Moximed, Inc.Download PDFPatent Trials and Appeals BoardAug 12, 20202020000598 (P.T.A.B. Aug. 12, 2020) Copy Citation 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. 13/850,152 03/25/2013 Joshua Makower P002 C2 1073 118733 7590 08/12/2020 Moximed, Inc 46602 Landing Parkway Fremont, CA 94539 EXAMINER PRONE, CHRISTOPHER D ART UNIT PAPER NUMBER 3774 NOTIFICATION DATE DELIVERY MODE 08/12/2020 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. VECCHIOTTI ____________ Appeal 2020-0005981 Application 13/850,152 Technology Center 3700 ____________ Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant2 seeks our review under 35 U.S.C. § 134(a) of the rejection of claims 45–49, 56, and 59. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant identifies the following applications as having related appeals: 11/743,097; 11/743,605; 12/112,442; 12/949,687; 12/113,044; 12/113,052; 12/113,063; 12/113,072; 12/113,080; 12/112,415; 12/113,157; 12/113,086; 12/579,190; 13/309,984; 13/403,633; 13/800,676. Appeal Br. 3. 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Moximed, Inc. as the real party in interest. Appeal Br. 3. Appeal 2020-000598 Application 13/850,152 2 THE INVENTION Appellant’s invention, titled, “Extra-Articular Implantable Mechanical Energy Absorbing Systems” relates to “approaches designed to reduce mechanical energy transferred between members forming a natural joint.” Spec. ¶ 1. Independent claim 45, reproduced below as the sole independent claim on appeal with disputed limitations italicized for emphasis, is illustrative of the subject matter on appeal. 45. A system for manipulating energy transferred by first and second members defining a joint, the members collectively defining a path of motion, the joint having a cartilage with an energy absorption component configured between said members, comprising: a first attachment structure configured to be attached to the first member of the joint; a second attachment structure configured to be attached to the second member of the joint; and an energy absorbing member comprising a male member and a female member, the male member including a cylindrical portion and the female member including an opening, the cylindrical portion being receivable in the opening as the first and second members defining the joint move through flexion, the energy absorbing member being attached to the first attachment structure and to the second attachment structure; wherein the energy absorbing member is configured to provide no resistance to elongation between the first and second attachment structures. Appeal 2020-000598 Application 13/850,152 3 THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: NAME REFERENCE DATE Lindh US 5,316,546 May 31, 1994 Colleran US 2006/0247637 A1 Nov. 2, 2006 The following rejections are before us for review: I. Claims 45–49, 56, and 59 stand rejected under 35 U.S.C. § 101 as lacking utility. II. Claim 45–49, 56, and 59 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. III. Claims 45–49, 56, and 59 stand rejected under 35 U.S.C. § 112, second paragraph, as indefinite. IV. Claims 45–49, 56, and 59 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Colleran and Lindh. OPINION Rejection I Appellant argues claims 45–49, 56, and 59 as a group. Appeal Br. 32–33. We select claim 45 as representative and claims 46–49, 56, and 59 stand or fall with claim 45. See 37 C.F.R. § 41.37(c)(1)(iv). Regarding independent claim 45, the Examiner finds that the invention recited in the claims is inoperative, and therefore, lacks the utility required by 35 U.S.C. § 101. In particular, the Examiner finds that the claimed “energy absorbing member cannot be configured to provide no Appeal 2020-000598 Application 13/850,152 4 resistance to elongation between the first and second attachment structures,” as claimed, because “[t]here will inherently be resistance based on frictional, gravitational, and/ or weight forces.” Non-Final Act. 3 (emphasis added). In particular, the Examiner finds that “there will be frictional resistance between the male and female members,” and reasons that “[t]he removal of all friction appears to be violating fundamental laws of physics.” Ans. 4–5. Appellant argues that “the claims are directed to an implantable device which will perform a function,” and, therefore, the claims satisfy the utility requirement of 35 U.S.C. § 101. Appeal Br. 33. Appellant’s argument, however, fails to address whether the claimed device is operative. We consider whether the claims recite an operative invention, regardless of the intended usefulness or function of the claimed invention. Appellant also argues that the Examiner’s finding that the system recited in claim 45 “somehow implicate[s] ‘friction, gravity, and weight’ is simply misplaced, and demonstrates that the [Examiner] has adopted