Nuvasive, Inc. v. Hirshfeld

Case: 20-1708 Document: 46 Page: 1 Filed: 08/18/2021

NOTE: This disposition is nonprecedential.

United States Court of Appeals
for the Federal Circuit
______________________

NUVASIVE, INC.,
Appellant

v.

ANDREW HIRSHFELD, PERFORMING THE
FUNCTIONS AND DUTIES OF THE UNDER
SECRETARY OF COMMERCE FOR
INTELLECTUAL PROPERTY AND DIRECTOR OF
THE UNITED STATES PATENT AND TRADEMARK
OFFICE,
Intervenor
______________________

2020-1708
______________________

Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 95/001,888.
______________________

Decided: August 18, 2021
______________________

MICHAEL T. ROSATO, Wilson, Sonsini, Goodrich &
Rosati, Seattle, WA, argued for appellant. Also repre-
sented by SONJA ROCHELLE GERRARD, JAD ALLEN MILLS;
RICHARD TORCZON, Washington, DC.

MONICA BARNES LATEEF, Office of the Solicitor, United
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2 NUVASIVE, INC. v. HIRSHFELD

States Patent and Trademark Office, Alexandria, VA, ar-
gued for intervenor. Also represented by BENJAMIN T.
HICKMAN, THOMAS W. KRAUSE, FARHEENA YASMEEN
RASHEED.
______________________

Before CHEN, CLEVENGER, and HUGHES, Circuit Judges.
CHEN, Circuit Judge.
This inter partes reexamination of NuVasive, Inc.’s
(NuVasive’s) U.S. Patent No. 7,691,057 (’057 patent) ap-
pears before us a second time. The patentability of claims
17–22 and 24–27 under 35 U.S.C. § 103(a)1 remains at is-
sue. In the first appeal to our court, NuVasive, Inc v. Iancu,
752 F. App’x 985 (Fed. Cir. 2018) (NuVasive I), we vacated
the Patent Trial and Appeal Board’s (Board’s) obviousness
determination, overturning the Board’s finding that NuVa-
sive’s “eXtreme Lateral Interbody Fusion” (XLIF) surgical
technique lacked a nexus to the claimed method. We re-
manded for the Board to (1) conduct a new analysis of the
objective indicia of nonobviousness consistent with our
nexus finding, and (2) make sufficient factual findings to
support its conclusion about the existence of a motivation
to combine two prior art references.
After reconsidering the prior art references and NuVa-
sive’s objective evidence of nonobviousness, the Board
again found that claims 17–22 and 24–27 would have been

1 Congress amended § 103 when it enacted the
Leahy-Smith America Invents Act (AIA). Pub. L. No. 112-
29, § 3(c), 125 Stat. 284, 287 (2011). As the challenged
claims of the ’057 patent have an effective filing date before
March 16, 2013, the pre-AIA version of § 103 applies. See
id. § 3(n)(1), 125 Stat. at 293.
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NUVASIVE, INC. v. HIRSHFELD 3

obvious. 2 NuVasive challenges this holding. Because the
Board’s fact findings are supported by substantial evidence
and its conclusion of obviousness is correct, we affirm.
BACKGROUND
A
Our prior opinion, NuVasive I, provides a thorough
overview of the ’057 patent and technical background. In
relevant part, the ’057 patent covers a surgical-access sys-
tem and related methods for creating a minimally invasive
operative corridor to the lumbar spine through the psoas
muscle, a tissue comprising significant neural structures
(e.g., the lumbar plexus, a network of nerves originating in
the spinal column and exiting through the opening of the
lumbar vertebra). ’057 patent col. 2 1. 61–col. 3 l. 7. The
access system and methods include detecting the presence
of neural structures before and during establishment of the
operative corridor. Id. at col. 3 ll. 14–19. Specialized nerve-
monitoring (i.e., electromyography (EMG)) using elec-
trodes attached to the surgical instruments employed for
creating the operative corridor detects any nerves present.
See id. at col. 12 ll. 17–52. The electrodes emit a charge as
they go through the body, and if the charge reaches a nerve,
the nerve stimulates the muscle group it controls, resulting
in a muscle twitch. See id. When a surgeon observes a
muscle twitch, the surgeon knows that the instrument may
be too close to a nerve. See id. The data about muscle
movement can also be fed to a graphical user interface that

