Ex Parte McGraw et al

Board of Patent Appeals and Interferences

Jun 27, 2012

11057209 (B.P.A.I. Jun. 27, 2012)

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.
11/057,209 02/15/2005 J. Kevin McGraw HATCH-005 5385
21884 7590 06/28/2012
WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
EXAMINER
CARTER, TARA ROSE E
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
06/28/2012 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 J. KEVIN MCGRAW and DIRK V. HOYNS
__________

Appeal 2010-010178
Application 11/057,209
Technology Center 3700
__________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of the Decision on Appeal entered
February 13, 2012, which affirmed the rejection of all the claims on grounds
of obviousness. We have reconsidered as requested, but adhere to the
decision to affirm the rejections.
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BACKGROUND
Appellants claim a system for percutaneous stabilization of adjacent
vertebrae. The Patent Examiner rejected the claims for obviousness over the
combined teachings of Keith, Carl, and Jackson. The Decision adopted the
Examiner’s findings concerning the scope and content of the prior art, and
concluded that the rejection proposed a reasonable application of the
combined teachings and should be affirmed.
Appellants request rehearing on the grounds that:
A. “there were very concrete reasons why one of ordinary skill in the art
would not have looked to Carl for the modification of Keith. See,
Appellants’ Brief, pages 11-12” (Req. 2);
B. “the BPAI's reliance on the disclosure of Keith at Col. 8, lines 15-21,
improperly reads meaning into the disclosure of Keith that is just not
present” (id.); and
C. “[t]he BPAI appears to have missed the fact four pages of argument
relating to the improper application of Jackson to Keith were present in the
Reply Brief filed April 19, 2010” (id. at 2-3).

DISCUSSION
Principles of Law
When considering obviousness, the proper question to ask is whether
a person of ordinary skill in the art, facing the wide range of needs created
by developments in the field of endeavor, would have seen a benefit to
combining the prior art teachings. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 424 (2007); see also In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004)
(the desirability of the combination may arise from nature of the problem,
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teachings of references, or the ordinary knowledge of those skilled in the
art). “The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
KSR, 550 U.S. at 416.
There is a distinction between trying to physically combine the two
separate apparatus disclosed in two prior art references on the one
hand, and on the other hand trying to learn enough from the
disclosures of the two references to render obvious the claims in suit.
. . . Claims may be obvious in view of a combination of references,
even if the features of one reference cannot be substituted physically
into the structure of the other reference.

Orthopedic Equipment Co., Inc. v. U.S., 702 F.2d 1005, 1013 (Fed. Cir.
1983) (citation omitted).

Discussion
A. Appellants redirect attention to arguments in their opening brief
that attempted to show that a person of ordinary skill in the art would not
have combined the teachings of Carl with those of Keith. (Req. 2, citing
App. Br. at 11-12.) We continue to disagree with Appellants’ assessment,
for the reasons given in the Decision at 5-6.

B. In their Appeal Brief, Appellants had argued that there would
have been no need to use a keying element to control positioning of Keith’s
device. We found that argument unpersuasive because Keith explicitly
taught that insertion tools could be useful to define the curvature of the
reinforcement member. (Dec. 5-6, citing FF2.) Appellants contend the
Decision “improperly reads meaning into the disclosure of Keith that is just
not present” and “has taken the term ‘curvature’ as used by Keith out of its
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proper context.” (Req. 2.) Finding of Fact 2 quoted Keith as teaching: “The
reinforcement members 100/200/300 may have such a curvature in the
relaxed (zero stress) state, or the curvature may be imparted by the insertion
path or defined by the insertion tools used.” (Dec. 4.) The Examiner had
found, and Appellants do not dispute, that Carl’s keying element served “to
orient a stabilizing device into the vertebral body correctly.” (Ans. 4.) After
reviewing the evidence again, we disagree that the Decision read Keith
improperly, or that Keith and Carl were improperly combined.