a meaning of the claims’ terms which is not consistent with the use of the terms in [the Specification].” Appeal Br. 30. In particular, Appellant submits that “[a]s force is a vector, not a scalar, the claim specifies the magnitude (‘no’) and direction (‘between the first and second attachment structures’) of the force, and is simply silent about forces in other directions; thus, the [Examiner’s] concerns are simply not embodied in the claim” and the Examiner’s finding regarding friction, gravity, and weight lacks evidentiary support. Id. Appellant concludes that “[p]ersons of ordinary skill in the art, reading this application, would understand that friction . . . play[s] no part in the statics and dynamics with which this application is concerned.” Id. at 31. Appeal 2020-000598 Application 13/850,152 5 “The questions of whether a specification provides an enabling disclosure under § 112, ¶ 1, and whether an application satisfies the utility requirement of § 101 are closely related.” In re Swartz, 232 F.3d 862, 863 (Fed. Cir. 2000). The utility requirement of § 101 requires that the claimed invention be operable to achieve a useful result. Id. Where the invention is inoperative, the claims also fail to satisfy the enablement requirement of § 112, first paragraph, because one skilled in the art cannot practice the invention. Id. Whether the invention satisfies the utility requirement is a question of fact, and enablement is a question of law based on underlying factual inquiries. Id. We construe claim 45, consistent with the Examiner’s claim construction, as requiring an energy absorbing member that (i) comprises a male member including a cylindrical portion and a female member including an opening, wherein the cylindrical portion is receivable in the opening as first and second members defining a joint (i.e., a structure at which two parts are fitted together) move through flexion (i.e., the action of bending, as compared to a linear expansion of two un-joined members); (ii) is attached to first and second attachment structures, which are configured to be attached to the first and second members of the joint, respectively; and (iii) is configured to provide no resistance to elongation between the first and second attachment structures. Further, we find that “a path of motion” recited in the preamble of claim 45, which is defined collectively in claim 45 by the first and second members defining the joint, is limited by the recitation in the body of the claim of the joint moving through flexion (or bending), such that the claimed elongation between the first and second attachment structures requires elongation resulting from flexion of the joint, Appeal 2020-000598 Application 13/850,152 6 wherein, during such flexion, the cylindrical portion of the male member is received in the opening of the female member. Notably, the entirety of energy absorbing member, which comprises3 at least the male and female members, must be configured to provide no resistance to such elongation during flexion of the joint, according to claim 45. Thus, the threshold question before us is whether the Examiner has stated a prima facie case of a lack of utility for the claimed invention by providing sufficient evidentiary support for finding that one of ordinary skill in the art would reasonably doubt the asserted utility because frictional, gravitational, and/or weight forces are generated inherently by the energy absorbing member to resist the claimed elongation between the first and second attachment structures—and more particularly, because frictional resistance is generated between the male and female members, such that the recitation of an energy absorbing member configured to provide no resistance to such elongation results in an inoperative device. See Brana, 51 F.3d at 1566; see also In re Swartz, 232 F.3d 862, 864 (Fed. Cir. 2000) (the court found that “the PTO provided substantial evidence that those skilled in the art would ‘reasonably doubt’ the asserted utility and operability of cold fusion.”). If the Examiner has set forth such a prima facie case, the evidentiary burden shifts to Appellant to submit “evidence of operability that would be sufficient to overcome reasonable doubt.” Swartz, 232 F.3d at 864. Here, Appellant does not specifically address the Examiner’s reliance on friction relative to the claimed male and female members as the joint 3 See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (explaining that the transitional claim term “comprising” means that the recited “elements are essential, but other elements may be added and still form a construct within the scope of the claim (emphasis added)). Appeal 2020-000598 Application 13/850,152 7 moves through flexion. Appeal Br. 6–33 (see id. at 30 (arguing that the Examiner’s finding regarding inoperability