Ex Parte Makower et al

Patent Trial and Appeal Board

Dec 17, 2018

12949687 (P.T.A.B. Dec. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/949,687 11/18/2010
118733 7590 12/19/2018
Moximed, Inc
46602 Landing Parkway
Fremont, CA 94539
FIRST NAMED INVENTOR
Joshua Makower
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.
P048 Cl 6266
EXAMINER
HOUSTON, ELIZABETH
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
12/19/2018 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):
ip@cnmiplaw.com
acermak@cnmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSHUA MAKOWER, CLINTON N. SLONE,
ALAN C. REGALA, MICHAELE. LANDRY, and
ANTON G. CLIFFORD 1
Appeal 2017-011158
Application 12/949,687
Technology Center 3700
Before ERIC B. GRIMES, JOHN G. NEW, and TIMOTHY G. MAJORS,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party-in-interest as Moximed, Inc. App. Br. 3.
Appeal 2017-011158
Application 12/949,687
SUMMARY
Appellants file this appeal under 35 U.S.C. § I34(a) from the
Examiner's Final Rejection of claims 1-8, 10, and 13-16 as unpatentable
under 35 U.S.C. § I03(a) as being obvious over the combination of Colleran
et al. (US 2006/0247637 Al, November 2, 2006) by ("Colleran") and Schar
et al. (US 6,176,881 Bl, January 23, 2001) ("Schar").
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to an implantable system for
manipulating energy transferred by first and second members defining a
joint. Abstr.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. An implantable system for manipulating energy
transferred by first and second members defining a joint, the
system comprising:
a first attachment structure configured to be attached to the
first member of the joint;
a second attachment structure configured to be attached to
the second member of the joint; and
an adjustable energy manipulation device attached to the
first attachment structure and second attachment structure, the
adjustable energy manipulation device includes at least one
spring arranged to bias the first and second attachment structures
apart and one or more adjustable assemblies, wherein at least one
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Application 12/949,687
adjustable assembly of the one or more adjustable assemblies
comprises a plurality of non-threaded teeth and a locking collar
configured to contact the teeth to lock the adjustable energy
manipulation device to adjust a size of the energy manipulation
device to affect an amount of compression in the spring;
wherein the spring has a size and the adjustable energy
manipulation device is movable to an orientation so that the
adjustable energy manipulation device has a size greater than the
size of the spring and beyond which the spring is under no load.
App. Br. 19.
ISSUES AND ANALYSES
Issue
Appellants argue the Examiner erred in finding that the combined
cited prior art teaches the limitation of claim 1 reciting: "wherein the spring
has a size and the adjustable energy manipulation device is movable to an
orientation so that the adjustable energy manipulation device has a size
greater than the size of the spring and beyond which the spring is under no
load. App. Br. 15.
Analysis
The Examiner finds that Colleran teaches, inter alia, that the spring
has a size and the adjustable energy manipulation device is movable to an
orientation so that the adjustable energy manipulation device has a size
greater than the size of the spring and beyond which the spring is under no
load. Final Act. 4. The Examiner finds that rod 1106/1108 of Colleran is
longer than the length of mounted spring 1104. Id. ( citing Colleran Fig.
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Application 12/949,687
1 lA). The Examiner finds that the spring is capable of transitioning
between tension and compression as a joint moves from flexion and
extension, and that the transition point results in no load on a spring and the
stop. Id.
Appellants argue that Colleran teaches a device in which the spring
1104 is always in tension, but for a single point, and the tension of the spring
can be adjusted. App. Br. 15. However, Appellants assert, the adjustment
stop 1110 of Colleran's invention can at no point be put in a position or
orientation at which the spring is loose, i.e., beyond which the spring exerts
no force and thus transfers no load. Id.
Appellants dispute as inapposite the Examiner's finding that:
[T]he spring is capable from transitioning between tension and compression
as a joint moves from flexion and extension, the transition point resulting in
no load on a spring and the stop." App. Br. 15-16 (quoting Final Act. 4).
