Ex Parte BarrusDownload PDFPatent Trial and Appeal BoardAug 29, 201814185193 (P.T.A.B. Aug. 29, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/185,193 02/20/2014 31554 7590 08/31/2018 CARTER, DELUCA, FARRELL & SCHMIDT, LLP 445 BROAD HOLLOW ROAD SUITE420 MELVILLE, NY 11747 Michael Barrus 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 1449-346 8371 EXAMINER HARVEY, TIJLIANNA NANCY ART UNIT PAPER NUMBER 3733 NOTIFICATION DATE DELIVERY MODE 08/31/2018 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): docket@cdfslaw.com bpuchaczewska@cdfslaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL BARRUS 1 Appeal2017-008693 Application 14/185, 193 Technology Center 3700 Before DONALD E. ADAMS, MICHAEL J. FITZPATRICK, and JOHN G. NEW, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant states that the real party-in-interest is K2M, Inc. App. Br. 1. Appeal2017-008693 Application 14/185, 193 SUMMARY Appellant files this appeal under 35 U.S.C. § I34(a) from the Examiner's Final Rejection of claims 1---6, 10, 11, 13-18, and 23. Specifically, claims 1-3, 10, 11, 13-18, and 23 stand rejected as unpatentable under 35 U.S.C. § I03(a) as being obvious over the combination of Matthis et al. (US 2008/0132957 Al, June 5, 2008) ("Matthis") and Richelsoph et al. (US 6,010,503, January 4, 2000) ("Richelsoph"). Claims 4--6 stand rejected as unpatentable under 35 U.S.C. § I03(a) as being obvious over the combination of Matthis, Richelsoph, and Felix et al. (US 2008/0243185 Al, October 2, 2008) ("Felix")2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. NATURE OF THE CLAIMED INVENTION Appellant's invention is directed to spinal fixation devices that are connectable to spinal rods used in spinal constructs. Spec. ,r 1. REPRESENTATIVE CLAIM Appellant argues claims 1-3, 10, 11, 13-18, and 23 together. App. Br. 11. Claim 1 is representative of the claims on appeal and recites: 2 Appellant makes no argument with respect to this rejection. See, e.g., App. Br. 11. We consequently summarily affirm the Examiner's rejection of claims 4--6. See 37 C.F.R. § 4I.37(c)(iv) ("[A]ny arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal). 2 Appeal2017-008693 Application 14/185, 193 1. A spinal fixation device, comprising: a body portion including a stud portion defining a first annular groove; an outer housing positionable on the stud portion; an inner housing having arms extending therefrom and defining a second annular groove, the arms defining a U-shaped slot configured to releasably receive a spinal rod, the inner housing positionable between the outer housing and the stud portion, the outer housing repositionable with respect to the inner housing between a first, unlocked position where the arms are permitted to flex to receive a spinal rod in the U-shaped slot and a second, locked position where the inner and outer housings are taper locked so that the arms are configured to grip a spinal rod disposed in the U-shaped slot; and a ring member positionable within each of the first and second annular grooves of the respective stud portion and inner housing to lock the inner housing to the stud portion and to fixedly couple the outer housing to the stud portion. App. Br. 12. ISSUES AND ANALYSES We are persuaded by, and expressly adopt, the Examiner's findings, reasoning and conclusions establishing that Appellant's claims are prima facie obvious over the combined cited prior art. We address the arguments raised by Appellant below. 3 Appeal2017-008693 Application 14/185, 193 Issue 1 Appellant contends that the Examiner erred because the proposed combination of Matthis and Richelsoph would render the bone anchoring device of Matthis unsatisfactory for its intended purpose. App. Br. 10. Analysis The Examiner finds that Matthis teaches a spinal fixation device, comprising: (1) a body portion including a stud portion defining a first annular groove; an outer housing positionable on the stud portion; (2) an inner housing having extending arms and defining a second annular groove, the arms defining a U-shaped slot configured to releasably receive a spinal rod, the inner housing positionable between the outer housing and the stud portion; and (2) a ring member positionable within each of the first and second annular grooves of the respective stud portion and inner housing to lock the inner housing to the stud portion and to fixedly couple the outer housing to the stud portion. Final Act. 3 (citing Matthis Figs. 10-11). The Examiner also finds that Matthis neither teaches nor suggests that the outer housing is repositionable with respect to the inner housing between a first, unlocked position where the upright arms are permitted to flex to receive a spinal rod in the U-shaped slot and a second, locked position where the inner and outer housings are taper locked so that the arms are configured to grip a spinal rod disposed in the U-shaped slot. Final Act. 5. The Examiner finds that Richelsoph teaches a spinal fixation device comprising: (1) a body portion including a stud portion; (2) an outer housing; (2) an inner housing positionable between the outer housing and the stud portion, the inner housing configured to fixedly couple the outer 4 Appeal2017-008693 Application 14/185, 193 housing to the stud portion. Final Act. 6. The Examiner finds Richelsoph further teaches that the inner and outer housing can assume a first, unlocked position in which the arms are permitted to flex to receive a spinal rod, and a second, locked position, in which the inner and outer housings are taper locked so that the arms grip the rod to secure the rod to the spinal fixation device. Id. ( citing Richelsoph Fig. 1 ). The Examiner also finds that, in the latter position, the inner and outer housings are substantially co-planar. Id. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art to combine the teachings of Matthis and Richelsoph because doing so would simplify the assembly of the spinal fixation device by eliminating the need for the securing element 61 of Matthis, which would also reduce the risk of unwanted in situ disassembly of the device due to backout of the securing element from the outer housing. Final Act. 6-7. Appellant argues that Matthis expressly teaches that "there is a need for a bone anchoring device with a shank and a head formed as separate parts which ... provides secure locking of the shank in the head after assembly." App. Br. 8 (quoting Matthis ,r 6). According to Appellant, the intended purpose of Matthis is to securely lock the shank of the bone anchoring device to the head after assembly. Id. Appellant contends that Matthis also teaches that secure clamping occurs only "after final locking with the securing element." Id. (quoting Matthis ,r 25). Specifically, Appellant points to paragraph [0047] of Matthis, which teaches: [D]uring tightening of the securing element 61 pressure acts on the second end 203b of the head 203. The head 203 is pressed toward the first end 40 of the receiving part 4. Due to the tapering shape of the longitudinal bore 42 and to the slits 235 provided in 5 Appeal2017-008693 Application 14/185, 193 the head 203, the head 203 is compressed and the shank 202 becomes securely locked in the head 203. Id. Appellant contends that the modification of Matthis, proposed by the Examiner, to remove the securing element 61 and rely solely on the taper lock structure described in Richelsoph would prohibit the shank 202 of Matthis from being securely locked in the head 203 as taught by Matthis. Id. Appellant further asserts that there is no other disclosure in Matthis where the shank 202 is securely locked in the head 203. Id. Appellant contends that eliminating the securing element 61 of Matthis and replacing it with the rod receiving mechanism 12 ofRichelsoph, would preclude secure locking of the shank 202 with the head 203, as intended by Matthis by means of the securing element 61, and therefore, would render Matthis' bone anchoring device unsatisfactory for its intended purpose. We disagree. Matthis teaches: The ring 7 is provided as a snap ring which has a substantially annular shape with a clearance 70, as can be seen in FIG. 4c. The ring 7 has a substantially rectangular cross section and is shaped such that it fits in the groove 24 on the second portion 23 of the shank 2 and in the groove 34 in the cylindrical bore 31 of the head 3. Due to the clearance 70 the ring 7 has certain flexibility, i.e.[,] its diameter can be enlarged and decreased by a certain amount. Matthis ,r 26. Matthis further teaches that: The assembly of receiving part 4, head 3, ring 7 and pressure element 5 can then be connected to the shank 2 by guiding the second portion 23 of the shank 2 into the cylindrical bore 31 of the head 3. The beveled shape of the upper free end 27 of the shank 2 facilitates insertion. During insertion the head 3 and the 6 Appeal2017-008693 Application 14/185, 193 ring 7 are slightly expanded by the second portion 23 of the shank until the ring 7 snaps into the groove 24 of the second portion 23 of the shank. In this condition the ring 7 rests in the groove 24 of the end portion of the shank 2 and in the groove 34 of the head 3. As a result, the shank 2 is prevented from retracting again from the head 3 by form-locking engagement of the ring 7 in the groove 34 in the head 3. Id. at ,r 30. Figure 11 of Matthis is reproduced below. 203b 223 /61 \ W3o '-... 202 Figure 11 of Matthis depicts a sectional view of the upper part of the third embodiment in an assembled state Matthis thus expressly teaches that it is the ring 7, engaging the annular grooves of both the shank (i.e., the stud) and the inner bore of the head (i.e., the inner housing) of the device that holds the shank and head together, and not the securing element 61. This is consistent with Appellant's claim 1, which recites, in relevant part: "a ring member positionable within each of the first and second annular grooves of the respective stud portion and inner housing to lock the inner housing to the stud portion and to fixedly couple the outer housing to the stud portion." 7 Appeal2017-008693 Application 14/185, 193 Moreover, we do not agree with Appellant's contention that replacing the securing element 61 of Matthis with the rod receiving mechanism 12 of Richelsoph would render Matthis' bone anchoring device unsatisfactory for its intended purpose. Both elements in the respective references serve to secure a spinal rod in place to the anchor. As the Examiner points out, the mechanism of Richelsoph is advantageous because doing so would: "eliminate[ e] the need for the securing element 61 of Matthis, which would also reduce the risk of unwanted in situ disassembly of the device due to backout of the securing element from the outer housing." See Final Act. 7. We therefore do not find Appellant's argument persuasive. Issue 2 Appellant argues the Examiner erred because the combination of Matthis and Richelsoph would change the principle of operation of Matthis' bone anchoring device. App. Br. 10. Analysis Appellant repeats the argument presented in the preceding section and argue modifying Matthis' bone anchoring device to replace the securing element 61 with the taper lock configuration of Richelsoph, as proposed by the Examiner, would entirely change the principle of operation of Matthis' bone anchoring device. App. Br. 10. Specifically, the taper lock configuration of Richelsoph requires an entirely different mode of operation than using a securing element 61, as disclosed by Matthis. Id. We disagree. Matthis is directed to: "[a] bone anchoring device includes a shank to be anchored in a bone or vertebra, a head, and a 8 Appeal2017-008693 Application 14/185, 193 receiving part receiving the head for connecting the shank to a rod." Matthis Abstr. Similarly, Richelsoph is directed to a: "a rod receiving ring for receiving a portion of a rod therein and including a compressible insert for receiving a portion of the rod therein in a noncompressed condition and conforming allowing the portion of the rod to fixedly lock the portion of the rod therein in a compressed condition." Richelsoph Abstr. The purpose of the devices taught in both references is to secure a rod to an anchoring device. We acknowledge Appellant's point that the references teach two different means of securing the rod to the device, viz., a securing element versus compressible arms. However, we agree with the Examiner that a person of ordinary skill in the art would have been motivated to combine the references because of the advantages conferred by the compressible arms of Richelsoph over the securing cap of Matthis, i.e., to reduce the number of elements and to prevent the securing element from coming loose in situ. See Final Act. 7. Furthermore, both Matthis and Richelsoph differ in teaching alternate methods of clamping a spinal rod in situ. "If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,417 (2007). We conclude with the Examiner that exchanging one known mechanism for another one known in the art would be obvious to an artisan of ordinary skill. We are therefore not persuaded by Appellant's argument. 9 Appeal2017-008693 Application 14/185, 193 Issue 3 Appellant next argues that person of ordinary skill in the art would not have looked to Richelsoph to solve a problem already solved by Matthis. App. Br. 10. Analysis According to Appellant, Matthis has already solved the problem of retaining a rod within a bone anchoring device. App. Br. 10. Appellant points to Figures 10 and 11 of Matthis, as well as Matthis' teaching that "[a]fter insertion of the rod 60 the securing element 61 is inserted for locking the rod 60 in the receiving part 4." Id. (citing Matthis, ,r 47). Appellant asserts that, because Matthis has solved the problem of retaining a rod within a bone anchoring device, one of ordinary skill in the art would have no motivation to look to Richelsoph, without using the claims of the instant application as a guide or roadmap in formulating the rejection under 35 U.S.C. § 103. We are not persuaded by Appellant's argument. The Examiner has, as we have explained supra, articulated a rational motivation for a person of ordinary skill to combine the references. See Final Act. 7. Appellant does not present any evidence or argument to rebut the Examiner's conclusion in this respect. We consequently affirm the Examiner's rejection of claims 1- 3, 10, 11, 13-18, and 23. 10 Appeal2017-008693 Application 14/185, 193 DECISION The Examiner's rejection of claims 1-6, 10, 11, 13-18, and 23 under 35 U.S.C. § 103(a) is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 11 Copy with citationCopy as parenthetical citation