Ex Parte REFAI et al

Patent Trial and Appeal Board

Jul 13, 2018

14222862 (P.T.A.B. Jul. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/222,862 03/24/2014
23122 7590
RATNERPRESTIA
2200 Renaissance Blvd
Suite 350
King of Prussia, PA 19406
07/17/2018
FIRST NAMED INVENTOR
Daniel REF AI
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. CONFIRMATION NO.
BBM-331US2 3656
EXAMINER
BOLES, SAMEH RAAFAT
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
07/17/2018 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):
PCorrespondence@ratnerprestia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL REF AI, JEFFREY A. FARRIS,
JEFFREY T. EBERSOLE, CORY ALAN TRISCHLER,
GORDON PAUL KISTLER, and CHARLES WING
Appeal2016-004946
Application 14/222,862
Technology Center 3700
Before: MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b). A hearing was
held on June 26, 2018, and a transcript of that hearing has been placed into
the record ("Rec. Oral Hr' g").
We affirm-in-part.
1 Appellants identify Aesculap Implant Systems, LLC as the real party in
interest. Appeal Br. 2.
Appeal2016-004946
Application 14/222,862
CLAIMED SUBJECT MATTER
The claims are directed to a vertebral body replacement device for use
to maintain a space between two vertebral bodies within a spine. Claims 1
and 20 are independent. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A vertebral body replacement device having a longitudinal
axis and comprising:
A. a central member having a threaded portion;
B. a first end member comprising an end wall and a
plurality of screw holes extending through the end wall of the
first end member, the plurality of screw holes of the first end
member comprising at least a first screw hole and a second screw
hole, the plurality of screw holes radially arranged about a center
point of the first end member, with a distance between the center
point and the first screw hole defined by a first radius, and a
distance between the center point and the second screw hole
defined by a second radius, the first radius and the second radius
extending within a plane substantially perpendicular to the
longitudinal axis, with the second radius being separated from
the first radius by an angle less than 180 degrees;
C. a second end member comprising an end wall and
at least one screw hole extending through the end wall of the
second end member;
D. a first footplate member comprising a first end
surface having at least one aperture in the first end surface for
attaching the first footplate member to the first end member;
E. a second footplate member comprising a second end
surface having at least one aperture in the second end surface for
attaching the second footplate member to the second end
member; and
F. at least one locking screw for detachably connecting
the first footplate member to the first end member,
the first end member being axially displaceable relative to
the second end member in response to rotational motion of the
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Application 14/222,862
central member relative to the first end member and the second
end member, so as to adjust an overall length of the vertebral
body replacement device, and
the first footplate member being detachably connected to
the first end member in a desired orientation by inserting the at
least one locking screw through the at least one aperture of the
first footplate member and into one of the plurality of screw holes
of the first end member.
REFERENCES
The prior art relied upon by the Examiner is:
Biedermann
Fleischmann
Gutlin
US 2001/0014826 Al
US 2005/0216084 Al
US 2006/0058877 Al
REJECTI0NS 2
Aug. 16,2001
Sept. 29, 2005
Mar. 16, 2006
Claims 1-5, 7-12, and 17-22 are rejected under 35 U.S.C. § I03(a) as
being unpatentable over Gutlin and Fleischmann.
Claims 6 and 13-16 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Gutlin, Fleischmann, and Biedermann.
OPINION
Claims 1-5, 7-12, & 17-20
Appellants argue the rejection of claims 1-5, 7-12, and 17-20
together. Appeal Br. 9-11. We select independent claim 1 as
representative. See 37 C.F.R. § 4I.37(c)(l)(iv).
2 The rejection of claims 21 and 22 under 35 U.S.C. § 112, first paragraph,
written description has been withdrawn. Ans. 9.
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Application 14/222,862
The Examiner finds that the intervertebral implant of Gutlin teaches
most of the features of claim 1, including "a first end member 6 ... [and] a
first footplate member 5." Final Act. 3--4. However, the Examiner
determines that among other shortcomings, the first footplate member 5 in
Gutlin is not detachable from the end member 6. Id. at 4. The Examiner
finds that, inter alia, "Fleischmann teaches a first footplate member 20, fig.
3b and the second footplate member 20' are detachable" where "the first
footplate member 20 comprising a first end surface having at least one
aperture 95a arranged on the first end surface for attaching the first footplate
member to the first end member." Id. at 6-7. The Examiner determines that
"[i]t would have been obvious ... to construct the footplate members of
Gutlin to be detachably connecting to the end members in view of
Fleischmann ... giving the user the option of exchanging the footplates."
Id. at 7-8.
Appellants argue that Fleischmann's3 "end cap (20) cannot be both an
end member and footplate member as claimed, because the end cap cannot
be detachably connected to itself. Therefore, the interpretation used in the
Office Action leads to an erroneous result and cannot support any of the
rejections under 35 U.S.C. § 103." Appeal Br. 10. The Examiner replies
that Gutlin teaches the first end member 5 and the first footplate member 6.
Ans. 9. Further, the Examiner explains that "the footplate members 5, 4 can
be modified to be detachably connected to the end members 6 and 14 in
view of Fleischmann." Id. at 9-10.
3 Appellants state that through typographical error the Appeal Brief recites
"Gutlin" instead of "Fleischmann." Reply Br. 2.
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Application 14/222,862
We agree that Fleischmann's "end cap (20) cannot be both an end
member and footplate member" as asserted by Appellants, however, as
noted by the Examiner the rejection relies on a combination of
