Stryker European Holdings I, LLC

Patent Trials and Appeals Board

May 3, 2021

2020005950 (P.T.A.B. May. 3, 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.
15/964,270 04/27/2018 Andy Wonyong Choi SPINE 3.0-519
DIV CON CON
1482
530 7590 05/03/2021
LERNER, DAVID, LITTENBERG,
KRUMHOLZ & MENTLIK
20 COMMERCE DRIVE
CRANFORD, NJ 07016
EXAMINER
PLIONIS, NICHOLAS J
ART UNIT PAPER NUMBER
3773
NOTIFICATION DATE DELIVERY MODE
05/03/2021 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):
eOfficeAction@lernerdavid.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDY WONYONG CHOI, MICHAEL L. SCHMITZ, and
SE-IL SUK
Appeal 2020-005950
Application 15/964,270
Technology Center 3700
Before BENJAMIN D. M. WOOD, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals2 from the
Examiner’s decision to reject claims 1–7, 13–17, and 20–22.3 See Final Act.
1. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Stryker European
Operations Holdings LLC. Appeal Br. 1.
2 Appellant presented arguments during a telephonic hearing conducted on
April 26, 2021.
3 The Examiner indicates that claims 8–12, 18, and 19 recite allowable
subject matter. Final Act. 8.
Appeal 2020-005950
Application 15/964,270

2
CLAIMED SUBJECT MATTER
Appellant’s invention relates to an alignment apparatus for positioning
of the vertebrae during posterior spinal fusion operations. Spec. ¶ 2. Claims
1 and 17 are independent. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A system for direct vertebral rotation, comprising:
at least two levers, each of the levers having an attachment
end attachable to a pedicle screw implanted in a vertebra of a
spine such that each lever extends proximally from the respective
pedicle screw, and each of the levers having a free end opposite
the attachment end; and
a clamping instrument including an elongate first member
and an opposing elongate second member;
wherein the first and second members are movable toward
one another to a closed position in which a plurality of the levers
are clamped between the first and second members, the first and
second members of the clamping instrument applying a
sufficient lateral clamping force to the plurality of the levers in
the closed position so as to align the free ends of the plurality of
the levers along a longitudinal axis defined between the first and
second elongate members and so as to hold each of the plurality
of the levers in a respective fixed angle and position with respect
to the clamping instrument.
Appeal Br. 12 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Chao US 2006/0200132 A1 Sept. 7, 2006
Piza Vallespir US 2006/0271050 A1 Nov. 30, 2006
Hogg US 2007/0162031 A1 July 12, 2007

Appeal 2020-005950
Application 15/964,270

3
REJECTIONS
I. Claims 1–6, 13–17, and 20–22 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Piza Vallespir and Chao.
II. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Piza Vallespir, Chao, and Hogg.
OPINION
Rejection I (Piza Vallespir and Chao)
The Examiner finds that Piza Vallespir discloses many of the
limitations of claim 1, including at least two levers. Final Act. 2. The
Examiner finds that Piza Vallespir does not disclose a clamping instrument
that clamps the levers, but suggests such an instrument (citing Piza Vallespir
¶ 86), and finds that Chao discloses a clamping instrument for levers. Id. at
2–3. The Examiner reasons that it would have been obvious to add Chao’s
clamping instrument to the system of Piza Vallespir to facilitate alignment
and joint rotation of the levers. Id. at 3. According to the Examiner,
although the clamping instrument of Chao does not hold the levers at a fixed
angle, Chao’s disclosure of a variable angle appears to be optional, and, in
any event, Piza Vallespir keeps the levers at a fixed angle. Id. at 3–4. The
Examiner concludes that it would have been obvious to “clamp the levers at
a fixed angle (via corresponding non-spherical shapes between the levers
and clamping instrument, e.g.) in order to keep the levers aligned along a
single plane.” Id. at 4.
Appellant argues that Chao’s element 200, upon which the Examiner
relies, is merely a connector, not a clamp, and Chao does not disclose the use
of connector 200 to bring Chao’s levers together for clamping. Appeal Br.
8. In other words, according to Appellant, a person of ordinary skill in the
Appeal 2020-005950
Application 15/964,270

4
art would not consider Chao’s connector 200 to be a “clamping instrument.”
See id. Appellant asserts that this lack of disclosure in Chao regarding the
use of connector 200 for bringing Chao’s levers together undermines the
Examiner’s reasoning for the proposed modification. Id.
Appellant additionally asserts that, because the entire disclosure of
Chao relates to providing a polyaxial connection, there is no suggestion in
Chao of using a fixed angle. Id. at 9. According to Appellant, Chao does
not support a “non-spherical shape” to provide a fixed connection and,
although Piza Vallespir’s rods 22, 24 provide a fixed connection, this does
not suggest modifying Chao’s connector 200 to achieve a fixed connection.
Id. at 10.
The Examiner responds that the rejection is not based on a bodily
incorporation of the connector of Chao into the device of Piza Vallespir, and
the Examiner is relying on Chao to show that a clamping instrument as
suggested by Piza Vallespir was known. Ans. 11–12. According to the
Examiner, an ordinary artisan seeking to use a clamping instrument, as
suggested by Piza Vallespir, would look to Chao and be motivated to
provide a similar clamping instrument that provides a fixed connection
consistent with Piza Vallespir. Ans. 13. In support of this position, the
Examiner notes Chao’s repeated use of the term “may” to describe certain
structures denotes optional limitations, and reiterates that Chao shows that a
clamping instrument as suggested by Piza Vallespir was known. Ans. 14.
In reply, Appellant asserts that Chao does not suggest Piza Vallespir’s
contemplated instrument or tool “to exert a lateral or torsional force onto one
or more of the alignment elements.” Reply Br. 2 (citing Piza Vallespir
¶ 86). In particular, Appellant asserts that Chao does not disclose that
Appeal 2020-005950
Application 15/964,270