2 The Board issued three decisions during this inter
partes reexamination. The third decision, J.A. 1–37, is the
subject of the present appeal. The second decision, J.A.
2895–2927, was the subject of the first appeal decided in
NuVasive I. Following the Board’s first decision, J.A.
957–79, NuVasive chose to reopen prosecution, J.A.
1058–90.
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4 NUVASIVE, INC. v. HIRSHFELD

displays information to the surgeon about the instrument’s
direction and location relative to a nerve. See id.
Claim 17, from which all of the challenged claims de-
pend, covers NuVasive’s surgical method. NuVasive
amended claim 17 during the reexamination proceeding to
incorporate neuromonitoring. J.A. 1059–60. The amended
claim, in relevant part, recites:
17. A method of accessing a surgical target site
within a spine, comprising the steps of:
(a) creating a distraction corridor along a lateral,
trans-psoas path to a targeted lumbar spinal disc
in a lumbar spine using a distraction assembly
comprising at least two dilators that are sequen-
tially inserted along the lateral, trans-psoas path
to the targeted lumbar spinal disc, and performing
neuromonitoring during at least a portion of the
time the distraction assembly is used in creating
the distraction corridor along the lateral, trans-
psoas path, wherein the neuromonitoring com-
prises causing the emission of a plurality of electri-
cal stimulation signals from a stimulation
electrode provided on a distal portion of at least one
component of the distraction assembly and moni-
toring for resulting electromyographic (EMG) ac-
tivity after the emission of each stimulation signal,
and wherein the component of the distraction as-
sembly is coupled to a control unit of a neuromoni-
toring system that is capable of displaying to a user
an indication of at least one of proximity and direc-
tion of a nerve to the stimulation electrode pro-
vided on the component of the distraction assembly
based on the monitored resulting electromyo-
graphic (EMG) activity . . . .
Id.
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NUVASIVE, INC. v. HIRSHFELD 5

In NuVasive I, we ordered that the Board on remand
“conduct a new [obviousness] analysis consistent with [our]
opinion.” 752 F. App’x at 986. Regarding the Board’s posi-
tion that a skilled artisan would be motivated to combine
Kossmann 3 and Kelleher, 4 we observed that the Board’s
finding that Kelleher’s nerve-monitoring technique is ap-
plicable to the iliohypogastric and ilioinguinal nerves—
nerves Kossmann’s lateral, trans-psoas spinal surgery
technique sought to avoid—was a new finding that NuVa-
sive never had an opportunity to address. Id. at 998–99.
Therefore, in reconsidering obviousness, we instructed the
Board to do further fact finding to address NuVasive’s ar-
gument that Kelleher’s nerve-monitoring technique could
not detect the iliohypogastric and ilioinguinal nerves. 5 Id.
at 986.
In considering NuVasive’s objective indicia of nonobvi-
ousness, we found nexus between the claimed invention
and NuVasive’s XLIF procedure, noting that “the scope of
the claimed invention is reasonably commensurate with
the XLIF surgical technique.” Id. at 995. Accordingly, we
directed the Board to “reevaluate NuVasive’s objective evi-
dence of nonobviousness such as long-felt need, skepticism
followed by praise and recognition, and commercial

3 Thomas Kossmann et al., Minimally Invasive Ver-
tebral Replacement with Cages in Thoracic and Lumbar
Spine, 6 Euro J. of Trauma 292–300 (2001).
4 WIPO Publication No. WO 01/37728.
5 In NuVasive I, we affirmed the Board’s obviousness
analysis as to the combination of Kossmann, Branch (U.S.
Patent No. 6,945,933), and Koros (U.S. Patent No.
5,928,139). We concluded that substantial evidence sup-
ported the Board’s finding that a skilled artisan would
have been motivated to combine Kossmann’s lateral, trans-
psoas approach to spinal surgery with the surgical tools of
Branch and Koros. 752 F. App’x at 997.
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6 NUVASIVE, INC. v. HIRSHFELD

