DePuy Synthes Products, Inc.

Patent Trials and Appeals Board

May 3, 2021

2020005825 (P.T.A.B. May. 3, 2021)

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.
14/640,264 03/06/2015 William Miller 104525.006575 8876
53443 7590 05/03/2021
BakerHostetler
Cira Centre, 12th Floor
2929 Arch Street
Philadelphia, PA 19104-2891
EXAMINER
NELSON, CHRISTINE L
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
05/03/2021 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM MILLER
Appeal 2020-005825
Application 14/640,264
Technology Center 3700
Before EDWARD A. BROWN, WILLIAM A. CAPP, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 6, 8–13, and 21–30, which
constitute all the claims pending in this application.2 See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Synthes USA
Products, LLC. Appeal Br. 1.
2 Claims 5, 7, and 14–20 have been cancelled.
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Application 14/640,264

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CLAIMED SUBJECT MATTER
The claims are directed to an expandable intervertebral implant with
smooth first and second intermediate surfaces disposed at oblique angles
with respect to other elements of the implant. During installation of the
implant in a patient, these oblique intermediate surfaces are used to facilitate
rotation of the implant, once it is inserted between opposing first and second
vertebrae, such that first and second bone contacting surfaces move to a
position directly facing the first and second vertebrae, respectively. Spec.
¶¶ 73–84, p. 29–30 (original claims 14, 19). Once the implant is properly
rotated, the implant is expanded such that the first and second bone
contacting surfaces are farther apart than they were before expansion, thus
engaging the opposing first and second vertebrae. See id.
Claim 1, reproduced below with emphases added, is illustrative of the
claimed subject matter:
1. An expandable implant for insertion in an intervertebral
space defined between a first vertebral body and a second
vertebral body, the implant comprising:
a first bone contacting surface and a second bone
contacting surface opposite the first bone contacting surface
along a transverse direction;
an insertion end and a trailing end opposite the insertion
end along a longitudinal direction that is perpendicular to the
transverse direction;
first and second side surfaces opposite each other along a
lateral direction that is perpendicular to both the transverse
direction and the longitudinal direction;
a first intermediate surface that extends from the first side
surface to the first bone contacting surface, wherein the first
intermediate surface defines a respective first interface with the
first side surface and a respective second interface with the first
bone contacting surface that is inwardly offset from the
respective first interface along the lateral direction, and wherein
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Application 14/640,264

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the first intermediate surface is smooth and oblique to each of
the first side surface and the first bone contacting surface; and
a second intermediate surface that extends from the second
side surface to the second bone contacting surface, wherein the
second intermediate surface defines a respective first interface
with the second side surface and a respective second interface
with the second bone contacting surface that is inwardly offset
from the respective first interface of the second intermediate
surface along the lateral direction, wherein the second
intermediate surface is smooth and oblique to each of the second
side surface and the second bone contacting surface, wherein the
first and second bone contacting surfaces are movable away from
each other from a collapsed configuration to an expanded
configuration.
Appeal Br. A1 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Miller US 2014/0243892 A1 Aug. 28, 2014
Eastlack US 2015/0012098 A13 Jan. 8, 2015
REJECTION
Claims 1–4, 6, 8–13, and 21–30 are rejected under 35 U.S.C. § 103 as
being unpatentable over Miller and Eastlack. Final Act. 3.

3 The heading for the rejection states that the publication number of Eastlack
is “2014/0236296.” Final Act. 3. Appellant notes that this listing appears to
be in error. Appeal Br. 9. The Examiner correctly lists the publication
number of Eastlack in the restatement of the rejection in the Answer. Ans.
3.
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Application 14/640,264

