Ex Parte Kwak et al

Patent Trial and Appeal Board

Mar 25, 2013

11351710 (P.T.A.B. Mar. 25, 2013)

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.
11/351,710 02/10/2006 SeungKyu Daniel Kwak 1672-0113 2251
28078 7590 03/25/2013
MAGINOT, MOORE & BECK, LLP
One Indiana Square, Suite 2200
INDIANAPOLIS, IN 46204
EXAMINER
YANG, ANDREW
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
03/25/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte SEUNGKYU DANIEL KWAK,
AMIE R. BORGSTROM, ERASMO A. LOPEZ,
and JOHN R. HAWKINS
____________________

Appeal 2010-006436
Application 11/351,710
Technology Center 3700
____________________

Before PHILLIP J. KAUFFMAN, PATRICK R. SCANLON, and
NEIL A. SMITH, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-006436
Application 11/351,710

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STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 20, 21, 25 and 35-48. Claims 1-19, 22-24 and 26-
34 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
THE INVENTION
The claims are directed to intervertebral disc prostheses. Claim 20,
reproduced below, is illustrative of the claimed subject matter:
20. An intervertebral disc prosthesis comprising:
a) a first plate defining a receptacle;
b) a second plate having a first bearing
member that defines a convex bearing surface;
c) an elastic member positioned within said
receptacle and defining a cavity; and
d) a second bearing member having (i) a
convex mating portion positioned in mating
relationship with said cavity of said elastic
member, and (ii) a concave bearing surface
positioned in mating relationship with said convex
bearing surface so that said concave bearing
surface contacts said convex bearing surface of
said second plate, wherein no portion of said
second bearing member contacts said first plate,
wherein said convex bearing surface of said
first bearing member of said second plate is
located within said receptacle of said first plate
when said concave bearing surface of said second
bearing member is positioned in mating
relationship with said convex bearing surface.
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Application 11/351,710

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REFERENCES
The Examiner relies upon the following prior art references:
Zdeblick
Ferree
Simonson
US 6,402,785 B1
US 6,743,255 B2
US 2004/0181285 A1
Jun. 11, 2002
Jun. 1, 2004
Sep. 16, 2004
Trieu US 7,250,060 B2 Jul. 31, 2007

REJECTIONS
Appellants seek review of the following rejections:
Claims 20, 21, 25 and 43 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Trieu.
Claims 35 and 36 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Simonson.
Claims 37 and 38 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Simonson and Ferree.
Claims 39-41 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Simonson and Trieu.
Claims 42 and 44-48 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Trieu and Zdeblick.1
ANALYSIS
Rejection of claims 20, 21, 25 and 43
The Examiner takes the position that the embodiment shown in Figure
29 of Trieu includes all the elements of independent claim 20. Ans. 4. The
Examiner contends that the convex bearing surface 346 of Trieu is located

1 Though the heading of the Answer omits Trieu, the body of the rejection
makes clear the rejection is over Trieu and Zdeblick. Ans. 7.
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Application 11/351,710

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within the receptacle formed in Trieu’s plate 332 because the diameter of the
surface 346 is less than the diameter of the receptacle, so that the surface 346
“is located within the bounds of the receptacle.” Id.
Appellants disagree with this position, noting that the convex surface
346 is completely spaced apart from the cavity created in the groove 342 of
the endplate assembly 332 and arguing that the claim limitation “within the
receptacle” is not properly interpreted to mean “within the bounds of the
receptacle.” App. Br. 8-9. Appellants also argue that the diameter only
defines the lateral limits or extent of a receptacle and a receptacle also
includes a vertical extent, Reply Br. 3,and that in this case, the convex
surface 346 is located outside of the vertical limits of Trieu’s receptacle.
Reply Br. 4.
We agree with Appellants’ arguments. The Examiner’s finding that
the convex surface 346 of Trieu is located within the receptacle rests on an
unreasonably broad interpretation of the claim language. The broadest
reasonable interpretation of the claim language “within the receptacle”
requires a location within all of the boundaries defining the receptacle,
including both the lateral and longitudinal boundaries. Because the convex
surface 346 is not located longitudinally within the receptacle formed in
plate 332, Trieu fails to disclose all of the elements of claim 20. We thus
reverse the rejection of claim 20—and of claims 21, 25 and 43 depending
therefrom—under 35 U.S.C. § 102(e) as being anticipated by Trieu.
Rejection of claims 35 and 36
Regarding independent claim 35, the Examiner finds that the
embodiment shown in Figure 35 of Simonson discloses first and second
prosthetic components, each having superior and inferior endplates with
Appeal 2010-006436
Application 11/351,710