success” when “considering the obviousness inquiry as a
whole.” Id. at 996. Yet we made clear that our nexus find-
ing did “not mean that these secondary considerations re-
quire[d] a finding of nonobviousness.” Id.
B
On remand, the Board again found that claims 17–22
and 24–27 would have been obvious, doing so without ad-
ditional briefing from the parties. The Board returned to
its original position, articulated in its first decision, J.A.
971–73, 6 that a skilled artisan would have been motivated
to use Kelleher’s neuromonitoring in Kossmann’s lateral,
trans-psoas spinal surgery procedure because Kossmann
teaches that it is desirable to avoid nerves during surger-
ies. J.A. 10. The Board withdrew its reliance on the theory
that a skilled artisan would be motivated to use Kelleher’s
nerve-monitoring technique to detect the iliohypogastric
and ilioinguinal nerves, explaining the withdrawal “ren-
der[ed] the need for additional briefing moot.” J.A. 13.
Evaluating the objective indicia of nonobviousness, the
Board did not find NuVasive’s evidence of commercial suc-
cess, long-felt need, skepticism followed by praise and

6 Before amendment during the reexamination,
claim 17 did not recite any neuromonitoring, J.A. 10, but
claim 19, dependent on claim 17, did, id. In finding original
claim 17 unpatentable as obvious in the first decision, the
Board relied on the combination of Branch, Koros, and
Kossmann. Id. For claim 19, the Board used the combina-
tion of Branch, Koros, Kossmann, and Kelleher, finding
that Branch and Kossmann “teach[] the [desirability] of
avoiding nerves for patient safety and Kelleher’s neu-
romonitoring would achieve this.” J.A. 972. Thus, in the
third decision, the Board “consider[ed] whether the amend-
ments to claim 17 [overcame] the rejection originally ap-
plied to claim 19 further based on Kelleher.” J.A. 10 n.11.
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NUVASIVE, INC. v. HIRSHFELD 7

recognition, and copying “sufficiently persuasive [to] weigh
in favor of nonobviousness[] in light of the teaching in the
art.” Id. at 35. Accordingly, the Board again concluded
that amended claim 17, and claims dependent therefrom,
would have been obvious to the skilled artisan at the time
of the invention. J.A. 35. NuVasive appeals the Board’s
decision under 35 U.S.C. §§ 141 and 142. We have juris-
diction under 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
A
“Obviousness is a question of law based on underlying
findings of fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed.
Cir. 2009). The factual findings include “(1) the scope and
content of the prior art; (2) the differences between the
prior art and the claims at issue; (3) the level of ordinary
skill in the art at the time the invention was made; and (4)
objective evidence of nonobviousness, if any.” Id.; see also
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
Whether a person of ordinary skill in the art would have
been motivated to combine references is also a factual find-
ing. See In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir.
2000). We review the Board’s legal conclusions de novo and
its factual findings for substantial evidence. Id. A finding
of fact is supported by substantial evidence if a reasonable
mind might accept the evidence as adequate support for the
finding. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229
(1938). We review the Board’s ultimate conclusion of obvi-
ousness de novo. In re Mouttet, 686 F.3d 1322, 1330–31
(Fed. Cir. 2012).
B
NuVasive presents three main arguments on appeal:
(1) a skilled artisan would not be motivated to employ
Kelleher’s nerve-monitoring in Kossmann’s lateral, trans-
psoas surgical approach to the lumbar spine; (2) the objec-
tive evidence of nonobviousness, including commercial
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8 NUVASIVE, INC. v. HIRSHFELD

success, long-felt need, and skepticism followed by praise,
provides a basis for reversal; and (3) the Board’s remand
decision is infirm because it improperly presented a new
ground of rejection. We disagree and address each issue in
turn.
1
Substantial evidence supports the Board’s finding that
a skilled artisan would be motivated to combine the neu-
romonitoring of Kelleher with the spinal surgery technique
of Kossmann. NuVasive argues that a skilled artisan
would not use Kelleher’s EMG nerve-monitoring in the
Kossmann procedure because (1) the evidence of record
does not support a conclusion that nerve-monitoring would
make Kossmann’s approach safer, as Kossmann’s surgical
procedure already safely displaces nerves using visual de-
tection alone and does not depart from the “safe zone” 7 of
the psoas muscle; and (2) the Board cites no evidence that
if Kossmann is limited to the “safe zone” of the psoas mus-
cle, a skilled artisan would still employ neuromonitoring
because nerves might be present. These arguments, how-
ever, were thoroughly addressed by us in NuVasive I or by
the Board.
As stated in NuVasive I, “[w]e disagree with NuVasive
that a skilled artisan would not be motivated to use neu-
romonitoring in the Kossmann procedure.” 752 F. App’x at
998. Kossmann teaches “the desirability of avoiding nerves
for patient safety.” Id. “Simply because surgeons could
perform [Kossmann’s procedure] with visual detection
alone does not mean that a skilled artisan would not be
motivated to use neuromonitoring to further ensure pa-
tient safety.” Id. With regard to NuVasive’s contention