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OPINION
The Examiner finds that Miller teaches an expandable implant for
insertion between a first vertebral body and a second vertebral body and
which includes many of the elements recited by claim 1. Final Act. 3 (citing
Miller, Figs. 1, 2A). However the Examiner finds Miller fails to disclose the
recited first and second “intermediate” surfaces that are smooth and oblique
relative to each of respective first and second side surfaces. Id. The
Examiner finds Eastlack partially remedies this deficiency by teaching
chamfer 24. Id. at 4 (citing Eastlack Fig. 1). The Examiner finds Eastlack
teaches that chamfer 24 allows for rotation during insertion and facilitates
the process of insertion. Id. (citing Eastlack ¶ 60).
The Examiner reasons that it would have been obvious to a person of
ordinary skill in the art “to utilize the chamfered edge [24] on both a first
intermediate and second intermediate surface of the device of Miller in order
to provide for easier insertion and allow for proper positioning with rotation
during insertion.” Id. at 5. The Examiner finds “the device of Miller with
chamfered edges would be more suitable for ‘wiggling’ side to side in a
modified rotation in order to advance [into] the intervertebral space.” Id.
at 9. As for Eastlack’s disclosure of only one chamfer 24 rather than two,
the Examiner reasons “it would have been an obvious duplication of parts to
construct the intermediate surface as is seen in the top of the implant on the
bottom of the implant to further ease insertion of the device in the
intervertebral space.” Id. at 4.
Appellant contends that the Examiner’s proposed modification would
change the principle of operation of Miller’s implant because Miller intends
for this implant to be inserted in its proper orientation, i.e., without rotation
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occurring after the implant is inserted into the patient. See Appeal Br. 13–
14. In contrast, Appellant contends, Eastlack’s device is inserted into the
patient and then rotated in place. See id.
Appellant also asserts, “the Examiner has failed to establish that
incorporating the chamfered surfaces into Miller would, in fact, ease the
insertion of the device in the intervertebral space, and fails to cite to any
teaching in the prior art in support of this conclusion.” Appeal Br. 12–13.
Appellant argues Examiner’s proposed modification incorporates a feature
from Eastlack in Miller’s implant in a manner not taught or suggested by
Eastlack or Miller. Appeal Br. 14. In particular, Appellant argues, “the
Examiner fails to identify where in Eastlack that the chamfered edges are
designed to allow the implant to be ‘wiggled’ side to side as the implant is
inserted into the intervertebral space.” Id. Instead, Appellant asserts,
Eastlack’s implant is inserted, then rotated by 90 degrees into its final
orientation, and subsequently expanded to its final height. See id. at 14–15.
Appellant argues that the sole purpose of Eastlack’s chamfer (intermediate
surface) is to assist in this rotation. See id. at 15. Appellant argues that the
Examiner has not provided any object evidence that Miller would benefit
from the proposed modification absent the use of the rotation process
described by Eastlack, which rotation process the Examiner has explicitly
stated is not part of the proposed modification. Id.
In response to Appellant’s first argument, the Examiner further
explains the rejection of claim 1, stating, “[t]he teaching of fully rotating the
device upon insertion, nor a degree of rotation, was not incorporated from
the Eastlack reference in the rejection, merely the ability to rotate the device
of Miller ‘to provide for easier insertion and allow for proper positioning
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with rotation during insertion.’” Ans. 9. The Examiner also states, “[b]eing
able to rotate a device upon insertion is a reasonable and desirable
modification that would aid in the insertion and positioning of the implant.”
Id. at 9–10.
In reply, Appellant argues:
the Examiner asserts that the teaching of fully rotating the device
upon insertion was not incorporated from the Eastlack reference,
nor was a degree of rotation incorporated from the Eastlack
reference.
However, Eastlack explicitly discloses that the chamfered
surface(s) of Eastlack exist to aid in rotation of the Eastlack
implant from a position on its side to an upright position (see
Paragraph 60; Fig. 1). Eastlack teaches one having ordinary skill
in the art to include chamfered surface(s) into an implant in order
to fully rotate the implant, thereby expanding the height of the
implant (see Paragraph 93).
Reply Br. 3–4. Thus, Appellant reiterates that the chamfers disclosed by
Eastlack are designed to assist in rotation that is performed in Eastlack, but
not in Miller. See id. at 3. Appellant notes the Examiner explicitly states
that the rotation disclosed by Eastlack is not being implemented in Miller as
part of the rejection of claim 1, and, rather, only the chamfered structure of
Eastlack is being implemented.
For the following reasons, we do not sustain the rejection of claims 1–
4, 6, 8–13, and 21–30. In light of the fact that the Examiner explicitly states
that the rotation process described by Eastlack is not being added to Miller
as part of the rejection of claim 1 (Ans. 9), the Examiner’s reasoning that
adding chamfers would “provide for easier insertion and allow for proper
positioning with rotation during insertion” (Final Act. 5) is not supported by
rational underpinnings. In this regard, the Examiner does not adequately
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explain how an implant designed for insertion along a linear path would
benefit from adding chamfers that facilitate rotation of the implant. In other
words, the benefit the Examiner touts as resulting from the proposed
modification to Miller’s implant (easier insertion due to the ability to rotate)
relies on a process not performed by Miller, but, instead, is performed in
Eastlack. Further, this process is explicitly disclaimed by the Examiner as
being part of the proposed modification. Accordingly, we do not sustain the
rejection of claim 1, and claims 2–4, 6, 8–13, and 21–30 depending
therefrom, as unpatentable over Miller and Eastlack.
CONCLUSION
The Examiner’s decision to reject claims 1–4, 6, 8–13, and 21–30 is
reversed.

More specifically,
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6, 8–
13, 21–30
103 Miller, Eastlack,
Eastlack
1–4, 6, 8–
13, 21–30
Overall
Outcome
1–4, 6, 8–
13, 21–30

REVERSED