lacks evidentiary support). Therefore, our threshold question is dispositive. Appellant identifies the following paragraphs and figures as relevant to interpreting independent claim 45: paragraphs 46, 49, 189, and 218 to 222, and Figures 1, 2, and 68. Appeal Br. 4. Paragraph 46 of the Specification discloses, in relevant part, that [i]n one specific embodiment, the present invention is embodied in a device utilizing an element, or elements functioning as a unit, which responds to bending or changes in elongation. In an application to a knee joint, this device forms a bending spring that is to span the tibiofemoral joint and be anchored into the tibia and femur. . . . In one embodiment, the device is designed to off load the joint during knee extension. Unloading in this phase is governed by the compression of the device – increased compression yields increased joint un- loading. The device is anchored in a position which ensures device elongation resulting from knee flexion. As the knee moves into flexion, the device is un-compressed and will cause little to no joint off-loading. . . . . The device can also be configured to provide off-loading during flexion. Spec. ¶ 46 (emphasis added). This passage explains generally that the invention is a device that functions by responding to bending or changes in elongation. More specifically, the passage teaches that when the energy absorbing member is a bending spring that spans the knee joint and is anchored into the tibia and femur, the device may be anchored to ensure device elongation, and further, configured such that (i) during knee extension, the bending spring compresses to absorb energy, thereby unloading or off-loading force from the surfaces of the joint; and (ii) during knee flexion, the bending spring un- compresses to release energy, but does so in a way that causes little or no Appeal 2020-000598 Application 13/850,152 8 joint off-loading. However, this passage does not address the specific embodiment claimed (i.e., an energy absorbing member comprising male and female members, unless to imply that the male and female members are together a bending spring), nor does this passage explain how no joint off- loading is accomplished by the bending spring. Paragraph 49 of the Specification discloses that [i]n a further approach, the invention is embodied in a piston support assembly. This approach employs a spring loaded piston mechanism to absorb energy normally experienced by the anatomical joint. The piston is comprised of an axially mobile member or rod moving in a defined path. Depending on the axial position of the rod, a compressible spring is engaged thereby transferring load through the mechanism. When the spring is not engaged no absorbing or load transfer occurs. The device may utilize rigid and coaxial elements that ride into or through each other. Spec. ¶ 49 (emphasis added). Critically, we decline to consider embodiments that require, as an essential element of the energy absorbing member, a spring, in order for the energy absorbing device to be configured to provide no resistance to elongation between the first and second attachment structures, as claimed. Rather, we presume claim 45 recites an enabled invention by including all the essential elements of the system.4 See In re Mayhew, 527 F.2d 1229, 4 Nor do we consider the claim term “an energy absorbing member” a nonce word that incorporates all structures described in the Specification (i.e., a spring); here, the claim specifies that the energy absorbing member comprises specific structures, including male and female members. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1350 (quoting Mass. Inst. Of Tech. & Elecs. For Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006)) (“[g]eneric terms such as ‘mechanism,’ ‘element,’ ‘device,’ and other nonce words that reflect nothing more than verbal constructs may be used in a claim in a manner that is tantamount to using the Appeal 2020-000598 Application 13/850,152 9 1232 (CCPA 1976) (affirming examiner’s 35 U.S.C. § 112 [first paragraph] rejection of claims lacking a cooling zone for a steel strip at the exit end of a molten galvanizing (spelter) bath wherein the specification description indicated that the higher temperatures employed for the strip entering the bath in the inventive process would not be operable without such a cooling zone). Whether claim 45 is enabled in view of operability is a separate question. In sum, this description of a spring loaded piston does not inform us as to whether an energy absorbing member comprising male and female members as essential elements can be configured to provide no resistance to elongation between the first and second attachment structures. Paragraph 189 of the Specification discloses, with reference Figures 7 and 8, that there is shown