Ex Parte Alcock et al

Patent Trial and Appeal Board

Nov 12, 2014

12327710 (P.T.A.B. Nov. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BEN ALCOCK and THOMAS NYDEGGER1
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Appeal 2012-006015
Application 12/327,710
Technology Center 3700
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Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and
ROBERT A. POLLOCK, Administrative Patent Judges.

POLLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1, 3–12 and 14–22 as unpatentable. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
STATEMENT OF THE CASE
Appellants’ invention relates to a system for stabilizing a vertebral
segment of the spine. Representative claims 1 and 15 are reproduced in the
Claims Appendix of Appellants’ Brief.

1 According to Appellants, the Real Party in Interest is Zimmer GmbH.
(App. Br. 3).
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The following grounds of rejection are before us for review:
Claim 1, 6–11, and 15-22 stand rejected under 35 U.S.C. §102(b) as
anticipated by Trieu.2
Claims 3–5, 12, and 14 stand rejected under 35 U.S.C. §103(a) as
obvious in view of Trieu.
FINDINGS OF FACT
Specification
FF1. Appellants’ invention relates to a dynamic stabilization system for
stabilizing a vertebral segment of the spine comprising (1) a first
vertebral anchor; (2) a second vertebral anchor; and (3) a cord connecting
the first and second vertebral anchors, wherein the cord has a variable
stiffness through a range of displacement and the stiffness of the cord
increases with increasing tensile force. (Spec. Abstract.)
FF2. In some embodiments, the system further includes a spacer positioned
between the first and second anchor though which the cord extends. (Id.)
Figure 1 of the Specification, reproduced below, is illustrative.

Figure 1 shows vertebral anchors 12a and 12b connected by cord 30.
Cord 30 traverses spacer 24, which separates the two anchors. (See Spec.
5:15-6:16.) Cord 30 may include “a first phase of stiffness A through a

2 Trieu et al., US 2007/0270821 A1, published Nov. 22, 2007.
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first range of displacement (e.g., elongation, strain) and/or tensile
loading, a second phase of stiffness B through a second range of
displacement and/or tensile loading, and a third phase of stiffness C
through a third range of displacement and/or tensile loading.” (Id. 8:27-
30.)
FF3. “[T]he term stiffness of the cord is intended to refer to the tensile
force (i.e., load) divided by the displacement of the cord subjected to the
applied tensile force. Thus, stiffness (e.g., N/mm) equals force (e.g.,
Newtons) divided by displacement (e.g., millimeters).” (Id. 8:3-6.) “In
some embodiments, the first phase of stiffness A may be in the range of
about 0 N/mm to about 100 N/mm.” (Id. 10:7-8; see also claim 4.)
Trieu
FF4. Trieu discloses a stabilization system for the spine. (Trieu ¶ 29.)
Trieu Figure 1 is disclosed below.

As shown in Trieu Figure 1, vertebral fasteners 54 and 56 are anchored to
bony elements of the vertebrae by anchors 59 and 61, respectively.
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Vertebral fasteners 54 and 56 are connected with flexible connector 52. (Id.
¶ 32.)
FF5. An embodiment of flexible connector 52 is illustrated in Trieu Figures
2A and 2B, reproduced below.

Figures 2A and 2B show flexible connector 52 in relaxed and tensioned
states, respectively. (Id. ¶ 34.) In this embodiment, connector 52
comprises a braid of elastic fibers 58 and inelastic fibers 60. (Id. ¶ 33.)
Trieu states that:
As the distance between the fasteners 54, 56 increases, the
amount of slack in the inelastic fibers 60 decreases. When
substantially all of the slack is taken-up, the inelasticity of
the taut inelastic fibers will resist further displacement of
fasteners 54, 56 from one another. This resistance to further
displacement is additive with the resistance to stretching
present in the elastic fibers 58. As a result, the exemplary
connector operates according to a non-linear stress-strain
curve. In other words, the connector is constructed such that
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the resistance to an applied tensile force exists in a non-linear
pattern to limit excessive motion and the onset of instability.
(Id.)
FF6. Trieu Figures 3A and 3B are reproduced below.

