United States Court of Appeals
for the Federal Circuit
______________________
IN RE: WARSAW ORTHOPEDIC, INC.,
Appellant
______________________
2015-1050, 2015-1058
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2013-00206 and IPR2013-00208.
______________________
Decided: August 9, 2016
______________________
JOHN C. O’QUINN, Kirkland & Ellis LLP, Washington,
DC, argued for appellant. Also represented by WILLIAM H.
BURGESS, BRIAN H. GOLD; LUKE DAUCHOT, STEVEN
PAPAZIAN, NIMALKA R. WICKRAMASEKERA, Los Angeles, CA.
MONICA BARNES LATEEF, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, argued
for intervenor Michelle K. Lee. Also represented by THOMAS
W. KRAUSE, STACY BETH MARGOLIES, SCOTT
WEIDENFELLER.
______________________
Before PROST, Chief Judge, BRYSON and WALLACH, Circuit
Judges.
WALLACH, Circuit Judge.
2 IN RE: WARSAW ORTHOPEDIC, INC.
Based on two petitions filed by NuVasive, Inc.
(“NuVasive”), the United States Patent and Trademark
Office’s (“USPTO”) Patent Trial and Appeal Board
(“PTAB”) instituted inter partes reviews of claims 1–30 of
U.S. Patent No. 8,251,997 (“the ’997 patent”). In separate
Final Written Decisions, the PTAB found claims 1–8 and
17–23 obvious and therefore invalid. See NuVasive, Inc.
v. Warsaw Orthopedic, Inc. (NuVasive I), No. IPR2013-
00208, 2014 WL 3422010 (P.T.A.B. July 10, 2014) (ad-
dressing claims 1–8); NuVasive, Inc. v. Warsaw Orthope-
dic, Inc. (NuVasive II), No. IPR2013-00206, 2014 WL
3422008 (P.T.A.B. July 10, 2014) (addressing claims 9–
30).
Warsaw Orthopedic, Inc. (“Warsaw”), the assignee of
the ’997 patent, appeals. 1 We affirm-in-part, vacate-in-
part, and remand.
DISCUSSION
I. Subject Matter Jurisdiction and Standard of Review
This court possesses subject matter jurisdiction pur-
suant to 28 U.S.C. § 1295(a)(4)(A) (2012). We review the
PTAB’s legal conclusions de novo, Redline Detection, LLC
v. Star Envirotech, Inc., 811 F.3d 435, 449 (Fed. Cir.
2015), and its factual findings for substantial evidence, In
re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). “Sub-
stantial evidence is something less than the weight of the
evidence but more than a mere scintilla of evidence.” In
re Moutett, 686 F.3d 1322, 1331 (Fed. Cir. 2012).
1 NuVasive initially appealed several aspects of the
PTAB’s decisions, but later terminated its appeal (No.
2015-1049) and withdrew from Warsaw’s appeals (Nos.
2015-1050 and -1058). We permitted the USPTO to
participate in oral argument in defense of the PTAB’s
decisions.
IN RE: WARSAW ORTHOPEDIC, INC. 3
II. Substantial Evidence Supports Some, But Not All, of
the PTAB’s Obviousness Findings
A patent claim is invalid “if the differences between
the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have
been obvious at the time the invention was made to a
person having ordinary skill in the art [(‘PHOSITA’)] to
which said subject matter pertains.” 35 U.S.C. § 103(a)
(2006). 2 Obviousness is a question of law based on under-
lying findings of fact. Gartside, 203 F.3d at 1316. The
underlying factual findings include (1) “the scope and
content of the prior art,” (2) “differences between the prior
art and the claims at issue,” (3) “the level of ordinary skill
in the pertinent art,” and (4) the presence of secondary
considerations of nonobviousness such “as commercial
success, long felt but unsolved needs, [and] failure of
others.” Graham v. John Deere Co. of Kan. City, 383 U.S.
1, 17–18 (1966).
Warsaw contests the PTAB’s findings that claims 1–8
and 17–23 of the ’997 patent would have been obvious
over various prior art references. We address the claims
in turn.
