Ex Parte Moore et alDownload PDFPatent Trial and Appeal BoardOct 8, 201410821284 (P.T.A.B. Oct. 8, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BRADLEY MOORE and RONALD NAUGHTON ____________ Appeal 2012-006492 Application 10/821,2841 Technology Center 3700 ____________ Before CATHERINE Q. TIMM, KENNETH G. SCHOPFER, and ELIZABETH A. LaVIER, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to minimally invasive surgical methods. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Background A minimally invasive surgical method may include positioning a first anchor and second anchor in a first vertebra and a second vertebra, respectively, through a first incision made on a first side of a patient’s spine, percutaneously positioning a third anchor in a third vertebra through a second incision distinct 1 According to Appellants, “[t]he real party in interest is Depuy Spine, Inc. of Raynham, Massachusetts, a Johnson & Johnson company.” App. Br. 1. Appeal 2012-006492 Application 10/821,284 2 from the first incision, advancing the first end of a fixation element from the first incision subcutaneously to the third anchor, and coupling the fixation element to the first anchor, the second anchor, and the third anchor. Spec., Abstract. The Claims Claims 37–47 are on appeal. Claim 37 is representative and reads as follows. 37. A minimally invasive surgical method comprising: making a first incision in a patient; inserting a retractor having a plurality of expandable retractor blades into the first incision; expanding the retractor by separating the retractor blades; advancing a first anchor through the expanded retractor to a first anchor site on a first vertebra; advancing a second anchor through the expanded retractor to a second anchor site on a second vertebra adjacent the first vertebra; making a percutaneous incision in the patient; advancing a third anchor through the percutaneous incision to a third anchor site on a third vertebra adjacent one of the first and second vertebra; positioning a first end of a spinal rod in the expanded retractor; advancing the first end of the spinal rod subcutaneously to the third anchor; and coupling the spinal rod to the first anchor, the second anchor, and the third anchor. App. Br., Appendix A. Claim 47, the only other independent claim, also recites a minimally invasive surgical method including implanting two anchors through an expanded retractor in a first incision, percutaneously positioning a third anchor, and coupling a spinal rod to the three anchors. Id. Appeal 2012-006492 Application 10/821,284 3 The Rejections 1. The Examiner maintains that claims 37–43 and 47 are unpatentable under 35 U.S.C. § 103(a) over Lim2 in view of Chin3 and Shluzas.4 2. The Examiner maintains that claims 44–46 are unpatentable under 35 U.S.C. § 103(a) over Lim in view of Chin, Shluzas, and Pagliuca.5 DISCUSSION 1. Lim in view of Chin and Shluzas The Examiner finds the following with respect to claim 37: Lim et al. disclose the claimed invention except for the steps of 1.) making a percutaneous incision in the patient and creating a second pathway to the third vertebra by dilating the incision and inserting a cannula/percutaneous access device, advancing a third anchor through the percutaneous incision to a third anchor site on the third vertebra; advancing the first end of the rod subcutaneously/subfascially to the third anchor; and advancing a closure mechanism through the lumen of the percutaneous access device; and further comprising a second rod, and a fourth, fifth, and a sixth anchor, and 2.) the retractor having a plurality of expandable retractor blades and expanding the retractor by separating the retractor blades. Ans. 5. The Examiner finds that Chin and Shluzas teach the first and second exceptions listed above, respectively, and that it would have been obvious to combine the teachings of Chin and Shluzas with Lim to achieve the claimed method. Id. at 6–7. 2 Lim et al., US 2003/0208203 A1, published on Nov. 6, 2003. 3 Chin, US 2005/0065517 A1, published on Mar. 24, 2005. 4 Shluzas, US 2004/0230100 A1, published on Nov. 18, 2004. 5 Pagliuca et al., US 2003/0073998 A1, published on Apr. 17, 2003. Appeal 2012-006492 Application 10/821,284 4 The sole issue presented with respect to this rejection is whether “Lim and Chin teach away from the combination proposed by the Examiner such that one of ordinary skill in the art would have been deterred from combining the methods of Lim and Chin in the manner asserted by the Examiner to meet the limitations of claim 37.”6 App. Br. 6; see also App. Br. 4–8. Principles of Law “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). When the prior art teaches away from a combination, that combination is more likely to be nonobvious. See id. However, to teach away, a reference discourages one of ordinary skill in the art from following the path set out in the reference, or leads that person in a direction divergent from the path taken by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Various types of teachings may support a finding of “teaching away.” These include known disadvantages in old devices that would naturally discourage the