Ex Parte Michelson

Board of Patent Appeals and Interferences

Nov 22, 2010

10683071 (B.P.A.I. Nov. 22, 2010)

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.
10/683,071 10/10/2003 Gary K. Michelson 101.0084-03000 9980
22882 7590 11/22/2010
MARTIN & FERRARO, LLP
1557 LAKE O'PINES STREET, NE
HARTVILLE, OH 44632
EXAMINER
SNOW, BRUCE EDWARD
ART UNIT PAPER NUMBER
3738
MAIL DATE DELIVERY MODE
11/22/2010 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 GARY K. MICHELSON
____________

Appeal 2009-009574
Application 10/683,071
Technology Center 3700
____________

Before JENNIFER D. BAHR, LINDA E. HORNER and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, 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.
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STATEMENT OF THE CASE 1
The Appellant appeals under 35 U.S.C. § 134 of the Examiner’s final 2
decision rejecting claims 1-6, 8-23, 25, 26, 29-55, 57-60, 62-77, 79, 80, 83-3
109, 111-118, 120-122 and 124-126. More specifically, the Examiner 4
rejects claims 1-6, 8-23, 25, 26, 29-55, 57-60, 62-77, 79, 80, 83-109, 111-5
118, 120-122 and 124-126 under 35 U.S.C. § 112, first paragraph, for failing 6
to comply with the written description requirement; and claims 1-6, 8-23, 7
25, 26, 29-55, 57-60, 62-77, 79, 80, 83-109, 111-118, 120-122 and 124-126 8
under § 103(a) as being unpatentable over Paul (US 6,258,125 B1, issued 9
Jul. 10, 2001) and Fraser (US 6,592,624 B1, issued Jul. 15, 2003). Claims 7, 10
24, 27, 28, 56, 61, 78, 81, 82, 110, 119 and 123 are cancelled. 11
We sustain the final rejections of claims 1-6, 8-10, 13-23, 25, 26, 29-12
33, 35-48, 50-54, 111-113, 117-118, 120 and 125. We do not sustain the 13
final rejections of claims 11-12, 34, 49, 55, 57-60, 62-77, 79, 80, 83-109, 14
114-116, 121-122, 124 and 126. 15
The Appellant’s claims relate to a spinal implant having opposed 16
exterior surfaces where each surface has surface projections for engaging 17
and stabilizing adjacent vertebral bodies. (Spec. p. 2, ll. 16-22). The surface 18
projections can be arranged in geometric patterns and each surface 19
projection includes a forward facing facet and a rearward facing facet. 20
(Spec. p. 2, ll. 26-31 and p. 3, ll. 11-13) 21
Claim 1 is illustrative of the claims on appeal: 22
1. An interbody spinal implant for insertion 23
between adjacent vertebral bodies of a human 24
spine, said implant comprising: 25
a leading end for introduction of said spinal 26
implant into the spine, an opposite trailing end, 27
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spaced apart sides therebetween, and a mid-1
longitudinal axis passing through said leading and 2
trailing ends; 3
opposite upper and lower surfaces between 4
said leading and trailing ends and said spaced apart 5
sides, said upper surface adapted for placement in 6
engagement with the bone of one of the vertebral 7
bodies and said opposite lower surface adapted for 8
placement in engagement with the bone of the 9
other of the vertebral bodies when said implant is 10
placed between the adjacent vertebral bodies; and 11
a plurality of surface projections formed on 12
said upper and lower surfaces of said implant, at 13
least a first and a second of said surface 14
projections each having a maximum height, at least 15
one of said surface projections having a forward 16
facet directed at least in part toward the leading 17
end, a rearward facet directed at least in part 18
toward the trailing end, and opposed side facets 19
converging toward one another between said 20
forward facet and said rearward facet, said forward 21
facet and said rearward facet having a length and a 22
slope, the length of said forward facet being longer 23
than the length of said rearward facet, said forward 24
facet and said rearward facet both declining from 25
said maximum height in a direction toward said 26
leading end, said forward facet having converging 27
sides and a maximum width between said 28
converging sides, said maximum width of said 29
forward facet being greater than said maximum 30
height of said at least one of said surface 31
projections. 32
(Emphasis added). 33
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ISSUES 1
This appeal turns on the following issues: 2
First, does the disclosure of the Appellant’s application 3
