Arthrex, Inc.

Patent Trials and Appeals BoardJan 1, 2021

2020003382 (P.T.A.B. Jan. 1, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/814,826 07/31/2015 Reinhold Schmieding 67145-479PUS1 1059 26096 7590 01/01/2021 CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 EXAMINER NELSON, CHRISTINE L ART UNIT PAPER NUMBER 3774 NOTIFICATION DATE DELIVERY MODE 01/01/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): cgolaw@yahoo.com ptodocket@cgolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte REINHOLD SCHMIEDING, ADRIAN WILSON, DEAN ACKER, and JACOB A. JOLLY Appeal 2020-003382 Application 14/814,826 Technology Center 3700 Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–8 and 16–23. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Arthrex, Inc. Appeal Br. 3. Appeal 2020-003382 Application 14/814,826 2 CLAIMED SUBJECT MATTER Appellant’s invention relates to graft compression and sizing tubes. Claims 1, 16, and 20 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A graft tube assembly, comprising: a transparent body having a proximal end, a distal end, an outer diameter, and an inner diameter, wherein the inner diameter defines a hollowed tunnel configured to receive a graft; an etched ruler on the transparent body; a funneled entrance at the proximal end; a tapered tip at the distal end; and an attachable handle. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Trombley US 5,254,101 Oct. 19, 1993 Schroeder US 5,671,695 Sept. 30, 1997 Arm US 2003/0069545 A1 Apr. 10, 2003 Blomquist US 2012/0041388 A1 Feb. 16, 2012 Shriver US 2012/0083808 A1 Apr. 5, 2012 REJECTIONS I. Claims 1–8 and 16–212 are rejected under 35 U.S.C. § 103 as unpatentable over Arm, Shriver, Blomquist, and Trombley. 2 The Examiner’s omission of claim 21 from the heading of Rejection 1 appears to be an inadvertent error in that claim 21 is discussed in the body of the rejection. See Final Act. 3, 7. Appeal 2020-003382 Application 14/814,826 3 II. Claims 22 and 23 are rejected under 35 U.S.C. § 103 as unpatentable over Arm, Shriver, Blomquist, Trombley, and Schroeder.3 OPINION Obviousness based on Arm, Shriver, Blomquist, and Trombley The Examiner finds that Arm discloses many of the limitations of claim 1, including a transparent body having proximal and distal ends, but does not disclose a funneled entrance at the proximal end. Final Act. 3. The Examiner finds that Shriver discloses a funneled entrance and considers that it would have been obvious to make the proximal end of Arm’s device funneled to ease insertion during use. Id. The Examiner also relies on Blomquist and Trombley for additional features unrelated to the funneled entrance. Id. at 3–4. Appellant argues that the Examiner’s rejection is based on impermissible hindsight because the only teaching of ease of insertion is Appellant’s own Specification. Appeal Br. 8. Appellant asserts, moreover, that the rejection lacks a rational underpinning because Arm’s tube is not designed to receive grafts at the proximal end. Id. In reply, the Examiner asserts “it is well known ‘that a tapered end of a funnel eases insertion by allowing less accurate initial locating of opening and also to provide the ability for larger compressible items to be inserted in a funnel.’” Ans. 8. The Examiner therefore contends that “the knowledge for this rationale is based on knowledge of one of ordinary skill in the art and not merely from the applicant's disclosure.” Id. 3 The Examiner’s omission of Trombley from the heading of Rejection 2 appears to be an inadvertent error in that claims 22 and 23 depend from claim 20, which was rejected in view of Trombley. Appeal 2020-003382 Application 14/814,826 4 In reply, Appellant notes that the Examiner did not address Appellant’s position that the proximal end of Arm’s tube is not designed to receive graft material, and thus, would not appear to benefit from the proposed modification. Reply Br. 3 (citing Arm ¶ 33). According to Appellant, redesigning the proximal end of Arm’s tube to ease insertion when Arm does not use the proximal end for insertion lacks rational underpinnings. Id. Appellant reiterates that the Examiner relies on improper hindsight because none of the reference teaches a funneled entrance to ease insertion of a graft, and this teaching is only found in Appellant’s Specification. Id. Appellant has the better position. We agree with Appellant that even if a funneled entrance is well-known, the Examiner does not provide a “satisfactory explanation” why it would have been obvious to use a funneled entrance at the claimed proximal end in Arm. See Appeal Br. 6. Arm discloses that “front cap 14 is removed to permit insertion of the desired solid phase material, after which the cap is replaced and locked into place.” Arm ¶ 33. Thus, as Appellant correctly notes, the graft (or other large compressible item) is inserted in the front (distal) end, not inserted into the proximal end. Because Arm inserts solid material through the distal end, in the context of Arm, a funneled proximal end does not appear pertinent to ease insertion of graft material, and the Examiner has not provided any discussion of why it otherwise would have been obvious to provide this feature in Arm. Accordingly, we are constrained to reverse the Examiner’s rejection of claim 1, and claims 2–8, 18, 19, and 21 depending therefrom, as unpatentable over Arm, Shriver, Blomquist, and Trombley. Independent claims 16 and 20 also recite “a funneled entrance at the proximal end,” and Appeal 2020-003382 Application 14/814,826 5 we do not sustain the rejection of claims 16 and 20, as well as claim 17, which depends from claim 16 for the same reasons. Obviousness based on Arm, Shriver, Blomquist, Trombley, and Schroeder Claims 22 and 23 depend from claim 20. Appeal Br. 16 (Claims App.). The Examiner does not rely on the teachings of Schroeder in any manner that would remedy the deficiencies discussed above regarding the rejection based on Arm, Shriver, Blomquist, and Trombley. See Final Act. 7. Accordingly, we do not sustain the rejection of claims 22 and 23 as unpatentable over Arm, Shriver, Blomquist, Trombley, and Schroeder. CONCLUSION The Examiner’s rejection is reversed. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–8, 16–21 103 Arm, Shriver, Blomquist, Trombley 1–8, 16–21 22, 23 103 Arm, Shriver, Blomquist, Trombley, Schroeder 22, 23 Overall outcome: 1–8, 16–23 REVERSED