another approach to energy manipulation employing a bending spring approach. Here, the bending spring assembly 112 includes a pair of springs attached on the same side of a body joint 102. In this approach, the springs can provide energy manipulation in both flexion and in extension. As shown in FIG. 7, the compressed spring provides central off-loading in a direction normal to joint structure and the extended spring is uncompressed so as to not distract a posterior section of the joint. When the members of the joint are in flexion (FIG. 8), the posterior spring provides energy manipulation normal to the direction of the lateral member of the joint while the centrally located spring provides no off- loading. Other combinations of bend spring assemblies 112 are word “means” because they ‘typically do not connote sufficiently definite structure’ and therefore may invoke § 112, para. 6.” “The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Id. at 1349 (citing Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996))). Appeal 2020-000598 Application 13/850,152 10 further contemplated to accomplish other energy manipulation scenarios which may be useful in minimizing joint pain. Spec. ¶ 189 (emphasis added). Here, with reference to Figures 7 and 8, at least one spring in the pair of springs appears to be in tension to provide some resistance to elongation between first and second attachment structures (if present). Nonetheless, springs are not recited in claim 45, and we decline to read claim 45 onto the bending spring embodiments, as described and depicted in the Specification. Paragraphs 218 and 219 of the Specification further disclose that [i]n yet another specific approach, the present invention employs piston support to accomplish desired load manipulation. In general, these embodiments include an axially mobile member which translates in a defined linear path. A compressible spring can be included to facilitate energy absorption and transfer and the assembly can further include structure permitting articulation between the piston subassembly and the body anatomy. A simplified approach involving a piston support, load manipulation assembly 400 is depicted n FIGS. 60 and 61. In this embodiment, the piston member 402 is highly laterally flexible but also sufficiently longitudinally rigid to thereby both bend with the articulation of body members as well as absorb compression forces when the body members are in extension.5 5 Notably, the only reference to a viscoelastic body as part of an energy absorption system is in paragraph 36 of the Specification: “Considering the knee joint by way of example, if a spring system is coupled to a dampener to create a viscoelastic body, the system may be designed to absorb severe sudden impact loads (such as jumping) and dissipate these loads after the impact event.” This reference does not disclose that the piston, although highly laterally flexible, sufficiently longitudinally rigid, is made from a viscoelastic, or even a compressible, material. Appeal 2020-000598 Application 13/850,152 11 One or more cylinders 404 are configured to accept longitudinal translation of the piston 402.6 Spec. ¶¶ 218, 219 (emphasis added). Figures 60 and 61 of the Specification, although not relied upon in the interpretation of claim 45 by Appellant, are reproduced below. Figures 60 and 61 of the Specification depict “a[n] energy manipulation assembly incorporating piston support” (Spec. ¶ 116) and “the assembly of FIG. 60 after articulation of body members” (id. ¶ 117), respectively. Because the Specification discloses that cylinders 404 are configured to accept longitudinal translation of the piston 402, a preponderance of the evidence supports the Examiner’s finding that there is contact between cylinders 404 and piston 402 that generates friction during articulation of the body members, such that there would be inherently (or necessarily) some resistance to the elongation between attachment structures (i.e., at cylinders 6 Appellant identifies (i) load manipulation assembly 400 as disclosing the claimed energy absorbing member; (ii) piston member 402 as disclosing the claimed male member; and (iii) cylinder 404 as disclosing the claimed female member; however, with reference to Figure 68. Appeal Br. 4. Appeal 2020-000598 Application 13/850,152 12 404). Thus, this embodiment of an energy absorbing member is not operative to provide no resistance to elongation between the first and second attachment structures, as claimed. Paragraph 220 of the Specification discloses that [a] piston support assembly 400 can further include springs 406 to aid in the load manipulation being sought (See FIGS. 62 and 63). Such springs 406 can be placed within an attachment cylinder 404 (FIG. 63) or can be additionally or alternatively placed about the piston