reasonably convey to one of ordinary skill in the art that the 4
Appellant had possession of the subject matter of claim 1, 5
including the limitation that “said maximum width of said 6
forward facet [is] greater than said maximum height of said at 7
least one of said surface projections,” as of the filing date? (See 8
App. Br. 4-5; Reply Br. 1-4.) 9
Second, does the disclosure of the Appellant’s 10
application reasonably convey to one of ordinary skill in the art 11
that the Appellant had possession of the subject matter of claim 12
57, including the limitation that “said base of said first surface 13
projection and said base of said second surface projection [are] 14
spaced apart by a distance as measured along a line transverse 15
to the mid-longitudinal axis of said implant, the distance being 16
less than said maximum width of said forward facet,” as of the 17
filing date? (See id.) 18
Third, do the evidence and technical reasoning 19
underlying the rejection of claim 1 adequately support the 20
conclusion that it would have been obvious to provide an 21
interbody spinal implant with surface projections such that the 22
maximum width of the forward facet of at least one of the 23
surface projections is greater than the maximum height of that 24
surface projection? (See App. Br. 8-9; Reply Br. 4-5.) 25
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Fourth, do the evidence and technical reasoning 1
underlying the rejection of claim 49 adequately support the 2
conclusion that it would have been obvious to provide an 3
interbody spinal implant with surface projections such that the 4
peak of one of the surface projections overlies at least a portion 5
of another of said surface projections? (See App. Br. 10-11; 6
Reply Br. 10.) 7
Fifth, do the evidence and technical reasoning underlying 8
the rejection of claim 57 adequately support the conclusion that 9
it would have been obvious to provide an interbody spinal 10
implant with surface projections such that a base of a first 11
surface projection and a base of a second surface projection 12
were spaced apart by a distance as measured along a line 13
transverse to the mid-longitudinal axis of the implant, the 14
distance being less than a maximum width of the forward facet 15
of either the first or second surface projection? (App Br. 10-16
11; Reply Br. 6-8.) 17
Sixth, do the evidence and technical reasoning underlying 18
the rejection of claim 11 adequately support the conclusion that 19
it would have been obvious to provide an interbody spinal 20
implant with surface projections in which the leading end, the 21
trailing end and the sides are curved? (App. Br. 13; Reply Br. 22
8.) 23
Seventh, do the evidence and technical reasoning 24
underlying the rejection of claim 20 adequately support the 25
conclusion that it would have been obvious to treat the 26
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interbody spinal implant of claim 1 with bone growth 1
promoting material? (App. Br. 13; Reply Br. 8-9.) 2
Eighth, do the evidence and technical reasoning 3
underlying the rejection of claims 33 and 34 adequately support 4
the conclusion that it would have been obvious for Paul’s 5
implant to have an internal chamber and an access opening for 6
accessing the internal chamber, or for the implant to have a cap 7
for closing the access opening? (App. Br. 14; Reply Br. 9.) 8
Ninth, do the evidence and technical reasoning 9
underlying the rejection of claims 51-54 adequately support the 10
conclusion that the subject matter of these claims would have 11
been obvious? (App. Br. 14-15; Reply Br. 10.) 12
Tenth, do the evidence and technical reasoning 13
underlying the rejection of claim 55 adequately support the 14
conclusion that it would have been obvious to provide an 15
interbody spinal implant with adjacent surface projections 16
spaced apart to form grooves having horizontal cross-sectional 17
shapes that are one of v-shape, u-shape and box-like shape? 18
(Id.) 19
Each dependent claim not separately mentioned in any of the issue 20
statements above stands or falls with its immediate parent claim. 21
22
FINDINGS OF FACTS 23
The record supports the following findings of fact (“FF”) by a 24
preponderance of the evidence. 25
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1. We adopt and incorporate by reference the Examiner’s findings at 1
