Ex Parte Michelson

Board of Patent Appeals and Interferences

Jan 9, 2012

11410609 (B.P.A.I. Jan. 9, 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.
11/410,609 04/25/2006 Gary Karlin Michelson 101.0044-10000 5026
22882 7590 01/10/2012
MARTIN & FERRARO, LLP
1557 LAKE O'PINES STREET, NE
HARTVILLE, OH 44632
EXAMINER
BROWN, MICHAEL A
ART UNIT PAPER NUMBER
3772
MAIL DATE DELIVERY MODE
01/10/2012 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 GARY KARLIN MICHELSON
____________________

Appeal 2010-000213
Application 11/410,609
Technology Center 3700
____________________

Before JENNIFER D. BAHR, KEN B. BARRETT, and
JAMES P. CALVE, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-000213
Application 11/410,609

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STATEMENT OF THE CASE
Gary Karlin Michelson (Appellant) appeals under 35 U.S.C. § 134
from the Examiner’s rejection of claims 1 and 11-13 under 35 U.S.C.
§ 102(b) as anticipated by Brantigan (US 4,878,915, iss. Nov. 7, 1989). The
Examiner objected to claim 14 as depending from a rejected claim, but
indicated that it is otherwise allowable. Final Rej. 2. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
The claims are directed to a surgical instrument for distracting a spinal
disc space for use in a method of inserting implants. See Spec. 1. Claim 1,
reproduced below, is illustrative of the claimed subject matter.
1. A surgical instrument for distracting a spinal disc space,
comprising:
a distractor having a length and including:
a shaft and a first distractor tip connected to an end of
said shaft, including:
a first surface and an opposite second surface defining a
distraction height; and
a recessed area extending between said first and second
surfaces along at least a portion of said length.

OPINION
Appellant does not present any separate arguments for the
patentability of dependent claims 11-13 apart from claim 1. Thus, these
claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2010-000213
Application 11/410,609

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Appellant’s only argument in contesting the rejection of independent
claim 1 is that the Examiner erred in finding that Brantigan’s drill guard 22
and drill 21 are a “distractor.” App. Br. 4. According to Appellant, the
Examiner has misconstrued the medical term “distraction.” Id. Appellant
asserts that “[a]ccording to Stedman’s Medical Dictionary, distraction is ‘[a]
force applied to a body part to separate bony fragments or joint surfaces’”
and that “[a]ccordingly, a distractor applies a force to a body part to separate
bony fragments or joint surfaces” and in the context of spinal surgery
“applies a force to the endplates of adjacent vertebral bodies, which causes
the joint surfaces to separate.” Id. Appellant further contends that the
Examiner’s construction of “distractor” is not consistent with Appellant’s
Specification. Reply Br. 3.
The Examiner finds that Brantigan’s drill guide and drill not only are
capable of performing the same function of Appellant’s distractor, but in fact
also are used to perform the same function. Ans. 4. In particular, the
Examiner finds that “forcing the drill between endplates of adjacent
vertebral bodies causes the joint surface[s] to separate.” Id.
Having considered the findings of the Examiner (Ans. 3) and the
respective contentions of Appellant (App. Br. 3-5; Reply Br. 2-3) and the
Examiner (Ans. 4), we find that the Examiner has the better position.
“It is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Appellant’s arguments
that Brantigan’s drill guard and drill are not a “distractor” are directed to the
disclosed use of Brantigan’s device and not to any structural feature of
Brantigan’s drill guard and drill that would render them incapable of
Appeal 2010-000213
Application 11/410,609

4
performing distraction, as understood by persons of ordinary skill in the art
(in accordance with the definition asserted by Appellant) and as described in
Appellant’s Specification, and hence incapable of being a “distractor.” See
App. Br. 4-5 (reasoning that because Brantigan’s drill is used to remove
bone from the vertebrae, it cannot be a distractor); Reply Br. 2 (asserting that
when removing cortex bone, the vertebrae are not separated from one
another). Accordingly, Appellant’s arguments do not persuade us that the
Examiner erred in finding that Brantigan’s drill guard and drill are a
“distractor” as claimed. We sustain the rejection of claim 1 and of claims
11-13, which fall with claim 1.

DECISION
For the above reasons, the Examiner’s decision is 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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