Ex Parte Burgess et al

Board of Patent Appeals and Interferences

Jan 11, 2012

11264522 (B.P.A.I. Jan. 11, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/264,522 10/31/2005 Ian Burgess 1672-0105 4469
7590 01/11/2012
Maginot, Moore & Beck LLP
Chase Tower, Suite 3250
111 Monument Circle
Indianapolis, IN 46204-5109
EXAMINER
CARTER, TARA ROSE E
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
01/11/2012 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 IAN BURGESS and MATTHEW PARSONS
__________

Appeal 2010-007488
Application 11/264,522
Technology Center 3700
__________

Before LORA M. GREEN, JEFFREY N. FREDMAN, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
intervertebral disc prosthesis. The Examiner rejected the claims as
anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

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Application 11/264,522

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Statement of the Case
Background
“The condition of degenerative disc disease can potentially be
relieved by a surgical procedure called artificial disc replacement. In this
procedure, the damaged intervertebral disc is replaced by a prosthetic disc”
(Spec. 2 ¶ 0004).
The Claims
Claims 1-13, 15-18, and 28 are on appeal. Claim 1 is representative
and is reproduced below:
1. An intervertebral disc prosthesis comprising:
a) a first prosthesis component including a vertebra
facing surface;
b) a second prosthesis component including a
vertebra facing surface; and
c) a composite core positioned between the first
prosthesis component and the second prosthesis
component, wherein the composite core includes a first
portion comprised of a first material and a second portion
comprised of a second material, wherein the first material
has properties differing from the second material,
wherein, when said intervertebral disc prosthesis is
viewed in a cross-sectional view, said first portion
defines a continuous loop forming (i) a first bearing
surface configured to contact said first prosthesis
component, and (ii) a second bearing surface configured
to contact said second prosthesis component, and
wherein said second portion extends through said
continuous loop.

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The issues

A. The Examiner rejected claims 1-4, 7-9, 15-18, and 28 under 35 U.S.C.
§ 102(a) as anticipated by Viart1 (Ans. 3-5).
B. The Examiner rejected claims 5, 6, and 10-13 under 35 U.S.C.
§ 103(a) as obvious over Viart (Ans. 5-6).
A. 35 U.S.C. § 102(a) over Viart
The Examiner finds that
Viart discloses an intervertebral disc prosthesis comprising:
a) a first prosthesis component 2 including a vertebra facing
surface; b) a second prosthesis component 3 including a
vertebra facing surface; and c) composite core positioned 4
between the first prosthesis component and the second
prosthesis component, wherein the composite core includes
a first portion 5 comprised of a first material and a second
portion comprised of a second material 15, wherein the first
material has properties differing from the second material

(Ans. 3). The Examiner finds that Viart teaches that “when the
intervertebral disc prosthesis is viewed in a cross sectional view . . . the first
portion 5 defines a continuous loop . . . forming a first bearing surface
configured to contact the first prosthesis component . . . and a second
bearing surface . . . wherein the second portion extends through the
continuous loop” (Ans. 3-4).
Appellants contend that the “the plain meaning of ‘continuous loop’ in
claim 1 requires a thing (i) that is doubled upon itself so as to leave an
opening between opposing parts of the thing, and (ii) which completely
surrounds the opening” (App. Br. 8). Appellants contend that “the specific

1 Viart et al., US 6,682,562 B2, issued Jan. 27, 2004.
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Application 11/264,522

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structure recited in claim 1 must be configured such that the cross-sectional
portions of the structure actually show a continuous loop” (App. Br. 9).
Appellants contend that, relying upon their interpretation of the claim,
annular element 5 of Viart “does not possess all of the other characteristics
of the core of claim 1, namely, a cross-section that, when viewed solely in
the plane of the cross section, (i) delineates portions of a component doubled
upon itself so as to leave an opening between opposing cross-section
portions of the component, and (ii) delineates the opposing cross-section
portions as surrounding the opening” (App. Br. 13).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s finding that Viart anticipates claim 1?
Findings of Fact
1. Figures 17 and 17B of the Specification are reproduced below:

“FIG. 17 shows a top view of yet another alternative embodiment of a core
of the intervertebral disc prosthesis . . . FIG. 17B shows a cross-sectional
view of the core of FIG. 17 through line B-B” (Spec. 8 ¶ 0034, 0036).

