Ex Parte Serhan et al

Board of Patent Appeals and Interferences

Nov 23, 2010

10340259 (B.P.A.I. Nov. 23, 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.
10/340,259 01/10/2003 Hassan Serhan 1672-0102 6002
7590 11/23/2010
Maginot, Moore & Beck LLP
Chase Tower, Suite 3250
111 Monument Circle
Indianapolis, IN 46204-5109
EXAMINER
STEWART, ALVIN J
ART UNIT PAPER NUMBER
3774
MAIL DATE DELIVERY MODE
11/23/2010 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 HASSAN SERHAN, JAMES KURAS,
CARL MCMILLIN, and MAARTEN PERSENAIRE
____________

Appeal 2009-008577
Application 10/340,259
Technology Center 3700
____________

Before: JENNIFER D. BAHR, LINDA E. HORNER, and
STEFAN STAICOVICI, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-008577
Application 10/340,259

2
STATEMENT OF THE CASE
Hassan Serhan et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 21-26, 29-34, 36, and 37.
We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM-IN-PART and ENTER A NEW GROUND OF
REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R.
§ 41.50(b).
INVENTION
Appellants’ claimed invention relates to a spinal disc prosthesis to
replace a damaged or degenerated spinal disc in a spinal column of a human.
Spec. 1:3-5. Claim 21, reproduced below, is representative of the subject
matter on appeal.
21. A spinal disc prosthesis, comprising:
a superior plate having a superior surface that has bone
ingrowth material secured thereto; and
an inferior plate positioned below said superior plate,
said inferior plate having an inferior surface that has bone
ingrowth material secured thereto,
wherein said spinal disc is configured when viewed in a
plan view to define a disc perimeter,
wherein said disc perimeter includes a posterior facing
flat portion and a curved portion, and
wherein said curved portion extends continuously from a
first end of said flat portion to a second end of said flat portion,
Appeal 2009-008577
Application 10/340,259

3
wherein said flat portion extends linearly for a first
distance D1,
wherein said spinal disc has a maximum width in the
medial-lateral direction equal to a second distance D2, and
wherein 0.6D2 ≥ D1 ≥ 0.3D2.
REJECTIONS
Appellants seek review of the following Examiner’s rejections:
1. Rejection of claims 21-26, 29-34, 36, and 37 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
2. Rejection of claims 21-26, 29-34, 36, and 37 under 35 U.S.C.
§ 103(a) as being unpatentable over Shinn (US 5,683,465, issued Nov. 4,
1997) and Navarro (US 5,534,030, issued Jul. 9, 1996).
ISSUES
The issues presented by this appeal are:
1. Does Appellants’ original disclosure convey with reasonable
clarity to those skilled in the art that, as of the filing date sought, Appellants
were in possession of the subject matter of independent claim 21?
2. Is the obviousness rejection of claim 21 based upon a sufficient
reason with a rational underpinning to explain why a person of ordinary skill
in the art would have modified Shinn’s device to include bone ingrowth
material as disclosed by Navarro?
Appeal 2009-008577
Application 10/340,259

4
3. Would the proposed combination of Shinn and Navarro have led a
person of ordinary skill in the art to the subject matter of independent claim
21?
4. Did the Examiner find that the proposed combination discloses a
superior projection extending from the superior surface of the superior plate
as called for in claims 25 and 32?
ANALYSIS
Rejection of claims 21-26, 29-34, 36, and 37 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement
For the written description rejection, Appellants argue claims 21-26,
29-34, 36, and 37 as a group. Br. 10-15. We select claim 21 as the
representative claim, and claims 22-26, 29-34, 36, and 37 stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
Independent claim 21 is directed to a spinal disc prosthesis having a
disc perimeter defined by a posterior facing flat portion and a curved
portion, where the curved portion extends continuously from the first end of
the flat portion to the second end of the flat portion. Independent claim 21
calls for the flat portion to extend linearly for a first distance D1, and the
spinal disc to have a maximum width in the medial-lateral direction of a
second distance D2. Independent claim 21 recites the following ratio
between first distance D1 and second distance D2: 0.6D2 ≥ D1 ≥ 0.3D2.
First distance D1, second distance D2, and the specified ratio between the
two distances are not found in any of Appellants’ originally filed claims.
Appeal 2009-008577
Application 10/340,259