Appellants contend that the Examiner has incorrectly thus equated two
entirely different physical conditions: a single "transition point" at which
Colleran's spring is unloaded; and Appellants' claimed invention, which
includes an entire range of positions, beyond a particular point, at which the
adjustable energy manipulation device has a size greater than the size of the
spring, and beyond which the spring is under no load. Id. at 16. Appellants
assert that, because the claimed combination requires a range of positions,
and not only the single transition point at which Colleran's spring is
unloaded, the teachings of Colleran relied upon by the Examiner do not read
upon the disputed limitation of Appellants' claims. Id.
Appellants argue that Schar does not cure the alleged deficiencies of
Colleran. App. Br. 16. Moreover, Appellants argue, Colleran and Schar are
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each directed to different fields of endeavor: Colleran is directed to methods
of decompression of the natural spine to assist disc healing, whereas Schar
teaches reconstruction of the spine with an artificial, prosthetic vertebra. Id.
Therefore, Appellants assert, a person of ordinary skill in the art would have
found no rational reason to combine the references to reach Appellants'
claimed invention. Id.
The Examiner responds that Colleran teaches that the tension of the
spring is adjustable and that, because the rods move within each other and
the collar is adjustable, it can be adjusted to a length wherein there is no
force on the spring. Ans. 7. The Examiner finds that, whereas this may not
be desirable for use of the device, it may be desirable in other circumstance,
such as during implantation, and, furthermore, the claim does not limit the
spring having no force to any particular situation. Id.
The Examiner also finds that Colleran teaches that the energy
manipulation device rod 1106/1108 length in relation to spring 1104 is
disclosed as adjustable (i.e., stop 1110 may be moved to adjust the tension of
spring 1104, and that pin 1136 may be set telescoping member. Ans. 8
(citing Colleran ,r,r 139, 144). The Examiner finds that a surgeon would be
capable of lengthening the rods, while adjusting the spring force, so that the
rods are longer than the spring and there is no load in the spring. Id. The
Examiner finds that Colleran further teaches that the device may be
pre-calibrated with a force in the spring. Id. (citing Colleran ,r 139). The
Examiner finds that this means that the device's spring may or may not be
adjusted to have a load present in the spring. Id.
The Examiner further finds that Colleran discloses that its device may
operate inflexion and extension. Ans. 8. The Examiner notes that these
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movements require opposite forces, such that as a patient moves from
flexion to extension the spring will move from compression to tension. Id.
Therefore, the Examiner reasons, there will be a transition point between the
transition from flexion to extension where the spring will experience no load
which will give way to the spring not being under a load but rather
supplying the load. Id.
We are persuaded by Appellants' arguments. Claim 1 recites, in
relevant part: "wherein the spring has a size and the adjustable energy
manipulation device is movable to an orientation so that the adjustable
energy manipulation device has a size greater than the size of the spring and
beyond which the spring is under no load."
We find Figures IA and IB of Appellants' Specification instructive in
the interpretation of this claim language. See Phillips v. A WH Corp., 415
F.3d 1303, 1316 (Fed. Cir. 2005) ("The Board determines the scope of
claims in patent applications not solely on the basis of the claim language,
but upon giving claims their broadest reasonable construction in light of the
specification as it would be interpreted by one of ordinary skill in the art")
(internal quotation omitted). Figures IA and IB of the Specification are
reproduced below.
f}G, 1,A.
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Figure 1 A of Appellants' Specification is a perspective view
depicting an embodiment of an energy absorbing system
mounted at a knee joint at full extension
FIG. IB is a perspective view depicting the embodiment shown
in FIG. IA with the knee joint flexed to 90°
As can be seen in Figure IA, springs 112 are connected to the piston
base 114 and are in contact with the adjustable spacer 124. See Spec. ,r 112.
