Joshua Makower et al.

Patent Trials and Appeals Board

Aug 20, 2019

11743097 - (D) (P.T.A.B. Aug. 20, 2019)

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.
11/743,097 05/01/2007 Joshua Makower P002 6113
118733 7590 08/20/2019
Moximed, Inc
46602 Landing Parkway
Fremont, CA 94539
EXAMINER
PRONE, CHRISTOPHER D
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
08/20/2019 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):
acermak@cnmiplaw.com
ip@cnmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte JOSHUA MAKOWER, ANTON G. CLIFFORD, and
RICHARD G. VECCHIOTTI1
________________

Appeal 2018-008882
Application 11/743,097
Technology Center 3700
________________

Before ERIC B. GRIMES, JOHN G. NEW, and TIMOTHY G. MAJORS,
Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

1Appellants identify Moximed, Inc. as the real party-in-interest. App. Br. 3.
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SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Non-Final Rejection of claims 1–9, 13–17, 38–40, 45, and 50.
Specifically, claims 1, 2, 5–9, 13–17, 38–40, 45, and 50 stand rejected as
unpatentable under 35 U.S.C. § 102(e) as being anticipated by Hayes et al.
(US 2008/0097441 A1, April 24, 2008) (“Hayes”).
Claims 3 and 4 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) as being obvious over Hayes.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

NATURE OF THE CLAIMED INVENTION
Appellants’ claimed invention is directed to a system and method for
sharing and absorbing energy between body parts. In one particular aspect,
the system facilitates absorbing energy between members forming a joint
such as between articulating bones. Abstr.

REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A system for manipulating energy transferred by members
defining a joint, the members collectively defining a path of
motion and having a cartilage having an energy absorption
component configured therebetween, the system comprising:

a first attachment structure configured to be attached to a
first member of the joint;

a second attachment structure configured to be attached to
a second member of the joint; and
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an energy absorbing member comprising a first cylindrical
piston component attached to the first attachment structure, a
second cylinder component attached to the second attachment
structure, and an elastic member mounted coaxial with the first
cylindrical piston component and being unattached to at least one
of the second cylinder component and the first attachment
structure, the second cylinder component having an open end and
a cylinder bottom, the first cylindrical portion having an exterior
peripheral shape smaller than an interior peripheral shape of the
second cylinder component such that, during elongation of the
energy absorbing member, the first cylindrical piston component
is unbiased by said elastic member from a first position more
proximate the cylinder bottom than the open end of the second
cylinder component to a second position at least at the open end
of the second cylinder component as the members defining the
joint move through flexion.

App. Br. 20.

ISSUES AND ANALYSES
We adopt the Examiner’s findings, reasoning, and conclusion that the
claims on appeal are prima facie anticipated or obvious over the cited prior
art. We address the arguments raised by Appellants below.

A. Rejection of claims 1, 2, 5–9, 13–17, 38–40, 45, and 50 under
35 U.S.C. § 102(e)

Issue
Appellants argue that the Examiner erred because Hayes does not
disclose an enabling disclosure of: “an elastic member mounted coaxial with
the first cylindrical piston component and being unattached to at least one of
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the second cylinder component and the first attachment structure,” as recited
in Appellants’ claim 1. App. Br. 16.

Analysis
Appellants first point to Figure 12A of Hayes, which is depicted
below, as annotated by Appellants. See App. Br. 14.

Figure 12A of Hayes depicts a cross-sectional side view of an
adjustable vertical distraction member having a minimum and
maximum length adjustment. Hayes ¶ 35; App. Br. 14.