5
The Examiner found that independent claim 21 does not comply with
the written description requirement because the originally-filed Specification
does not provide adequate written descriptive support for the limitation
“0.6D2 ≥ D1 ≥ 0.3D2.” Ans. 3.
The Examiner found (Ans. 3) and Appellants concede (Br. 10) that the
term “0.6D2 ≥ D1 ≥ 0.3D2” does not appear in the Specification and that
Appellants’ drawings are not indicated as being to scale. This does not end
our inquiry. In re Smith, 481 F.2d 910, 914 (CCPA 1973) (“claimed subject
matter need not be described in haec verba in the specification in order for
the specification to satisfy the description requirement” (citation omitted)).
The factual inquiry we apply is whether the Specification conveys with
reasonable clarity to those skilled in the art that, as of the filing date sought,
applicant was in possession of the invention as now claimed. Vas Cath Inc.
v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991)). Our reviewing
court has since reaffirmed this standard. Ariad Pharm., Inc. v. Eli Lilly and
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (citing with approval the standard
in Vas Cath, and stating “the test for sufficiency is whether the disclosure of
the application relied upon reasonably conveys to those skilled in the art that
the inventor had possession of the claimed subject matter as of the filing
date.” (citations omitted)).
Appellants’ Specification describes that the spinal disc prosthesis,
viewed in plan, conforms “generally to the shape of a natural human spinal
disc.” Spec. 4:1-2 (describing figure 3 as a bottom plan view of the spinal
disc); 6:5-7; fig 3. Appellants’ Specification describes that perimeter 30 of
Appeal 2009-008577
Application 10/340,259

6
disc 10 is defined by a flat posterior portion 32 and a curved convex portion
34 extending between opposite ends 36 and 38 of the flat posterior portion
32. Spec. 6:7-11; fig. 3; see also Br. 6. Appellants’ Specification does not
explicitly describe first distance D1 or second distance D2; however, first
distance D1 is depicted as extending the length of the flat posterior portion
32, and second distance D2 is depicted as corresponding to the maximum
width in the medial-lateral direction of the spinal disc. Spec., passim;
fig. 3.1 Beyond the description that flat posterior portion 32 and curved
convex portion 34 define the perimeter of the disc 10, and that such
perimeter is generally shaped like a natural human spinal disc, Appellants’
Specification does not describe any other relationship between flat posterior
portion 32 and curved convex portion 34. Br. passim. More specifically,
Appellants’ Specification does not describe a ratio between first distance D1
and second distance D2. Id.
A person of ordinary skill in the art would understand spinal disc
prosthesis 10 to have a perimeter 30 defined by a flat posterior portion 32
connected at each end to a curved convex portion 34, configured to form a
shape generally like a natural human spinal disc. Further, an artisan would
understand that Appellants’ Specification does not describe or depict a ratio
between flat posterior portion 32 (first distance D1) and the maximum width
in the medial-lateral direction (second distance D2). Given the absence of a
disclosure in Appellants’ Specification regarding a ratio between first
distance D1 and second distance D2, we fail to see how a person of ordinary