page 4, line 11-21 of the Examiner’s Answer, beginning “Paul et al teaches 2
. . .” and ending “. . . as shown in figure 1A.” 3
2. Paul describes an implant 10 having teeth 12 that provide initial 4
mechanical stability minimizing the risk of post-operative expulsion of the 5
implant 10. (Paul, col. 3, ll. 36-42.) 6
3. Figure 9 of Paul depicts an implant 10 with longitudinal and 7
horizontal grooves between teeth 12 on the superior and inferior surfaces 14, 8
16. (Paul, fig. 9.) 9
4. Paul teaches that, “[a]lthough implant 10 is typically a solid piece 10
of allogenic bone, implant 10 can be provided with a hollow interior to form 11
an interior space. This interior space can be filled with bone chips or any 12
other osteoconductive material to further promote the formation of new 13
bone.” (Paul, col. 4, ll. 21-25.) With reference to Figure 9, Paul 14
subsequently teaches that, “[w]hen first and second implants 70, 70′ are 15
implanted together, cylindrical space 72 can be filled with osteoconductive 16
material to help promote the formation of new bone.” (Paul, col. 5, ll. 18-17
21.) Figure 9 of Paul depicts the cylindrical space 72 as having openings for 18
accessing the space at opposite axial ends of the space. 19
5. Fraser describes using wedge like fins 18 to secure implantation 20
and prevent expulsion of the element (spinal implant) 10. Fraser teaches that 21
the fins 18 may vary in shape, number, height, length, width and placement 22
on the end plates 12, 14. (Fraser, col. 3, ll. 43-48 and col. 4, ll. 19-25.) 23
6. Fraser teaches that the most preferred range for the height Hf of 24
each fin 18 is about 1.0 mm to 2.0 mm. Fraser also teaches that the 25
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preferred width Wf of each fin, at its widest point, is in the range of about 1 1
mm to 4 mm. (Fraser, col. 3, ll. 54-61.) 2
3
ANALYSIS 4
First and Second Issues 5
A review of the Appellant’s drawing figures, and particularly Figures 6
6, 10, 14, 14C, 18 and 22, indicates that the Appellant consistently depicted 7
the maximum widths of the forward facets of the surface projections as 8
being greater than the maximum heights of the surface projections. The 9
difference in the dimensions is sufficiently large to be apparent, even 10
assuming that the drawing figures are not drawn to scale. Likewise, a 11
review of the Appellant’s drawing figures, and particular Figures 6, 10, 14, 12
14C, 18 and 22, indicates that the Appellant consistently depicted the 13
distances between bases of pairs of surface projections as being less than the 14
maximum width of the forward facet of either of the surface projections. 15
Once again, the difference in the dimensions is sufficiently large to be 16
apparent, even assuming that the drawing figures are not drawn to scale. 17
Disclosure of claimed subject matter in the drawing figures is 18
sufficient to show possession of the subject matter. Vas-Cath Inc. v. 19
Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991). Furthermore, “that a 20
claim may be broader than the specific embodiment disclosed in a 21
specification is in itself of no moment.” In re Rasmussen, 650 F.2d 1212, 22
1215 (CCPA 1981). Since no showing has been made that the technology at 23
issue here is inherently unpredictable, the examples provided in the 24
Appellant’s drawing figures suffice to show that the Appellant possessed the 25
subject matter of claims 1 and 57 as of the filing date. 26
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Third Issue 1
The Appellant contends that the limitation requiring “forward facet 2
having converging sides and a maximum width between said converging 3
sides, said maximum width of said forward facet being greater than said 4
maximum height of said at least one of said surface projections” would not 5
have been obvious from the combined teachings of Paul and Fraser. (App. 6
Br. 8-9.) The Appellant correctly observes that Paul does not describe the 7
maximum width of the forward facet 30 of surface projection 12 to be 8
greater than the maximum height of the surface projection 12. (App. Br. 9.) 9
The Appellant also correctly observes that Fraser describes a rearward facet 10
having a width (Wf) but not a forward facet having any width at all. (Id.) 11