Fleischmann's teaching of a detachable footplate with Gutlin's first end
member 5 and the first footplate member 6.
Further, Appellants admit in their next argument that Fleischmann
teaches "end caps (20, 20') ... comparable to [the claimed] end members,
and crown plates (IOA, lO'A) ... comparable to [the claimed] footplate
members" where the "[c]rown plates (IOA, lO'A) have through-holes (95A,
95B) that align with screw holes (22, 22') in end caps (20, 20')." Appeal Br.
10. In other words, Appellants admit that Fleischmann teaches footplates
that are detachable from end members that are further attached with a screw.
Thus, even though the Examiner incorrectly, and possibly through
typographical error, listed reference number 20 for the footplate in
Fleischmann, Appellants' Appeal Brief acknowledges Fleischmann as
teaching detachable footplates as set forth in the rejection of the claim.
For these reasons we are not informed of reversible error in the
Examiner's rejection of claim 1.
Claims 21 & 22
Appellants next argue "Fleischmann et al. fails to teach a plurality of
screw holes in the first end member that allow the footplate member to
attach to the first end member in first and second orientations that differ by
an angle less than 180 degrees. At best, Fleischmann et al. teaches plates
that attach to end members in only one orientation." Appeal Br. 10.
Appellants further argue that Fleischmann' s "[ c ]rown plates (1 OA, 1 O'A) do
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Application 14/222,862
not attach to end caps (20, 20') in multiple orientations. Instead, crown plates
(IOA, IO'A) attach to end caps (20, 20') in only one orientation (Figs. IA and
3A)." Id.
The Examiner replies that the claims do not require "a plurality of
screw holes in the first end member that allow the footplate member to
attach to the first end member in first and second orientations that differ by
an angle less than 180 degrees," as argued by Appellants. Ans. 10
(emphasis omitted). Appellants respond and clarify that "[t]he Examiner is
correct only to the extent that the quoted language does not appear in the
independent claims. The quoted language does correspond to the subject
matter in claims 21 and 22. Therefore, Appellant[ s'] argument is applicable
at least to claims 21 and 22." Reply Br. 3.
The Examiner's rejection of claims 21 and 22 merely asserts that
these features are taught by Fleischmann, pointing to Fleischmann Figure 3B
for support. Final Act. 7. However, Fleischmann Figure 3B does not appear
to show the features of claims 21 and 22. Thus, without additional
explanation or support, we do not sustain the rejection of claims 21 and 22.
In the hearing, for the first time on Appeal, Appellants state that this
argument is directed to the Examiner's finding of design choice in the
rejection of independent claim 1. Rec. Oral Hr'g 9-12.
In the rejection of claim 1 the Examiner found that though
Fleischmann taught a plurality of screw holes radially arranged around the
center of the first end member, it does not teach a radius of a first screw hole
being separated from the radius of a second screw hole by an angle less than
180 degrees. Final Act. 6, 8. The Examiner then determined that
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Application 14/222,862
it would have been an obvious matter of design choice to one
skilled in the art . . . to construct the second radius being
separated from the first radius by an angle less than 180 degrees
since applicant has not disclosed that such provides an
advantage, or solves a stated problem.
Final Act. 8.
In the hearing, Appellants argued that the above argument is a reason
why the position of the screw holes is not merely design choice, as it
provides an advantage and solves a stated problem. Rec. Oral Hr' g 9-10.
The advantage being "[t]he ability to incrementally adjust the orientation of
each footplate." Id. at 9.
However, Appellants' argument is not commensurate in scope to
claim 1. The mere presence of two screw holes less than 180 degrees apart
in the end member does not by itself allow for incremental adjustment of the
footplate. This can be seen by adjusting the position of the screw holes in
Fleishmann. See e.g., Fleishmann Figs. IA, IB, ID, 3A--4A, 4C-5C; see
also, Final Act. 8. Per Appellants' arguments "Fleischmann et al. teaches
plates that attach to end members in only one orientation." Appeal Br. 10.
Changing the location and/or relationship of the screw holes, of itself, would
not appear to have any effect on how the plates attach to the end plates, nor
would it effect the orientation of the footplate to the end plate. Further,
Fleischmann modified in this manner would "perform equally well and[]
perform the same function." Final Act. 8.
We further note that claim 1 does not even require that the first
footplate member be connected to either of the first screw hole or the second
screw hole.
In view of Appellants' statements in the Reply Brief, we are not
convinced that Appellants intended these arguments to be addressed to claim
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Application 14/222,862
1. At the same time, for the reasons discussed above, even if they were
addressed to claim 1, they do not inform us of error in the Examiner's
rejection of claim 1.
Claims 6 & 13-16
Appellants argue that Biedermann "fails to teach claim elements that
are missing in Gutlin." Appeal Br. 11. "In particular, Biedermann et al.
fails to teach a plurality of screw holes in a first end member that allow the
footplate member to be attached to the first end member in different
orientations." Id. The Examiner correctly responds that Biedermann is not
relied on for this feature of the claims. Ans. 10; see also Final Act. 9-10.
We further note that none of claims 6 and 13-16 depend from claims 21 or
22.
We sustain the rejection of claims 6 and 13-16 as Appellants'
argument does not inform us of error in the rejection.
DECISION
The Examiner's rejections of claims 1-20 are affirmed.
The Examiner's rejection of claims 21 and 22 is reversed.
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)(l )(iv).
AFFIRMED-IN-PART
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