Loubert Suddaby

Patent Trials and Appeals Board

Jul 30, 2021

2021000225 (P.T.A.B. Jul. 30, 2021)

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.
15/403,544 01/11/2017 Loubert S. Suddaby SUDP116US 5208
24041 7590 07/30/2021
SIMPSON & SIMPSON, PLLC
5555 MAIN STREET
BUFFALO, NY 14221-5406
EXAMINER
KU, SI MING
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
07/30/2021 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):
patentEFS@idealawyers.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Ex parte LOUBERT S. SUDDABY
____________

Appeal 2021-000225
Application 15/403,544
Technology Center 3700
____________

Before DANIEL S. SONG, STEFAN STAICOVICI, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–3, 5–11, 13–15, 17–22, and 25. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM IN PART.
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THE INVENTION
Appellant’s invention relates to an intervertebral disc surgery device.
Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. An endoscopically implantable inflatable interbody fusion
device, comprising:
an inflatable body having an inner wall, an outer wall; a top
surface, and a bottom surface;
a first cavity defined by the inner wall;
at least one hollow space between the inner wall and the
outer wall;
a first delivery tube extending from outside the outer wall
into the at least one hollow space; and,
a second delivery tube extending from outside the outer
wall, through the at least one hollow space, and terminating in
the first cavity;
wherein at least one of the inner wall, the outer wall, the top
surface, and the bottom surface comprises an elastomeric
material.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Name Reference Date
Stubstad US 3,867,728 Feb. 25, 1975
Pisharodi US 5,123,926 June 23, 1992
Stalcup US 6,332,894 B1 Dec. 25, 2001
Conner US 2009/0138015 A1 May 28, 2009
Ahn US 2011/0004307 A1 Jan. 6, 2011
Hibri US 2010/0256766 A1 Oct. 7, 2010
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The following rejections are before us for review:
1. Claims 13–15 and 17–22 are rejected under 35 U.S.C. § 112(a) for
failure to comply with the written description requirement.
2. Claims 1–3, 5, and 10 are rejected under 35 U.S.C. § 103 as
unpatentable over Stalcup and Stubstad.
3. Claims 6 and 7 are rejected under 35 U.S.C. § 103 as unpatentable
over Stalcup, Stubstad, and Hibri.
4. Claims 8 and 9 are rejected under 35 U.S.C. § 103 as unpatentable
over Stalcup, Stubstad, and Pisharodi.
5. Claim 11 is rejected under 35 U.S.C. § 103 as unpatentable over
Stalcup, Stubstad, and Conner.
6. Claim 25 is rejected under 35 U.S.C. § 103 as unpatentable over
Stalcup, Stubstad, and Ahn.
OPINION
Written Description
The Examiner determines that the phrase “directly connected to the
outer wall” in claim 13 constitutes new matter thereby violating the written
description requirement. Final Act. 2–3. Appellant attempted to overcome
this rejection by filing an amendment to remove the word “directly” from
the claim, but the Examiner declined to enter such amendment.1
In the Appeal Brief, Appellant does not challenge this ground of
rejection, but nevertheless, urges us to evaluate the patentability of a new,
hypothetical, claim 13 “under the pretense” that the alleged new matter will
be removed from the claim by amendment following this appeal. Appeal

1 See December 19, 2019 Response After Final Action and accompanying
proposed amended claims; see also January 17, 2020 Advisory Action.
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Br. 9. However, we are not inclined to evaluate and analyze a hypothetical
claim based on a “pretense” as to how the claim might be amended upon
resumption of prosecution following this appeal. Moreover, there is no prior
art rejection of claim 13 in the Examiner’s Final Action for us to review.
See generally Final Act. With no actual art rejection to review, we are left to
speculate as to what a hypothetical prior art ground of rejection would look
like with respect to Appellant’s hypothetical, proposed amended claim. We
are constrained to review the Examiner’s Final Action as entered and in
view of the state of Appellant’s claims as presently pending at the time of
the Examiner’s Final Action.2
Under the circumstances, we deem the Examiner’s rejection of
claim 13 as containing new matter in violation of the written description to
be unopposed by Appellant. Consequently, we sustain the written
description rejection of claim 13 as well as the rejection of claims 14, 15,
and 17–22 that depend therefrom. See 37 C.F.R. § 41.37(c)(iv) (requiring
Appellant to present arguments that explain why the Examiner erred as to
each ground of rejection and further explaining that the failure to separately
argue claims constitutes a waiver of arguments for separate patentability).
Furthermore, we offer no opinion on the Appellant’s and Examiner’s
briefing with respect to a prior art rejection of claim 13 from an earlier office
action and based on a prior version of claim 13 that is not properly before us
in this appeal. Appeal Br. 35–52; Ans. 6–9.

