Ex Parte Cragg

Patent Trial and Appeal Board

Nov 21, 2012

10430751 (P.T.A.B. Nov. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ANDREW H. CRAGG
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Appeal 2010-007003
Application 10/430,751
Technology Center 3700
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Before: NEAL E. ABRAMS, CHARLES N. GREENHUT, and
REMY J. VANOPHEM, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-007003
Application 10/430,751
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
15-44. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm and denominate our affirmance of claim 15 as a NEW
GROUND OF REJECTION.

The claims are directed to apparatuses for effecting an implantation of
a spinal implant. Claim 15, reproduced below, with our emphasis on the
limitations in dispute, is illustrative of the claimed subject matter:
15. Apparatus for effecting an implantation of a spinal implant
through a series of adjacent vertebrae located within a human
lumbar and sacral spine having an anterior aspect, a posterior
aspect and an axial aspect, the vertebrae separated by intact or
damaged spinal discs, the apparatus comprising:
means operable from an accessed sacral position of a
sacral vertebra for boring a trans-sacral axial bore extending
along a visualized, axial instrumentation/fusion line extending
in said axial aspect through the series of adjacent vertebral
bodies to be fused, the trans-sacral axial bore having a caudal
axial bore opening through the sacrum and extending cephalad
through at least three vertebral bodies and any intervening
spinal discs to a closed cephalad bore end, the at least three
vertebral bodies including at least a caudal vertebral body, a
first cephalad vertebral body, and a second cephalad vertebral
body, the closed cephalad bore end disposed at the most
cephalad of the at least three vertebral bodies, the axial bore
having a curvature following the curvature of the spine
cephalad from the caudal axial bore opening and maintaining
the curved axial bore within the at least three vertebral bodies;
an elongated spinal implant formed of a bio-compatible
material having a spinal implant body that extends between a
cephalad spinal implant body end and a caudal spinal implant
body end, the spinal implant body dimensioned and configured
with a curvature that enables insertion into the curved axial bore
through said caudal axial bore opening and advancement in the
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cephalad direction to dispose a second cephalad spinal implant
body portion in the axial bore traversing the second cephalad
vertebral body, to dispose a first cephalad spinal implant body
portion in the axial bore traversing the first cephalad vertebral
body, and to dispose a caudal spinal implant body portion in the
axial bore traversing the caudal vertebral body; and
means for inserting said elongated spinal implant into
said axial bore to extend cephalad and axially through the
vertebral bodies of the series of adjacent vertebrae and any
intervening spinal discs.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Steffee
Tovey
Carl
US 4,790,303
US 5,445,140
US 6,607,530 B1
Dec. 13, 1988
Aug. 29, 1995
Aug. 19, 2003

REJECTIONS1
Claims 15-17, 20, 24, 29-33, 39, and 44 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Carl. Ans. 4.
Claims 18, 19, 21-23, 25, 26, 34-38, 42 and 43 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Carl, Vaughan, and Steffee. Ans.
5.
Claim 27, 28, 40, and 41 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Carl and Tovey. Ans. 6.

1 The Examiner withdrew all rejections after Appellant’s Brief of July 6,
2009 was filed and entered the currently pending rejections as “NEW
GROUND(S)” in the Examiner’s Answer. Appellant elected to maintain this
appeal, responding to the new rejections in the Reply Brief entered
December 21, 2009, and rendering the arguments advanced in Appellant’s
Brief of July 6, 2009 moot.
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OPINION
Since the rejection of claims 15-17, 20, 24, 29-33, 39 and 44 are
argued as a group based solely on limitations appearing in independent
claims 15 and 31, and the remaining rejections are argued solely based upon
dependency we resolve the issues raised in this appeal by discussing
independent claims 15 and 31.