1 Referring to Figure 3 as amended on August 12, 2004.
Appeal 2009-008577
Application 10/340,259

7
skill in the art could derive the range (i.e., 0.6D2 ≥ D1 ≥ 0.3D2) described in
independent claim 21. Vas Cath Inc., 935 F.2d at 1566 (though the claimed
ranges need not correspond exactly to those disclosed in the specification,
the proper issue is whether one skilled in the art could derive the claimed
ranges from the disclosure).
We find that Appellants’ disclosure does not adequately convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
Appellants were in possession of a spinal disc prosthesis that includes a flat
posterior portion 32 having a first distance D1, and a maximum width in the
medial-lateral direction of the spinal disc having a second distance D2,
configured so that 0.6D2 ≥ D1 ≥ 0.3D2.
Appellants argue that Figure 3 is “accurate,” and thus may be relied
upon to describe the claimed ratio between first distance D1 and second
distance D2. Br. 12-14. These arguments are based on actual measurements
of the figures made by Appellants. Given the lack of a description of the
relationship between first distance D1 and second distance D2 in Appellants’
Specification, and given that Appellants’ drawings are not disclosed as being
to scale, points conceded by Appellants (Br. 10), we are unpersuaded by
these arguments. In re Wright, 569 F.2d 1124, 1127 (CCPA 1977) (“Absent
any written description in the specification of quantitative values, arguments
based on measurement of a drawing are of little value.”).
Appellants argue that a person of ordinary skill in the art would
understand Figure 3 accurately depicts the shape of disc 10 because
Appellants’ Specification describes the configuration of disc 10 as
Appeal 2009-008577
Application 10/340,259

8
conforming generally to the shape of a natural human spinal column. Br. 14.
We agree that Appellants’ Specification describes the spinal disc prosthesis,
viewed in plan, as “generally” shaped like a natural human spinal disc.
Spec. 6:5-7; fig 3. However, we fail to see, and Appellants have failed to
adequately articulate, how a person of ordinary skill in the art, knowing
Appellants’ claimed device is broadly described as generally shaped like a
natural human spinal disc, would derive the specific claimed range (i.e.,
0.6D2 ≥ D1 ≥ 0.3D2).
Appellants also assert a person of ordinary skill in the art would
understand Figure 3 to be accurate because Figure 3 is a “plan view” of the
spinal disc prosthesis and a “plan view” is commonly known as an
“orthographic projection of a 3-dimensional object from the position of a
horizontal plane through the object.” Br. 13. This definition of “plan view”
explains that the perspective of Figure 3 is a horizontal plane through the
object; however, such definition does not address the scale or accuracy of a
plan view.
Even if we were to accept as true Appellants’ argument (Br. 14) that
Figure 3 discloses first distance D1 is 50% of the length of second distance
D2, we fail to see how the disclosure of a single ratio of D1 being 50% of
D2 demonstrates that Appellants invented a spinal disc prosthesis configured
within the claimed range of 0.6D2 ≥ D1 ≥ 0.3D2.
Consequently, we affirm the rejection of claim 21 for failing to meet
the written description requirement. Claims 22-26, 29-34, 36, and 37 fall
with claim 21.
Appeal 2009-008577
Application 10/340,259

9
Rejection of claims 21-26, 29-34, 36, and 37 under 35 U.S.C. § 103(a) as
being unpatentable over Shinn and Navarro
Claims 21-24, 29-31, 36 and 37
For the obviousness rejection, Appellants present the same arguments
for patentability of claims 21-24, 29-31, 36, and 37. Br. 15-20, 23-24, and
27. We select claim 21 as the representative claim, and claims 22-24, 29-31,
36, and 37 stand or fall with claim 21. See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner found that Shinn discloses the subject matter of
independent claim 21, except that Shinn “does not disclose a bone ingrowth
material secured on the external part of the superior plate and the inferior
plate and does not disclose the limitations having 0.6D2 ≥ D1 ≥ 0.3D2.”
Ans. 3-4. The Examiner found that Navarro discloses superior and inferior
plates having bone growth material (porous coating 66). Ans. 4. The
Examiner concluded that it would have been obvious to add Navarro’s bone
growth material to Shinn’s superior and inferior plates in order to promote
the growth of bone tissue and provide a good attachment of the implant and
avoid accidental displacement of the implant from the targeted location.
Ans. 4-5. The Examiner also concluded that it would have been obvious to
make the ratio of the first distance D1 to the second distance D2 within the
range of 0.6D2>D1> 0.3D2 as a matter of design choice. Ans. 4, 6. We
address these two modifications in turn.
Regarding the addition of Navarro’s bone grown material (porous
coating 66) to Shinn’s device, Appellants argue that the Examiner’s stated
reason for the proposed modification of promoting the growth of bone tissue
Appeal 2009-008577
Application 10/340,259

10
is not a sufficient rationale because a person of ordinary skill in the art
“would not provide bone growth material on a device merely for the sake of
growing bone.” Br. 16 (citing Office Action dated March 6, 2008; see also
Ans. 3). We are not persuaded by this argument because it fails to address
the rationale for the proposed modification provided by the Examiner,
namely, to provide a good attachment of the implant and avoid accidental
displacement of the implant from the targeted location. See Ans. 4-5.2
Regarding the obviousness of the claimed ratio of
0.6D2 ≥ D1 ≥ 0.3D2, Appellants argue that because the bone ingrowth
material is used to interlock the claimed device with bone, the configuration
(shape) of the disc is not merely design choice. Br. 19-20. The question is
not whether the shape of the claimed spinal disc prosthesis has a function.
The proper question is whether there is a difference in function between the
claimed spinal disc prosthesis and Shinn’s artificial intervertebral disk
prosthesis 10. See In re Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995) (“design
choice” is appropriate where the applicant fails to set forth any reasons why
the differences between the claimed invention and the prior art would result
in a different function or give unexpected results) (citations omitted).
Shinn’s artificial intervertebral disk prosthesis 10 includes a
“D-shaped” profile having a posterior facing flat portion and a convex
curved portion, and approximates the cross sectional profile of a human
vertebra. Shinn, col. 3, ll. 49-63; figs 1-4 (disk 10 is comprised of first plate
16 and second plate 18, which are generally the same size). Consequently,

2 Appellants elected not to file a Reply Brief.
Appeal 2009-008577
Application 10/340,259

11
Shinn’s disk 10 differs from the spinal prosthesis disc of claim 21 only in
that Shinn does not explicitly disclose a ratio of first distance D1 to second
distance D2. Given that Appellants have not established any criticality or
unexpected results achieved by the claimed ratio of first distance D1 to
second distance D2, this difference between Shinn’s disk and the claimed
disk having a specific ratio fails to demonstrate the non-obviousness of
independent claim 21. In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996)
(“[E]ven though applicant's modification results in great improvement and
utility over the prior art, it may still not be patentable if the modification was
within the capabilities of one skilled in the art, unless the claimed ranges
‘produce a new and unexpected result which is different in kind and not
merely in degree from the results of the prior art.’”). We fail to see, and
Appellants have failed to articulate, how bone ingrowth material differs in
function when used in conjunction with a disc generally shaped like a
natural human spinal disc as called for in independent claim 21 as opposed
to use in conjunction with a disc that approximates the cross sectional profile
of a human vertebra, as disclosed in Shinn.
We therefore sustain the rejection of independent claim 21. Claims
22-24, 29-31, 36, and 37 fall with claim 21.
Claims 25, 26, and 32-34
Claim 25 depends from independent claim 21, and adds the limitation
that a superior projection extends outwardly from the superior surface of the
superior plate. Claim 26 depends from claim 25 and therefore also contains
this limitation. Claim 32 depends from independent claim 29, and adds the
Appeal 2009-008577
Application 10/340,259