A. The ’997 Patent
A brief review of the anatomy of the human spine will
provide the context necessary to understand the invention
disclosed in the ’997 patent. A human spine contains
twenty-four vertebrae divided over three regions: seven
cervical (neck), twelve thoracic (chest), and five lumbar
2 Congress amended § 103 when it passed the
Leahy-Smith America Invents Act (“AIA”). Pub. L. No.
112-29, § 3(c), 125 Stat. 284, 287 (2011). However, be-
cause the application that led to the ’997 patent was filed
before March 16, 2013, the pre-AIA § 103 applies. Id.
§ 3(n)(1), 125 Stat. at 293.
4 IN RE: WARSAW ORTHOPEDIC, INC.
(lower) vertebrae. Each vertebra has three parts, includ-
ing a body. A vertebral body has three components: the
“endplate,” which is at the center and contains blood
vessels, as well as the “apophyseal ring” (tracing the
circumference of a vertebral body) and the “cortical rim”
(constituting the edge of the vertebral body), which are
made of dense bone and do not contain blood vessels.
Discs occupy the space between the vertebrae, absorbing
shock.
The ’997 patent relates to spinal surgery that “in-
sert[s] an artificial implant between two adjacent verte-
brae” from a patient’s side. ’997 patent, Abstract. In
particular, the ’997 patent discloses “instrumentation and
methods of performing surgical procedures on the human
thoracic and lumbar spine along the lateral aspect [(i.e.,
side)] of the spine” to correct “thoracic and lumbar disc
disease and spinal deformities where concomitant fusion
is desired.” Id. col. 1 ll. 17–23. The lateral approach to
spinal surgery disclosed by the ’997 patent seeks to avoid
complications that may arise when the surgery is per-
formed anteriorly or posteriorly (i.e., from the front or
back of a patient). Id. col. 3 ll. 22–23.
The ’997 patent contains four independent claims—
including claims 1 and 17—and twenty-six dependent
claims. Id. col. 22 l. 47–col. 28 l. 37. Independent claims
1 and 17 follow a similar structure: they recite a method
that begins with an incision in the patient’s side, followed
by steps of advancing specific instruments into the surgi-
cal path and inserting an implant between the vertebrae
to be fused. See id. col. 22 l. 47–col. 23 l. 39 (claim 1); id.
col. 25 l. 18–col. 26 l. 24 (claim 17). In relevant part,
independent claim 1 recites
[i]nserting . . . a non-bone interbody intraspinal
implant . . . , the length of said implant being
sized to occupy substantially the full transverse
width of the vertebral bodies of the two adjacent
IN RE: WARSAW ORTHOPEDIC, INC. 5
vertebrae, the length of said implant being greater
than the depth of the disc space, . . . [and] the
length of said implant being greater than the max-
imum height of said implant.
Id. col. 23 ll. 19–39 (emphases added). Independent claim
17 recites nearly identical language. Id. col. 26 ll. 3–24
(claim 17). The “length” is measured laterally, consistent
with the direction of the insertion, from the “insertion
end” to the “trailing end.” See, e.g., id. col. 23 ll. 24–26
(claim 1). These appeals principally concern the length of
the implant recited in the ’997 patent’s independent
claims. 3
B. Substantial Evidence Supports the PTAB’s Findings as
to Brantigan and the Motivation to Combine Prior Art
References
The PTAB found that claims 1 and 17 of the ’997 pa-
tent would have been obvious over a combination of three
prior art references: U.S. Patent Nos. 4,545,374 (“Jacob-
son”) and 5,192,327 (“Brantigan”); and Hansjorg F. Leu &
Adam Schreiber, Percutaneous Fusion of the Lumbar
Spine: A Promising Technique, St. Art Revs., Sept. 1992,
at 593–604 (“Leu”) (J.A. 493–506). See NuVasive I, 2014
3 Claims 2–8 and 18–23 depend from independent
claims 1 and 17, respectively. See ’997 patent col. 23 ll.
40–59 (claims 2–8); id. col. 26 ll. 25–42 (claims 18–23).
Warsaw does not argue the merits of the dependent
claims separately or attempt to distinguish them from
prior art. Therefore, the dependent claims stand or fall
with their attendant independent claim. See, e.g., In re
Kaslow, 707 F.2d 1366, 1376 (Fed. Cir. 1983) (“Since the
claims are not separately argued, they all stand or fall
together.” (citation omitted)).