7 NuVasive argues that the anterior-most fibers of
the psoas muscle are a “safe zone” where nerves do not re-
side. Appellant’s Br. 25.
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NUVASIVE, INC. v. HIRSHFELD 9

that Kossmann’s procedure passes solely through the “safe
zone,” we again note that “the ’057 patent does not require
that the trans-psoas approach go through a specific part of
the psoas [muscle], such as the lumbar plexus.” Id. In-
stead, a surgeon performing the claimed method of the ’057
patent could pass through the psoas muscle’s alleged “safe
zone.”
Looking to the Board’s remand decision, the record am-
ply supports the Board’s return to its original finding that
a skilled artisan would have been motivated to use Kelle-
her’s neuromonitoring in Kossmann’s technique because
Kossmann generally teaches it is desirable to avoid nerves
during surgical procedures. Kossmann discloses a lateral,
trans-psoas surgical procedure to repair spinal injuries,
which involves splitting the psoas muscle in “some very
athletic patients [because] the excessive size of the muscle
did not allow . . . direct lateral access to the vertebra.” J.A.
12732; see also J.A. 14. It was known in the art that nerves
“form a complex and unpredictable maze within the psoas
muscle,” J.A. 2278–79 ¶¶ 18–19, and must be avoided dur-
ing spinal surgeries, see, e.g., id. (“Damage to the nerve
roots exiting the spine into the psoas muscle can result in
a wide variety of neurologic deficits, ranging from paralysis
to variable loss of motor function throughout the lower ex-
tremities, and severe pain.”). To help surgeons avoid
nerves, Kelleher discloses a solution—EMG neuromonitor-
ing. See J.A. 10276 (detailing that Kelleher’s “invention
relates to [EMG] and to systems for detecting the presence
of nerves during surgical procedures”); see also J.A. 10285
(noting that Kelleher’s “system involves applying a signal
with a current level to a probe near a nerve and determin-
ing whether an [EMG] response for a muscle coupled to the
nerve is present”). In view of these teachings, the Board
reasonably found that a skilled artisan seeking to ensure
patient safety during Kossmann’s trans-psoas procedure
would be motivated to select Kelleher’s known nerve-mon-
itoring technology. Doing so would be nothing “more than
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10 NUVASIVE, INC. v. HIRSHFELD

the predictable use of prior art elements according to their
established functions” to arrive at a method to monitor and
avoid the psoas muscle’s variable array of nerves. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007); see also
J.A. 11.
Even if Kossmann’s procedure is limited to the psoas
muscle’s “safe zone,” substantial evidence still supports the
Board’s finding that a skilled artisan would combine
Kossmann and Kelleher. NuVasive contends that it pre-
sented unrebutted testimony that the “safe zone” was
known to (1) “contain no underlying nerves,” J.A. 2447; and
(2) be “devoid of significant neural structures,” J.A. 2442.
But the record, as discussed by the Board, also includes ev-
idence indicating that within the psoas muscle, a large de-
gree of variation in the “network of important lumbar
plexus nerve structures” exists, J.A. 2298 ¶ 63, and “nerves
form a complex and unpredictable maze,” J.A. 2278–79
¶ 19. See also J.A. 2589–94. Unpredictable, variable nerve
locations in patients create risk of serious nerve injury dur-
ing spinal procedures. See, e.g., J.A. 2278–79 ¶ 19; J.A.
2298 ¶ 63. Considered in its totality, this evidence sup-
ports the Board’s conclusion that a skilled artisan perform-
ing Kossmann’s technique, even only in the “safe zone,”
would have been motivated to use Kelleher’s nerve-moni-
toring to ensure that the surgical path avoided nerves,
making the procedure safer for patients. See In re Jolley,
308 F.3d 1317, 1320 (Fed. Cir. 2002) (“If the evidence in
[the] record will support several reasonable but contradic-
tory conclusions, we will not find the Board’s decision un-
supported by substantial evidence simply because the
Board chose one conclusion over another plausible alterna-
tive.”). Moreover, the Board’s conclusion aligns with our
statements in NuVasive I about a skilled artisan’s motiva-
tion to use neuromonitoring in Kossmann’s spinal surgery,
discussed supra.
NuVasive also argues that the Board’s finding that a
skilled artisan would be motivated to use EMG nerve-
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NUVASIVE, INC. v. HIRSHFELD 11

