Ex Parte Messerli

Patent Trials and Appeals Board

Apr 1, 2019

15259817 - (D) (P.T.A.B. Apr. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/259,817 09/08/2016
21125 7590 04/03/2019
NUTTER MCCLENNEN & FISH LLP
SEAPORT WEST
155 SEAPORT BOULEVARD
BOSTON, MA 02210-2604
FIRST NAMED INVENTOR
Dominique Messerli
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.
101896-1894
SYN0952USCNT3
CONFIRMATION NO.
6462
EXAMINER
LAWSON, MATTHEW JAMES
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
04/03/2019 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@nutter.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOMINIQUE MESSERLI
Appeal2018-005046
Application 15/259,817
Technology Center 3700
Before JENNIFERD. BAHR, JAMES P. CAL VE, and
WILLIAM A. CAPP, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant 1 seeksourreviewunder35 U.S.C. § 134(a)ofthe final
rejection of claims 39--45 under 35 U.S. C. § 102(b) as anticipated by
Schaller (US 2008/0234827 Al, pub. Sept. 25, 2008) and claims 39--44 as
lacking written description support in accordance with 3 5 U.S. C. § 112, frrst
paragraph. We have jurisdiction under 3 5 U.S. C. § 6(b ).
We AFFIRM.
1 DePuy Synthes Products, Inc. is the Applicant and real party in interest.
Appeal Br. 1.
Appeal 2018-005046
Application 15/259,817
THE INVENTION
Appellant's invention relates to bone implants. Spec. ,r,r 2-3.
Claim 3 9, reproduced below, is illustrative of the subject matter on appeal.
3 9. A system for treating the spine, comprising:
at least one cannula including a proximal end portion, a
distal end portion and an internal passageway, the distal end
portion of the cannula being positionable at a desired location
of spinal tissue and including a distal end portion opening in
communication with the internal passageway;
an elongated guide member advanceable through the
internal passageway and the distal end portion opening of the
cannula so as to deploy a distal end portion of the guide
member at the desired location while a proximal end portion of
the guide member remains in the internal passageway of the
cannula, the elongated guide member having a surface
configuration and the distal end portion opening of the cannula
being defmed by an edge portion having a configuration that is
cooperative with the surface configuration of the guide member
to facilitate orientation of the elongated guide member during
deployment from the cannula through the distal end portion
openmg;
an elongated implant separate from and advanceable along
the elongated guide member through the internal passageway
and the distal end portion opening of the cannula and
configured so as to conform to the orientation of the guide
member at the desired location; and
the distal end portion of the elongated guide member being
retractable into the distal end portion opening and internal
passageway of the cannula while allowing the implant to
remain at the desired location.
OPINION
Anticipation of Claims 39--45 by Schaller
The Examiner fmds that Schaller discloses all of the limitations of
claims 39--45. Final Action 6-9. Appellant's sole argument is that Schaller
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Application 15/259,817
does not qualify as prior art. Appeal Br. 12. Appellant contends that
Schaller's effective filing date, for purposes of a Section 102 analysis, is
February 21, 2008. Id. Appellant filed the instant application on
September 8, 2016, more than seven years after the filing date of Schaller.
However, in seeking to pre-date Schaller, Appellant contends that the
priority date for all pending claims of the instant application is at least
June 2, 2006, which date corresponds to the filing date of Appellant's
Provisional Patent Application No. 60/810,453 (the'"453 App'n").
Appellant's claim to priority is set forth in a September 8, 2016
Amendment to the Specification, which reads as follows:
This application is a continuation ofU. S. Patent Application
No. 15/040,217, filed February 10, 2016, which is a
continuation ofU. S. Patent Application No. 13/558,662, filed
July 26, 2012 (now U.S. Patent No. 9,289,240), which is a
continuation of U.S. Patent Application No. 11/633, 131, filed
December 1, 2006 ( now abandoned), which claims priority to
United States Provisional Patent Application No. 60/753, 782,
filed December 23, 2005 and United States Provisional Patent
Application No. 60/810,453, filed June 2, 2006, the entirety of
each of which is incorporated by reference herein.
Spec. ,r 11 (Sept. 8, 2016 Amendment).
For a claim in a later-filed application to be entitled to the filing date
of an earlier application under 35 U.S.C. § 120, the earlier application must
comply with the written description requirement of 35 U.S. C. § 112,
paragraph 1. Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998).
In that regard, a patent specification must "contain a written description of
the invention, and of the manner and process of making and using it." 3 5
U.S.C. § 112, frrst paragraph. Tomeetthis requirement, the disclosure of
the earlier application, the parent, must reasonably convey to one of skill in
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Application 15/259,817
the art that the inventor possessed the later-claimed subject matter at the
time the parent application was filed. See Vas-Cath Inc. v. Mahurkar, 935
F.2d 1555, 1563 (Fed. Cir. 1991).
The Examiner finds, among other things, that Appellant's priority
application fails to disclose written description support for the following
limitation that appears in each of independent claims 3 9, 41, and 4 3:
the elongated guide member having a surface configuration and
the distal end portion opening of the cannula being def med by
an edge portion having a configuration that is cooperative with
the surface configuration of the guide member to facilitate
orientation of the elongated guide member during deployment
from the cannula through the distal end portion opening.