5
connector 200 exerts a lateral or torsional force. Id. Appellant argues,
moreover, that Piza Vallespir does not suggest a “clamping” instrument, and
if Chao is “only relied on for teaching” such a “clamping instrument,” then
the Examiner’s reliance on Chao is misplaced and is rejection is deficient.
Id. at 9.
Appellant has the better position. The Examiner’s rejection states that
Chao’s connector is representative of the instrument that is mentioned in
paragraph 86 of Piza Vallespir, and proposes to use Chao’s connector
consistent with the teachings of Piza Vallespir. See Ans. 11–12. Paragraph
86 of Piza Vallespir discloses examples of aligning the levers or alignment
elements 20, and in particular discloses that “distal portions 20b of the
alignment elements 20 are drawn together in general alignment with one
another and the first reduction rod 22 is inserted through the distal end
portions of each of the slots 54 in the alignment elements 20.”
Piza Vallespir ¶ 86. This paragraph also discloses that, “to facilitate
alignment of the distal portions 20b with one another, the alignment
elements 20 may be manually grasped and manipulated by the surgeon
and/or an instrument or tool may be used to exert a lateral or torsional force
onto one or more of the alignment elements 20.” Id.
In the Answer, the Examiner repeatedly asserts that “the examiner is
only relying on Chao to show that a clamping instrument for clamping levers
and keeping them aligned similar to the one suggested for use by paragraph
[0086] of Piza Vallespir was known before the time of the invention.” Ans.
14; see also Ans. 12. Thus, we understand that the Examiner is relying on
Chao for the teaching of “an instrument or tool [that] may be used to exert a
lateral or torsional force onto one or more of the alignment elements 20” to
Appeal 2020-005950
Application 15/964,270

6
align the levers. In support of this position, the Examiner cites to paragraph
47 and Figures 8 and 9 of Chao. Ans. 11.
Paragraph 47 of Chao states, “[w]hen the connector 200 is in the
closed position, as illustrated in FIGS. 9 and 10, the first arcuate surface
240A and the second arcuate surface 240B are spaced apart a distance
sufficient to retain the instrument within the second receiving element
202B.” Chao ¶ 47. Figure 8 of Chao illustrates an exemplary connector
200, and Figure 9 illustrates the connector in the closed position and
connecting two levers. Id. ¶¶ 15–16. However, paragraph 47 of Chao and
Figures 8 and 9 of Chao relate to the connector in a closed position, and do
not suggest that connector 200 may be used to exert a lateral or torsional
force onto one or more of the levers, as is required of the undisclosed
instrument of Piza Vallespir. Nor do we discern this teaching from any
other portion of Chao. Thus, the Examiner’s stated reasoning for the
proposed modification, “to facilitate alignment and joint rotation of the
levers” by using “an instrument or tool . . . to exert a lateral or torsional
force onto one or more of the alignment elements 20” is not supported by
rational underpinnings. Final Act. 3. Accordingly, we agree with Appellant
that the Examiner has not established that it would have been obvious to
look to Chao for Piza Vallespir’s undisclosed instrument.
For these reasons, we do not sustain the rejection of claim 1, and the
rejection of claims 2–6, 13–16, and 21 depending therefrom, as unpatentable
over Piza Vallespir and Chao. Independent claim 17 recites substantially
similar limitations to those discussed above regarding the rejection of claim
1 (Appeal Br. 15–16 (Claims App.)), and, for the same reasons, we do not
Appeal 2020-005950
Application 15/964,270

7
sustain the rejection of claim 17 and claims 20 and 22, which depend from
claim 17, as unpatentable over Piza Vallespir and Chao.

Rejection II (Piza Vallespir, Chao, and Hogg)
Claim 7 depends from claim 1 and further defines the invention. The
Examiner relies on Hogg to teach the limitations of claim 7. See Final Act.
8. The Examiner, however, does not rely on Hogg in any manner that would
overcome the shortcomings of the combination of Piza Vallespir and Chao
discussed above with respect to claim 1. See id. For the same reasons
discussed for Rejection I, we do not sustain Rejection II.
CONCLUSION
The Examiner’s rejections are reversed.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 13–17,
20–22
103(a) Piza Vallespir,
Chao
1–6, 13–17,
20–22
7 103(a) Piza Vallespir,
Chao, Hogg
7
Overall
Outcome:
1–7, 13–17,
20–22

REVERSED