monitoring in Kossmann’s approach is “an unsupported,
hindsight-based reconstruction of the claims.” Appellant’s
Br. 40. But the Board relied on the teachings of Kossmann
and Kelleher as a whole, i.e., knowledge that was within
the level of ordinary skill at the time the claimed invention
was made. See, e.g., In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971) (“Any judgment on obviousness is in a sense
necessarily a reconstruction based upon hindsight reason-
ing, but so long as it takes into account only knowledge
which was within the level of ordinary skill at the time the
claimed invention was made and does not include
knowledge gleaned only from applicant’s disclosure, such a
reconstruction is proper.”). Further, the Board identified a
reason to combine Kelleher and Kossmann: avoiding
nerves for patient safety during a surgical procedure. Iden-
tification of such a teaching or motivation to combine in the
prior art guards against any hindsight-based reconstruc-
tion of the claims. See In re Gartside, 203 F.3d at 1319
(noting “that the best defense against the subtle but pow-
erful attraction of a hindsight-based obviousness analysis
is rigorous application of the requirement for a showing of
the teaching or motivation to combine prior art references”
(internal quotations omitted)).
In view of the foregoing, we conclude that the Board’s
finding of a motivation to combine Kossmann and Kelleher,
and, therefore, its finding of a motivation to combine
Kossmann, Branch, Koros, and Kelleher, is supported by
substantial evidence.
2
We next consider NuVasive’s argument that the Board
erred by ignoring NuVasive’s objective evidence of nonob-
viousness. Objective indicia are an important part of the
obviousness analysis and must, when present, be consid-
ered. See Transocean Offshore Deepwater Drilling, Inc. v.
Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir.
2012); see also Graham, 383 U.S. at 17–18. But even when
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12 NUVASIVE, INC. v. HIRSHFELD

present, objective indicia “do not necessarily control the ob-
viousness determination.” Bristol–Myers Squibb Co. v.
Teva Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014).
Here, the Board considered and weighed NuVasive’s evi-
dence of commercial success, long-felt need, and skepticism
followed by praise and recognition. Substantial evidence
supports the Board’s conclusions on each of these objective
indicia.
With respect to commercial success, we do not agree
with NuVasive’s contention that the Board ignored our
finding in NuVasive I of a nexus between the claimed in-
vention and the XLIF surgical technique. In fact, the
Board explicitly acknowledged our finding of nexus but
stated that “the weight to which the commercial success
evidence is entitled could be impacted by the degree to
which any success arguably turns on other factors, such as
techniques not covered by the instant claims.” J.A. 31.
Turning to the evidence presented, the Board found
that NuVasive’s revenue numbers were mainly due to sales
of auxiliary products (e.g., implants, biologics, and dispos-
ables), not sales of the nerve-monitoring systems and sur-
gical instrument sets recited in the claims. J.A. 32 (noting
that the systems and instrument sets were loaned to sur-
geons at no cost). Although we do not necessarily agree
with the Board that the claims must recite the particular
products sold or how they are used to illustrate the claimed
invention’s commercial success, 8 id., we understand the
Board’s position to be that NuVasive did not adequately

8 For example, if NuVasive could establish that sales
of its auxiliary products were significant and due to cus-
tomer desire to use these products in performing the
claimed method and/or in gaining the rights to use the
claimed method, then that might be an instance in which
such sales could represent “commercial success” of the
claimed method.
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NUVASIVE, INC. v. HIRSHFELD 13

