Loubert SuddabyDownload PDFPatent Trials and Appeals BoardJul 16, 20212021000218 (P.T.A.B. Jul. 16, 2021) Copy Citation 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. 15/416,270 01/26/2017 Loubert S. Suddaby SUDP121US 1807 24041 7590 07/16/2021 SIMPSON & SIMPSON, PLLC 5555 MAIN STREET BUFFALO, NY 14221-5406 EXAMINER KU, SI MING ART UNIT PAPER NUMBER 3775 NOTIFICATION DATE DELIVERY MODE 07/16/2021 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 2021-000218 Application 15/416,270 Technology Center 3700 ____________ Before DANIEL S. SONG, STEFAN STAICOVICI, and JEREMY M. PLENZLER, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE. Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Final Office Action (dated Dec. 31, 2019, hereinafter “Final Act.”) rejecting claims 1–5, 8, 10, 15–20, 22–24, and 26.2,3 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Loubert S. Suddaby, the sole inventor, is identified as the real party in interest in Appellant’s Appeal Brief (filed Mar. 5, 2020, hereinafter “Appeal Br.”). Appeal Br. 3. 2 Claim 7, 9, 12–14, 25, and 27 are withdrawn. Final Act. 2. 3 Claims 6, 11, and 21 are objected to by the Examiner as being dependent upon a rejected base claim and otherwise indicated as being allowable if Appeal 2021-000218 Application 15/416,270 2 SUMMARY OF DECISION We REVERSE. INVENTION Appellant’s invention is directed “to a stand-alone expandable interbody spinal fusion device with integrated fixation mechanism.” Spec. para. 1. Claims 1, 8, and 24 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A stand-alone expandable interbody spinal fusion device, comprising: a superior component; an inferior component; an expansion mechanism operatively arranged to displace the superior component in a first direction relative to the inferior component; and, a first screw mechanism arranged within the superior component or the inferior component, the first screw mechanism operatively arranged to fixedly secure the stand- alone expandable interbody spinal fusion device to an adjacent vertebra of a spine. Appeal Br. 42 (Claims App.). rewritten in independent form including all of the limitations of the base claim and any intervening claim. Claims 6, 11, and 21 are not part of the instant appeal. See id. at 9. Appeal 2021-000218 Application 15/416,270 3 REJECTIONS I. The Examiner rejects claims 1–3, 15–17, 24, and 26 under 35 U.S.C. § 102(a)(1) as being anticipated by Blain.4 II. The Examiner rejects claims 1–5, 8, 10, 15–20, 22–24, and 26 under 35 U.S.C. § 102(a)(1) as being anticipated by Jimenez.5 ANALYSIS Rejection I Independent claim 1 recites, inter alia, a “first screw mechanism operatively arranged to fixedly secure the stand-alone expandable interbody spinal fusion device to an adjacent vertebra of a spine.” Appeal Br. 42 (Claims App.). Independent claim 24 recites a similar limitation. Id. at 48. The Examiner finds Blain discloses spinal fusion device 100 including, inter alia, superior component 104, inferior component 102, expansion mechanism 106 operatively arranged to displace superior component 104 relative to inferior component 102, and first screw mechanism 150 operatively arranged to fixedly secure spinal fusion device 100 to an adjacent vertebra of a spine. Final Act. 3 (citing Blain, Figs. 1–6). The Examiner explains that when “fusion device [100] is in the expanded configuration via indirectly connected element 150, the plurality of protrusions or teeth 142 reduces movement of the fusion device, thus fixedly secur[ing] the device.” Id. (citing Blain, Abstract, para. 84). 4 Blain et al., US 2015/0190242 Al, published July 9, 2015. 5 Jimenez et al., US 2011/0138948 Al, published June 16, 2011. Appeal 2021-000218 Application 15/416,270 4 Appellant argues that because screw 150 of Blain does not contact an adjacent vertebra it is “incapable of fixedly securing fusion device (100) to an adjacent vertebra.” Appeal Br. 14 (emphasis omitted). According to Appellant, Blain’s screw mechanism 150 “is incapable of securing device (100) to a vertebra as it is simply an expansion mechanism arranged to displace inner structure (104) relative to outer structure (102).” Id. at 14–15 (emphasis omitted). In response, the Examiner notes that “Blain discloses the first screw mechanism (150) operatively arranged to (i.e. capable of) fixedly secure the stand-alone expandable interbody spinal fusion device (100).” Examiner’s Answer (dated June 19, 2020, hereinafter “Ans.”) 5 (emphasis added). According to the Examiner, “once the fusion device is in the expanded configuration via indirectly connected element 150, the plurality of protrusions or teeth 142 reduces movement of the fusion device, thus fixedly secures the device . . . to an adjacent vertebra of a spine.” Id (citing Blain, Abstract, para. 84). A functional limitation is often used in association with an element, ingredient, or step of a process to define a particular capability or purpose that is served by the recited element, ingredient or step. In Innova/Pure Water Inc. v. Safari Water Filtration Sys. Inc., 381 F.3d 1111, 