12
limitation that a superior projection extends outwardly from the superior
surface of the superior plate. Claims 33 and 34 depend, directly or
indirectly, from claim 32 and therefore also contain this limitation.
Appellants argue that the Examiner has not made a prima facia case of
obviousness regarding claims 25 and 32 because the Examiner failed to find
that either reference discloses a superior projection extending from the
superior surface of the superior plate. Br. 21-22, 24-25. We agree that the
Examiner failed to make a finding regarding this limitation, and because
there is no finding of fact for us to review, we cannot sustain the rejection of
claims 25 and 32. Because claims 26, 33, and 34 depend from claims 25,
and 32, respectively, the rejections of claims 26, 33, and 34 suffers from the
same shortcoming.
NEW GROUND OF REJECTION
We enter the following new ground of rejection for claims 25, 26, and
32-34.
We find that Shinn discloses a superior projection (second pins 52)
extending from the superior surface (second side 18b) of the superior plate
(second plate 18), where second pins 52 are adapted to enter into holes in the
vertebrae. Shinn, col. 9, ll. 6-10; figs. 1, 2.
We further find that Shinn discloses an inferior projection (first pins
50) extending from the inferior surface (second side 16b) of the inferior
plate (first plate 16), where first pins 50 are adapted to enter into holes in the
vertebrae. Shinn, col. 9, ll. 1-5; figs. 1, 2.
Appeal 2009-008577
Application 10/340,259

13
For the same reasons provided by the Examiner in the rejection of
claims 21 and 29, we conclude that it would have been obvious to modify
Shinn’s spinal disc prosthesis, which includes Shinn’s superior and inferior
projections (second pins 52 and first pins 50, respectively), with the bone
growth material of Navarro (Ans. 3-6), and thus reach the subject matter of
claims 25, 26, 32, 33, and 343.
CONCLUSIONS
1. Appellants’ original disclosure does not convey with reasonable
clarity to those skilled in the art that, as of the filing date sought, Appellants
were in possession of the subject matter of independent claim 21.
2. The rejection of claim 21 is based upon a sufficient reason with a
rational underpinning to explain why a person of ordinary skill in the art
would have modified Shinn’s device to include bone ingrowth material as
disclosed by Navarro.
3. The proposed combination of Shinn and Navarro would have led a
person of ordinary skill in the art to the subject matter of independent claim
21.

3 Claim 34 depends indirectly from independent claim 29, adding the
limitation that the bone ingrowth material is also secured to the inferior
surface of the inferior plate. This limitation was discussed in the Examiner’s
rejection (Ans. 4). However, claim 34 is subject to this new ground of
rejection because it depends from claim 33, which depends in turn from
claim 32, and thus includes the inferior and superior projections.
Appeal 2009-008577
Application 10/340,259

14
4. The Examiner did not find that the proposed combination discloses
a superior projection extending from the superior surface of the superior
plate as called for in claims 25 and 32.
DECISION
We AFFIRM the Examiner’s decision to reject claims 21-26, 29-34,
36, and 37 under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement.
We AFFIRM the Examiner’s decision to reject claims 21-24, 29-31,
36, and 37 under 35 U.S.C. § 103(a) as unpatentable over Shinn and
Navarro.
We REVERSE the Examiner’s decision to reject claims 25, 26, and
32-34 under 35 U.S.C. § 103(a) as unpatentable over Shinn and Navarro.
We enter a NEW GROUND OF REJECTION for claims 25, 26, and
32-34 under 35 U.S.C. § 103(a) as unpatentable over Shinn and Navarro.
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(1) provides
“Appellants may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejections of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that, TO AVOID
TERMINATION OF THE APPEAL AS TO THE REJECTED CLAIMS,
Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE
Appeal 2009-008577
Application 10/340,259

15
DECISION, must exercise one of the following two options with respect to
the new grounds of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the Examiner, in which event the
proceeding will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review of the Patent Office’s decision under 35 U.S.C. § 141 (Appeal to the
Court of Appeals for the Federal Circuit) or under 35 U.S.C. § 145 (civil
action to obtain patent) with respect to the affirmed rejections, the effective
date of the affirmance is deferred until conclusion of the prosecution before
the Examiner unless, as a mere incident to the limited prosecution, the
affirmed rejections are overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejections, including any timely request for
rehearing thereof.

No time period for taking any subsequent action in connection with
Appeal 2009-008577
Application 10/340,259

16
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

nlk

Maginot, Moore & Beck LLP
Chase Tower, Suite 3250
111 Monument Circle
Indianapolis IN 46204-5109