Claim 15 – the “means . . . for boring”
The first limitation of claim 15 at issue, as indicated supra, begins
with the term “means” and describes nothing but the process of boring, a
function, thereafter. Accordingly, we conclude that section 112, paragraph 6
has been invoked. See, e.g., Personalized Media Commc'ns LLC v. Int'l
Trade Comm'n, 161 F.3d 696, 703-04 (Fed. Cir. 1998). In order for a prior
art element to meet a section 112, paragraph 6 means-plus-function
limitation, the prior art element must either be the same as the disclosed
structure or be a section 112, paragraph 6 equivalent. In re Donaldson Co.,
16 F.3d 1189, 1195 (Fed. Cir. 1994). Unfortunately, Appellant’s Brief does
not point to the corresponding structure in the Specification with any
specificity as is required by 37 C.F.R. § 41.37(c)(1)(iii). App. Br. 7-9.
According to the Specification, the structure corresponding to the recited
means for boring is the drill 40, 40’ and optionally the drill guide 30. Spec.
18-19, paras. [0071], [0073]; Fig. 8.
We note that Carl states that “[i]t should be clear that the methods,
systems, and devices of the invention are not limited to securing a pair of
vertebrae, but rather any combination of multiple vertebrae segments.”
Col. 19, ll. 51-54; see also col. 14, ll. 29-34. However, whether the bore in
Carl actually extends through three vertebral bodies, or to a closed cephalad
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bore end, are not the critical issues for determining whether Carl’s drill and
guide meet this limitation. See Reply Br. 12-17. Rather, as discussed above,
it is the presence of the same, or a section 112, paragraph 6 equivalent
structure for doing so. Indeed, Appellant and the Examiner agree that no
portion of the human body, and therefore no portion of the bore or vertebral
bodies, form part of the claimed combination. Reply Br. 12; Ans. 7.
Although the Examiner has not made the construction of the means-
plus-function language of claim 15 explicit, and has incorrectly indicated
that the limitation directed thereto is completely functional (Ans. 5, 7), we
ultimately agree that Carl’s flexible drill bit (Fig. 3B; col. 9, ll. 50-60) or
Romano’s drill (Fig. 4C; col. 10, ll. 37-39) and guide sleeve 102 having
teeth 107 (Fig. 3A; col. 7, ll. 16-25), which can bore curved blind holes in
vertebral bodies, are the same as Appellant’s disclosed structure, or, at the
very least, equivalent thereto.

Claim 31 – the “directional drill”
In contrast to claim 15, the limitation at issue in claim 31 does not
involve means-plus-function language and therefore must be construed more
broadly than claim 15 to include, as the Examiner indicates (Ans. 4-5), not
just the structure found in Appellant’s Specification, but any and all
embodiments which are capable of performing the recited function. See In re
Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997); In re Swinehart, 439 F.2d
210, 212-13 (CCPA 1971); see also, e.g., In re Spitzglass, 96 F.2d 1002,
1005 (CCPA 1938)(construing functional limitations in such a manner prior
to the enactment of what became 35 U.S.C. § 112, sixth paragraph). A patent
applicant is free to recite features of an apparatus either structurally or
functionally. See Swinehart, 439 F.2d at 212 (“[T]here is nothing
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intrinsically wrong with [defining something by what it does rather than
what it is] in drafting patent claims.”). Yet, choosing to define an element
functionally, i.e., by what it does, carries with it a risk. In re Schreiber, 128
F.3d 1473, 1478 (Fed. Cir. 1997). As stated in Swinehart, 439 F.2d at 213:
where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
The Examiner’s determination that Carl’s Romano device would be
capable of performing the function described in claim 31 is sound. Thus, the
burden to establish that this is not necessarily the case shifted to the
Appellant. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). This burden
is not carried simply by pointing out that Carl’s Romano device does not, as
opposed to cannot, function as described. While the functional recitations of
claim 31 do describe something about the structure of the drill element of the
claimed combination (See e.g., K-2 Corp. v. Salomon S.A., 191 F.3d 1356,
1363 (Fed. Cir. 1999)), namely the flexibility thereof, Appellant has not
apprised us of any structure imparted by those recitations that is not found in
the prior art device.

The remaining limitations of claims 15 and 31
In arguing the limitations pertaining to the implant of claims 15 and
31, Appellant does not apprise us of any structure imparted to the claimed
combination by recitation of the function that the implant element is
“dimensioned and configured” to perform (Reply Br. 16-17). These
limitations may be indicative of a particular length and curvature of the
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implant. However, as the Examiner correctly points out, whether the implant
is dimensioned and configured as recited is largely dependent upon the size
of the human2 subject—subject matter upon which the claim places no
limitation.
Appellant does not raise any issues concerning the claim limitations
directed to the inserting means. See Ans. 4 citing e.g., Carl’s pusher 404.
Appellant does not raise any issues regarding the Examiner’s reliance on
particular embodiments of Carl’s drilling or cutting device, implant, and
implantation devices as anticipating the claim. Since no specific
arrangement or relationship is recited between the boring means, implant
and inserting means such reliance is appropriate in this instance. Cf. Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir.
2008)(cautioning against the use of distinct teachings in an anticipation
rejection).

Pursuant to our authority under 37 C.F.R. § 41.50(b), we denominate our
affirmance of claim 15 as a “New Ground of Rejection.”
While we affirm the Examiner’s rejection of claim 15, since we have
departed from the Examiner’s claim construction we denominate this
affirmance as a “New Ground of Rejection” under 37 C.F.R. § 41.50(b) in
order to afford Appellant a fair opportunity to respond to the thrust of this
rejection. See In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011).

2 Unlike the Examiner (Ans. 7) we will interpret the recitation of “human” in
the preamble as limiting the size of the claim elements for purposes of our
analysis.
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DECISION
The Examiner’s rejections are affirmed. However, we denominate our
affirmance of claim 15 as a “New Ground of Rejection.”

Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejections of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2008). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
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prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)

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