2 The Examiner’s refusal to enter an amendment is reviewable by petition to
the Director under 37 C.F.R. § 1.181 and, consequently, is not within the
jurisdiction of the Board. See Ex Parte Frye, 94 U.S.P.Q.2d 1072
(BPAI 2010). We are not inclined to allow Appellant to perform an “end
run” around our rules to achieve, by appeal to PTAB, a matter that should
have been taken up with the Director by petition.
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Unpatentability of Claims 1–3, 5, and 10
over Stalcup and Stubstad
Appellant argues claims 1–3, 5, and 10 as a group. Appeal Br. 10–20.
Claim 1 is representative. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Stalcup discloses the invention substantially
as claimed except for using an elastomeric material, for which the Examiner
relies on Stubstad. Final Act. 4–6. The Examiner concludes that it would
have been obvious to a person of ordinary skill in the art at the time the
invention was made to provide Stalcup with a least one wall or surface with
an elastomeric material and so achieve the claimed invention. Id. at 5.
According to the Examiner, a person of ordinary skill in the art would have
done this as an elastomeric material would exhibit characteristics of being
compliant, yielding, fixing, and stretching like the natural tissue that it
replaces, and so would absorb shock without crushing adjacent tissue and
distribute loads over wide areas. Id.
Appellant argues that Stubstad does not disclose an inflatable implant.
Appeal Br. 16. In Appellant’s own words:
Stubstad discloses a molded prosthesis disc or implant that is
formed of silicone elastomer such as SILASTIC® silicone
elastomer or polyurethane. None of the prosthetic implants of
Stubstad are designed to be inserted into a disc space in an
uninflated state, and then subsequently inflated.3
Appeal Br. 16–17. In response, the Examiner points out that Stalcup, not
Stubstad, was relied on for teaching an inflatable disc. Ans. 2–3 (citing
Stalcup, col. 3, ll. 64–67 and Figure 9).