C. Appellants object that the Decision did not discuss the Reply Brief’s
arguments concerning the rejection’s reliance on Jackson. (Req. 2-3.) In the
Appeal Brief, Appellants had not disputed the Examiner’s factual findings
about Jackson’s disclosure, but argued that there was no reason for
combining Jackson’s teachings with Keith’s. The pertinent portion of the
Appeal Brief reads:
Once again, and while for the sake of argument it may be true that
Jackson teaches all that is discussed in the outstanding Office Action,
there must be some reason for combining the teachings of Jackson
with Keith. Ultimately, there is none. The Office Action suggests the
motivation is to properly align and retain the stabilization device.
However, this assumes there was a need for alignment and
stabilization to improve the devices of Keith and Carl. There is no
need for such an improvement to the devices of Keith and Carl. As
such, this rationale is merely made up to create a rejection which
appears to only be based upon impermissible hindsight.

(Appeal Br. 13, emphasis added.) The Reply Brief repeated this theme:
Once again, there must be some reason for combining the
teachings of Jackson with Keith. Ultimately, there is none. The
Examiner now suggests the motivation is to better grip the
stabilization device. However, this assumes there is a need for
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improved gripping of the device based upon Keith in view of Carl.
There is no such need for improvement in the device of Keith in view
of Carl. As such, this rationale is merely being fabricated to create a
rejection which appears to only be based upon impermissible
hindsight.

(Reply Br. 2, emphasis added.)
The Decision found the Examiner’s evidence and reasoning more
persuasive. The Final Rejection stated:
Keith and Carl teach the claimed invention except for the distal
end of the driver end being threadingly secured to a trailing end of
each of the stabilization devices.
Jackson teaches an introducer rod (66) with a keying element
(at 74), a driver rod (86) threadingly (87) secured to a stabilization
device, and a stabilization device including a keying element (at 36
and 34) and a threaded element (47) (see fig. 4), in order to properly
align and retain the stabilization device. It would have been obvious to
one of ordinary skill in the art at the time of the invention to modify
Keith and Carl in view of Jackson in order to properly align and retain
the stabilization device.

(Final Rej. 3-4.) The Examiner’s Answer stated:
Keith and Carl teach the claimed invention except for the distal
end of the driver end being threadingly secured to a trailing end of
each of the stabilization devices.
Jackson teaches a driver rod (86) threadingly (87) secured to a
stabilization device (26) with a threaded element (47) (see fig. 4), in
order to lock the driver rod and stabilization device together during
installation.
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to modify Keith and Carl in view of
Jackson in order to lock the driver rod and stabilization device
together during installation thus giving the user better control and grip
of the stabilization device during installation.

(Ans. 4-5.)
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In the Reply Brief, Appellants stated that Jackson’s device had “a very
structure specific arrangement” (Reply Br. 2), and that Keith disclosed a
“very specific procedure for installation of the reinforcement member” (id.
at 3.) Appellants contended: “based upon Appellants’ opinion, the inclusion
of threads as suggested by the Examiner would merely complicate the device
of Keith making it more difficult to employ Keith in the procedure
contemplated by Keith. Still further, the addition of threads as proposed by
the Examiner would require the complete reengineering of Keith in a way
neither the Examiner, Keith nor Jackson address.” (Id. at 4.)
These arguments are unpersuasive because they are not supported by
evidence, in contrast to the Examiner’s evidence that the Carl and Jackson
references taught advantages to their methods and devices for inserting
stabilizing elements. Based on the Examiner’s evidence, adapting Keith’s
stabilization device to take advantage of the Carl and Jackson improvement
would have been obvious. To the extent Appellants may be suggesting that
the devices illustrated in the figures of the three references would not have
fit together as illustrated, the test is not physical combination, but whether a
person of ordinary skill in the art would have found it obvious to modify the
devices based on the advantages disclosed by the references. See
Orthopedic Equipment, 702 F.2d at 1013. It is proper to “take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR, 550 U.S. at 418. See also id. at 421 (“A person of ordinary
skill is also a person of ordinary creativity, not an automaton.”). Appellants’
allegation that “complete” reengineering would have been required is
unsupported by evidence. If Appellants intend that a person of ordinary skill
in the art would have been unable to make the modifications suggested in the
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rejection, there is no factual evidence to support a conclusion that the
references were not enabling. See In re Wands, 858 F.2d 731, 737 (Fed. Cir.
1988) (listing facts to be considered). Reviewing the evidence, including the
fabrication and design skills reflected in the three references, and the
guidance provided by each that the Examiner cited, we see no reason to
assume, contrary to that evidence, that the modifications suggested by the
references would not have been enabled.

SUMMARY
We have reconsidered the Decision, but deny the requested relief.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

DENIED

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