Fraser’s crest 36 itself is not a forward facet as recited in claim 1 because, as 12
the Appellant explains, “the maximum width of the crest 36 would not be 13
greater than the maximum height of projection 18.” (Id.) 14
Both Paul and Fraser recognized a need to minimize the likelihood of 15
post-operative expulsion of spinal implants. (FF 2 and 5.) Both addressed 16
this problem using pyramidal or wedge like teeth in the surfaces of their 17
respective implants. (Id.) Fraser teaches that the shape, number, height, 18
length, width and placement of the teeth or fins may vary. (FF 5.) 19
One shape of teeth disclosed by Paul for minimizing the likelihood of 20
post-operative expulsion was a pyramid shape having a sloped forward facet 21
longer than a rearward facet. (FF 1.) Fraser addressed the problems of 22
securing implantation and preventing expulsion, at least in part, by means of 23
teeth having forwardly-facing slopes such that the upper bound of the range 24
of the maximum widths of the teeth is twice the upper bound of the preferred 25
range of maximum heights of the teeth. (See FF 6.) As phrased, claim 1 26
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leaves only a small number of choices for the relationship between the 1
maximum width of the forward facet and the maximum height of the surface 2
projection: The maximum width can only be greater than, equal to, or less 3
than the maximum height. Since the upper bound of the most preferred 4
range of maximum widths of the teeth is twice the upper bound of the 5
preferred range of maximum heights of the teeth, the choice of designing the 6
maximum width of the forward facet to be greater than the maximum height 7
of the surface projection would have been obvious. 8
“[I]f a technique has been used to improve one device, and a person of 9
ordinary skill in the art would recognize that it would improve similar 10
devices in the same way, using the technique is obvious unless its actual 11
application is beyond his or her skill.” KSR Int’l Co. v. Teleflex, Inc., 550 12
U.S. 398, 417 (2007). The implants described by Paul and Fraser were 13
similar devices in that both implants used polyhedral teeth relieved from 14
otherwise upper and lower surfaces to minimize the likelihood of post-15
operative expulsion. It would have been obvious to provide each tooth of 16
the implant with a forwardly-facing slope such that the maximum width of 17
the tooth was greater than the maximum height of the teeth. As the 18
Examiner concludes (see Ans. 9), one of ordinary skill in the art would have 19
had a reasonable expectation that such a modification would have improved 20
Paul’s implant so that the implant “better resist[ed] expulsion.” 21
The proposed modification would have been within the level of 22
ordinary skill in the art. Given the base shape of Paul’s teeth, the 23
modification could have been implemented by cutting or otherwise forming 24
the forward facet with a slope consistent with the teachings of both Paul and 25
Fraser. Since Paul’s teeth are pyramid shaped (FF 1), their maximum width 26
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at their bases is constant along their length. The proposed modification 1
would have yielded teeth in which the maximum widths of the forward 2
facets at the bases of the teeth would have been greater than the maximum 3
heights of the teeth. The Appellant suggests no reason why the technology at 4
issue here might be so unpredictable that one of ordinary skill in the art 5
would not reasonably expect the modification to effectively minimize the 6
likelihood of post-operative expulsion. Consequently, the Examiner has 7
provided reasoning with some rational underpinning sufficient to support the 8
conclusion that the subject matter of claim 1 would have been obvious. 9
10
Fourth and Fifth Issues 11
Fraser teaches that the fins or teeth may vary in number and 12
placement on the upper and lower surfaces. (FF 5.) With respect to claim 13
57, the Examiner concludes that it would have been obvious “to have 14
increased the number [of] teeth, thus reducing their spacing to within the 15
claimed range [of claim 57], to increase anchoring to the plates with 16
predictable results.” (Ans. 10; see also Ans. 5.) With respect to claim 49, 17
the Examiner for similar reasons concludes that it would have been obvious 18