Trieu Figures 3A and 3B show flexible connector 52′ in relaxed and
tensioned states, respectively. (Id. ¶¶ 35–36.) In this embodiment,
connector 52′ has “a generally cylindrical elastic core 62 with inelastic
fibers 64 wrapped in a sleeve therearound.” (Id. at 35.)
As shown in FIG. 3B, when a tensile force is applied to the
connector, the elastic properties of the elastic core 62 allow
the elastic core to stretch. Contrastingly, the inelastic fibers
wrapped around the elastic core will not stretch, i.e., fiber
length remains fixed, but the fibers are drawn together and,
while doing so, compress against the outer surface of the
elastic core. Accordingly, the compression of the inelastic
fibers against the elastic core provides an increased
resistance to displacement of the fasteners from one another.
(Id.)
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FF7. Trieu states that “elastic” and “inelastic” are relative terms and that
“materials used for the inelastic fibers may have elasticity albeit reduced
relative to the elasticity of the elastic materials.” (Id. ¶ 33.) Trieu further
teaches that
a desired elasticity response for the connector 52 may be
achieved by utilizing various types of elastic and inelastic
materials in a single implementation. That is, the invention is
not limited to a connector having a single type of elastic fiber
and a single type of inelastic fiber.
(Id.)
ANALYSIS
To the extent not otherwise set forth below, we disagree with
Appellants’ conclusions and adopt as our own the factual findings and
analysis set forth in the Examiner’s Answer. For emphasis, we highlight and
address the following.
Rejection of Claims 1, 6, 10, 11, and 22 Under 35 U.S.C. § 102(b)
Independent claims 1, 10, and 22 require that a cord extending
between the first and second vertebral anchors exhibit three phases of
stiffness. Appellants do not independently argue claim 6, which stands or
falls with claim 1. Claim 11 stands or falls with claim 10. (See App. Br.
11–12.)
Appellants contend that Trieu fails to disclose a cord having “a first
phase of stiffness through a first range of displacement, a second phase of
stiffness through a second range of displacement, and a third phase of
stiffness through a third range of displacement” wherein, “the stiffness of the
cord in the second phase progressively increases from the stiffness in the
cord in the first phase to the stiffness in the cord in the third phase” as set
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forth in claim 1, and similar language in claims 10 and 22. (App. Br. 8–10;
Reply 2.) We are not persuaded by Appellants’ arguments.
With respect to the three phases of stiffness, Appellants concede that
Trieu discloses two phases of stiffness. With respect to Trieu Figures 2A
and 2B, one phase occurs where there is tension on the elastic fibers 58, but
at least some slack remains in the inelastic fibers 60; another phase occurs
when the inelastic fibers 60 are no longer slack and provide additive
resistance to the displacement of fasteners 54 and 56. (App. Br. 7–8; Reply
3.) The Examiner, however, finds that the relaxed state, when the inelastic
fibers are not stretched or under tension, comprises yet another phase of
stiffness—i.e., the first of the three phases as claimed. (Reply 10–11
(referencing Trieu Figures 2A, 3A, 4A).)
Appellants argue that the Examiner’s interpretation is unreasonably
broad. (App. Br. 3–4.) We are not persuaded by Appellants’ argument. The
Specification discloses that the stiffness in the first phase may be “about 0
N/mm,” which we interpret to encompass a relaxed state in which the cord is
under neither tension nor compression. (See FF3.) Claim 4 on appeal
likewise encompasses a first phase of stiffness of “about 0 N/mm.” (Id.)
Appellants further argue that Trieu fails to teach “the stiffness of the
cord in the second phase progressively increases from the stiffness in the
cord in the first phase to the stiffness in the cord in the third phase” (App.
Br. 8–11; Reply 3) or, similarly, with respect to claim 11, that the cord has
“a variable stiffness throughout the first, second and third ranges of tensile
loading” (App. Br. 11–12). In particular, Appellants contend that, applying
Hooke’s Law to the embodiment set forth in Trieu Figure 2A and 2B
provides “a first constant value through a first range of displacement and a
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second constant value through a second range of displacement.” (App. Br.
9–11 and 11–12 (with respect to claim 11); see also, Reply 3.) Appellants
further argue that “the arrangements of cited-to Figures 3A–4B would
appear to lead to an abrupt, drastic change in stiffness as formerly slack
inelastic fibers are drawn taut.” (Id.)
As an initial matter, because Appellants’ assertions regarding the
functional characteristics of the Trieu embodiments and the application of
Hooke’s Law are unsupported by declaration testimony or other evidence of
record, they are entitled to little probative value. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997). Further, with respect to Figures 3A and 3B of
the reference, Trieu states that
when a tensile force is applied to the connector, the elastic
properties of the elastic core 62 allow the elastic core to
stretch. Contrastingly, the inelastic fibers wrapped around the
elastic core will not stretch, i.e., fiber length remains fixed,
but the fibers are drawn together and, while doing so,
compress against the outer surface of the elastic core.
Accordingly, the compression of the inelastic fibers against
the elastic core provides an increased resistance to
displacement of the fasteners from one another.
(Triue ¶ 36; FF6.) Considering this disclosure, the Examiner finds that
“when the inelastic fibers compress against the core, the stiffness of the cord
increases as a result of increased resistance to displacement (para. 0035-
0036, see Figures 3A-3B).” (Ans. 10–11.)
In light of the above, we find that the Examiner provides a sufficient
