Ex Parte Michelson

Patent Trial and Appeal Board

Feb 13, 2013

10911919 (P.T.A.B. Feb. 13, 2013)

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.
10/911,919 08/04/2004 Gary K. Michelson 101.0098-03000 1935
22882 7590 02/14/2013
MARTIN & FERRARO, LLP
1557 LAKE O'PINES STREET, NE
HARTVILLE, OH 44632
EXAMINER
HAMMOND, ELLEN CHRISTINA
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
02/14/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GARY K. MICHELSON
____________

Appeal 2010-006601
Application 10/911,919
Technology Center 3700
____________

Before NEAL E. ABRAMS, EDWARD A. BROWN
and RICHARD E. RICE, Administrative Patent Judges.

ABRAMS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Gary K. Michelson (Appellant) seeks our review under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting claims 1-14, 17-20, 22, 23, 25-
28, 31, 33-38 and 43-50. We have jurisdiction over the appeal under 35
U.S.C. § 6(b).
We REVERSE.

Appeal 2010-006601
Application 10/911,919

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THE INVENTION
The claimed invention is directed to the combination of an interbody
spinal implant and an implant holder for inserting the implant.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
A combination of an interbody spinal implant and an
implant holder for use in human interbody spinal surgery
comprising:
said interbody spinal implant having a trailing end
adapted to be engaged to said implant holder; and
said implant holder having a body having a distal
end, a proximal end, and a length therebetween, and at least
two extensions extending from said distal end of said body,
said extensions having an interior surface and an exterior
surface opposite said interior surface, said extensions being
adapted to be moved toward one another by an inward
force applied by a user to said exterior surface to permit
said extensions of said implant holder to pass into said
trailing end of said implant and for said exterior surface to
cooperatively engage said trailing end of said implant after
the inward force is removed.

THE PRIOR ART
The Examiner relied upon the following as evidence of
unpatentability:
Michelson US 5,609,635 Mar. 11, 1997
Farris US 6,066,174 May 23, 2000
Roufa US 6, 417,173 B1 Jul. 9, 2002
Zientek
Liu
WO 97/06753
WO 00/12033
Feb. 27, 1997
Mar. 9, 2000

Appeal 2010-006601
Application 10/911,919

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THE REJECTIONS
Claims 1-5, 9, 10, 25, 26, 34-38, 43, 44 and 48-50 stand rejected
under 35 U.S.C. § 102(e) as being anticipated by Farris.
Claims 1-4, 7, 11, 17-20, 22, 23, 25, 27, 28 and 31 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Zientek.
Claims 11-14, 27, 28, 31 and 33 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Farris in view of Liu.
Claim 45 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Farris in view of Michelson.
Claims 46 and 47 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Farris in view of Roufa.

OPINION
Claims 1-5, 9, 10, 25, 26, 34-38, 43, 44 and 48-50
Anticipation – Farris
Farris discloses an intervertebral implant and an implant insertion
device. The Examiner determined that the implant shown in Figure 2 has a
“trailing end” and “an opening,” and that Figures 7 and 8 disclose an implant
holder that can engage the implant by moving through “the opening (see Fig.
2, element 30) of the trailing end.” Ans. 4. The Examiner also found that
the implant holder has two extensions 55, each having an interior surface
and an exterior surface, with the exterior surfaces being adapted to
“cooperatively engage the trailing end of the implant.” Ans. 4-5. In
response to Appellant’s arguments, the Examiner further states that
[a]pplying the broadest reasonable interpretation to the claims,
the examiner considers the “trailing end” to include the entire
end portion (see [annotated] Fig. 2 below) of the implant. The
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Application 10/911,919

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end portion . . . or trailing end of the implant includes multiple
pieces of the implant and an opening extending between the
implant pieces.
Ans. 15.
Appellant argues that the trailing end of the Farris implant shown in
Figure 2 “is solid and possesses no opening. Instead, the upper and lower
surfaces . . . include an opening extending therebetween.” Appellant further
argues that the Examiner has failed to explain how the jaws of the Farris
implant insertion device are capable of passing into the solid trailing end of
the implant, and points out that in a previous set of annotated Figures 2 and
8, the Examiner showed the jaws of the implant insertion device passing into
the opening in the upper surface of the implant, “[which] is not the trailing
end.” Further, Appellant asserts that the Examiner has failed to explain how
the exterior surfaces of the jaws of the implant holder cooperatively engage
the trailing end of the implant, and points out that Farris teaches in Figure
11that it is the interior surfaces of the jaws of the insertion device that
engage the outer surfaces of the trailing end of the implant. See Br. 6-8.
Finally, Appellant argues that
the claims must be “given their broadest reasonable
interpretation consistent with the specification,” and that
“claim language should be read in light of the specification as it
would be interpreted by one of ordinary skill in the art.” (In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004) (emphasis added).),
and
“[o]rdinary, simple English words whose meaning is clear and
unquestionable, absent any indication that their use in a
particular context changes their meaning, are construed to mean
exactly what they say.” (MPEP § 2111.01, citing, In re Zietz
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Application 10/911,919