Final Action 4, Claims App.
In traverse, Appellant provides an enlarged image of a portion of
Figure lOA of the '453 App'n. Appeal Br. 8. Appellant identifies what it
considers to be the "distal end portion opening of the cannula." Id. Then
Appellant characterizes such distal end portion opening as an "edge
portion." Id. Then, in a parenthetical expression, Appellant represents that
such edge is "curved." Id. Then, Appellant directs our attention to a dotted
line that Appellant has added to Figure 1 OA as an annotation and refers to
this dotted line as illustrating and demonstrating that the distal tip of the
cannula deviates from a straight line and "curves inward." Id.
In response, the Examiner states that Appellant's original disclosure
fails to support an edge portion that is cooperative with the surface
configuration of the guide member to facilitate orientation of the guide
member during deployment. Ans. 3. The Examiner construes "cooperative"
as requiring that two elements must act or work together to achieve a result.
Ans. 3. The Examiner states that Appellant's disclosure fails to teach how
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Application 15/259,817
the edge portion acts or works with the guide member surface configuration
to facilitate orientation during deployment of the insert. Id. at 4.
Paragraph 90 of Appellant's specification only teaches that the
cannula is used as a conduit for passage of the guide member
through and into the disc space. It does not discuss orientation
of the guide member, but rather how the guide member is used
to deploy the bodies of the flexible chain.
Id. (referring to the specification of the '453 App'n)
In reply, Appellant provides another annotated version of an enlarged
portion of Figure lOAofthe '453 App'n and repeats the prior
representations that the enlarged drawing, annotated with a dotted line,
shows two curved surfaces, a frrst curved surface on the guide member and a
second curved surface on the edge portion on the distal end of the cannula.
Reply Br. 5. Appellant contends that the enlarged drawing depicts the two
surfaces acting in a cooperative manner to steer the guide member tip into
the target tissue. Id.
We have reviewed Figure lOAas it appears in the '453 App'n without
Appellant's enlargement. We have also reviewed Appellant's enlarged and
annotated versions of a portion of Figure lOA. We have also reviewed
paragraph 90 of the '453 App'n which discusses Figure lOA. '453 App'n,
,r 90.
Figure 1 OA is one of four figures shown on a single page of the
disclosure. See '453 App'n Drawings, page 6 of 8 containing Figures 9D
and 1 OA---C. Thus, after taking into account page margins and spacing
between adjacent figures, Figure lOA takes up considerably less than one
quarter of a single page. Id. Figure 1 OA is a two dimensional cross-
sectional top view. Viewed lengthwise in the drawing, cannula 1030 has a
left side and a right side. Id. The left side appears to be a straight line. Id.
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The right side appears to start from the top of the drawing as a straight line
after which it is obscured by guide member 1032. Id. Otherwise, it appears
that the left and right side of the cannula are substantially parallel to each
other. The distal end of guide member 1032 is configured with tip 1034
which appears to be curved in Figure 1 OA. J d. The accompanying
disclosure in paragraph 90 of the Specification of the '453 App'n confrrms
that the guide member is curved at the distal end, stating:
Optionally, a guide or other tool 1032 having a curved or
otherwise configured tip 1034 may also be inserted through the
cannula 1030 and serve to distract the end plates of the
vertebral body 12 and/ or guide the bodies 1010 of chain 1 000
in a desired direction
'453 App 'n ,r 90. Conspicuously absent from the Specification of the '453
App 'n in general and paragraph 90 thereof in particular is any mention of
curvature at or near the distal end of cannula 1030.
Having reviewed Appellant's briefing and the cited and annotated
portions of the '453 App'n, we disagree with Appellant's position that the
material relied on in Appellant's brief mg provides written description
support for the claim limitation at issue. Thus, we agree with the Examiner
that Appellant's priority disclosure fails to provide written description
support for the guide portion acting "cooperatively" with the edge of the
cannula to "facilitate orientation" of the guide member. See Hyattv. Dudas,
492 F.3d 1365, 1377 (Fed. Cir. 2007) ( explaining that when a written
description cannot be found in the specification, the only thing the PTO can
reasonably be expected to do is to point out its non-existence).
Appellant's traverse to the anticipation rejection relies solely on the
claim to a priority date that predates Schaller. Appeal Br. 12, Reply Br. 7.
Apart from the priority argument, Appellant does not challenge the
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Examiner's fmding that Schaller discloses all of the limitations of
claims 3 9--4 5. Id. We have reviewed the Examiner's fmdings of fact with
respect to Schaller' s disclosure of the elements of claims 3 9--4 5 and
determine that they are amply supported by the record before us. Final
Action 6-9.
In view of the foregoing, we hereby sustain the Examiner's
anticipation rejection of claims 39--45.
