Ex Parte Abernathie

Board of Patent Appeals and Interferences

Mar 9, 2012

11258697 (B.P.A.I. Mar. 9, 2012)

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.
11/258,697 10/26/2005 Dennis Lee Abernathie Nexxt-2 4482
91681 7590 03/12/2012
NEXXT Spine, LLC
6402 Bergeson Way
Indianapolis, IN 46278
EXAMINER
LUONG, PETER
ART UNIT PAPER NUMBER
3777
MAIL DATE DELIVERY MODE
03/12/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DENNIS LEE ABERNATHIE
__________

Appeal 2010-011541
Application 11/258,697
Technology Center 3700
__________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a surgical
navigation marker. The Examiner rejected the claims as anticipated and
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

Appeal 2010-011541
Application 11/258,697

2
Statement of the Case
“The present invention provides a surgical navigation marker having a
shaft with a head at one end and a point at the other. . . .The head of the
navigation marker has a depression formed therein, which is sized and
shaped for precise registration by an imaging or tracking system” (Spec. 4
¶ 12).
The Claims
Claims 1 and 3-14 are on appeal. Claim 1 is representative1 and reads
as follows:
1. A surgical navigation marker comprising:
a shaft portion having a first and second end, said
first end defining a point and said second end defining a
head portion of a marker, said head portion comprising a
depression defined in a surface thereof, said depression
being registrable by an imaging system; and
an opening extending from a surface of said
depression into an interior space of the head of said
marker, said opening capable of registration by the
imaging system.

The issues

A. The Examiner rejected claims 1, 3, and 4 under 35 U.S.C. § 102(b) as
anticipated by Allen2 (Ans. 3-4).
B. The Examiner rejected claims 1, 3, 4, and 14 under 35 U.S.C.
§ 102(b) as anticipated by Solar3 (Ans. 4-5).

1 Appellant states that “claims 3-14 stand or fall with claim 1”
(App. Br. 6).
2 George S. Allen, US 4,945,914, issued Aug. 7, 1990.
3 Solar et al., US 2004/0167391 A1, published Aug. 26, 2004.
Appeal 2010-011541
Application 11/258,697

3
C. The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as obvious
over Allen (Ans. 5).
D. The Examiner rejected claims 5 and 9 under 35 U.S.C. § 103(a) as
obvious over Allen and Marmulla4 (Ans. 5-6).
E. The Examiner rejected claims 6, 7, 10, and 11 under 35 U.S.C. §
103(a) as obvious over Allen and Burbank5 (Ans. 6).
F. The Examiner rejected claims 12 and 13 under 35 U.S.C. § 103(a) as
obvious over Allen and Carson6 (Ans. 6-7).
G. The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as obvious
over Allen and Solar (Ans. 7).
H. The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as obvious
over Solar (Ans. 7-8).
I. The Examiner rejected claims 5 and 9 under 35 U.S.C. § 103(a) as
obvious over Solar and Marmulla (Ans. 8).
J. The Examiner rejected claims 6, 7, 10, and 11 under 35 U.S.C.
§ 103(a) as obvious over Solar and Burbank (Ans. 8-9).
K. The Examiner rejected claims 12 and 13 under 35 U.S.C. § 103(a) as
obvious over Solar and Carson (Ans. 9).
A. and B. 35 U.S.C. § 102(b) over Allen or Solar
Since both of the prior art rejections turn in substantial part on the
same claim interpretation issue, we consider these rejections together.

4 Marmulla et al., US 2002/0183608 A1, published Dec. 5, 2002.
5 Burbank et al., US 6,725,083 B1, issued Apr. 20, 2004.
6 Christopher P. Carson, US 2002/0198451 A1, published Dec. 26,
2002.
Appeal 2010-011541
Application 11/258,697

4
The Examiner finds that “Allen discloses a surgical navigation marker
(fig 1 b) comprising a shaft portion (10) having a first (14) and second end
(12), said first end defining a point and said second end defining a head
portion of said marker, said head portion comprising a depression” (Ans. 4).
The Examiner finds that the depression is “registratable by an imaging
system” (Ans. 4).
The Examiner finds that “Solar et al. discloses a surgical navigation
marker (100) comprising a head portion (104), a shaft (106), the head
portion comprising a depression (102) and an opening extending from a
surface of said depression into an interior space of the head of said marker,
said opening capable of registration by an imaging system” (Ans. 4).
Appellant contends that the “Examiner’s construction of the term
‘opening’ is not reasonable by any standard” (App. Br. 8). Appellant
contends that “[d]efining the ‘opening’ as the void formed by the depression
renders the last limitation in claim 1 pointless. [The Examiner’s
interpretation] eliminated a positively recited, and clearly described,
structural feature of Applicant’s surgical navigation marker - the opening
that is distinct from the depression” (App. Br. 8).
Appellant contends that “Allen ‘914 only discloses one ‘indentation
16 in the shape of a polygon recess’ - i.e., an Allen wrench recess. Since the
indentation 16 is intended to receive a driving tool there is no reason to add
another opening to the indentation.” (App. Br. 11).
Appellant contends that “Solar ‘391 only discloses one ‘depression’,
but does not disclose the ‘opening’ required by a properly construed claim 1.
Appeal 2010-011541
Application 11/258,697