3 For purposes of clarity and consistency, we will use the spelling “disc”
throughout this Decision instead of using the alternative spelling “disk.”
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Stalcup is directed to an artificial disc that fits between adjacent
vertebrae. Stalcup, Abstract. Stalcup discloses a method of fusing adjacent
vertebrae by forming an access hole in an annulus of a disc between the
adjacent vertebrae; removing the nucleus within the disc to form a cavity
surrounded by the annulus; placing a generally annular bag within the
cavity; filling the bag with a polymer; injecting bone particles into the cavity
surrounded by the annular bag; and hardening the polymer. Id. Figs. 4–7.
In Stalcup, flexible bag 44, featuring a generally annular shape when in a
relaxed state, is inserted into cavity 42 via pre-load tube 46. Id. col. 2,
l. 63 – col. 3, l. 5, Fig. 4. Bag 44 is slid from pre-load tube 46 into cavity 42.
Id. col. 3, ll. 4–5. Bag 44 is ejected from tube 46 using a plunger disposed in
tube 46. Id. col. 3, ll. 6–10. Thereafter, fill hoses 52 and 54 are attached to
bag 44. Id. col. 3, ll. 12–13, Fig. 5. Hose 52 extends through bag 44 and
terminates in cavity 42 surrounded by bag 44. Id. col. 3, ll. 14–16. Hose 54
extends into and terminates in bag 44. Id. col. 3, ll. 16–17. A polymer is
then injected into bag 44 through fill hose 54. Id. col. 3, ll. 17–19.
Stubstad is directed to an artificial disc that conforms to the shape of a
natural disc. Stubstad, col. 2, ll. 27–39. The disc may be a resilient block of
elastomer. Id. col. 2, ll. 40–41. The elastomer may be unreinforced or may,
for better resistance to compressive forces, be reinforced by an annular ring
of fibrous material that is embedded in the elastomer. Id. col. 2, ll. 48–52.
Appellant’s argument that Stubstad is not inflatable is not persuasive
as it amounts to an individual attack on one reference in a two reference
combination. Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
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combination of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Appellant next argues that Stubstad is not endoscopically implantable.
Appeal Br. 17. In response, the Examiner points out that, in the proposed
combination, Stalcup, not Stubstad, is relied on for teaching an implant that
is endoscopically implantable. Ans. 3. As before, Appellant’s argument is
another individual attack on one reference in a two reference combination
rejection and is, therefore, not persuasive. Merck, 800 F.2d at 1097;
Keller, 642 F.2d at 425.
Appellant next argues that Stubstad does not really disclose an
elastomeric material as in the instant invention. Appeal Br. 17. According
to Appellant, “the instant invention is elastomeric or compliant similar to
that of a latex balloon.” Id. at 18. Appellant argues that “Stubstad simply
does not disclose this.” Id. However, Appellant, nevertheless, concedes that
Stubstad’s elastomer is “compliant, soft, yielding, flexing, and stretching.”
Id. Nevertheless, Appellant asserts that such characteristics “are directed
toward the compression of the [disc] rather than the inflation thereof.” Id.
Appellant asserts that Stubstad does not disclose any wall that
comprises an elastomeric material that is capable of being
inflated, but rather that the device as a whole is capable of
absorbing shock by being compressible, similar to a vertebral
disc.
Id. In response, the Examiner explains that Stubstad was specifically used to
teach a core element/implant being made of elastic polymer. Ans. 3–4.
Once again, Appellant’s arguments are not persuasive. Appellant
concedes that the elastomeric material of Stubstad is compliant, soft,
yielding, flexing, and stretching. Appeal Br. 18. If Stubstad’s elastomer
exhibits such characteristics in response to external compressive forces,
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Appellant fails to explain how or why such material would not also exhibit
similar characteristics if subjected to internal forces from being inflated in
the manner taught by Stalcup. The Examiner’s finding that Stubstad
discloses an elastomeric material within the meaning of claim 1 is supported
by a preponderance of the evidence.
Furthermore, Appellant’s argument that Stubstad’s elastomer material
is intertwined with fabric particles, is off the mark. Appeal Br. 19. Stubstad
expressly discloses use of “unreinforced” elastomeric material. Stubstad,
col. 2, ll. 48–49.
Appellant’s argument that Stubstad does not disclose an inflatable
disc does not persuade us that a person of ordinary skill in the art would,
therefore, categorically rule out any of the materials used in Stubstad in an
inflatable disc as taught by Stalcup. “[I]t is not necessary that the inventions
of the references be physically combinable to render obvious the invention
under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983).
Combining the teachings of references does not involve an ability to
combine their specific structures. In re Nievelt, 482 F.2d 965, 968
(CCPA 1973). Familiar items often have obvious uses beyond their primary
purposes, and a person of ordinary skill often will be able to fit the teachings
of multiple patents together like pieces of a puzzle. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 420 (2007). Distilled to its essence, the Examiner’s