Section 112 Written Description
The specification of a patent as filed must "contain a written
description of the invention." 35 U.S.C. § 112. A specification has an
adequate written description when it "reasonably conveys to those skilled in
the art that the inventor had possession of the claimed subject matter as of
the filing date" of the patent. AriadPharm., Inc. v. Eli Lilly& Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en bane). "[T]hetestrequires an objective
inquiry into the four comers of the specification from the perspective of a
person of ordinary skill in the art . . . [to] show that the inventor actually
invented the invention claimed." Id. The written description requirement is
met when the disclosure "allow[ s] one skilled in the art to visualize or
recognize the identity of the subject matter purportedly described." Enzo
Biochem, Inc. v. Gen-Probe Inc., 323 F.3d956, 968 (Fed. Cir. 2002).
Claim 39
The Examiner fmds that each claim fails to provide written
description support for the limitations directed to "at least one cannula."
Final Action 5. The Examiner considers "at least one" to require "one or
more" and fmds that there is no support in Appellant's disclosure for more
than a single cannula. Ans. 2.
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In traverse, Appellant directs us to Figure lOA of the '453 App'n.
Appeal Br. 6. Appellant also directs our attention to paragraphs 83 and 84
of the '453 App'n. Reply Br. 2. Appellant also directs our attention to
paragraph 88 of the '453 App'n which incorporates by reference Provisional
Application No. 60/722,064 (the '"064 App'n") and further directs our
attention to Figure 12 of the '064 App'n as depicting two cannulae inserted
into a patient's spine to deliver an implant similar to that disclosed in the
'453 App'n.
We have reviewed the portions of the record referred to in the
preceding paragraph and agree with Appellant that there is adequate written
description support for the "at least one cannula" limitation.
The Examiner also finds that each claim fails to provide written
description support for the limitations directed to:
the distal end portion opening of the cannula being defined by
an edge portion having a configuration that is cooperative with
the surface configuration of the guide member to facilitate
orientation of the elongated guide member during deployment
from the cannula through the distal end portion opening.
Id. ( emphasis added).
In traverse, Appellant relies on the same arguments and portions of
the record that we fully considered and found unpersuasive with respect to
Appellant's priority claim to the Section 102 anticipation rejection discussed
above. Appeal Br. 12, Reply Br. 7. Those arguments are equally
unpersuasive here. There is no written description support for the "edge
portion . .. that is cooperative" limitation.
In view of the foregoing, we sustain the Examiner's Section 112
written description rejection of claim 39.
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Claims 41 and 43
Claims 41 and 43 are independent claims that are substantially similar
in scope to claim 39. Claims App. As with claim 39, each of claims 41
and 43 has a limitation directed to a cannula edge portion that cooperates
with the surface configuration of the guide member to facilitate orientation
of the guide member during deployment of an implant. Claims App.
The Examiner rejects claims 41 and 43 as lacking written description
to support the cannula edge portion limitation for the same reasons discussed
above with respect to claim 39. Final Action 4--5.
Appellant argues the rejection of each of claims 41 and 43 under
separate subheadings. Appeal Br. 11. However, in each instance, Appellant
merely relies on the same argument that we considered and found
unpersuasive in connection with the rejection of claim 39. Appeal Br. 12,
Reply Br. 7.
Consequently, for the same reasons stated above with respect to
priority and written description issues regarding claim 39, we sustain the
Examiner's Section 112 written description rejection of claims 41 and 4 3.
Claims 40, 42, and 44
Claims 40, 42, and 44 depend from independent claims 39, 41, and43
respectively. Claims App. In each instance, the claims add the limitation:
"wherein the edge portion is configured to exert a force on the guide
member when the cannula is rotated." Id. The Examiner takes the position
that Appellant's disclosure fails to provide written description support for
this limitation.
In traversing the rejection of each claim, Appellant, once again,
directs our attention to Figure lOA of the '453 App'n and insists that the
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edge portion of cannula 1030, when rotated, exerts a force on guide
member 1032. Appeal Br. 10-11. Appellant repeats its previous argument
that Figure 1 OA depicts a curvature of the edge portion of the cannula. Id.
We have already considered this argument in connection with whether such
edge portion acts cooperatively with guide member in connection with the
Section 112 rejection of claim 39 discussed above. We further note that
Appellant's argument relies exclusively on Figure 1 OA as Appellant directs
our attention to no corresponding textual disclosure in the Specification that
corroborates Appellant's interpretation of the drawing. Our own
independent review of Appellant's Specification also reveals no written
disclosure that corroborates Appellant's interpretation of the drawing. In our
opinion, a person of ordinary skill in the art, having reviewed Figure 1 OA of
the '453 App'n as well as Figure lOA from the drawings of the instant
application, together with the accompanying Specification of the instant
application would conclude that Appellant did not have possession of the
claimed subject matter as of the filing date. Ari ad, 598 F.3d at 1351.
Consequently, we sustain the Examiner's Section 112 written
description rejection of claims 40, 42, and 44 for the reasons stated in this
section of this Opinion as well as on account of their dependency from
claims 39, 41, and 43.
DECISION
The decision of the Examiner to reject claims 39--45 under 35 U.S.C.
§ 102 as anticipated by Schaller is affrrmed.
The decision of the Examiner to reject claims 39--44 under 35 U.S.C.
§ 112, frrst paragraph, for failure to satisfy the written description
requirement is affrrmed.
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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
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