6 IN RE: WARSAW ORTHOPEDIC, INC.
WL 3422010, at *4–13. 4 Warsaw challenges the PTAB’s
factual findings regarding the teachings of Brantigan as
well as its finding of a motivation to combine Brantigan
with Leu and Jacobson. We discuss each issue in turn.
1. Brantigan
Warsaw alleges that “Brantigan does not disclose an
implant with any dimension spanning ‘substantially the
full transverse width’ of a vertebra” as recited in claims 1
and 17 of the ’997 patent, such that the PTAB erred in
finding claims 1 and 17 obvious in light of Brantigan.
Warsaw’s Br. 60 (capitalization omitted). According to
Warsaw, “Brantigan’s specification and claims repeatedly
and specifically explain that its implants must be re-
cessed within the vertebrae to sit on the endplate portion
of the vertebra—which, as a matter of anatomy, is sub-
stantially shorter than the full width of a vertebra.” Id. at
61 (emphasis modified) (citations omitted).
Warsaw’s argument assumes that the limitation “sub-
stantially the full transverse width” in claims 1 and 17 of
the ’997 patent means that the length of the patented
implant must extend beyond a vertebra’s endplate to
include the apophyseal ring. However, the PTAB properly
concluded that
claim 1 recites an implant being sized to occupy
substantially the full transverse width of the ver-
tebral body. [Warsaw] does not show that claim 1
also recites an implant being sized to extend onto
the apophyseal ring of the vertebral body or an
4 The PTAB’s analysis of claim 1 is identical to its
analysis of claim 17. Compare NuVasive I, 2014 WL
3422010, at *4–13 (claim 1), with NuVasive II, 2014 WL
3422008, at *4–14 (claim 17). Unless otherwise noted, we
refer only to the PTAB’s analysis of claim 1 in NuVasive I
for ease of reference.
IN RE: WARSAW ORTHOPEDIC, INC. 7
implant being sized to extend beyond a central re-
gion of a vertebral body. Nor does [Warsaw] point
to an explicit disclosure in the [s]pecification [of
the ’997 patent] regarding the length of the im-
plant with respect to the alleged “apophyseal
ring.”
NuVasive I, 2014 WL 3422010, at *9; see also NuVasive II,
2014 WL 3422008, at *10 (providing a similar analysis
with respect to claim 17). The subject claims’ text sup-
ports the PTAB’s conclusion. See ’997 patent col. 23 ll.
26–29 (where claim 1 recites “the length of said implant
being sized to occupy substantially the full transverse
width of the vertebral bodies of the two adjacent verte-
brae,” but does not recite anything about the apophyseal
ring); id. col. 26 ll. 10–12 (reciting substantially the same
in claim 17).
Warsaw next contends “[t]he PTAB’s conclusion that
Brantigan teaches an implant sized to span substantially
the full transverse width of adjacent vertebrae depends on
its fundamental misunderstanding of the statement that
the Brantigan implant is ‘generally shaped and sized to
conform with the disc space’” between the adjacent verte-
brae. Warsaw’s Br. 64 (citations omitted). That “an
implant is designed to fit the disc space” between the
adjacent vertebrae, Warsaw contends, “does not reveal
what all of its dimensions are.” Id. at 66.
When the PTAB examines the scope and content of
prior art, such as Brantigan, it must consider the prior art
“in its entirety, i.e., as a whole.” Panduit Corp. v. Den-
nison Mfg. Co., 810 F.2d 1561, 1568 (Fed. Cir. 1987)
(citation omitted). An examination of the scope and
content of the prior art produces factual findings reviewed
for substantial evidence. Gartside, 203 F.3d at 1316.
Substantial evidence supports the PTAB’s finding
that Brantigan teaches an implant that spans substan-
tially the full width of a vertebra, as recited in claims 1
8 IN RE: WARSAW ORTHOPEDIC, INC.
and 17 of the ’997 patent. The PTAB observed that
“Brantigan discloses, for example, a ‘plug . . . generally
shaped and sized to conform with the disc space between
adjoining vertebrae in a vertebral column.’” NuVasive I,
2014 WL 3422010, at *8 (citing Brantigan col. 4 ll. 6–8).
Based on this evidence, the PTAB reasoned that
it would have been obvious to one of ordinary skill
in the art that an implant that is “sized to con-
form with the disc space,” as disclosed by Branti-
gan, would have occupied at least a length that is
less than the full transverse width of the vertebral
bodies by an insubstantial amount (i.e., occupying
“substantially” the full transverse width). Other-
wise, an implant that does not occupy “substan-
tially” the full transverse width would not have
been sized to conform to the disc space, in contrast
to Brantigan’s disclosure that the implant is, in
fact, sized to conform to the disc space.
