Cotera, Inc.

Patent Trials and Appeals Board

Aug 4, 2020

2020000533 (P.T.A.B. Aug. 4, 2020)

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.
15/295,560 10/17/2016 Vivek Shenoy 14151-012USC1 3045
21918 7590 08/04/2020
DOWNS RACHLIN MARTIN PLLC
199 MAIN STREET
P O BOX 190
BURLINGTON, VT 05402-0190
EXAMINER
CARTER, TARA ROSE E
ART UNIT PAPER NUMBER
3773
NOTIFICATION DATE DELIVERY MODE
08/04/2020 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):
USPTO@dockettrak.com
patip@drm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VIVEK SHENOY, HANSON S. GIFFORD III, and
MARK DEEM
Appeal 2020-000533
Application 15/295,560
Technology Center 3700
Before KEVIN F. TURNER, BRETT C. MARTIN, and
BRANDON J. WARNER, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1−23. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real parties in interest as Foundry, LLC and
Moximed, Inc. Appeal Br. 1.
Appeal 2020-000533
Application 15/295,560
2
CLAIMED SUBJECT MATTER
The claims are “directed to an interventional technique and an implant
for altering biomechanics of the spine to provide a therapeutic effect.” Spec.
¶ 2. Claim 6 (and claim 1 from which it depends), reproduced below, is
illustrative of the claimed subject matter:
1. A method of treating the spine to reduce loading in a
targeted region of the spine, comprising:
selecting at least one of the muscles or connective tissues
extending posteriorly along the spine as target tissue for
treatment;
guiding a prosthesis over a guidewire to a fixation position
along the spine in engagement with the target tissue;
fixing the prosthesis at said fixation position in
engagement with the target tissue without cutting bone; and
displacing, without cutting bone, said target tissue with
said prosthesis sufficiently to alter the location, angle or
magnitude of forces exerted by the target tissue thereby reducing
loading in said targeted region.

6. The method of claim 1, wherein said displacing comprises
displacing said target tissue posteriorly by between about 10 mm
and to about 30 mm relative to the natural path of said target
tissue to redistribute a load through the intervertebral disk.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kim
Peterman
Lee
McCormack
Bennett
Butler
US 2006/0085069 A1
US 2006/0235387 A1
US 2008/0033552 A1
US 2008/0208341 A1
US 2008/0262549 A1
US 2009/0082808 A1
Apr. 20, 2006
Oct. 19, 2006
Feb. 7, 2008
Aug. 28, 2008
Oct. 23, 2008
Mar. 26, 2009

Appeal 2020-000533
Application 15/295,560
3
REJECTIONS
I. Claims 1–3, 5, 6, 13, and 14 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Bennett. Final Act. 2.
II. Claims 1, 2, 4, 7, 8, and 10–13 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by McCormack. Final Act. 5.
III. Claims 1, 2, and 7–9 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Kim. Final Act. 7.
IV. Claim 20 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Butler. Final Act. 9.
V. Claims 15–18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over McCormack. Final Act. 11.
VI. Claims 15 and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Peterman and Lee. Final Act. 12.
VII. Claims 21–23 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Butler and McCormack. Final Act. 15.

OPINION
Unargued Rejections
Appellant does not argue rejections II–IV and VII, above. Appeal Br.
4. Accordingly, we summarily affirm these rejections. In addition,
Appellant only argues claim 62 of rejection I and so we summarily affirm
this rejection as to claims 1–3, 5, 13, and 14. Id.

