Ex Parte Theofilos et al

Patent Trials and Appeals Board

Jun 19, 2018

13800530 - (D) (P.T.A.B. Jun. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/800,530 03/13/2013 Charles Theofilos
31554 7590 06/21/2018
CARTER, DELUCA, FARRELL & SCHMIDT, LLP
445 BROAD HOLLOW ROAD
SUITE420
MELVILLE, NY 11747
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.
1449-309-CIP 2791
EXAMINER
WOODALL, NICHOLAS W
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
06/21/2018 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):
docket@cdfslaw.com
bpuchaczewska@cdfslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES THEOFILOS, SCOTT JONES,
and JENNIFER MOORE
Appeal2017-004378
Application 13/800,530 1
Technology Center 3700
Before DONALD E. ADAMS, ELIZABETH A. LA VIER,
and DAVID COTTA, Administrative Patent Judges.
LA VIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants seek review of the
Examiner's rejections of claims 1 and 4--10. We have jurisdiction under 35
U.S.C. § 6(b ). For the reasons set forth below, we AFFIRM.
BACKGROUND
The Specification describes "spinal implants configured for
positioning within the intervertebral space between adjacent vertebral
1 Appellants state the real party in interest is K2M, Inc. Br. 1.
Appeal2017-004378
Application 13/800,530
bodies." Spec. ,r 2. Claim 1, the only independent claim on appeal, recites:
1. A spinal implant assembly, comprising:
a U-shaped body having first, second, and third walls defining
an area there between, a first end of each of the second and third
walls joined to the first wall at opposing ends of the first wall
such that the second and third walls define legs of the U-shaped
body, a free end of each of the second and third walls defining
an engagement slot and a first transverse aperture, the
engagement slot including an elongate section and an expanded
section, the elongate section defined by a first pair of
substantially parallel surfaces spaced-apart a first height, the
expanded section defining a second height greater than the first
height, the first transverse aperture disposed in perpendicular
orientation relative to the first pair of substantially parallel
surfaces of the elongate section of the engagement slot and
bisecting the elongate section of the engagement slot;
a plate having a main portion defining first and second faces
and first and second sides, the plate having at least one first
screw hole extending therethrough from the first face to the
second face, the plate having first and second engagement
members extending from the second face thereof adjacent the
first and second sides of the plate, each engagement member
defining an elongate portion having a free end, an expanded tip
portion disposed at the free end of the elongate portion, and a
second transverse aperture, the elongate portion defined by a
second pair of substantially parallel surfaces spaced-apart a
third height, the expanded tip portion defining a fourth height
greater than the third height, the second transverse aperture
disposed in perpendicular orientation relative to the second pair
of substantially parallel surfaces of the elongate portion of the
engagement member and extending through the elongate
portion of the engagement member, the engagement slots and
engagement members configured such that the elongate
portions of the engagement members are insertable into the
elongate sections of the engagement slots and the expanded tip
portions of the engagement members are insertable into the
expanded sections of the engagement slots via sliding of the
plate relative to the U-shaped body from an offset position to an
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Appeal2017-004378
Application 13/800,530
aligned position, the offset position defined by one of the first
and second engagement members disposed between the first
and second engagement slots within the area and the other of
the first and second engagement members disposed outside the
first and second engagement slots and the area, the aligned
position defined by the first and second transverse apertures
being aligned with each other; and
first and second pins configured for insertion through the first
and second aligned transverse apertures, the respective
elongate sections of the engagement slots, and the respective
elongate portions of the engagement members to engage the
body and plate to one another in fixed orientation and position
relative to one another.
Br. 14--15 (Claims Appendix) (emphases added).
REJECTIONS MAINTAINED ON APPEAL
1. Claims 1 and 4--9 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Bray, 2 Messerli, 3 Theofilos, 4 and Duffield. 5
Ans. 2.
2. Claim 10 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Bray, Messerli, Theofilos, Duffield, and Lechmann. 6 Ans. 7.
DISCUSSION
For claim 1, Appellants set forth a two-part argument: (1) the cited
references each teach or suggest only a single retention feature (not two
retention features as recited in claim 1 ), and, (2) the Examiner has not
2 Bray et al., US 2007/0250167 Al, published Oct. 25, 2007.
3 Messerli et al., US 2010/0305704 Al, published Dec. 2, 2010.
4 Theofilos, US 2010/0217393 Al, published Aug. 26, 2010.
5 Duffield et al., US 2010/0057206 Al, published Mar. 4, 2010.
6 Lechmann et al., US 2006/0085071 Al, published Apr. 20, 2006.
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Appeal2017-004378
Application 13/800,530
provided sufficient reasoning that using the two retention features recited in
claim 1 would have been obvious, given these "single-retention feature
teachings." Br. 10.
These interrelated assertions are not persuasive, because the Examiner
relies on Duffield as teaching two such retention features, i.e., an
engagement slot and apertures/pins:
Duffield teaches a device (see Figure 5) comprising a body
(12), a plate (14), and a locking mechanism, wherein the
locking mechanism includes an engagement slot on the body
having apertures (24) oriented perpendicular to and bisecting
the engagement slot, and engagement member extending from a
second face of the plate including transverse apertures that are
configured to align with the apertures of the engagement slot
when the plate and the body are engaged, and the device further
comprising first and second pins (26/28) that are inserted
through the aligned apertures in order to prevent the plate and
body from disengaging.
Final Action 6; see also Ans. 10. Although Appellants are correct that
Duffield "discloses the use of connection pins" (Br. 10 ( citing Duffield
,r 26)), Figure 5 of Duffield, cited by the Examiner, shows both the slot and
the connection pins:
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Appeal2017-004378
Application 13/800,530
26-l
24---
10
I
~~j'
\__ ______ y _______ )
Fig.. 5
12
Figure 5 of Duffield diagrams an intervertebral fusion implant 10 in which
spacer portion 12 is coupled to plate portion 14 by connection pins 26 and
28, through connection points 24. Duffield ,r,r 23, 26.
Although not labeled or expressly discussed in connection with Figure
5, Figure 5 of Duffield nonetheless shows a slot in spacer portion 12 that
bisects and runs perpendicular to connection points 24, and into which the
( also unlabeled) protrusion on plate portion 14 fits ( as can be seen in Figures
5
Appeal2017-004378
Application 13/800,530
1 and 2). 7 A reference need not specifically, or even intentionally, describe
a feature if the disclosure is "clearly made in a drawing," In re Seid, 161
F.2d 229,231 (CCPA 1947); see also In re Ming, 492 F.2d 843, 847 (CCPA
1974), as we find is the case here.
To be sure, Duffield's engagement slot is not shaped like the claimed
engagement slot, insofar as Figure 5 of Duffield shows a simple rectangular
slot, whereas claim 1 describes an engagement slot "including an elongate
section and an expanded section," inter alia. But this is of no moment, see
In re Keller, 642 F.2d 413,426 (CCPA 1981) ("But one cannot show non-
obviousness by attacking references individually where, as here, the
rejections are based on combinations of references."), as the Examiner relies
on Messerli and Theofilos for these features (see Final Action 4--5
(discussing Messerli Figs. lOA, lOB and Theofilos Fig. 3C); see also Ans. 8,
10).
Because we find that Duffield teaches an engagement slot and
pins/apertures, i.e., two retention features rather than one, Appellants'
argument regarding the Examiner's rationale for combining the references
( which presumes each reference only teaches a single retention feature) is
not persuasive. As the Examiner explains:
[T]he device of Bray as modified by Messerli as further
modified by Theofilos clearly discloses an implant having a
spinal implant with a tongue and groove connection between a
plate and a spacer that locks the spacer relative to the plate in at
least one direction (in this case the plate and spacer cannot be
7 The Examiner's finding is further supported by reference to Figure 17 of
Duffield, which describes another embodiment using pins or the like to
"rigidly couple[]" a plate protrusion to a plate receiving area, 1.e., an
engagement slot. Duffield ,r 34.
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Appeal2017-004378
Application 13/800,530
lifted or pulled apart because of the T -shaped tongue and
groove connection). Duffield teaches an implant having a
tongue and groove connection between a plate and a spacer that
locks the spacer relative to the plate in at least one direction (in
this case the plate and spacer cannot be lifted apart because of
the tongue and groove connection). In order to prevent the
plate and spacer from being separated by pulling apart or slid
apart the device further includes pins passed through the tongue
and groove connection to prevent the plate and the spacer from
disengaging, i.e. pulled or slid apart.
Ans. 10.
Having considered Appellants' arguments in support of claim 1, we
are not persuaded of any reversible error by the Examiner in rejecting claim
1. Accordingly, we affirm the rejection of claim 1. Appellants do not
separately argue claims 4--9; these fall with claim 1. See 37 C.F.R.
§ 4I.37(c)(l)(iv). Appellants argue claim 10 only by reference to their
arguments for claim 1. See Br. 12. Accordingly, we affirm the rejection of
claim 10 for the same reasons.
CONCLUSION
The rejections of claims 1 and 4--10 under 35 U.S.C. § 103(a) are
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)(l )(iv).
AFFIRMED
7