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2. Figure 1 of Viart is reproduced below:

“FIG. 1 is an exploded perspective view illustrating the intervertebral disk
prosthesis” (Viart, col. 2, ll. 61-62).
3. Viart teaches “an intervertebral disk prosthesis 1 comprising
two plates, an upper plate 2 and a lower plate 3, a central core 4 and an
annular element 5” (Viart, col. 3, ll. 1-3).
4. Viart teaches that “central core 4 has a peripheral ring 15
arranged in a horizontal plane and allowing the rotation of said core with
respect to the upper plate 2 and the lower plate 3 to be restricted” (Viart, col.
3, ll. 32-35).
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5. Figure 2 of Viart is reproduced below:

“FIG. 2 is a view in section showing the intervertebral disk prosthesis”
(Viart, col. 2, ll. 64-65).
6. Viart teaches the “annular element 5 has an internal groove 17
opening into the central opening 16 so as to accommodate the peripheral
ring 15” (Viart, col. 3, ll. 60-62).
Principles of Law
“A rejection for anticipation under section 102 requires that each and
every limitation of the claimed invention be disclosed in a single prior art
reference.” In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994); see
Karsten Manufacturing Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383
(Fed. Cir. 2001) (“Invalidity on the ground of ‘anticipation’ requires lack of
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novelty of the invention as claimed … that is, all of the elements and
limitations of the claim must be shown in a single prior reference, arranged
as in the claim.”).
Analysis
We begin with claim interpretation. The element at issue is the
composite core. Claim 1 requires a composite core, placed between two
prosthetic components with vertebra facing surfaces, which is composed of
two different materials (see Claim 1). Claim 1 further requires that in a
cross-sectional view of the prosthesis, a first portion of the composite core
forms a continuous loop that has two surfaces which contact the two
prosthetic components with vertebra facing surfaces, and also requires that
the second portion extends through said continuous loop (see Claim 1).
We interpret “second portion extends through said continuous loop”
as requiring the second portion to extend completely through the loop. This
is consistent with the Specification, where Figure 17B demonstrates an
example of a cross-sectional view of a core with a continuous loop 267
where a second portion 266 extends completely through the continuous loop
(FF 1).
The Examiner finds that Viart teaches that “when the intervertebral
disc prosthesis is viewed in a cross sectional view . . . the first portion 5
defines a continuous loop . . . forming a first bearing surface configured to
contact the first prosthesis component . . . and a second bearing surface . . .
wherein the second portion extends through the continuous loop” (Ans. 3-4).
We are not persuaded. In order for a portion to extend through a
continuous loop, the portion must pass through the interior of the loop,
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rather than the edge of the loop, otherwise the loop is no longer continuous,
but is rather dissected by the portion passing through the loop. If, as the
Examiner finds, portion 5 is interpreted as the loop portion, the loop is not
continuous because it is interrupted by the ring 15, as Viart teaches the
“annular element 5 has an internal groove 17 opening into the central
opening 16 so as to accommodate the peripheral ring 15” (Viart, col. 3, ll.
60-62; FF 6).
We are constrained to reverse the anticipation rejection because there
is no showing of a cross sectional view of Viart where the core shows a
continuous loop which has a second portion which extends through the
continuous loop.
Conclusion of Law
The evidence of record does not support the Examiner’s finding that
Viart anticipates claim 1.
B. 35 U.S.C. § 103(a) over Viart
The Examiner relies upon the anticipation rejection over Viart to
address the limitation in Claim 1 of
wherein, when said intervertebral disc prosthesis is
viewed in a cross-sectional view, said first portion
defines a continuous loop forming (i) a first bearing
surface configured to contact said first prosthesis
component, and (ii) a second bearing surface configured
to contact said second prosthesis component, and
wherein said second portion extends through said
continuous loop.

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Having reversed the anticipation rejection for a failure to teach that
limitation, we also reverse the obviousness rejection since the Examiner
does not identify any teaching or suggestion in Viart to address this
limitation.
SUMMARY
In summary, we reverse the rejection of claims 1-4, 7-9, 15-18, and 28
under 35 U.S.C. § 102(a) as anticipated by Viart.
We reverse the rejection of claims 5, 6, and 10-13 under 35 U.S.C. §
103(a) as obvious over Viart

REVERSED

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