2 We address the language of claim 1, infra, only to the extent that claim 6
contains its recitations by virtue of its dependence on claim 1.
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Application 15/295,560
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Bennett
Claim 6
Appellant first argues that Bennett does not select tissue as “target
tissue for treatment” as recited in claim 1. Appeal Br. 6. Appellant argues
that Bennett discloses tethers that “run around two spinous processes, but
otherwise extend only in the cranial-caudal direction primarily to treat
degenerative disc disease by restricting flexion of the treated spinal
segment.” Appeal Br. 5 (citing Bennett ¶ 66). Thus, according to Appellant,
Bennett does not target the claimed tissue for treatment because the purpose
of Bennett’s tether is not to work on the claimed muscles or connective
tissue, but rather to connect to and restrict flexion of adjacent vertebrae, i.e.,
bone.
Appellant next asserts that Bennett does not perform the “displacing”
step found in base claim 1 because any “incidental displacement of a
posterior-extending tissue incidental to the placement of the Bennett device
does not mean that the displacing is sufficient to alter one of the parameters
of the forces exerted by the target tissues so as to reduce loading as recited.”
Appeal Br. 6. More specifically, with regard to claim 6, Appellant asserts
that “[n]othing in the cited references discloses or suggests such a
posteriorly directed displacement as recited in claim 6.” Appeal Br. 7
(emphasis added). We agree with Appellant that, although there may be
incidental displacement as recited in claim 1, such displacement would not
occur posteriorly as claimed. At best, Bennett teaches restriction of flexion
in the cranial-caudal direction, but this is not displacement of any targeted
tissue in the posterior direction as found in claim 6. Accordingly, we do not
sustain the rejection of claim 6.
Appeal 2020-000533
Application 15/295,560
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McCormack
Claims 15–18
Appellant first argues that McCormack fails to anticipate claim 15
because it does not “posteriorly displace the connective tissue by a specific
amount to achieve a stated effect.” Appeal Br. 9. We note, however, that,
although claim 6 recites such posterior displacement, claim 15 is silent
regarding any particular direction, stating only that the implant is
“dimensioned so as to displace said connective tissue from a pre-treatment
anatomical path by a displacement distance of more than about 10 mm.”
Accordingly, we find this argument unpersuasive as it is not commensurate
with the scope of claim 15.
Appellant also argues “that in McCormack there is no teaching to
purposefully displace a posteriorly positioned muscle or connective tissue as
recited.” Appeal Br. 10. As the Examiner points out, however, McCormack
teaches that “the space between the facets is increased (see figure 4 []) and,
thus, the capsular ligament is also displaced/moved.” Ans. 10 (citing
McCormack ¶ 54). This particular capsule/capsular ligament is located
posteriorly as claimed and because it is stretched, it is therefore moved from
its natural position.
Lastly, Appellant argues that the rejection is improper as to the
magnitude of displacement “[w]ithout first establishing that the prior art
explicitly recognized this parameter as a critical parameter.” Reply Br. 6.
The Examiner counters, however, that McCormack does recognize this as a
result-effective variable in that McCormack discloses that the increase in
space between the facets, and thus lengthening of the capsular ligament, can
be from about 1mm to over 3mm. Ans. 12. McCormack also “contemplates
that the devices and methods may also be used to increase foraminal
Appeal 2020-000533
Application 15/295,560
6
dimension in other regions of the spine, e.g., thoracic, lumbar, etc.” Id.
(citing McCormack ¶ 75). Thus, the Examiner concludes that “[t]he
displacement dimensions could be changed to achieve the desired stability to
the facet joint” by increasing to the claimed 10mm displacement. Appellant
does not argue that this is not possible in the cervical facet joint or in the
other disclosed locations such as the thoracic or lumbar regions.
Accordingly, we are not persuaded of error in the Examiner’s rejection of
claims 15–18 as obvious over McCormack and we sustain this rejection.
Peterman/Lee
Claims 15 and 19
As with McCormack, Appellant asserts that Peterman is deficient
because “[t]here is no teaching in Peterman to displace posterior connective
tissue further posteriorly.” Appeal Br. 10 (emphasis added). As noted
above, claim 15 does not require posterior displacement, merely
displacement. We agree with the Examiner that, as with McCormack,
Peterman’s device is intended to increase the facet space so as to provide
decompression in the space between vertebrae. Ans. 10. Any increase in
the facet height also increases the length of “any posterior muscle or
ligament group” associated with the facet at issue and thus displacement
from its natural position occurs, which would also affect the forces exerted
by any such muscle or ligament group in the targeted region as claimed.
Final Act. 13.
Appellant further argues that the Examiner’s rejection “relies on a
theory of optimization without first establishing the parameter as being
recognized by the prior art.” Reply Br. 6. As with McCormack, however,
the Examiner does point out that the facet height is specifically targeted for
decompression/increased height. Despite Lee being directed to lordosis, the
Appeal 2020-000533
Application 15/295,560
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Examiner is correct that “Lee further provides a formula used to determine
the displacement (length) of the extensor muscle to adjust the load (force) on
this posterior tissue which will affect the load on the facet joint and other
tissues of the posterior spine.” Ans. 17. Thus, the Examiner has identified a
result-effective variable and we agree that “[t]he displacement dimensions
could be changed to achieve the desired stability to the facet joint and
posterior spine segment.” Id.
In general, with respect to both rejections of claim 15, Appellant relies
on posterior displacement, which is not claimed. The only requirement of
claim 15 is displacement of posterior tissue and we agree with the Examiner
that lengthening of posterior connective tissue by decompression of the facet
joint as taught in the devices of McCormack, Peterman, and Lee is sufficient
to teach the claimed displacement. Accordingly, we likewise sustain this
rejection.
CONCLUSION
The Examiner’s rejections are AFFIRMED IN PART.
More specifically,
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5, 6,
13, 14
102(b) Bennett 1–3, 5, 13,
14
6
1, 2, 4, 7, 8,
10–13
102(b) McCormack 1, 2, 4, 7,
8, 10–13

1, 2, 7–9 102(b) Kim 1, 2, 7–9
20 102(b) Butler 20
15–18 103(a) McCormack 15–18
15, 19 103(a) Peterman, Lee 15, 19
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21–23 103(a) Butler, McCormack 21–23
Overall
Outcome:
1–5, 7– 23 6

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART