UNITED STATES PATENT AND TRADEMARK OFFICE

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1 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/684,610 03/10/2007 CHRISTOPHER CHAPUT P003US /15/2015 WINSTEAD PC P.O. BOX DALLAS, TX EXAMINER ARAJ, MICHAEL J ART UNIT PAPER NUMBER 3775 MAIL DATE DELIVERY MODE 09/15/2015 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)

2 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPHER CHAPUT and ROBERT J. JONES Appeal Technology Center 3700 Before STEFAN STAICOVICI, WILLIAM A. CAPP, and JAMES J. MAYBERRY, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Christopher Chaput and Robert J. Jones (Appellants) appeal under 35 U.S.C. 134(a) from the Examiner s final decision rejecting under 35 U.S.C. 102(b) claims 1 9 and as anticipated by Beaurain (US 2004/ A1, pub. Dec. 2, 2004) and under 35 U.S.C. 103(a) claim 10 as unpatentable over Beaurain. We have jurisdiction over this appeal under 35 U.S.C. 6(b). 1 According to Appellants, the real party in interest is SpineSmith Partners, LP. Br. 2.

3 We AFFIRM-IN-PART. SUMMARY OF DECISION INVENTION Appellants invention relates to artificial disc replacement and related replacement procedures. Spec. 36. Claims 1, 8, and 15 are independent. Claims 1 and 8 are illustrative of the claimed invention and read as follows: 1. A surgical implant configured to be inserted between two vertebrae comprising: a first member configured to be attachable to a first vertebrae, the first member having a first concave surface; a second member configured to be attachable to a second vertebrae, the second member having a second concave surface; a third member disposed between the first and second members, the third member having first and second convex surfaces configured to slidably engage the first and second concave surfaces, respectively, wherein the first and second convex surfaces are immovable with respect to each other; and a protrusion extending from the second member at least partially through the third member to restrict the movement of the third member relative to the second member. 8. A surgical implant configured to be inserted between two vertebrae comprising: a first member, the first member having a recess formed therein; a second member, the second member having a post extending from the second member, wherein the post extends into the recess of the first member; and a collar disposed between the post and the recess, wherein the recess and the collar restrict movement of the first member relative to the second member. 2

4 ANALYSIS Claims 1 7 The Examiner finds that Beaurain teaches a first member 3 having a first concave surface 32, a second member 1 having a second concave surface, and a third member 2 having a first convex surface 23 and a second convex surface that are configured to slidably engage the first and second concave surfaces, respectively. Final Act. 2. Thus, according to the Examiner, side 20 and surface 21 of third member 2 form a convex surface and side 112 and surface 12 of second member 1 form a concave surface that are configured to slidingly engage. See Final Act. 5, Examiner s annotated Figure 1 of Beaurain. Appellants argue that although Beaurain s convex surface formed by side 20 and surface 21 of third member 2 and the concave surface formed by side 112 and surface 12 of second member 1 engage, these surfaces do not slide against one another. Br. 6. According to Appellants, these surfaces act as an end stop that occurs simultaneous with the central stop (4) touching a wall of the recess (22) of the nucleus (2). Id. (citing Beaurain, 45 48). Although we appreciate that a drawing teaches all that it reasonably discloses and suggests to a person of ordinary skill in the art, we do not agree with the Examiner s finding that Beaurain teaches a convex 2 surface 2 An ordinary and customary meaning of the term convex is curved or rounded outward like the exterior of a sphere or circle. Merriam Webster s Collegiate Dictionary (10 th ed. 1997). 3

5 formed by side 20 and surface 21 of third member 2 and a concave 3 surface formed by side 112 and surface 12 of second member 1. See In re Aslanian, 590 F.2d 911, 914 (CCPA 1979). In this case, the surface formed by side 20 and surface 21 of third member 2 is inclined, rather than curved or rounded outward. See Beaurain, Fig. 2. Similarly, the surface formed by side 112 and surface 12 of second member 1 is flat, rather than hollowed or rounded inward. Id. Furthermore, the surface formed by side 20 and surface 21 of third member 2, which the Examiner describes as a convex surface, is part of surface 21, which is described by Beaurain as a concave surface. See Beaurain, 45 and Fig. 2. Similarly, the surface formed by side 112 and surface 12 of second member 1, which the Examiner describes as a concave surface, is part of surface 12, which is described by Beaurain as a convex surface. Id.; see also Br. 5 ( [T]he lower second member is itself convex, not concave. ). We could not find any portion of Beaurain and the Examiner has not pointed to any portion that describes any area of either surface 21 or 12 as anything else but a concave or a convex surface, respectively. Accordingly, the Examiner s finding contradicts the express teachings of Beaurain. In conclusion, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. 102(b) of claims 1 7 as anticipated by Beaurain. 3 An ordinary and customary meaning of the term concave is hollowed or rounded inward like the inside of a bowl. Id. 4

6 Claims 8, 9, and Appellants do not present arguments for the patentability of claims 9 and apart from claim 8. See Br Therefore, in accordance with 37 C.F.R (c)(1)(iv) (2014), we select claim 8 as the representative claim to decide the appeal of the rejection of these claims, with claims 9 and standing or falling with claim 8. The Examiner finds that Beaurain teaches a surgical implant including a first member 2 having a recess 22 therein, a second member 1 having a post 4 extending therefrom and into recess 22, and a collar 5 disposed between post 4 and recess 22 such that the recess and the collar restrict movement of the first member relative to the second member by the incline of the collar. Final Act. 3 (citing Beaurain, 58, ll. 9 12); see also Beaurain, Fig. 5. Appellants argue that, Beaurain lacks a collar as recited. Br. 7. According to Appellants, the claimed collar permits a surgeon to adjust articulation at a moment s notice without the need of having available multiple implants with varying post dimensions that each allow[s] different articulation, whereas Beaurain does not teach such a collar. Id. We are not persuaded by Appellants arguments because [w]here... the claimed and prior art products are identical or substantially identical... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). Therefore, Appellants have the burden of establishing that those features would not be present. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 5

7 1990) ( [W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not. ). In this case, the artificial disc construction in Beaurain is similar to the claimed construction so that it would likewise restrict movement between Beaurain s members 1 and 2. We thus agree that the Examiner is on solid ground in finding sufficient structural similarity to conclude that Beaurain s block 5 and recess 22 of member 2 would restrict movement between member 1 relative to member 2, as called for by claim 8. Moreover, we agree with the Examiner that independent claim 8 fails to specify the movement that is being restricted. Ans. 7. Accordingly, because Beaurain s block 5 is positioned between recess 22 of member 2, and member 1, and the degree of correction is based on the incline of block 5, we also agree with the Examiner that movement of member 2 relative to member 1 is restricted by the incline of block 5. Id.; see also Beaurain, 53, 58. Finally, we are not persuaded by Appellants argument regarding the advantages of the claimed collar because limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). In conclusion, for the foregoing reasons, we sustain the rejection under 35 U.S.C. 102(b) of claim 8, and claims 9 and falling with claim 8, as anticipated by Beaurain. 6

8 Claim 10 Appellants rely on the arguments presented supra with respect to the rejection of independent claim 8 in support for the patentability of claim 10, which depends from claim 8. See Br. 8. Therefore, for the same reasons as described above, we likewise sustain the rejection of claim 10 as unpatentable over Beaurain. SUMMARY The Examiner s decision to reject claims 1 22 is affirmed as to claims 8 22 and reversed as to claims 1 7. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R (a)(1)(iv). AFFIRMED-IN-PART ds 7