rejection finds that Stalcup discloses the invention substantially as claimed
except for use of a particular material, but that Stubstad discloses a material
that a person of ordinary skill in the art would view as being suitable for use
in Stalcup. Merely selecting a known material to meet known requirements
is no more ingenious than selecting the last piece to put into the last opening
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in a jig-saw puzzle and, therefore, it is not invention. Sinclair & Carroll Co.
v. Interchemical Corp., 325 U.S. 327, 335 (1945).
Finally, Appellant argues that the Examiner’s prior art references fail
to disclose any “teaching, suggestion, or motivation” (“TSM”) to modify the
prior art. Appeal Br. 19. We note that the U.S. Supreme Court expressly
abrogated the TSM test in 2007.
We begin by rejecting the rigid approach of the Court of
Appeals. Throughout this Court’s engagement with the
question of obviousness, our cases have set forth an expansive
and flexible approach inconsistent with the way the Court of
Appeals applied its TSM test here.
KSR, 550 U.S. at 415. Integral with its TSM argument, Appellant accuses
the Examiner of engaging in an impermissible hindsight analysis. Appeal
Br. 19. In advancing this hybrid TSM/hindsight argument, Appellant relies
on In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988) for a proposition that
was essentially abrogated by KSR. In the instant case, the Examiner
provided a cogent reason as to why a person of ordinary skill in the art
would have made the proposed combination, namely:
[I]t would have been obvious to one of ordinary skill in the art
before the effective filing date of the claimed invention to
provide Stalcup’s device with wherein at least one of the inner
wall, the outer wall, the top surface, and the bottom surface
comprises an elastomeric material as taught by Stubstad, since
such a material would be compliant, soft, yielding, flexing and
stretching like the natural tissue it replaces, absorbing shock
without crushing adjacent tissue and distributing loads over
wide areas.
Final Act. 5–6. The foregoing analysis constitutes explicit articulated
reasoning with rational underpinning that is sufficient to support the
rejection. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring an
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obviousness conclusion to be based on explicit articulated reasoning with
rational underpinning) cited with approval in KSR, 550 U.S. at 418. Such
rationale is sufficient to obviate Appellant’s hindsight argument. See In re
Cree, Inc., 818 F.3d 694, 702 n.3 (Fed. Cir. 2016) (Explaining that a
hindsight argument is of no moment where the Examiner provides a
sufficient, non-hindsight reason to combine the references).
The Examiner’s findings of fact are supported by a preponderance of
the evidence and the Examiner’s legal conclusion of unpatentability is well-
founded. In view thereof, we sustain the Examiner’s unpatentability
rejection of claims 1–3, 5, and 10.
Unpatentability of Claims 6, 7, 11, and 25
over Combinations based on Stalcup and Stubstad
Claims 6, 7, 11, and 25 depend, directly or indirectly, from claim 1.
Claims App. Appellant does not argue for the separate patentability of these
claims apart from arguments presented with respect to claim 1 which we
have previously considered. We sustain the Examiner’s rejection of
claims 6, 7, 11, and 25. See 37 C.F.R. § 41.37(c)(1)(iv) (failure to separately
argue claims constitutes a waiver of arguments for separate patentability).
Unpatentability of Claims 8 and 9
over Stalcup, Stubstad, and Pisharodi
Claim 8
Claim 8 depends from claim 1 and adds the limitation: “at least one
filament having a first end and a second end, the at least one filament is
arranged in the at least one hollow space and the first and second ends
extend from the outer wall.” Claims App. The Examiner relies on Pisharodi
as disclosing this limitation and concludes that it would have been obvious
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at the time of the invention to modify Stalcup by the teachings of Pisharodi
to achieve the claimed invention. Final Act. 7–8. According to the
Examiner, a person of ordinary skill in the art would have done this to urge
the surfaces away from each other for engagement with the vertebra. Id.
at 8.
Appellant first argues that Pisharodi does not disclose a filament to
“limit expansion in certain directions.” Appeal Br. 27. Appellant also
argues that Pasharodi’s springs (12) do not extend from the outer wall as
claimed. Id.
In response, the Examiner points out that Appellant’s argument about
limiting expansion in certain directions is not based on any limitation
actually recited in the claim and, therefore, is not commensurate with the
scope of the claim as recited. Ans. 5. With respect to the argument
regarding extending from the outer wall, the Examiner finds that Pisharodi
element 12 is properly characterized as a “filament” and that it has a first
end and a second end. Id. (citing Pisharodi, Figs. 2 and 3). The Examiner
interprets “extend from” as broad enough to encompass indirect extension
from an outer wall in a manner that does not require touching the outer
wall. Id.
Pisharodi discloses an artificial disc. Pisharodi, Abstract. As shown