Id. at *9. The evidence cited and rationale provided by
the PTAB comports with what our precedent demands.
See, e.g., In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001)
(“[T]he [PTAB] must point to some concrete evidence in
the record in support of [its] findings.” (footnote omitted));
see also In re Lee, 277 F.3d 1338, 1342 (Fed. Cir. 2002)
(“Judicial review of a [PTAB] decision . . . is thus founded
on the obligation of the agency to make the necessary
findings and to provide an administrative record showing
the evidence on which the findings are based, accompa-
nied by the agency’s reasoning in reaching its conclu-
sions.” (citations omitted)). To the extent that Warsaw
argues the PTAB erred because it did not decide whether
Brantigan discloses dimensions that exactly meet the
limitation “substantially the full transverse width” in
claims 1 and 17 of the ’997 patent, Warsaw’s Br. 66,
Warsaw misunderstands the governing law, see, e.g.,
Beckson Marine, Inc. v. NFM, Inc., 292 F.3d 718, 727
IN RE: WARSAW ORTHOPEDIC, INC. 9
(Fed. Cir. 2002) (“[O]bviousness does not require the prior
art to reach expressly each limitation exactly.”).
Warsaw also argues that the PTAB erred because
“Brantigan does not disclose an implant with a ‘length’
substantially the full transverse width of a vertebra.”
Warsaw’s Br. 69 (capitalization omitted). That is so,
Warsaw argues, because “[t]he Brantigan implants were
not designed or intended for lateral implantation,” but
rather concern implants surgically inserted anteriorly or
posteriorly. Id. at 71.
Warsaw’s argument misunderstands the PTAB’s find-
ings. The PTAB concluded that the lateral insertion
aspect would have been obvious in view of Jacobson, not
Brantigan. NuVasive I, 2014 WL 3422010, at *11 (“Ja-
cobson discloses or suggests th[e lateral] feature. We
need not determine whether one of ordinary skill in the
art would have understood Brantigan to also disclose this
feature.”). Warsaw does not separately contest the
PTAB’s findings as to Jacobson, at least on this point. See
Warsaw’s Br. 69–73. Thus, we will not disturb this aspect
of the PTAB’s decision. See Nat’l Steel Car, Ltd. v. Cana-
dian Pac. Ry., Ltd., 357 F.3d 1319, 1336–37 (Fed. Cir.
2004) (rejecting argument directed at the wrong prior
art). In any event, the record belies Warsaw’s argument
that the Brantigan implants were not designed for lateral
implantation. Brantigan col. 6 ll. 62–68 (“[T]he plugs of
this invention . . . are inserted into the opened up disc
space . . . either anteriorly, laterally[,] or posterior-
ly . . . .”).
Warsaw further alleges that “Brantigan does not dis-
close implants with a length—or any dimension—‘greater
than the depth of the disc space,’” as claims 1 and 17 of
the ’997 patent recite. Warsaw’s Br. 73 (capitalization
omitted). However, in its response to NuVasive’s petition,
Warsaw did not raise this argument. Accordingly, War-
saw has waived this argument. See, e.g., Redline, 811
10 IN RE: WARSAW ORTHOPEDIC, INC.
F.3d at 450 (explaining that this court does not consider
arguments not raised before the PTAB).
Warsaw also argues that “Brantigan’s disclosure of
implants that can be rotated or reversed teaches away
from the ’997 patent.” Warsaw’s Br. 77. We disagree that
Brantigan’s disclosure of implants that can be rotated or
reversed teaches away from the claimed invention. A
reference “teach[es] away when a person of ordinary skill,
upon reading the reference, would be discouraged from
following the path set out in the reference.” Galderma
Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir.
2013) (citation omitted). Whether a reference teaches
away presents a factual question reviewed for substantial
evidence. See In re Urbanski, 809 F.3d 1237, 1241 (Fed.