assembly 402. Moreover, the piston assembly 402 can assume a complex geometry which includes both pivot points 408 and/or curvilinear portions 410. As in all of the disclosed embodiments, the structure can be affixed to body anatomy so that it spans a joint between articulating members. Spec. ¶ 220 (emphasis added). Figures 62 and 63 of the Specification are reproduced below. Figures 62 and 63 of the Specification depict “another embodiment of a[n] energy manipulation assembly incorporating piston support” (Spec. ¶ 118) Appeal 2020-000598 Application 13/850,152 13 and “substructure of the assembly shown in FIG. 62” (id. ¶ 119), respectively. Notwithstanding the addition of springs that aid the energy absorbing member comprising the male and female members, and similar to the embodiment depicted in Figures 60 and 61 supra, a preponderance of the evidence supports the Examiner’s finding that there would be inherently (or necessarily) some resistance to the elongation between attachment structures (i.e., cylinders 404, pivot points 408) caused by the interaction of piston member 402 and cylinder 404. Indeed, Figure 63 depicts piston member 402 in sliding contact with the opening of cylinder 404. Paragraphs 221 and 222 of the Specification discloses that [f]urther embodiments of piston-based load bearing members are disclosed in FIGS. 64–70. FIG. 64 discloses an arrangement when a spring 402 spans the length of the piston member 402 and within spaced cylinders 404. FIG. 65 employs a piston member 402 which additionally includes bending spring structures for energy manipulation. FIGS. 66 and 67 depict a piston assembly 402 including a knurled outer surface and is further contemplated to include means for adjusting the strength of its loading capabilities by rotating the piston with respect to the cylinder. FIG. 68 shows an assembly which includes a spring 406 configured about the piston 402 having a stepped profile and between a cylinder 404 and pair of stops 412. . . . . A piston support based assembly 400 can also include a plurality of telescoping members 414 arranged longitudinally. Thus, certain of the circumferentially arranged telescoping members act both as pistons and cylinders for adjacent structure. By varying the energy which adjacent telescopic members 414 can bear, a desired energy absorbing profile can be provided by the structure to thereby absorb energy in a desired sequence. Appeal 2020-000598 Application 13/850,152 14 Spec. ¶¶ 221–222 (emphasis added). Figures 64 and 65 are reproduced below. Figures 64 and 65 each depict separate embodiments of the piston support subassembly (Spec. ¶¶ 120, 121). Figures 66 and 67 are reproduced below. Figures 66 and 67 depict another embodiment of the piston support subassembly, wherein Figure 67 shows the subassembly in a compressed configuration (id. ¶¶ 122, 123). Figure 68 is reproduced below. Appeal 2020-000598 Application 13/850,152 15 Figure 68, which is relied on by Appellant as disclosing the subject matter of claim 45 supra, depicts a further embodiment of “a[n] energy manipulation assembly incorporating piston support structure” (id. ¶ 124). Figures 69 and 70 are reproduced below. Figures 69 and 70 depict “a telescoping arrangement of a piston support subassembly,” wherein Figure 70 shows the subassembly in a compressed configuration (id. ¶¶ 125, 126). Again, a preponderance of the evidence supports the Examiner’s finding that where the male and female members of the energy absorbing member are disclosed, a preponderance of the evidence supports the Examiner’s finding that there would be inherently (or necessarily) some resistance to the elongation between attachment structures (i.e., cylinders 404, pivot points 408) caused by the interaction of piston member 402 and Appeal 2020-000598 Application 13/850,152 16 cylinder 404. We determine that to the extent the spring depicted in Figure 68 necessarily functions in cooperation with the male and female members to provide no resistance to elongation between first and second attachment structures, as claimed, we again decline to consider embodiments that require, as an essential element of the energy absorbing member, a spring, where the essential element is omitted from the claims. In sum, the Examiner has stated a prima facie case of inoperability of the invention recited in the claims, and Appellant fails to provide sufficient argument or evidence with respect to friction generated between the male and female members of the energy absorbing member to rebut the Examiner’s finding. Accordingly, we sustain the Examiner’s rejection of claim 45 as lacking utility under 35 U.S.C. § 101, and claims 46–49, 56, and 59 fall therewith. Rejection II Appellant argues claims 45–49, 56, and 59 as a group. Appeal Br. 32–33. We select claim 45 as representative and