search for new inventions, teachings leaving the impression that the product would not have the property sought by the applicant, and reference combinations that would produce a seemingly inoperative device. Id. (citations omitted). “Although a reference that teaches away is a significant factor to be considered in determining unobviousness, the nature of the teaching is 6 Appellants separately raise the same issue and make the same arguments with respect to independent claim 47 (see App. Br. 8–12), and we find that the analysis included herein is equally applicable to both claim 37 and claim 47. Appeal 2012-006492 Application 10/821,284 5 highly relevant, and must be weighed in substance.” Id. Further, “just because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.” In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012). Analysis In rejecting claim 37 as obvious, the Examiner makes the following findings with respect to Lim and Chin. Lim et al. disclose a minimally invasive surgical method comprising making a first incision in a patient; inserting a retractor (130, para. [0049]) and expanding it, advancing a first anchor (120) through via the expanded retractor to a first anchor site on a first vertebra; and advancing a second anchor (121) through the expanded retractor to a second anchor site on a second vertebra adjacent the first vertebra. Lim further discloses positioning a first end of a spinal rod (200) in the expanded retractor; advancing the first end of the spinal rod subcutaneously; and coupling the spinal rod to the first anchor and the second anchor. Disk material is removed from the disk space between the first and second vertebrae through the first pathway, the method further comprising inserting an interbody fusion device into the disk space (para [0039]). The retractor has an opening that allows the rod to pass through it. *** Chin discloses making a percutaneous incision in the patient; creating a second pathway to the third vertebra by dilating the incision and inserting a cannula/percutaneous access device, advancing a third anchor through the percutaneous incision to a third anchor site on the third vertebra; advancing the first end of Appeal 2012-006492 Application 10/821,284 6 the rod subcutaneously/subfascially to the third anchor; to perform minimally invasive surgery. Ans. 5–6. Appellants do not dispute these findings, and we adopt them here. Appellants only argue that the combination of art proposed by the Examiner would not have been obvious because Lim and Chin teach away from the proposed combination. See App. Br. 5–12. Specifically, Appellants argue that Lim teaches an instrument designed to be used for implantation through a single pathway to a surgical space while Chin discredits the use of “single pathway minimally invasive systems (as having ‘limited scalability’ and increased tissue expansion) and describes a minimally invasive system that lacks an expandable device.” Id. at 7. Further, Appellants assert that one of ordinary skill in the art would consider the approaches of Lin and Chin to be complete substitutes for each other and would not consider combining them. Id. at 8. We disagree for the reasons set forth below. First, we note that Chin discloses that open surgery methods are limited because they require large incisions and are not scalable to situations where connection to more than two vertebrae is required. Chin ¶¶ 8, 15. However, Lim also recognizes the desirability of minimally invasive surgical procedures and “a need for instruments and methods that can be employed for implant insertion that minimize or facilitate the minimization of tissue dissection and retraction and exposure of the patient’s body to the surgical procedure.” Lim ¶ 4. Based on these disclosures, we find that while Chin seeks to provide a better alternative to other minimally invasive procedures, Chin does not “clearly and definitively” teach away from the proposed combination as argued by Appellants. See Reply Br. 3. Rather, we conclude that one of ordinary skill in the art, upon considering the Appeal 2012-006492 Application 10/821,284 7 references as a whole, would recognize that combining Chin’s method with Lim’s method where more than two vertebrae are involved would allow a surgeon to gain the advantages of both methods, e.g. having a larger primary working area while avoiding extra tissue damage when accessing a third vertebra; and we find that Appellants have not shown that the combination of these known methods would do more than yield predictable results. Based on the foregoing, we find that the Examiner has established a prima facie case of obviousness with respect to these claims, which Appellants have failed to rebut. Accordingly, we sustain this rejection. 2. Lim in view of Chin, Shluzas, and Pagliuca Appellants do not raise separate arguments with respect to this rejection. See App. Br. 2–12. Accordingly, we sustain this rejection for the reasons discussed above. CONCLUSION For the reasons set forth above, we affirm the Examiner’s decision to reject claims 37–47. 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 Klh Copy with citationCopy as parenthetical citation