Cir. 2016) (examining “whether the prior art teaches
away from the claimed invention” produces “factual
findings”). Warsaw’s argument asks the court to elevate
one aspect of Brantigan (i.e., that the implants can be
rotated or reversed prior to implantation) over another
(i.e., that the implants are sized to conform with the disc
space). The PTAB concluded that, regardless of whether
the Brantigan implants may be rotated or reversed,
“Brantigan discloses that the implant is ‘sized to conform
with the disc space,’ which one of ordinary skill in the art
would have understood to mean sized to occupy substan-
tially the full transverse widths of the vertebral bodies for
reasons previously stated.” NuVasive I, 2014 WL
3422010, at *11. We may not reweigh this evidence on
appeal. See In re NTP, Inc., 654 F.3d 1279, 1292 (Fed.
Cir. 2011) (We do “not reweigh evidence on appeal, but
rather determine[] whether substantial evidence supports
the [PTAB’s] fact findings.”).
2. Motivation to Combine Prior Art References
As part of the obviousness inquiry, we consider
“whether a [PHOSITA] would have been motivated to
combine the prior art to achieve the claimed invention
IN RE: WARSAW ORTHOPEDIC, INC. 11
and whether there would have been a reasonable expecta-
tion of success in doing so.” DyStar Textilfarben GmbH &
Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356,
1360 (Fed. Cir. 2006) (citation omitted). The answers to
these questions require producing factual findings that we
review for substantial evidence. See Gartside, 203 F.3d at
1316 (discussing motivation to combine); see also Alza
Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1289 (Fed. Cir.
2006) (discussing reasonable expectation of success).
Warsaw alleges that “[t]he entire affirmative portion
of the [PTAB’s] analysis” regarding motivation to combine
is insufficient as a matter of law because it reflects “a
belief that one of ordinary skill in the art could combine
[Jacobson, Leu, and Brantigan], not that [one] would have
been motivated to do so.” Warsaw’s Br. 79–80 (internal
quotation marks and citations omitted). According to
Warsaw, the PTAB “did not supply the necessary expla-
nation or evidence for combining Jacobson, Leu, and
Brantigan because it could not.” Id. at 82.
We disagree with Warsaw that the PTAB’s analysis
suffers from legal error or that the PTAB failed to supply
the requisite explanation in support of its conclusions. In
its analysis, the PTAB determined that a PHOSITA
“would have” been motivated to combine Jacobson, Leu,
and Brantigan, and provided a reasoned explanation for
reaching that conclusion. See NuVasive I, 2014 WL
3422010, at *12 (“[T]he combination of the known element
of performing a spinal fusion procedure by laterally
advancing instruments into the disc space (Jacobson) with
the known element of using an ‘interbody graft’ in a
spinal fusion procedure (Leu and Brantigan) would have
resulted in no more than the predictable and expected
result of performing a spinal fusion procedure (Jacobson)
that includes inserting an implant into a disc space (Leu
or Brantigan).” (emphasis added)); see also id. at *12–13
(providing a full motivation-to-combine analysis). The
true nature of Warsaw’s arguments reflects a collateral
12 IN RE: WARSAW ORTHOPEDIC, INC.
attack on the teachings of the prior art references, based
on aspects of the references that it finds more persuasive
than did the PTAB. See Warsaw’s Br. 83–85. Those
arguments contest the weight the PTAB afforded to the
record evidence, but we may not reweigh facts already
considered by the PTAB. See NTP, 654 F.3d at 1292.
C. The PTAB Did Not Adequately Explain How Jacobson
Discloses Claim 17’s “Elongated Portions” Limitation
Finally, Warsaw raises an argument specific to a limi-
tation in claim 17 of the ’997 patent. In relevant part,
claim 17 requires the positioning of a surgical instrument
with “elongated portions” so that at least part of one
elongated portion “is over one of the two adjacent verte-
brae and at least part of another . . . elongated portion[] is
over the other of the two adjacent vertebrae.” ’997 patent
col. 25 l. 65–col. 26 l. 2. Warsaw contends that “no sub-
stantial evidence support[s] the [PTAB]’s conclusion that
Jacobson discloses a surgical instrument with ‘elongated
portions’ positioned” over adjacent vertebrae, as recited by
claim 17. Warsaw’s Br. 86. Warsaw avers that the PTAB
erred in finding that “anchor wires” in Jacobson meets the
“positioned over” limitation recited in claim 17. See id.