5
Since Solar ‘391 does not disclose every limitation of claim 1, it cannot
anticipate claim 1” (App. Br. 12).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s finding that either Allen or Solar anticipates claim 1?
Findings of Fact
1. The Specification teaches that “the surgical navigation marker
further includes an opening extending from a surface of the depression into
the body of the surgical navigation marker” (Spec. 4 ¶ 13).
2. The Specification teaches that “[w]hether an opening 20 is
present, or a point is defined by depression 18 itself, it is not necessary that
the bottom of depression 18 have any particular size or shape” (Spec. 8 ¶
31).
3. The Specification teaches that
Any number of modifications to the shape or size of
depression 18 or opening 20 will be apparent to those of
skill in the art upon reading this disclosure, and it is
contemplated that such modifications are within the spirit
and scope of the present invention. In addition, while
depression 18 is generally annular, it is contemplated that
depression 18 may be of any geometric shape or design that
is susceptible to suitable registration by an imaging or
tracking system.

(Spec. 9 ¶ 34).
4. Allen teaches that in “FIG. 1, there is shown a fiducial implant
10 for the human body that is detectable by an imaging system. The fiducial
implant comprises a first portion 12 and a second portion 14” (Allen, col. 4,
ll. 63-66).
5. Figures 1a, 1b, and 1c of Allen are reproduced below:
Appeal 2010-011541
Application 11/258,697

6

“FIGS. 1a, lb. and 1c show side and overhead views of fiducial implants”
(Allen, col. 4, ll. 37-38).
6. Allen teaches that “[w]here anchor 14 is a screw, preferably an
indention 16 in the shape of a polygon recess to receive an allen wrench is
located in marker 12” (Allen, col. 7, ll. 66-68).
7. Figure 1A of Solar is reproduced below:

“FIG. 1A is a schematic diagram illustrating generally one example of an
imagable fiducial marker that includes a built-in conical divot or other male
or female receptacle” (Solar 2 ¶ 0011).
8. Figure 17 of Solar is reproduced below:
Appeal 2010-011541
Application 11/258,697

7

“FIG. 17 is a side cross-sectional view of an alternative example of a
fiducial marker” (Solar 2 ¶ 0034).
9. Solar teaches that in
FIGS. 17-18, the fiducial marker 1700 includes a
substantially spherical head 1702. The head 1702 includes a
conical or other divot 1704 at its proximal side, and a shaft
1706 extending outwardly from its distal side. In this
example, the shaft 1706 includes a proximal portion 1708
and a threaded distal tip portion 1710. The proximal portion
1708 and the threaded distal tip portion 1710 are separated
by a shoulder or other seat 1712

(Solar 9 ¶ 0103).
Appeal 2010-011541
Application 11/258,697

8
10. Solar teaches that “the divot 1704 of the head 1702 includes
rotational engagement features, such as slots 1714, for receiving a Phillips
and/or flathead screwdriver or other driver” (Solar 9 ¶ 0103).
11. Figure 18 of Solar is reproduced below:

“FIG. 18 is a top view of . . . the fiducial marker of FIG. 17” (Solar 2 ¶
0035).
Principles of Law
Anticipation under 35 U.S.C. § 102(e) requires that “each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil
Co., 814 F.2d 628, 631 (Fed.Cir.1987).
“Where a claim lists elements separately, ‘the clear implication of the
claim language’ is that those elements are ‘distinct component[s]’ of the
patented invention”. Becton, Dickinson and Co. v. Tyco Healthcare Group,
LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010).