to have increased the number of teeth on Paul’s implant and thereby reduced 19
the spacing between the teeth. (Ans. 12.) The Examiner appears to 20
conclude that sufficiently reducing the spacing between teeth with undercut 21
rearward facets would result in the peak of one tooth overlying another 22
tooth. 23
Despite Fraser’s teaching that the teeth may vary in number and 24
placement on the upper and lower surfaces of the implant, the Examiner has 25
not provided reasoning to explain why one of ordinary skill in the art might 26
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have increased the number of teeth on Paul’s implant and thereby decreased 1
the spacing between the teeth to the degree necessary to meet the limitations 2
of claims 49 and 57. The Examiner has provided no rational underpinning 3
for the assertion that one of ordinary skill in the art would have had a 4
reasonable expectation that increasing the number of teeth of the magnitude 5
necessary to meet the limitations of claims 49 and 57 would have increased 6
the anchoring of the implant. The contextual gap between Fraser’s teaching 7
that the four or six teeth on Fraser’s implant might be increased and the 8
Examiner’s reasoning that Paul’s approximately forty teeth might be 9
increased is too great to be reasonable, particularly when Paul specifically 10
teaches Paul’s teeth already suffice to provide stability.2 11
12
Sixth Issue 13
The Examiner’s reasoning in support of the rejection of claim 11 lacks 14
rational underpinning. The Examiner’s finding on page 11 of the Answer 15
that, in “figure 3 of Fraser, the leading end, trailing end, and sides are 16
curved” is without basis. The Examiner’s finding that, in “figure 9 of Paul 17
et al, the rounded corners fulfill the language” is also without basis. The 18
Examiner provides no other reasoning which might support the conclusion 19
of obviousness. 20

2 We do not consider the teachings of Cottle (US 5,888,227, issued
Mar. 30, 1999) or Lin (US 6,080,158, issued Jun. 27, 2000) in reaching our
decision. The Examiner has not cited either reference as part of any ground
of rejection of any claim on appeal.
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Seventh Issue 1
Paul teaches that an interior space of Paul’s implant can be filled with 2
bone chips or any other osteoconductive material to further promote the 3
formation of new bone. (FF 4.) The Appellant denies that filling an interior 4
space of an implant with osteoconductive material constitutes treating the 5
implant with bone growth promoting material. (Reply Br. 9.) Nevertheless, 6
Appellant provides no explanation as to why the Examiner’s interpretation 7
of the terminology “said implant is treated with a bone growth promoting 8
substance” might be unreasonably broad. The Specification does not 9
describe any treatment of an implant with bone growth promoting material. 10
(See, e.g., Spec. 15.) Nothing in the Specification clearly disclaims any 11
claim scope sufficiently broad to encompass filling an interior space of an 12
implant with osteoconductive material. The Examiner’s conclusion that 13
claim 20 would have been obvious is correct in that the proposed 14
modification of Paul’s implant would not disturb an interior space filled with 15
bone chips or any other osteoconductive material to further promote the 16
formation of new bone. 17
18
Eighth Issue 19
The Examiner correctly finds that Paul’s implant includes an internal 20
chamber 72 and an access opening for accessing the internal chamber. (FF 21
4.) Consequently, The Appellant’s contention (see App. Br. 14) that 22
“[n]either Paul nor Fraser discloses or suggests” an implant with an internal 23
chamber and an access opening for accessing the internal chamber is 24
unpersuasive. 25
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The Examiner appears to take Official Notice that the use of a cap for 1
closing one of these access openings was known, concluding that “these 2
limitations are well known in the prosthetic art and would have been obvious 3
to one having ordinary skill.” (Ans. 12.) The Appellant specifically 4
challenges this unsubstantiated contention. (Reply Br. 10.) It is not clear 5
from the evidence and technical reasoning underlying the rejection of claim 6