1117–20 (Fed. Cir. 2004), the court noted that the phrase “operatively connected” is “a general descriptive claim term frequently used in patent drafting to reflect a functional relationship between claimed components,” that is, the term “means the claimed components must be connected in a way to perform a designated function.” As such, we construe the limitation of a “first screw mechanism operatively arranged to fixedly secure the . . . spinal fusion Appeal 2021-000218 Application 15/416,270 5 device to an adjacent vertebra of a spine” to mean that the first screw mechanism is arranged to perform the function of fixedly securing the spinal fusion device to a vertebra of a spine. See Appeal Br. 42, 48 (Claims App.). Blain discloses screw mechanism 106 of spinal implant device 100 as including proximal and distal sections 150, 152, “such that when the proximal section 150 is rotated, the distal section 152 also rotates as a unit,” and, thus, “the inner structure 104 translates relative to the outer structure 102 from the collapsed configuration to the expanded configuration.” See Blain, paras. 87, 88 (bolding omitted), Fig. 5. Blain further discloses that after positioning spinal implant device 100 between adjacent vertebrae, device 100 is expanded via screw mechanism 106, and teeth 142, located on top and bottom surfaces 108, 110 of outer and inner structures 102, 104, contact the vertebrae to “reduce movement” and “create additional friction” between the vertebrae and outer and inner structures 102, 104. Id. at paras. 77, 84. As such, Blain’s screw mechanism 150 is “operatively arranged” to perform the function of translating inner structure 104 relative to outer structure 102, but not to perform the function of fixedly securing spinal implant device 100 to an adjacent vertebra of a spine. Rather, Blain’s teeth 142, located on top and bottom surfaces 108, 110 of outer and inner structures 102, 104, are “operatively arranged” to perform such a function. Even though Blain’s screw mechanism 150 translates inner structure 104 relative to outer structure 102 to bring teeth 142 in contact with the vertebrae, and, thus, fixedly secure device 100 to an adjacent vertebra of a spine, it is teeth 142, not screw mechanism 150, that is arranged to perform the fixedly securing function. In other words, although screw mechanism Appeal 2021-000218 Application 15/416,270 6 150 translates inner structure 104 relative to outer structure 102, without teeth 142, Blain’s device 100 would not be fixedly secured to an adjacent vertebra of a spine. Hence, for the foregoing reasons, Blain fails to disclose “a first screw mechanism” that is “operatively arranged to fixedly secure the stand-alone expandable interbody spinal fusion device to an adjacent vertebra of a spine,” as called for by each of independent claims 1 and 24. Accordingly, we do not sustain the rejection under 35 U.S.C. § 102(a)(1) of independent claims 1 and 24, and their respective dependent claims 2, 3, 15–17, and 26, as anticipated by Blain. Rejection II Claims 1–5, 8, 10, 15–17, 24 and 26 Independent claim 1 recites, inter alia, a “first screw mechanism operatively arranged to fixedly secure the stand-alone expandable interbody spinal fusion device to an adjacent vertebra of a spine.” Appeal Br. 42 (Claims App.). Independent claim 24 recites a similar limitation. Id. at 48. The Examiner finds Jimenez discloses spinal fusion device 500 including, inter alia, superior component 510, inferior component 550, expansion mechanism 501, 540 operatively arranged to displace superior component 510 relative to inferior component 550, and first screw mechanism 511 operatively arranged to fixedly secure spinal fusion device 500 to an adjacent vertebra of a spine. Final Act. 4–5 (citing Blain, Figs. 9A–9D). The Examiner explains that when “device [500] is in the expanded configuration via indirectly connected elements 501 and 540, the plurality of Appeal 2021-000218 Application 15/416,270 7 protrusions or teeth on element 510 reduces movement of the device, thus fixedly secur[ing] the device.” Id. at 5. Appellant argues that because screw mechanism 511 of Jimenez does not contact an adjacent vertebra it is “incapable of fixedly securing fusion device (500) to an adjacent vertebra.” Appeal Br. 27 (emphasis omitted). According to Appellant, screw mechanism 511 of Jimenez “is incapable of securing device (500) to a vertebra as it is simply an expansion mechanism arranged to displace first member (510) relative to second member (550).” Id. at 28 (emphasis omitted). For the reasons discussed supra in Rejection I, we construe the limitation of a “first screw mechanism operatively arranged to fixedly secure the . . . spinal fusion device to an adjacent vertebra of a spine” to mean that the first screw mechanism is arranged to perform the function of fixedly securing the spinal fusion device to a vertebra of a spine. See Appeal Br. 42, 48 (Claims App.). Jimenez discloses rotating threaded gear sleeves 520 via worm 540 to axially translate threaded posts 511 (first screw member),6 