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respective bearing members 192 and 194. Ans. 5. The Examiner also finds
that Simonson discloses a connection member (i.e., spacer 106) but
acknowledges the member 106 connects the two inferior endplates, not the
superior endplates as recited in claim 35. Id. The Examiner concludes that
it would have been obvious to one having ordinary skill in the art to use the
connection member 106 to connect the superior endplates instead of the
inferior endplates because to do so would be a mere reversal of essential
working parts involving only routine skill in the art. Id (citing In re
Einstein, 46 F.2d 373, 374 (CCPA 1931)).
Appellants disagree, pointing out that Simonson discloses using the
spacer 106 in the embodiment of Figures 1-152 but not in the embodiment of
Figures 35-40 and asserting that the Examiner has not provided a rationale
for combining elements from different embodiments. App. Br. 12. In
addition, Appellants argue that the inferior supports 46 in the spring-based
embodiment of Figures 1-15 are more susceptible to lateral movement
without a spacer 1063, while the embodiment of Figures 35-40 uses deep
channels 184 and rails 188 to promote a stable connection between the
supports and the vertebral surface. App. Br. 12-13.

2 While Appellants refer to the embodiment of Figures 1-15 as including the
spacer 106, we note that the spacer 106 appears to be included only in the
embodiment depicted in Figures 14 and 15 of Simonson.
3 Appellants assert the channels 96 that receive the inferior supports 46 are
shallow and thus increase the susceptibly of the supports 46 to move
laterally. App. Br. 12. However, Simonson discloses that the superior
channels 92 (which appear to be similar to the inferior channels 96) “are
relatively shallow when compared to the overall height of the support 44”
(para. [0071]), but there is no indication that the shallowness of the channels
92 or 96 increases the susceptibility of the respective supports to move
laterally.
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However, the Examiner finds that Simonson discloses that the spacer
106 absorbs forces tending to operate individually on the supports 46 and
thus is not limited to preventing lateral movement of the prosthetic
components but also provides the mechanical benefit of distributing forces
between the components. Ans. 8 (citing Simonson, para. [0076]). The
Examiner then concludes that it would have been obvious to one of ordinary
skill in the art to provide the embodiment of Figures 35-40 with a spacer 106
to provide the advantage of better load distribution between the two
prosthetic components. Ans. 8. We agree with the Examiner’s findings and
conclude that the Examiner’s rationale provides adequate reasoning based on
rational underpinnings to explain why one of ordinary skill would have been
led to modify Simonson in the manner proposed. Moreover, we disagree
with Appellants’ assertion, made on page 5 of the Reply Brief, that the
mechanical benefit provided by the spacer 106 in the spring-based
embodiment of Simonson may not provide such benefit in the embodiment
of Figures 35-40 because the two embodiments have different requirements
for stability and function. A person having ordinary skill in the art would
recognize that the spacer 106 would beneficially produce at least some load
distribution between the two prosthetic components in the embodiment of
Figures 35-40.
Appellants’ arguments do not apprise us of error in the Examiner’s
rejection, and we thus sustain the rejection of claim 35 under 35 U.S.C.
§ 103(a) as being obvious over Simonson. We also sustain the rejection of
claim 36, which depends from claim 35 and for which Appellants do not
advance any separate argument.
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Application 11/351,710

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Rejections of claims 37-41
Claims 37-41 depend from claim 35 and stand rejected as being
obvious over Simonson and either Ferree or Trieu. Appellants rely on their
arguments as to the patentability of claim 35 over Simonson as the basis for
patentability of claims 37-41 over Simonson and Ferree or Trieu. App. Br.
13-14. We find these arguments unavailing for the reasons set forth supra in
our analysis of claim 35. Accordingly, we sustain the Examiner’s rejections
of claims 37-41.
Rejection of claims 42 and 44-48
Claims 42 and 44-48, which depend from claim 20, stand rejected as
being obvious over Trieu and Zdeblick. We agree with Appellants’
argument that none of the modifications of Trieu proposed in connection
with claims 42 and 44-48 cure the deficiencies of Trieu with respect to claim
20. App. Br. 14. Accordingly, we do not sustain the Examiner’s rejection of
claims 42 and 44-48.
DECISION
We reverse the decision of the Examiner rejecting claims 20, 21, 25
and 42-48.
We affirm the decision of the Examiner rejecting claims 35-41.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART
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