34 that the asserted knowledge of those of ordinary skill in the art as of the 7
filing date that a cap might be used for closing an access opening to an 8
interior chamber in a spinal implant is “capable of such instant and 9
unquestionable demonstration as to defy dispute.” See In re Ahlert, 424 F.2d 10
1088, 1091 (CCPA 1970)(setting out the standard for when the taking of 11
Official Notice is appropriate). Consequently, the Examiner’s reasoning 12
lacks rational underpinning. The Appellant is correct (see App. Br. 14) in 13
arguing that the Examiner has not met the burden of factually supporting the 14
prima facie conclusion that the subject matter of claim 34 would have been 15
obvious. 16
17
Ninth Issue 18
The Appellant’s sole argument directed against the rejection of claims 19
51-55 under § 103(a) is that “Neither Paul nor Fraser discloses or suggests 20
the structure recited in dependent claims 51-55.” (App. Br. 15.) The 21
Examiner correctly finds that Paul describes “[a]djacent side facets of 22
adjacent surface projections inherently form a groove therebetween.” (Ans. 23
12; FF 3.) The Appellant offers no explanation of how Examiner’s finding 24
is flawed. The Appellant’s argument is not persuasive. 25
26
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Tenth Issue 1
With regards to claim 55, the Examiner correctly finds that 2
“[a]djacent side facets of adjacent surface projections inherently form a 3
groove therebetween.” (Ans. 12.) Nevertheless, the Appellant’s contention 4
that Paul does not show a groove between the rows of projections that can be 5
considered a v-shape, u-shape, and a box-like shape (Reply Br. 10) is 6
persuasive. The broadest reasonable interpretation of the terms “v-shape,” 7
“u-shape” and “box-like shape” consistent with the specification is limited to 8
those shapes illustrated in Figures 6, 14A and 14B respectively. Paul does 9
not appear to describe or depict a v-shape, a u-shape or a box-like shape 10
groove. In particular, the Examiner makes no finding that Figure 3 of Paul 11
discloses any particular one of these shapes. (Ans. 12.) 12
The Examiner makes no finding that Fraser discloses grooves, 13
between fins 18 that are v-shape, u-shape, and a box-like shape. Neither 14
does the Examiner provide reasoning to explain why one of ordinary skill in 15
the art familiar with the teachings of Paul and Fraser would have had reason 16
to modify the shape, number or spacing of Paul’s teeth to provide grooves of 17
the recited shapes. The Examiner’s reasoning in support of the rejection of 18
claim 55 lacks rational underpinning. 19
20
CONCLUSIONS 21
First, the disclosure of the Appellant’s application reasonably 22
conveyed to one of ordinary skill in the art that the Appellant had possession 23
of the subject matter of claim 1, including the limitation that “said maximum 24
width of said forward facet [is] greater than said maximum height of said at 25
least one of said surface projections,” as of the filing date. We do not 26
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sustain the rejection of claims 1-6, 8-23, 25, 26 and 29-55 under § 112, first 1
paragraph, for failing to comply with the written description requirement. 2
Second, the disclosure of the Appellant’s application reasonably 3
conveyed to one of ordinary skill in the art that the Appellant had possession 4
of the subject matter of claim 57, including the limitation that “said base of 5
said first surface projection and said base of said second surface projection 6
[are] spaced apart by a distance as measured along a line transverse to the 7
mid-longitudinal axis of said implant, the distance being less than said 8
maximum width of said forward facet,” as of the filing date. We do not 9
sustain the rejection of claims 57-60, 62-77, 79, 80, 83-109, 111-118, 120-10
122 and 124-126 under § 112, first paragraph, for failing to comply with the 11
written description requirement. 12
Third, the evidence and technical reasoning underlying the rejection 13
of claim 1 adequately support the conclusion that it would have been 14
obvious to provide an interbody spinal implant with surface projections such 15
that the maximum width of the forward facet of at least one of the surface 16
projections was greater than the maximum height of that surface projection. 17
