62 as being anticipated by Coates.
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Appellants have likewise demonstrated error in the Examiner’s rejection of
claims 63, 65-71 and 105, which depend from claim 62.

CONCLUSIONS
Appellants have established that the Examiner erred in finding that the
limitation “without requiring removal of a substantial amount of bone tissue
from the first vertebral body” as called for in claim 62 is not supported by
Appellant’s Specification or Drawings as required by the written description
requirement of 35 U.S.C. § 112, first paragraph.
Appellants have established that the Examiner erred in finding that
Boyd describes a coupling device that is actuatable between an attached
position and a detached position without requiring access to the bone
engaging surface as called for in independent claim 50.
Appellants have established that the Examiner erred in finding that
Boyd describes an intermediate component rigidly attachable to the anchor
plates as called for in independent claim 62.
Appellants have established that the Examiner erred in finding that
Eisermann and Coates are available as prior art against claim 55.
Appellants have established that the Examiner erred in finding that
Eisermann describes a bone-engaging surface shaped to abut the first
vertebral body without requiring removal of a substantial amount of bone
tissue from the first vertebral body as called for in independent claim 62.
Appellants have established that the Examiner erred in finding that
Coates describes a second intermediate component rigidly attachable to the
anchor plates as called for in independent claim 62.

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DECISION
The decision of the Examiner to reject claims 50-55, 61-71 and 103-
106 is reversed.

REVERSED

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