Appeal 2010-011541
Application 11/258,697

9
Analysis
Claim Interpretation
Claim interpretation is at the heart of patent examination because
before a claim is properly interpreted, its scope cannot be compared to the
prior art. In this case, Appellants challenge the Examiner’s interpretation of
the phrase “an opening extending from a surface of said depression” in claim
1 (see App. Br. 7-8).
During prosecution, claim terms are given their broadest reasonable
interpretation as they would be understood by persons of ordinary skill in the
art in the light of the Specification. Therefore, we first turn to the
Specification to determine whether the meaning of the phrase “an opening
extending from a surface of said depression” can be discerned.
The Specification teaches that “the surgical navigation marker further
includes an opening extending from a surface of the depression into the body
of the surgical navigation marker” (Spec. 4 ¶ 13; FF 1).
Appellant contends that “[d]efining the ‘opening’ as the void formed
by the depression renders the last limitation in claim 1 pointless. [The
Examiner’s interpretation] eliminated a positively recited, and clearly
described, structural feature of Applicant’s surgical navigation marker - the
opening that is distinct from the depression” (App. Br. 8).
The Examiner “interprets the depression to comprise of an opening,
i.e. void of solid matter caused by the depression” (Ans. 10).
We find that the Appellant has the better position here. While we
appreciate the Examiner’s point, it is disfavored to interpret a single element
as satisfying two different limitations in a claim. See CAE Screenplates, Inc.
Appeal 2010-011541
Application 11/258,697

10
v. Heinrich Fiedler GmbH & Co., 224 F.3d 1308, 1317 (Fed.Cir.2000) (“In
the absence of any evidence to the contrary, we must presume that the use of
... different terms in the claims connotes different meanings.”).
Anticipation - Allen
Allen teaches a fiducial marker with “an indention 16 in the shape of a
polygon recess to receive an allen wrench is located in marker 12” (Allen,
col. 7, ll. 66-68; FF 6). The indentation is reasonably interpreted as a
depression in the fiducial marker. However, the Examiner does not identify
an additional “opening” as required by our interpretation of claim 1. We
therefore agree with Appellant that “Allen ‘914 only discloses a
‘depression’, but does not disclose the ‘opening’ required by a properly
construed claim 1” (App. Br. 11).
We reverse the rejection of claim 1 as anticipated by Allen.
Regarding the obviousness rejections which rely on the same teachings in
Allen, they are reversed, since the Examiner does not explain how they
address the shortcoming of Allen.
Anticipation – Solar
Solar teaches that in
FIGS. 17-18, the fiducial marker 1700 includes a
substantially spherical head 1702. The head 1702 includes a
conical or other divot 1704 at its proximal side, and a shaft
1706 extending outwardly from its distal side. In this
example, the shaft 1706 includes a proximal portion 1708
and a threaded distal tip portion 1710. The proximal portion
1708 and the threaded distal tip portion 1710 are separated
by a shoulder or other seat 1712

Appeal 2010-011541
Application 11/258,697

11
(Solar 9 ¶ 0103; FF 9). Solar teaches that “the divot 1704 of the head 1702
includes rotational engagement features, such as slots 1714, for receiving a
Phillips and/or flathead screwdriver or other driver” (Solar 9 ¶ 0103; FF 10).
Consistent with figure 17 of Solar (see FF 8), divot 1704 of the
fiducial marker 1700 is reasonably interpreted as the depression required by
claim 1, while the slot 1714 located within the divot 1704 is reasonably
interpreted as an opening, which extends from the lower surface of the divot
1704 into an interior space of the head of the marker (FF 8-11). Consistent
with the Specification, which recognizes that no particular shape is required
for registration by an imaging system (FF 2-3), the slot 1714 will inherently
satisfy the functional requirement of being “capable of registration by the
imaging system”.
We affirm the rejection of claim 1 as anticipated by Solar. Regarding
the obviousness rejections which rely on Solar, they are affirmed, since
Appellant acknowledges that “the remaining claims 3-14 stand or fall with
claim 1” (App. Br. 6).
SUMMARY
In summary, we reverse the rejection of claims 1, 3, and 4 under 35
U.S.C. § 102(b) as anticipated by Allen.
We therefore also reverse the rejection of
 claim 8 under 35 U.S.C. § 103(a) as obvious over Allen.
 claims 5 and 9 under 35 U.S.C. § 103(a) as obvious over
Allen and Marmulla.
 claims 6, 7, 10, and 11 under 35 U.S.C. § 103(a) as
obvious over Allen and Burbank.
Appeal 2010-011541
Application 11/258,697

12
 claims 12 and 13 under 35 U.S.C. § 103(a) as obvious
over Allen and Carson.
We affirm the rejection of claim 1 under 35 U.S.C. § 102(b) as
anticipated by Solar. Pursuant to 37 C.F.R. § 41.37(c)(1), we also affirm the
rejection of claims 3, 4, and 14 as these claims were not argued separately.
We also affirm the rejections not separately argued of
 claim 14 under 35 U.S.C. § 103(a) as obvious over Allen
and Solar.
 claim 8 under 35 U.S.C. § 103(a) as obvious over Solar.
 claims 5 and 9 under 35 U.S.C. § 103(a) as obvious over
Solar and Marmulla.
 claims 6, 7, 10, and 11 under 35 U.S.C. § 103(a) as
obvious over Solar and Burbank.
 claims 12 and 13 under 35 U.S.C. § 103(a) as obvious
over Solar and Carson.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED
lp