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 Trademark 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) (addressing claims 1–8); NuVasive, Inc. v. Warsaw Orthopedic, 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-inpart, and remand.

DISCUSSION

I. Subject Matter Jurisdiction and Standard of Review

This court possesses subject matter jurisdiction pursuant 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). “Substantial 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 underlying 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, because 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, including 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 “insert[s] an artificial implant between two adjacent vertebrae” 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 performed 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 surgical 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 maximum 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 patent would have been obvious over a combination of three 

prior art references: U.S. Patent Nos. 4,545,374 (“Jacobson”) 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 recessed within the vertebrae to sit on the endplate portion 

of the vertebra—which, as a matter of anatomy, is substantially shorter than the full width of a vertebra.” Id. at 

61 (emphasis modified) (citations omitted).

Warsaw’s argument assumes that the limitation “substantially 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 vertebral 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 region 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 implant 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 supports 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 vertebrae,” 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 vertebrae. 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. Dennison 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 substantially 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 conform with the disc space,” as disclosed by Brantigan, 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). Otherwise, an implant that does not occupy “substantially” 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, accompanied by the agency’s reasoning in reaching its conclusions.” (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 findings. 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 (“Jacobson 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. Canadian 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 posteriorly . . . .”).

Warsaw further alleges that “Brantigan does not disclose 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, Warsaw 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 substantially 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 expectation 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 explanation 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 limitation 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 vertebrae 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 substantial 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 present 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 arguments[] 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 maintains the independent “obligation . . . to make the necessary 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 omitted).

We cannot reasonably discern that the PTAB’s decision as to the “elongated portions” limitation in claim 17 

followed the proper path. The PTAB’s affirmative narrative 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 conclusion. 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 relies.”). Thus, we remand this issue to the PTAB for additional 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 (examining 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.