in Figures 1 and 2, Pisharodi’s artificial disc is spring loaded and
expandable. Id. col. 2, ll. 7–8. The disc is comprised of a strong thin elastic
bag 4. Id. col. 2, ll. 8–9. The disc tapers from center region 7 to outer
region 6 in all directions radially from center region 7. Id. col. 2, ll. 13–15.
The upper and lower surfaces of the disc feature spikes 8 “for engagement of
the vertebra.” Id. col. 2, ll. 15–19. The disc is expandable by injecting a
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liquid or gas substance through port 10. Id. col. 2, ll. 19-21. The disc
expands like a balloon to its full dimensions and tightly fits into the disc
space. Id. col. 2, ll. 19–25. A cross-sectional view of the disc shows that it
contains a plurality of compression springs 12 extending vertically between
the superior 5 and inferior 9 surfaces, at various strengths and lengths to
yieldably urge the superior 5 and inferior 9 surfaces away from each other.
Id. col. 2, ll. 26–31, Fig. 2.
Claim 1 of Appellant’s invention, from which claim 8 depends,
differentiates between inner and outer walls on the one hand and top and
bottom of surfaces on the other hand. Claims App.; see also Appellant’s
Fig. 13C (depicting “wall” 74) and Fig. 15A (depicting “wall” 84b).
Appellant’s Figures 19A–C and accompanying disclosure in paragraph 60 of
the Specification depict and disclose what is meant by a “filament.”
Filaments act as intervening struts that cross the disc and add stability to it.
Spec. ¶ 60. The filaments limit lateral expansion and add tensile strength to
the final construct. Id. Stated differently, the filaments inhibit the disc from
bulging laterally.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under
the broadest reasonable interpretation standard, claim terms are given their
ordinary and customary meaning as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Translogic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). However, even under the
broadest reasonable interpretation, the Board’s construction “cannot be
divorced from the specification and the record evidence.” In re NTP,
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Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011). A construction that is
“unreasonably broad” and which does not “reasonably reflect the plain
language and disclosure” will not pass muster. Microsoft Corp. v.
Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015).
A person of ordinary skill in the art having been apprised of
Appellant’s disclosure, would understand that Appellant intends to
differentiate between the “walls” of the artificial disc and the upper and
lower “surfaces” of the disc. Basically the “surfaces” of the disc contact the
adjacent vertebra above and below the disc while the “wall” extends
between the upper and lower surfaces such that the surfaces are spaced apart
by a thickness of the disc. It is within this context that a person of ordinary
skill in the art would understand what it means for a filament to “extend
from” the wall as opposed to something that “extends from” the upper and
lower surfaces.
Here, the Examiner’s construction of “extend from” is overly broad.
By allowing such extension to include indirect, as well as direct,
attachments, the Examiner artificially expands the scope of the claim to
include filaments extending between the upper and lower surfaces in
addition to filaments extending between the lateral walls of the disc. Such a
construction effectively renders the claim language reciting “outer wall”
superfluous. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362
(Fed. Cir. 2007) (denouncing claim constructions which render phrases in
claims superfluous). By using an overbroad and erroneous claim
construction, the Examiner reads Appellant’s recited “filament” on
Pisharodi’s spring element 12 even though the function and purpose of the
two disparate elements are diametrically opposed to each other. Appellant’s
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filaments inhibit outward movement of the walls. Spec. ¶ 60. Pisharodi’s
springs urge outward movement of the upper and lower surfaces. Pisharodi,
col. 3, ll. 30–31 (“urge . . . away”).
A person of ordinary skill in the art having reviewed Figures 1–3 of
Pisharodi would understand that element 12 extends from the upper and
lower surfaces of the disc rather than the wall. Properly construed, the claim
language does not read on Pisharodi. The Examiner’s findings of fact are
not supported by a preponderance of the evidence and, therefore, the
Examiner’s legal conclusion of unpatentability is not well-founded. We do
not sustain the Examiner’s unpatentability rejection of claim 8.
Claim 9
Claim 9 depends from claim 8 and suffers from the same infirmity
that was identified above with respect to claim 8. We do not sustain the
rejection of claim 9. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992).
CONCLUSION
Claims
Rejected
35
U.S.C. §
References/Basis Affirmed Reversed
13-15, 17-22 112 Written Description 13-15, 17-22
1-3, 5, 10 103 Stalcup, Stubstad 1-3, 5, 10
6, 7 103 Stalcup, Stubstad, Hibri 6, 7
8, 9 103 Stalcup, Stubstad,
Pisharodi
8, 9
11 103 Stalcup, Stubstad,
Conner
11
25 103 Stalcup, Stubstad, Ahn 25
Overall
Outcome
1-3, 5-7, 10,
11,13-15,
17-22, 25
8, 9
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED IN PART