Appeal No. 2006-0325 Παγε 6
Application No. 10/152,485
The basis of the examiner's rejection under 35 U.S.C. § 101 is that, because
appellant's claims recite dampening elements and cross-coupling elements anchored to
vertebrae, the claims positively recite part of a human (final rejection, pages 2-3). Thus,
according to the examiner, claims 1-83 include a human within their scope and are non-
statutory. For the reasons which follow, this rejection is not sustained.
We do not agree with the examiner that independent claims 1 and 6, or the
claims depending therefrom, include a human within their scope. It is clear from the
preambles of claims 1 and 6, which recite apparatus for stabilizing upper and lower
spinal vertebrae, and from appellant's specification, which states on page 1 that the
invention "relates generally to orthopedic spinal surgery and, in particular, to vertebral
fixation methods and apparatus which provide multi-dimensional stability and apply
compressive forces to enhance fusion," that appellant's invention is not directed to a
human but, rather, to a vertebral stabilization apparatus anchored to spinal vertebrae.
One of ordinary skill in the art would not understand appellant's claims to be seeking the
grant of an exclusive property right in a human being and would not consider a human
being per se to infringe any of claims 1-8. The claims require an apparatus comprising
a pair of dampening elements and a pair of cross-coupling members, anchored to upper
and lower vertebrae.
3 It is not apparent why the examiner did not also include claims 10 and 11, which depend from
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