In this position, the adjustable spacer 124 can be adjusted to tighten the
springs so that the spring is biased towards pushing the spacer 124 away
from the piston base 126, as required by claim 1. Id. The pistons 126 are
contained inside the springs 112 and are not visible in this view. Id. During
flexion and extension of the knee joint, piston shafts 126 of the piston base
slide within arbor shafts of the arbor base, as can be seen in Fig IB. During
flexion of the joint, the pistons 126 extend beyond the length of the spring,
such that the adjustable spacer 124 is no longer in contact with the ends of
the springs. See Spec. ,r 113. When, during flexion, the springs 112 are no
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longer in contact with the adjustable spacer 124, i.e., when "the adjustable
energy manipulation device has a size greater than the size of the spring,"
then at that position of flexion and beyond, "the spring is under no load."
We contrast this with the dynamic spine stabilization device taught by
Colleran, an embodiment of which is depicted in Figures lB and 1 C below.
128 138b
FIG.1B FIG.1C
Figures 1 B and 1 C of Colleran depict side views of
a dynamic stabilization device illustrating two dimensional
rotation of adjacent vertebrae
In the dynamic spine stabilization device of Colleran:
[T]he brace 136 may include an upper elongated portion 138 and
a lower elongated portion 140. The upper elongated portion 138
is free to move with respect to the lower elongated portion 140
along its longitudinal axis in a telescoping manner. This motion
may be limited or controlled, in part, by a spring 142. In some
embodiments, a stop 144 may allow the spring 142 ( or springs)
to be effectively lengthened or shortened. This lengthening or
shortening may change the range of motion and, in certain
embodiments, may change the force the spring exerts.
Colleran ,r 36. Furthermore, Colleran teaches:
[T]he dynamic stabilization device 130 includes the spring 142,
which in certain embodiments, may act in compression as a
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progressive breaking mechanism or an extension limiter to limit
the compression applied to nerves extending from the region 129.
Note that as between FIGS. lA and lB, the respective pedicles
have separated by approximately 8 mm. The range shown (31
mm to 39 mm) is but one example. Other patients may have other
starting and ending points depending upon their particular
physical structure and medical condition.
Id. at ,r 39. Note that, in both Figures IB and IC, the spring 142 is attached
at both ends of the telescoping shaft 13 8 and 140 to the anchors 13 8a and
138b, securing the dynamic stabilization to the spinous process of each
vertebra. Consequently, when spine is flexed, the spring 142 is extended
(Figure IB) and exerts a force in the opposite direction, whereas when the
spine is not flexed (Figure 1 C), the spring 142 is compressed. But the
Examiner points to no teaching or suggestion of Colleran in which the spring
is not attached at either end so that, as in the claimed invention, the springs
are not in contact with the anchors (or adjusting device 144) such that there
is no load on the spring beyond that point.
The Examiner tacitly concedes this point, by finding that, between
extension and flexion of the spine: "there will be a transition point between
the transition from flexion to extension where the spring will experience no
load, which will give way to the spring not being under a load but rather
supplying the load." See Ans. 8. However, the language of the claims
expressly requires that: "the adjustable energy manipulation device has a
size greater than the size of the spring and beyond which the spring is under
no load." Contrary to the Examiner's findings, the dynamic spinal
stabilization device of Colleran does not possess a size greater that the size
of the spring, because the spring is attached at both ends and stretches or
compresses with extension and flexion of the spine - indeed, the spring can
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act a limiting device on the amount of permitted extension and flexion of the
spine. Furthermore, we find that a spring under a negative load (i.e., an
extended spring supplying the load) is, nevertheless, a spring under a load.
We cannot discern any teaching or suggestion in Colleran that persuades us
that the device of Colleran can have a "size greater than the size of the
spring and beyond which the spring is under no load." We consequently
reverse the Examiner's rejection of the claims.
DECISION
The Examiner's rejection of claims 1-8, 10, and 13-16 under
35 U.S.C. § 103(a) is reversed.
REVERSED
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