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[sic., Zletz], 893 F.2d 319 (Fed. Cir. 1989) and Chef America,
Inc. v. Lamb-Weston, Inc., 358 F.3d 1371 (Fed. Cir. 2004).)
Reply Br. 3-4. In this regard, Appellant submits that “the meaning of
[the] term ‘trailing end’ is clear and unquestionable. The specification
makes it clear that ‘trailing end’ means posterior.” Id. at 4.
In the description of related art on page 3 of Appellant’s
Specification it is stated that expandable implants are adapted to be
capable of increasing their height “posteriorly (at their trailing ends).”
Implant 1700, which is the claimed embodiment of the invention and
is illustrated in Figure 67 (Br. 2), is described as having “a trailing end
1704,” which clearly is shown in the drawing as the distal end of the
implant. Thus, one of ordinary skill in the art would have understood
from Appellant’s Specification that “trailing end” is intended to mean
the distal end of the implant, which is labeled as 1704 in Figure 67.
The Examiner has provided no evidence that such definition of
“trailing end” is inconsistent with its use in the Specification or the
common use of such terminology. Applying this definition to the
Farris implant, it is clear that the “trailing end” of the implant shown
in Figures 1-3 is surface 15, which is described in the Specification as
“posterior wall 15” (Col. 4, ll. 62-63). There is no opening in
posterior wall 15. We therefore agree with Appellant that the
Examiner’s finding that Farris discloses an implant having an opening
in its trailing end is in error, and therefore the reference does not
anticipate the requirement in claim 1 that “said extensions of said
implant holder” are permitted “to pass into said trailing end of said
implant.”
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We further agree with Appellant that there is no support in
Farris for the Examiner’s conclusion that the exterior surfaces of
implant holder extensions 55 have the capability “to cooperatively
engage said trailing end of said implant after the inward force [placed
upon them] is removed,” also as required by claim 1. In this regard,
the Farris teaching is limited to grasping the upper and lower outside
surfaces of the trailing end of the implant between the interior
surfaces of extensions 55 (Col. 10, ll.12-18; Fig. 11).
For the reasons set forth above, Farris does not anticipate the
subject matter recited in Appellant’s claim 1, and this rejection of
independent claim 1 is not sustained. It follows that the like rejection
of claims 2-5, 9, 10, 25, 26, 34-38, 43, 44 and 48-50, all of which
depend from claim 1, also is not sustained.
Claims 1-4, 7, 11, 17-20, 22, 23, 25, 27, 28 and 31
Anticipation – Zientek
Citing to Zientek Figures 4 and 21, the Examiner determined that all
of the elements recited in claim 1 were taught by this reference. In
particular, the Examiner found that the implant (Fig. 4) had a “trailing end
. . . adapted to be engaged to the implant holder” (Fig. 21). Ans. 7-9. In
response to Appellant’s arguments, the Examiner explained that the element
shown in Figure 21 (110) is used for screwing the screw (13) into the bore in
the trailing end of the implant, thereby contacting the implant through screw
holding extensions 115 and 116, and “that a user could place an inward force
to the exterior surface of the flexible extensions . . . to permit the extensions
to pass into the trailing end of the implant . . . and into the bore.” Ans. 19-
20.
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In response to the Examiner’s findings, Appellant made reference to
U.S. Patent No. 6,179,873, the U.S. equivalent of the foreign language
version of Zientek cited by the Examiner in the rejection, pointing out that
screw 13 is not installed in the bore of the implant until after the implant is
placed, that Zientek does not disclose wrench 110 (Fig. 21) being used in
combination with the implant but only in installing screw 13, and that
wrench 110 “does not appear to purposefully contact, let alone hold the
intervertebral implant.” Thus, Appellant asserts, “the intravertebral implant
and the hexagonal socket wrench (110) of Zientek are not akin to the
interbody spinal implant and the implant holder recited in independent claim
1.” Br. 10-11. Appellant further argues that
[n]othing in either the drawings or the text of U.S. Zientek
indicates that the two tabs (115, 116) of hexagonal wrench
(110) are adapted “to pass into said trailing end of said implant
and for said exterior surface to cooperatively engage said
trailing end of said implant,” as recited in independent claim 1.
Br. 13.
We are persuaded by the arguments set forth in Appellant’s Brief that
the Examiner has mischaracterized the structure and operation of the implant
and the tool disclosed, respectively, in Zientek’s Figures 2 and 21. In
particular, the tool (110) illustrated in Figure 21 does not constitute an
“implant holder” in that there is no teaching in the reference that it is
intended to or is capable of functioning in that manner. Nor is there support
for the Examiner’s conclusion that the exterior surfaces of the two
extensions (tabs 115, 116) can pass into the trailing end of the implant “to
cooperatively engage said trailing end of said implant,” as required by claim
1. This being the case, Zientek does not anticipate the subject matter recited
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Application 10/911,919

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in independent claim 1, and the rejection will not be sustained. It follows
that this rejection of dependent claims 2-4, 7, 11, 17-20, 22, 23, 25, 27, 28
and 31 also is not sustained.
Claims 11-14, 27, 28 31 and 33
Obviousness – Farris In View Of Liu
These claims depend from claim 1. The teachings of Liu do not
overcome the shortcomings pointed out above in the rejection of claim 1 as
being anticipated by Farris. Therefore, this rejection is not sustained.
Claim 45
Obviousness – Farris In View Of Michelson
This claim depends from claim 1. The teachings of Michelson do not
overcome the shortcomings pointed out above in the rejection of claim 1 as
being anticipated by Farris. Therefore, this rejection is not sustained.
Claims 46 and 47
Obviousness – Farris In View Of Roufa
These claims depend from claim 1. The teachings of Roufa do not
overcome the shortcomings pointed out above in the rejection of claim 1 as
being anticipated by Farris. Therefore, this rejection is not sustained.

DECISION
None of the rejections are sustained.
The decision of the Examiner is reversed.

REVERSED

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