claims 46–49, 56, and 59 stand or fall with claim 45. See 37 C.F.R. § 41.37(c)(1)(iv). Regarding independent claim 1, the Examiner finds that claim 45 fails to comply with the enablement requirement of 35 U.S.C. § 112, first paragraph, because, in an operable system, the energy absorbing system provides some resistance to elongation between the first and second attachment structures, as discussed supra. Non-Final Act. 4. In other words, the Specification does not disclose how the claimed structures can operate to perform energy absorption without contact (i.e., friction) between the claimed cylindrical portion of the male member (i.e., piston 402) and the Appeal 2020-000598 Application 13/850,152 17 opening of the female member (i.e., cylinder 404), when the cylindrical portion translates longitudinally when there is elongation between the first and second attachment members, as claimed. Appellant relies on the arguments presented supra for the patentability of claim 45 as presented in Rejection I. Appeal Br. 32 (“Because the basis for the rejection of the claims under section 101 is without merit . . . .”). Enablement is a legal determination of whether a patent enables one skilled in the art to make and use the claimed invention. Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986). As stated supra, we agree with the Examiner that contact between the cylindrical portion of the male member and the opening of the female member is necessary for the system, as claimed, to perform the function relied on by Appellant, and that the Specification fails to explain how such a function is performed when the energy absorbing member is configured to provide no resistance to elongation between the first and second attachment members, as claimed. Accordingly, we sustain the Examiner’s rejection of claim 45 as lacking utility under 35 U.S.C. § 112, first paragraph, and claims 46–49, 56, and 59 fall therewith. Rejection III Regarding independent claim 45 and dependent claim 56, the Examiner finds that the claim limitation requiring the energy absorbing member to be configured to provide no resistance to elongation between the first and second attachment members renders the claim indefinite, because “there will be some resistance.” Non-Final 4. Appellant argues that Appeal 2020-000598 Application 13/850,152 18 based on the broadest reasonable interpretation of the claims in light of the specification, these items do not render the claims indefinite, because a person of ordinary skill in the art, when reading the claims in light of the specification, would immediately understand their meanings as being those which do not contradict the specification’s descriptions. Appeal Br. 29. The PTO can properly reject a claim as indefinite if the claim is ambiguous, vague, incoherent, opaque, or otherwise unclear. In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014). Here, we agree with the Appellant that the meanings of claims 45 and 56 are clear, as construed supra. Accordingly, we do not sustain the Examiner’s rejection of independent claim 45 and dependent claim 56, and claims 46–49 and 59 based on their dependency, as being indefinite pursuant to 35 U.S.C. § 112, second paragraph. Rejection IV Regarding independent claim 45, the Examiner finds that Colleran discloses the system, as claimed, including an energy absorbing member (i.e., dynamic stabilization device 304) comprising a male member having a cylindrical7 portion (i.e., lower male member 308) and a female member having an opening (i.e., upper female member 306), as claimed. Non-Final Act. 5 (citing Colleran ¶ 66); see Colleran, Fig. 3B; see also Ans. 8–9 (finding that the claim term “cylindrical” “does not require a perfect circle cross-section or a perfect cylinder shape,” such that the “ovoid cross- section” portion of Colleran’s lower male member 308 “meets the broadest 7 Notably, the claim term “cylindrical” appears in the Specification only in paragraph 231 with respect to “internal cylindrical sleeve 494,” and not a portion of a male member. Spec. ¶ 231. Notwithstanding, Figures 66 and 67 of the Specification depict piston member 402 as cylindrical in shape. Appeal 2020-000598 Application 13/850,152 19 reasonable interpretation of cylindrical”). The Examiner finds, however, that Colleran does not disclose that the energy member provides no resistance to elongation between the first and second attachment structures (i.e., first and second anchors 302a, 302b) to which the energy absorbing member is attached. Non-Final Act. 5. Alternatively, the Examiner relies on Colleran’s disclosure of flexible energy absorbing member assembly (i.e., dynamic stabilization device 1102), comprising male member (i.e., solid rod portion 1106) received within opening of female member8 (i.e., spring 1104). Id. at 6 (citing Colleran ¶ 137); see Colleran, Fig. 11A. The Examiner relies on Lindh for teaching that it is “well-known in the art of joint supports to provide floating unattached energy absorbing members that provide[] no resistance to elongation for the purpose of providing a more flexible or moveable implant which still maintains it energy absorbing abilities.” Non-Final Act. 5. The Examiner reasons that it would have been obvious to modify “the sleeve or spring of the energy absorbers of Colleran” to be “unattached,” as taught by Lindh, “to provide a more flexible member which is stable but has less resistance when elongating.” Id. In support of the Examiner’s proposed modification, the Examiner finds that “a person of ordinary skill in the art would recognize that due to the flexible nature of the materials disclosed by Colleran making the spring or sleeve unattached would permit additional movement and/or 8 Notably, Colleran, with reference to Figure 11A, that “[p]ortion 1106, which can be a solid rod, if desired (or any other suitable structure, such as a tube, a plurality of parallel-arranged rods or tubes, etc.) moves inside portion 1108 which can be a hollow tube,” thus disclosing a cylindrical or tubular portion of a male member (i.e., portion 1106) that is received in an opening of a female member (i.e., hollow tubular portion 1108), notwithstanding the further inclusion of a spring 1104. Colleran ¶ 137. Appeal 2020-000598 Application 13/850,152 20 rotation,” and further, that “[f]reeing up the ends would allow additional travel and or sliding,” thus, providing “more flexib[ility] and an “increased range of motion.” Ans. 10. The Examiner also finds that Colleran does not require a distraction force to satisfactorily perform its intended purpose. Id. 9. Appellant submits that the claim term “cylindrical” means, for example, “of, relating to, or having the shape of a cylinder, especially of a circular cylinder.” Appeal Br. 22 (citing www.thefreedictionary.com/cylindrical). Appellant argues that Colleran’s Figures 3A to 3I depict “non-cylindrical male and female members,” for example, the cross-section depicted in Figure 3C “shows an ovoid, not circular, cross section of ‘plate member’ 324, while Fig. 3B (as well[] as Figs. 3D and 3E plainly show that plate member 324 is curved at radii A and B.” Id. at 23; see also id. at 24 (characterizing Colleran’s plate member 324 as “somewhat paddle-shaped”). Appellant concludes that Colleran does not disclose “a cylindrical portion,” as required by claim 45. Id. We adopt Appellant’s definition of the claim term “cylindrical” supra, which allows for the portion of the male member to be relating to (or have a connection or association with) the shape of a cylinder, especially—but not necessarily—a circular cylinder. Colleran discloses, with reference to Figures 3A and 3B, that dynamic stabilization device 304 includes upper female member 306 (comprising inner and outer plates 316, 318) and lower male member 308 (comprising plate member 324), in addition to flexible sleeve 310 (which may be an elastomeric sleeve or a helical spring having a circular or elliptical shape). Colleran ¶ 66. Colleran also discloses, with reference to Figure 3B that “[i]n certain embodiments, the lower plate Appeal 2020-000598 Application 13/850,152 21 member 324 may be a plate member sized to slideably move between the outer plate member 316 and the inner plate member 318 in both a vertical and a horizontal direction.” Id. ¶ 68. Colleran further discloses that “[i]n some embodiments, the inner plate member 318 has a curved surface 330” and “lower plate member 324 also has a curved surface 332.” Id. ¶ 69. We find that a preponderance of the evidence supports the Examiner’s finding that lower plate 324 has a shape relating to cylinder, because the lower plate 324 has a long length with at least portions of the cross-section being close to circular, or ovoid as admitted by Appellant supra. Notably, the curved radii at A and B are optional, and we do not apply such an embodiment to the Examiner’s finding. Furthermore, Appellant fails to address the Examiner’s alternative reliance supra on Colleran’s disclosure at paragraph 137, which references Figures 11A. Thus, Appellant’s argument relative to the embodiments depicted in Colleran’s Figures 3A–3I does not apprise us of error in the Examiner’s alternative findings. See also fn. 8 supra. Appellant also submits that the function of Colleran’s dynamic stabilization device (i.e., maintaining an anterior distraction force with respect to adjacent vertebra) is only accomplished when Colleran’s sleeve or spring is constrained by the upper and lower elements of Colleran’s dynamic stabilization device, such that the sleeve or spring is always in compression (or “always push[ing] the telescoping male and female elements apart”). Appeal Br. 24. Appellant argues that the Examiner’s proposed modification supra (i.e., detaching at least one of the ends of Colleran’s elastic sleeve or spring) renders Colleran unsatisfactory for its intended purpose. Id. at 24– 25. See, e.g., In re Gordon, 733 F.2d 900 (Fed. Cir. 1984) (holding that if Appeal 2020-000598 Application 13/850,152 22 the proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification). Appellant also argues that the Examiner’s reasoning lacks rational underpinning, in that detaching one end of Colleran’s elastic sleeve or spring would have no effect on Colleran’s distraction (or pushing) force. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring an obviousness conclusion to be based on explicit articulated reasoning with rational underpinning); cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We apply Appellant’s arguments to the Examiner’s findings and alternative findings set forth supra. Colleran discloses, with reference to Figures 3A and 3B, and flexible sleeve 310, which “may be an elastomeric sleeve (as illustrated) or a helical spring having a circular or elliptical shape,” that “[i]n use, the sleeve retainer 328 restrains the flexible sleeve [(or spring)] 310 and provides an adjustable force on the sleeve so that the sleeve may resist compression of the brace 304.” ¶ 67. Thus, we understand that Colleran’s elastomeric sleeve is only restrained at one end to provide adjustability, but that the opposite end may be unattached to, for example, upper collar 314. Notably, with reference to Colleran’s Figure B, according to the Examiner’s initial findings, Colleran’s energy absorbing member comprises lower plate 324 as a male member with a cylindrical portion, and inner and outer plates 316, 318 as a female member having an opening, wherein the cylindrical portion of the male member is receivable in the opening of female member as the adjacent vertebra to which the first and second attachment structures are attached move through flexion (or bending relative Appeal 2020-000598 Application 13/850,152 23 to one another). In this way, Colleran’s dynamic stabilization device absorbs energy. Regarding whether Colleran’s elastomeric sleeve—which we agree is disclosed as being in compression—is configured to provide no resistance to elongation between the first and second attachment structures (i.e., Colleran’s upper and lower attachment members 320), as claimed, we find that, with respect to Colleran’s Figure 3B embodiment, elastomeric sleeve 310 does not resist elongation (or an increased distancing) between upper and lower attachment members 312, 320, but rather, as acknowledged by Appellant supra, pushes the attachment structures apart. Thus, we do not agree with the Examiner that modification of Colleran’s elastomeric sleeve (or spring) is necessary for claim 45 to read on this function of Colleran’s invention. However, consistent with the Examiner’s finding with respect to Rejection I, Colleran depicts the male and female members of the embodiments in Figures 3A–3I and alternatively, Figures 11A–C (with respect to expandable brace portions 1106, 1108) as being in sliding contact. Colleran discloses generally that “[t]he first member and the second member are slideably mated along a portion of their longitudinal lengths such that the movement of the second member with respect to the first member is generally restricted” (Colleran ¶ 12 (emphasis added)) and specifically, with respect to Figure 3B, that “the lower plate member 324 may be a plate member sized to slideably move between the outer plate member 316 and the inner plate member 318 (id. ¶ 68). Similarly, “[p]ortion 1106, which can be a solid rod [or] a tube . . . moves inside portion 1108 which can be a hollow tube.” Id. ¶ 137; see also id. Fig. 11A (depicting rod 1106 in contact Appeal 2020-000598 Application 13/850,152 24 with tube 1108). Therefore, we find that there would be inherently some resistance to the elongation between upper and lower attachment members 312, 320 due to the friction generated by the sliding contact of the male and female members of Colleran’s dynamic stabilization device. Moreover, this resistance is not changed by the Examiner’s proposed modification to Colleran’s elastomeric sleeve or spring, in view of Lindh. Accordingly, we do not sustain the Examiner’s rejection of independent claim 45, and claims 46–49, 56, and 59 depending therefrom. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s) Affirmed Reversed 45–49, 56, 59 101 Utility 45–49, 56, 59 45–49, 56, 59 112 Enablement 45–49, 56, 59 45–49, 56, 59 112 Indefiniteness 45–49, 56, 59 45–49, 56, 59 103 Colleran, Lindh 45–49, 56, 59 Overall Outcome 45–49, 56, 59 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 Copy with citationCopy as parenthetical citation