and, thus, displacing first member 510 (superior member) relative to second member 550 (inferior member). See Jimenez, para. 66, Figs. 9A, 9D. Like in Blain, Jimenez illustrates in Figures 9A and 9D a plurality of teeth, located on the top surface of first member 510, which can be used to fixedly secure device 500 to an adjacent vertebra of a spine. As such, similar to Blain’s screw mechanism 150 discussed supra, screw mechanism 511 of Jimenez is “operatively arranged” to perform the 6 Nomenclature in parenthesis refers to the language of claims 1 and 24. Appeal 2021-000218 Application 15/416,270 8 function of translating first member 510 relative to second member 550, but not to perform the function of fixedly securing device 500 to an adjacent vertebra of a spine. Rather, the teeth located on the top surface of first member 510 are “operatively arranged” to perform such a function. Even though screw mechanism 511 of Jimenez translates first member 510 relative to second member 550 to bring the teeth in contact with the vertebrae and, thus, fixedly secure device 500 to an adjacent vertebra of a spine, it is the teeth, not the screw mechanism 511, that is arranged to perform the fixedly securing function. In other words, although screw mechanism 511 translates first member 510 relative to second member 550, device 500 of Jimenez would not be fixedly secured to an adjacent vertebra of a spine. Hence, for the foregoing reasons, Jimenez fails to disclose “a first screw mechanism” that is “operatively arranged to fixedly secure the stand- alone expandable interbody spinal fusion device to an adjacent vertebra of a spine,” as called for by each of independent claims 1 and 24. Accordingly, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. § 102(a)(1) of independent claims 1 and 24, and their respective dependent claims 2–5, 8, 10, 15–17, and 26, as anticipated by Jimenez. Claims 18–20, 22, and 23 Independent claim 18 recites, inter alia, “a first screw mechanism . . . operatively arranged to protrude through an outer surface of the superior component.” Appeal Br. 46 (Claims App.). Appeal 2021-000218 Application 15/416,270 9 The Examiner finds Jimenez discloses first screw mechanism 511 “operatively arranged to (i.e. capable of) protrude through an outer surface of the superior component (510).” Final Act. 7 (citing Jimenez, Fig. 9D). To better understand Appellant’s argument, we reproduce below Appellant’s annotated Figure 9D of Jimenez. Appellant’s annotated Figure 9D of Jimenez illustrates superior component 510 having an outer surface “L” and threaded posts 511. Appeal Br. 39. Appellant contends that because annotated line “L” represents the outer surface of superior component 510, threaded posts 511 do not protrude through an outer surface “L” of superior component 510. In response, the Examiner contends that independent claim 18 does not define the outer surface of the claimed superior component through which the “first screw mechanism . . . [is] operatively arranged to protrude through” with respect to other surfaces of the superior component. Ans. 9. Thus, the Examiner takes the position that the surface opposite annotated surface “L” of superior component 510 equally constitutes an outer surface of superior component 510 through which first screw mechanism 511 protrudes. Appeal 2021-000218 Application 15/416,270 10 We appreciate the Examiner’s position that independent claim 18 does not define “an outer surface of the superior component” and, as such, the surface opposite surface “L” equally constitutes an outer surface of superior component 510. However, we do not agree with the Examiner that the surface opposite surface “L” constitutes an outer surface of superior component 510 through which first screw mechanism 511 protrudes. In particular, we note that the outer surface of superior component 510 that is opposite surface “L” includes arched recesses 517. See Jimenez, Fig. 9D. In other words, arched recesses 517 themselves partially define the outer surface of superior component 510. In addition to Figure 9D, in which Jimenez illustrates first screw mechanism 511 as contacting arched recess 517, Jimenez also discloses first screw mechanism 511 as having arched portion 515 corresponding to arched recess 517. See id. at para. 66. Accordingly, for the foregoing reasons, the Examiner’s finding that “element 511 protrudes though a portion of the outer surface/exterior surface of element 510” is not supported by the disclosure of Jimenez in that element 511 does not protrude through arched recesses 517. See Ans. 9. Therefore, we do not sustain the rejection under 35 U.S.C. § 102(a)(1) of independent claim 18, and its dependent claims 19, 20, 22, and 23, as anticipated by Jimenez. Appeal 2021-000218 Application 15/416,270 11 CONCLUSION Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1–3, 15–17, 24, 26 102(a)(1) Blain 1–3, 15–17, 24, 26 1–5, 8, 10, 15–20, 22–24, 26 102(a)(1) Jimenez 1–5, 8, 10, 15–20, 22–24, 26 Overall Outcome 1–5, 8, 10, 15–20, 22–24, 26 REVERSED Copy with citationCopy as parenthetical citation