Appeal 2007-2372
Application 10/395,654
vertebral space and attach to the vertebrae sides in the same way that Morris’
implant retaining device attaches to the vertebrae. Michelson discloses that
“[i]mplant 200 is installed with leading end 202 inserted first into the disc
space and flanged portion 218 contacts the anterior aspect of the vertebral
bodies” (Michelson, p. 4, par. 53). There would have been no apparent
reason to expect that Michelson’s flanges would inhibit the insertion of the
implant in any way. Indeed, Morris states that “[s]uch devices often inhibit
insertion” (Morris, p. 1, par. 11; emphasis added). In this case, however,
Michelson’s flanges do not appear to do so.
Applicant's argument that Morris teaches away from the combination
with Michelson has no merit. Even so, we look for some motivation to
combine the two references. While the Supreme Court recently rejected a
rigid application of the teaching, suggestion, or motivation test in an
obviousness inquiry in KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82
USPQ2d 1385 (2007), the Court acknowledged the importance of
identifying “a reason that would have prompted a person of ordinary skill in
the relevant field to combine the elements in the way the claimed new
invention does[,]” id. at 1731, 82 USPQ2d at 1396, to avoid hindsight
reconstruction of the claimed invention.
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