We sustain the rejection of claims 1-6, 8-10, 13-19, 21-23, 25, 26, 29-32, 38-18
48 and 50 under § 103(a) as being unpatentable over Paul and Fraser. 19
Fourth, the evidence and technical reasoning underlying the rejection 20
of claim 49 do not adequately support the conclusion that it would have been 21
obvious to provide an interbody spinal implant with surface projections such 22
that the peak of one of the surface projections overlay at least a portion of 23
another of said surface projections. We do not sustain the rejection of claim 24
49 under § 103(a) as being unpatentable over Paul and Fraser. 25
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Fifth, the evidence and technical reasoning underlying the rejection of 1
claim 57 do not adequately support the conclusion that it would have been 2
obvious to provide an interbody spinal implant with surface projections such 3
that a base of a first surface projection and a base of a second surface 4
projection were spaced apart by a distance as measured along a line 5
transverse to the mid-longitudinal axis of the implant, the distance being less 6
than a maximum width of the forward facet of either the first or second 7
surface projection. We do not sustain the rejection of claims 57-60, 62-77, 8
79, 80, 83-109, 111-118, 120-122 and 124-126 under § 103(a) as being 9
unpatentable over Paul and Fraser. 10
Sixth, the evidence and technical reasoning underlying the rejection of 11
claim 11 do not adequately support the conclusion that it would have been 12
obvious to provide an interbody spinal implant with surface projections in 13
which the leading end, the trailing end and the sides are curved. We do not 14
sustain the rejection of claims 11 and 12 under § 103(a) as being 15
unpatentable over Paul and Fraser. 16
Seventh, the evidence and technical reasoning underlying the rejection 17
of claim 20 adequately support the conclusion that it would have been 18
obvious to treat the interbody spinal implant of claim 1 as bone growth 19
promoting material. We sustain the rejection of claim 20 under § 103(a) as 20
being unpatentable over Paul and Fraser. 21
Eighth, the evidence and technical reasoning underlying the rejection 22
of claim 33 adequately support the conclusion that it would have been 23
obvious for Paul’s implant to have an internal chamber and an access 24
opening for accessing the internal chamber. We sustain the rejection of 25
claims 33 and 35-37 under § 103(a) as being unpatentable over Paul and 26
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Fraser. The evidence and technical reasoning underlying the rejection of 1
claim 34 do not adequately support the conclusion that it would have been 2
obvious for Paul’s implant to have a cap for closing the access opening. We 3
do not sustain the rejection of claim 34 under § 103(a) as being unpatentable 4
over Paul and Fraser. 5
Ninth, the evidence and technical reasoning underlying the rejection 6
of claims 51-54 adequately support the conclusion that the subject matter of 7
these claims would have been obvious. We sustain the rejection of claims 8
51-54 under § 103(a) as being unpatentable over Paul and Fraser. 9
Tenth, the evidence and technical reasoning underlying the rejection 10
of claim 55 do not adequately support the conclusion that it would have been 11
obvious to provide an interbody spinal implant with adjacent surface 12
projections spaced apart to form grooves having horizontal cross-sectional 13
shapes that are one of v-shape, u-shape and box-like shape. We do not 14
sustain the rejection of claim 55 under § 103(a) as being unpatentable over 15
Paul and Fraser. 16
17
DECISION 18
We AFFIRM the Examiner’s decision finally rejecting claims 1-6, 8-19
10, 13-23, 25, 26, 29-33, 35-48, 50-54, 111-113, 117-118, 120 and 125. 20
We REVERSE the Examiner’s decision rejecting claims 11-12, 34, 21
49, 55, 57-60, 62-77, 79, 80, 83-109, 114-116, 121-122, 124 and 126. 22
No time period for taking any subsequent action in connection with 23
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 24
§ 1.136(a)(1) (2009). 25
AFFIRMED-IN-PART 26
Appeal 2009-009574
Application 10/683,071

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Klh 1
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MARTIN & FERRARO, LLP 5
1557 LAKE O'PINES STREET, NE 6
HARTVILLE, OH 44632 7