factual basis and technical reasoning to support a determination that Trieu
discloses “a first phase of stiffness through a first range of displacement, a
second phase of stiffness through a second range of displacement, and a
third phase of stiffness through a third range of displacement” wherein, “the
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stiffness of the cord in the second phase progressively increases from the
stiffness in the cord in the first phase to the stiffness in the cord in the third
phase,” as claimed. We therefore, affirm the rejection of claims 1, 6, 10, 11,
and 22.
Rejection of Claims 8, 9, and 15–21 Under 35 U.S.C. § 102(b)
Independent claim 15 and its dependent claims require both “a spacer
placed in compression between the first and second vertebral anchors” and
“a cord sized for insertion through the spacer.” Similarly, claims 8 and 9,
directly or indirectly depending from claim 1, recite “a spacer surrounding a
portion of the cord” and a cord “sized for insertion through the lumen of the
spacer,” respectively. With reference to Trieu Figures 3A and 3B, the
Examiner’s rejection equates the claimed spacer with the “sleeve of inelastic
fibers – 64.” (Reply 13.) Appellants contend that Trieu does not teach or
suggest elements involving a spacer as set forth in claim 15. (App. Br. 12.)
We agree with Appellants.
“In the absence of any evidence to the contrary, we must presume that
the use of ... different terms in the claims connotes different meanings.”
CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d
1308, 1317 (Fed. Cir. 2000). Thus, in Trieu Figures 3A and 3B, inelastic
fibers 64 cannot be both a spacer and a cord sized for insertion through that
spacer, as required by claim 15. “A claim is anticipated only if 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. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). For the
reasons set forth above we find that the Examiner has failed to establish a
prima facie case of anticipation with respect to claims 8, 9, and 15–21.
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Rejection of Claims 3–5, 12, and 14 Under 35 U.S.C. § 103(a)
Claims 3–5, 12, and 14, are directed to specific numerical ranges
relating to cord stiffness, modulus elasticity, and tensile loading. The
Examiner notes that Trieu does not teach the claimed ranges but,
nevertheless, “discloses wherein a desired elasticity response for the
connector may be achieved by utilizing various types of elastic and inelastic
materials.” (Reply 15.) The Examiner thus, finds that one of ordinary skill
using routine skill would have found it obvious to discover optimum or
workable ranges for maintaining the desired degree of mobility of the
vertebral segment. (Id.) Appellants argue that the Examiner fails to provide
any rational underpinning to support this determination and merely asserts
“that one could modify Trieu et al. to achieve the claimed ranges, which is
clearly an improper ground for obviousness.” (App. Br. 156.)
We are not persuaded by Appellants’ argument. The discovery of an
optimum variable in a known process is normally obvious. (In re Aller, 220
F.2d 454, 456 (CCPA 1955.) (“[I]it is not inventive to discover the optimum
or workable ranges by routine experimentation.”.) Exceptions to this rule
exist where the claimed ranges are “critical” and “produce a new and
unexpected result” (id.); where the parameter optimized was not recognized
to be a result-effective variable (see In re Antonie, 559 F.2d at 620); or
where the discovery of the ranges required something more than routine
experimentation (see Pfizer, Inc. v. Apotex Inc., 480 F.3d 1348 (Fed. Cir.
2007). As Appellants’ do not argue any exception to the general rule, we
affirm the Examiner’s rejection of claims 3–5, 12, and 14.
Rejection of Claims 7 and 17 Under 35 U.S.C. § 102(b) Claim 7 requires
“a first set subset of filaments [ ] located in an outer braided layer of the
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cord, and the second subset of filaments [ ] located in an inner braided layer
of cord.” The Examiner rejects claim 7 as obvious in view of Trieu Figures
2A and 2B, disclosing a cord comprising a braid of elastic and inelastic
fibers, wherein elastic fibers 58 form the inner layer of the braid and
inelastic fibers 60 form the outer layer of the braid. (Reply 12.) Appellants
argue that the Examiner errs because “[t]he elastic and inelastic fibers 58, 60
are included in a single braided layer.” (App. Br. 10; see also, Reply 12.)
Applying the broadest reasonable construction in light of the
Specification, we do not construe claim 7 as requiring the segregation of the
first and second subsets of filaments into distinct and separate braided
layers. In accord with the Examiner’s finding, the elements of dependent
claim 7 are satisfied by Trieu Figures 2A, 2B, and related disclosure. Our
determination is informed by the language of Appellants’ claim 17, which
states that “the cord further includes an outer braided member surrounding
the inner braided member.” In contrast to the broader language of claim 7,
claim 17 requires an inner braided member (including a first plurality of
filaments) and a distinct and separate outer braided member (including a
second plurality of filaments). In light of this construction, we agree with
Appellants that the Examiner has not shown that Trieu suggests or teaches
the “outer braided member surrounding the inner braided member” recited in
claim 17.

SUMMARY
We affirm the rejection of claims 1, 6, 7, 10, 11, and 22 under 35
U.S.C. § 102(b) as unpatentable over Trieu.
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We reverse the rejection of claims 8, 9, and 15–21 under 35 U.S.C.
§ 102(b) as unpatentable over Trieu.
We affirm the rejection of claims 3–5, 12, and 14 under 35 U.S.C.
§ 103(a) as unpatentable over Trieu.

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).

AFFIRMED-IN-PART

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