Ex Parte Cauthen et al

Board of Patent Appeals and Interferences

Sep 7, 2010

10352981 (B.P.A.I. Sep. 7, 2010)

1
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOSEPH C. CAUTHEN III, MATTHEW M. BURNS,
LAWRENCE W. WALES, BRIAN L. DUKART,
BRADLEY J. WESSMAN, and RODNEY L. HOUFBURG
____________________

Appeal 2009-004195
Application 10/352,981
Technology Center 3700
____________________

Before: WILLIAM F. PATE III, MICHAEL W. O’NEILL, and
KEN B. BARRETT, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-004195
Application 10/352,981
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
21, 25, 27, 29, 36, 48, 49, 70, 72, 73, 84-86, 88, 89, 100-103, 105, 106, and
117-119. App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to a spinal disc annulus stent. Claim 21,
reproduced below, is illustrative of the claimed subject matter:
21. A system for the therapeutic or prophylactic
treatment of an aperture in an annulus fibrosus of an
intervertebral disc, comprising:
a device comprising a body having a lateral dimension, a
first end having a lateral dimension and a second end having a
lateral dimension, said first end and said second end subtending
a longitudinal dimension, said body including a plurality of
filaments extending between said ends, said device having a
first configuration, and a second configuration, wherein in the
second configuration, in use, said filaments of said body are
radially displaced such that said body is characterized by a
relatively larger lateral dimension than said first end and said
second end along at least a portion of said longitudinal
dimension, and
at least one fixation element to affix the device to the
annulus fibrosus,
wherein said device is at least in part in apposition to an
inner wall of the annulus fibrosus in the second configuration.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Houser
van der Burg
US 6,726,696 B1
US 7,128,073 B1
Apr. 27, 2004
Oct. 31, 2006
Appeal 2009-004195
Application 10/352,981
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REJECTIONS
Claims 21, 25, 27, 36, 48, 49, 70, 72, 73, 84-86, 88, 89, 100-103, 105,
106, and 117-119 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by van der Burg. Ans. 4.
Claim 29 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over van der Burg and Houser. Ans. 6.

OPINION
Appellants argue claims 21, 25, 27, 36, 48, 49, 70, 72, 73, 84-86, 88,
89, 100-103, 105, 106, and 117-119 as a group. App. Br. 10-18. We select
claim 21 as the representative claim, and claims 25, 27, 36, 48, 49, 70, 72,
73, 84-86, 88, 89, 100-103, 105, 106, and 117-119 stand or fall with claim
21. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants contend that the claimed system is distinguishable from
van der Burg because “van der Berg [sic] does not disclose a system or
device for the therapeutic or prophylactic treatment of an aperture in an
annulus fibrosis of an intervertebral disc.” App. Br. 10. Appellants define the
threshold issue in this appeal as the Examiner’s refusal to recognize the
preamble as limiting the claims. Reply Br. 2-3. A thorough review of the
Final Rejection and the Answer reveals that the Examiner has never taken
the position that the preamble fails to limit the claims. Rather, the Examiner
contends that the recitation of intended use in the preamble fails to result in a
structural difference between the claimed invention and van der Burg’s
device. Ans. 7-8.
Appellants’ reliance on Wright Medical Technology, Inc. v. Osteonics
Corp., 122 F 3d 1440 (Fed. Cir. 1997) is misplaced. App. Br. 13, 17. The
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Application 10/352,981
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Office never suggested that a functional limitation or a recitation of intended
use, whether in the preamble or elsewhere in the claim, could not, in an
appropriate circumstance, serve to distinguish a claim from the prior art.
This case differs from Wright because, as discussed below, the prior art
device described by van der Burg is inherently capable of performing the
recited function.
Appellants recognize that reciting a new use for an old product does
not render a claim to that old produce patentable. App. Br. 14. Appellants
also recognize that when “the Patent Office has reason to believe that a
functional limitation asserted to be critical for establishing novelty in
claimed subject matter may, in fact, be an inherent characteristic of the prior
art, it possesses the authority to require the applicant to prove that the
subject matter shown to be in the prior art does not possess the characteristic
relied on.” App. Br. 14 quoting In re Swinehart, 439 F.2d 210, 212 (CCPA
1971).
The issue for our consideration is not, as Appellants suggest, “whether
the functional limitations of Applicant’s claims fail to impart patentable
weight because those limitations are inherent in [the prior art].” App. Br. 14.
Rather, the issue is whether the functional limitations fail to create a
patentable distinction between the claimed invention and the prior art
because those limitations are inherent in the prior art.
We agree with Appellants’ characterization of the law on inherency.
App. Br. 14-15. The characteristic alleged to be inherent in the prior art must
be necessarily present. However, as noted above, where the alleged inherent
characteristic is a function or intended use of the device, Appellants, and not
the Patent Office, are in the best position to establish the existence or non-
existence of this characteristic. Thus, as was done by the Examiner (Ans. 8),
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the Patent Office may shift the burden to Appellants to prove that the prior
art does not possess the characteristic alleged by the Examiner to be
inherent. Nevertheless, we recognize that before an applicant can be put to
this burdensome task, the examiner must provide sufficient evidence or
scientific reasoning to establish the reasonableness of the examiner’s belief
that the functional limitation is an inherent characteristic of the prior art.
The Examiner reasonably found that the structural similarities of van
der Burg and the claimed invention provided a sufficient basis to conclude
that van der Burg’s device could perform all the recited functions and uses.
Ans. 8; see App. Br. 16. Both devices are similar in shape. Cf. Spec. figs. 60,
and 61 with van der Burg, fig. 29, col. 12, ll. 27-31. Both devices may be
made from similar materials such as a nickel titanium alloy or stainless steel.
Cf. Spec. p. 53, para. [0205] with van der Burg col. 12, ll. 38-40. Van der
Burg’s device is disclosed as having dimensions appropriate for the use
claimed by Appellants. Cf. Spec. p. 8, para. [022], p. 25, para. [0136]
(discussing the size of a typical adult nucleus) with van der Burg col. 12, ll.
18-26.
Appellants’ only contention that van der Burg would be inadequate
for use in an intervertebral disc is based upon the premise that in such an
environment, van der Burg’s device would be unable to withstand the
pressures or forces placed upon it due to the weight of the spinal column.
App. Br. 17. As the Examiner points out, this argument is not supported by
any objective evidence of record. Ans. 8. In light of the similarities
discussed above, it was reasonable for the Examiner to conclude that van der
Burg inherently would be capable of performing the recited use and
functions, thereby shifting the burden to Appellants to prove otherwise.
Appellants have failed to carry this burden.
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Application 10/352,981
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Appellants argue the rejection of claim 29 solely based upon the
arguments presented regarding parent claim 21. App. Br. 18.
For the above reasons, we find that the Examiner did not err by
rejecting claims 21, 25, 27, 36, 48, 49, 70, 72, 73, 84-86, 88, 89, 100-103,
105, 106, and 117-119 as being anticipated by van der Burg, nor did the
Examiner err by rejecting claim 29 as being unpatentable over van der Burg
and Houser.

DECISION
For the above reasons, the Examiner’s rejections of claims 21, 25, 27,
29, 36, 48, 49, 70, 72, 73, 84-86, 88, 89, 100-103, 105, 106, and 117-119 are
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)(1)(iv) (2009).

AFFIRMED

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