Loubert Suddaby

Patent Trials and Appeals Board

Jul 16, 2021

2021000218 (P.T.A.B. Jul. 16, 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.
15/416,270 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2 Claim 7, 9, 12–14, 25, and 27 are withdrawn.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