Appellants argue that spring 192 in the device is entirely inoperative,
as it is never compressed, and therefore cannot form the basis for the
anticipation of the subject matters of the claims. App. Br. 16. According to
Appellants, Hayes expressly calls for the spring to be shorter than the length
of travel of the piston 182, which is the distance between the shoulders X
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and Y, as indicated in the annotated version of Fig. 12A, supra. Id.
Appellants assert that the ends of the spring 192 do not simultaneously
engage both the piston 182 and the bottom of the cavity in which the spring
is located (demarcated Y in the annotated Fig. 12A). Appellants note that
Hayes’ only disclosure concerning the spring and that cavity is Fig. 12A,
which shows that the spring is not in contact with the bottom of the cavity
when the piston 182 is in its lowermost position. Id. Therefore, argue
Appellants, as the piston 182 moves from its uppermost to its lowermost
positions, the spring 192, being shorter than that distance, can never engage
lower shoulder Y of the cylinder, and thus has no structure against which to
bear and exert a force. Id. Appellants therefore assert that Hayes does not
have an enabling disclosure of an elastic member as recited in the
combinations of the pending claims. Id.
Appellants also point out that spring 194 of Figure 12A is attached at
both ends and therefore always exerts a force on the piston 182. App. Br. 16
(citing the stress-strain curve of Hayes’ Fig. 12A, not reproduced in
Appellants’ version supra, which shows a stress that is always positive).
Appellants assert that this is different from the subject matter of Appellants’
application, which requires, inter alia, a first cylindrical piston component
that is unbiased by an elastic member from a first position more proximate to
the cylinder bottom than the open end of the second cylinder component to a
second position, at least at the open end of the second cylinder component,
as the members defining the joint move through flexion. Id. at 16–17.
Appellants argue that this makes sense in the context of Hayes’
disclosures—as a spinal stabilizer, its device would have to exert force
between its ends at all points along its range of motion, or else the spinal
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joint across which it is installed would not be stabilized, which is the stated
function of spinal joint stabilization devices. Id. at 17.
We are not persuaded by Appellants’ arguments. As an initial matter,
our reviewing court has held that: “[A] prior art printed publication cited by
an examiner is presumptively enabling barring any showing to the contrary
by a patent applicant or patentee.” In re Antor Media Corp., 689 F.3d 1282,
1288 (Fed. Cir. 2012). However, when an applicant challenges enablement,
the Board must “thoroughly review[ ] all evidence and applicant argument to
determine if the prior art reference is enabling.” Id. at 1292.
Appellants’ argument is that the “shoulder” X in its annotated version
of Hayes’ Fig. 12A is positioned such that it narrows the lumen of the
cylinder 196 and that detent 186 prevents the piston 182 from traveling
further downwards in the lumen of cylinder 196, thus preventing second
spring 192 from engaging with the bottom of the cylinder and rendering
second spring 192 superfluous and inoperable. See App. Br. 16–17.
However, Hayes discloses, with respect to Figure 12A:
[T]he placement of set screw 199 determines the travel of piston
182 since detent 186 cannot move past set screw 199. Second,
the placement of set screw 204 determines the travel of piston
182 since the piston itself cannot move past set screw 204. A first
spring 194, always attached to piston 182, directly determines the
force on the piston 182. A second spring 192, shorter in its rest
length than the entire travel of the piston and not attached at the
end of the piston opposite ball 184, only engages when and after
the piston moves a predetermined distance into the housing. In
this way, the second spring 192 provides a heightened restoring
force when the system is highly compressed. This in turn leads
to a “two-step” resistance force indicated by the inset graph.

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Hayes ¶ 88 (emphases added). Hayes thus teaches that the travel of piston
182 is limited by set screws 199 and 204, and not by shoulder “X” (the
designation is Appellants’) and therefore has a longer axis of travel than
indicated in Figure 12A.
Furthermore, paragraph [0088] of Hayes expressly teaches that second
spring 192 “engages when and after the piston moves a predetermined
distance into the housing” and is not prevented from engaging with the
cylinder bottom set screw 204 by shoulder ‘X.’” The inset graph from Figure
12A, reproduced below, demonstrates how the disclosed apparatus works
when a compressing force is exerted upon the cylinder:

The inset graph of Hayes’ Figure 12A depicts the “two-step”
resistance force generated by the disclosed device.