demonstrate that the XLIF procedure was the primary
driver of auxiliary product sales. In other words, nothing
in the record necessarily tied the sales of these products to
customer demand for the XLIF procedure as opposed to
other uses for the products. The Board also considered
NuVasive’s “minimally invasive fusion” market share data
but found that NuVasive never explained which types of
surgeries are part of that market and whether that market
is much broader than the XLIF procedure. Ample record
evidence suggesting that NuVasive’s sales and market
data for its sold products encompass more than just perfor-
mance of the XLIF procedure supports these findings. See,
e.g., J.A. 2756 (“MaXcess[, NuVasive’s minimally invasive
spinal surgery system,] can be used for multiple surgical
approaches, including TLIF [transforaminal lumbar inter-
body fusion], PLIF [posterior lumbar interbody fusion],
ALIF [anterior lumbar interbody fusion] decompres-
sion . . . , and NuVasive’s own XLIF procedure. The com-
pany continues to enhance its MAS [maximum access
surgery] platform by launching new products designed spe-
cifically for the MaXcess approach.”); J.A. 1826 (“NuVasive
is actively expanding their MIS [minimally invasive sur-
gery] product portfolio and has products in the TLIF, spi-
nous process fixation[,] and other MIS segments.”); J.A.
2142 (“The individual components of NuVasive’s MAS plat-
form, and many of the [c]ompany’s products, can also be
used in open or traditional spinal surgery.”).
Because the Board did not disregard NuVasive’s evi-
dence of commercial success and NuVasive did not provide
contextual information necessary to fully assess its sales
and market data, we cannot say the Board’s review of the
evidence was legally erroneous or unsupported by the rec-
ord. Substantial evidence thus supports the Board’s con-
clusion that NuVasive’s commercial success evidence was
insufficient to alter the obviousness determination.
Additionally, the Board found that NuVasive did not
establish a long-felt, unmet need for a lateral, trans-psoas
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14 NUVASIVE, INC. v. HIRSHFELD

surgical method, a finding supported by substantial evi-
dence. NuVasive asserts that to prove long-felt need, the
Board impermissibly required NuVasive to show failure of
others. But the Board merely concluded that the lack of
widespread efforts by skilled artisans to develop a lateral,
trans-psoas approach and the presence of alternative lat-
eral approaches to the lumbar spine indicated no long-felt
need for the lateral trans-psoas pathway existed.
As for skepticism followed by praise and recognition,
NuVasive argues the Board erred by disregarding the evi-
dence presented. The Board did not. Instead, the Board
evaluated the evidence and gave little weight to hearsay
and expert testimony and research funded by NuVasive.
See J.A. 23, 27–28. Under a deferential substantial evi-
dence standard, the record supports the Board’s decision to
afford this evidence minimal weight.
Balancing the Board’s findings as to both the prior art
and NuVasive’s objective evidence of nonobviousness, we
see no error in the Board’s ultimate legal conclusion of ob-
viousness. The objective evidence lacked sufficient weight
in this instance compared to the persuasive evidence of ob-
viousness found in the prior art. Thus, we agree with the
Board’s ultimate legal conclusion that claims 17–22 and
24–27 would have been obvious.
3
Finally, we consider NuVasive’s argument that the
Board’s remand decision is infirm because it (1) “failed to
permit NuVasive to address the Board’s rejection of”
amended claim 17; and (2) presented “a materially differ-
ent argument that change[d] the thrust of the rejection,”
specifically, that a skilled artisan would use Kelleher’s
nerve-monitoring in Kossmann’s approach to make it safer
because nerves might be present in the psoas muscle’s “safe
zone.” Appellant’s Br. 62, 64.
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NUVASIVE, INC. v. HIRSHFELD 15

But NuVasive had an opportunity to address the sub-
stance of the Board’s rejection of amended claim 17, as the
Board used the combination of Kossmann and Kelleher in
its first decision, J.A. 971–73, to reject claim 19, a claim
dependent from claim 17. When reopening prosecution af-
ter the Board’s first decision, NuVasive amended claim 17
to include neuromonitoring similar to the monitoring re-
cited in then-rejected dependent claim 19. At that time,
NuVasive presented arguments against the Board’s find-
ing of a motivation to combine Kossmann’s spinal proce-
dure and Kelleher’s nerve-monitoring because Kossmann
generally teaches it is desirable to avoid nerves during sur-
gical procedures. See J.A. 1067–69. The rationale under-
lying the Board’s finding in its first decision is the same
one the Board returned to in the remand decision.
Furthermore, the decision from remand did not change
the thrust of the Board’s rejection. As we already detailed
in NuVasive I, a skilled artisan would be motivated to use
neuromonitoring in Kossmann’s surgery to make the pro-
cedure safer, whether passing through the “safe zone” or
not. We see no error in the Board’s obviousness conclusion.
CONCLUSION
We have considered NuVasive’s remaining arguments
and find them unpersuasive. For the reasons stated above,
we affirm the Board’s judgment as to obviousness.
AFFIRMED