Warsaw raises several arguments that it did not pre-
sent to the PTAB. Compare id. at 86–90, with J.A. 1213
(where, before the PTAB, Warsaw argued only that “claim
17 recites a third surgical instrument with at least two
elongated portions that are positioned over adjacent
vertebral bodies. [NuVasive] relies solely on Jacobson’s
wires for this element. These portions are not ‘positioned
over’ adjacent vertebrae. Instead, the wires ‘are advanced
into the disc capsule.’” (citation omitted)). In responding
to this narrow argument, the PTAB found that Warsaw
did “not provide sufficient evidence of specific differences
between the ‘elongated portion’ being ‘positioned over’
adjacent vertebrae, as recited in claim 17, and the ‘anchor
wires’ [disclosed in Jacobson] that are also ‘positioned
IN RE: WARSAW ORTHOPEDIC, INC. 13
over’ adjacent vertebrae.” NuVasive II, 2014 WL
3422008, at *13. Based on the limited argument before it,
we cannot say that the PTAB erred in rejecting Warsaw’s
argument. “If all of the arguments made on appeal had
been made to [the agency] and the record made to support
them, [the agency] may well have reached a different
conclusion”; however, we may not “entertain new argu-
ments[] and reverse [the agency] on the basis of them.”
Jacobi Carbons AB v. United States, 619 F. App’x 992,
1001 (Fed. Cir. 2015) (unpublished).
Nevertheless, as we stated above, the PTAB main-
tains the independent “obligation . . . to make the neces-
sary findings and to provide an administrative record
showing the evidence on which the findings are based,
accompanied by the agency’s reasoning in reaching its
conclusions.” Lee, 277 F.3d at 1342 (emphasis added)
(citations omitted). As for its reasoning, the PTAB “must
articulate ‘logical and rational’ reasons for [its] decisions.”
Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309,
1322 (Fed. Cir. 2016) (citation omitted). We may affirm
the PTAB’s finding “if we may reasonably discern that it
followed a proper path, even if that path is less than
perfectly clear.” Ariosa Diagnostics v. Verinata Health,
Inc., 805 F.3d 1359, 1365 (Fed. Cir. 2015) (citation omit-
ted).
We cannot reasonably discern that the PTAB’s deci-
sion as to the “elongated portions” limitation in claim 17
followed the proper path. The PTAB’s affirmative narra-
tive in support of its finding that Jacobson discloses the
subject limitation in claim 17 consists of a single sentence:
“Jacobson appears to disclose anchor wires (i.e., ‘elongated
portions’) that are positioned over adjacent vertebrae.”
NuVasive II, 2014 WL 3422008, at *13 (citing Jacobson
fig.5). The PTAB’s conclusory assertion that Figure 5 of
Jacobson “appears to” support its finding does not equate
to the reasoned explanation needed to support its conclu-
sion. See Synopsys, 814 F.3d at 1322; see also Lee, 277
14 IN RE: WARSAW ORTHOPEDIC, INC.
F.3d at 1345 (“The [PTAB] cannot rely on conclusory
statements when dealing with . . . prior art and specific
claims, but must set forth the rationale on which it re-
lies.”). Thus, we remand this issue to the PTAB for addi-
tional explanation.
Finally, we take no position on whether Jacobson,
taken as a whole, discloses the “elongated portions”
limitation in claim 17, for that is a matter for the PTAB to
decide on remand. See Gartside, 203 F.3d at 1316 (exam-
ining the scope and content of the prior art produces
factual findings reviewed for substantial evidence); see
also Ariosa, 805 F.3d at 1365 (“[W]e must not ourselves
make factual and discretionary determinations that are
for the [USPTO] to make.” (citations omitted)). If the
PTAB determines on remand that Jacobson does not
disclose the “elongated portions” limitation in claim 17, it
may take additional actions that it deems appropriate.
CONCLUSION
We have considered the remaining arguments and
find them unpersuasive. Accordingly, the Final Written
Decisions of the United States Patent and Trademark
Office’s Patent Trial and Appeal Board are
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
Each party shall bear its own costs.