As the inset graph of Figure 12A illustrates, the inflection point of the
resistance force function depicted by the graph occurs when the second
spring 192 engages shoulder “Y” such that its resistance is added to that of
the resistance force generated by the first spring 194. See Hayes ¶ 88.
We agree with the Examiner that the text of paragraph [0088]
provides an enabling disclosure of Hayes’ disclosed device, even though
Figure 12A depicts what appears to be a non-functional embodiment. We do
not rely solely upon Figure 12A in our analysis, because: “[i]t is well known
that Patent Office drawings are not normally drawn to scale, with the
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dimensions and sizes of parts shown to exact measurements as are shop
drawings.” Application of Olson, 212 F.2d 590, 592 (C.C.P.A. 1954).
We agree with Appellants that a person of ordinary skill in the art
would understand that the device, as depicted solely in Figure 12A, is
inoperable. However, we also find that a skilled artisan would quickly
understand that it would require only extending the diameter of the cylinder
lumen, as measured at a location immediately above shoulder X, to a
location further down the cylinder so that piston 182 can travel downwards,
such that set screw 204 limits the downward extent of its axial travel, and
that second spring 192 engages shoulder “Y” to render the spring operable,
as described in paragraph [0088]. See, e.g., Ans. 8.
We further find that it would require no more than routine
experimentation by a person of ordinary skill in the art to achieve this result,
and thus render the invention of Figure 12A operable and, therefore,
enabled. See Amgen Inc. v. Hoechst Marion Roussel, Inc., 457 F.3d 1293,
1306 (Fed. Cir. 2006) (holding that “[l]ike a patent, a prior art reference is
enabled even if some ‘routine experimentation is required in order to
practice a claimed invention, but … such experimentation must not be
‘undue.’’”) (quoting Enzo Biochem. Inc. v. Calgene, Inc., 188 F.3d 1362,
1371 (Fed. Cir. 1999)). We find that the experimentation required to
achieve this would be only routine, and not undue, because paragraph [0088]
of Hayes prescribes precisely how the device should operate.
We therefore find that Hayes is an enabling reference and that second
spring 192 of Hayes anticipates the limitation of claim 1 reciting: “an elastic
member mounted coaxial with the first cylindrical piston component and
being unattached to at least one of the second cylinder component and the
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first attachment structure.” We consequently affirm the Examiner’s
rejection.

B. Rejection of claims 3 and 4 under 35 U.S.C. § 103(a)

Analysis
Appellants argue that even assuming, arguendo, that a person of
ordinary skill in the art would find a rational reason to modify Hayes’
features in the manner alleged by the Examiner to have been obvious, the
resulting hypothetical construct would still not include each and every
feature as recited in the combinations of the pending claims. App. Br. 18.
Specifically, Appellants argue: “even if properly modified, a Hayes device,
hypothetically modified in the manner alleged in the Office Action to have
been obvious, would not include an energy absorbing device as recited in the
combinations of the pending claims.” Id.
We are not persuaded. Appellants point to no evidence of record to
support their argument that Hayes neither teaches nor suggests the “energy
absorbing device” recited in their claims, but merely make a conclusory
statement that such is the case. That is insufficient to overcome the
Examiner’s prima facie conclusion that claims 3 and 4 are obvious. See In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (holding that attorney
arguments and conclusory statements that are unsupported by factual
evidence are entitled to little probative value). To the extent that Appellants
are referring to their position that spring 192 is never compressed and
therefore never exerts a force, the argument is not persuasive for the reasons
discussed supra with respect to anticipation. We consequently affirm the
Examiner’s rejection of claims 3 and 4.
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DECISION
The Examiner’s rejection of claims 1, 2, 5–9, 13–17, 38–40, 45, and
50 under 35 U.S.C. § 102(e) is affirmed.
The Examiner’s rejection of claims 3 and 4 under 35 U.S.C. § 103(a)
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)(1)(iv).

AFFIRMED