Ex Parte Beckendorf et al

Patent Trial and Appeal Board

Sep 27, 2012

11518873 (P.T.A.B. Sep. 27, 2012)

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.
11/518,873 09/12/2006 Brandon G. Beckendorf A8130.0422/P422 5868
24998 7590 09/28/2012
DICKSTEIN SHAPIRO LLP
1825 EYE STREET NW
Washington, DC 20006-5403
EXAMINER
COTRONEO, STEVEN J
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
09/28/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte BRANDON G. BECKENDORF,
RICARDO ALBERTORIO, and LUKE D. CICCHINELLI
__________

Appeal 2011-009188
Application 11/518,873
Technology Center 3700
__________

Before MELANIE L. McCOLLUM, ERICA A. FRANKLIN, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
compression staple and a method of displacing torque resulting from the
insertion of a compression staple into tissue. The Patent Examiner rejected
the claims as anticipated and obvious. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

Appeal 2011-009188
Application 11/518,873

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STATEMENT OF THE CASE
Claims 8-11 and 18-21 are on appeal. Claims 8, 18 and 21 are
representative and read as follows:
8. A compression staple, comprising:
a body having a longitudinal axis, a top surface, a bottom surface, a
side surface forming an angle of about ninety degree with at least one of the
top surface and the bottom surface, and a middle region, the body being
formed of a material having a low enough yield point so that the staple may
permanently compress and undergo plastic deformation; and
a plurality of cylindrical fully cannulated posts extending from the
bottom surface of the body, each of the plurality of cylindrical cannulated
posts being located at opposing ends of the body and on the longitudinal axis
of the body.

18. A method of displacing torque resulting from the insertion of a
compression staple into tissue, the method comprising the steps of:
providing a compression staple in the vicinity of a first bone and a
second bone of a fracture site, the compression staple having a body with a
first surface, a second opposing surface, and a middle region; and two fully
cannulated cylindrical posts extending from the first surface of the body;
inserting the compression staple in the first bone and in the second
bone of the fracture site by positioning the compression staple at a desired
position with respect to the first bone, inserting a first guide pin through one
of the two fully cannulated posts and into the first bone, aligning the
compression staple into a desired position with respect to the second bone,
and inserting a second guide pin through the second of the two fully
cannulated cylindrical posts and into the second bone;
driving the compression staple into the first bone and the second bone
over the first and second guide pins; and
applying compression force across the body to twist the body into
compression.

21. The compression staple of claim 8, wherein the body has
an S-shaped configuration.

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Application 11/518,873

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The Examiner rejected the claims as follows:
• claims 8, 9 and 11 under 35 U.S.C. §102(b) as anticipated by
Oberlander;
1

• claims 8-11 under 35 U.S.C. § 103(a) as unpatentable over Pratt
2

and Oberlander;
• claims 8, 9, 11 and 18-20 under 35 U.S.C. § 103(a) as unpatentable
over Groiso
3
and Oberlander; and
• claim 21 under 35 U.S.C. § 103(a) as unpatentable over Groiso,
Oberlander and Mohr.
4

ANTICIPATION
The Examiner found that Oberlander disclosed the claimed invention.
In particular, the Examiner found that Oberlander disclosed a body having a
longitudinal axis, a top surface, a bottom surface, a side surface forming an
angle of about ninety degrees with at least one of the top surface and the
bottom surface, and a middle region. (Ans. 3.) Figure 2 of Oberlander,
annotated by the Examiner with an indication of the top surface, bottom
surface, side surface, and body, is reproduced below:

1
Patent No. US 6, 554,852 B1 issued to Michael A. Oberlander, Apr. 29,
2003.
2
US Patent No. 4,454,875 issued to Clyde R. Pratt et al., Jun. 19, 1984.
3
US Patent No. 3,939,828 issued to Robert N. Mohr et al., Feb. 24, 1976.
4
US Patent No. 5,449,359 issued to Jorge A. Groiso, Sep. 12, 1995.
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Figure 2 is a side sectional view of the dual-anchor embodiment of the
invention. (Oberlander col. 4, ll. 1-2; Ans. 4.)
Appellants contend, among other things, that Oberlander‟s suture
“has a round (circular) configuration that cannot define – mathematically – a
top surface or a bottom surface or a side surface (much less a side surface
that forms an angle of „about ninety degrees‟ with the top or bottom
surface).” (App. Br. 5.)
We understand the Examiner‟s position that Oberlander‟s suture body
has a top, bottom and side surface. See, e.g., Examiner‟s annotation of
Oberlander Fig. 2, shown above. However, we agree with Appellants that
Oberlander did not disclose the side surface of the suture body as forming an
angle of about ninety degrees with at least one of the top surface and bottom
surface, as required by independent claim 8.
Accordingly, we reverse the anticipation rejection of claim 8 and its
dependent claims 9 and 11.

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Application 11/518,873

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OBVIOUSNESS
I. The Rejection over Pratt and Oberlander
The Examiner‟s position is that Pratt disclosed a compression staple
having a body with a longitudinal axis, a top surface, a bottom surface, and a
side surface forming an angle of about ninety degrees with at least one of the
top surface and the bottom surface, and having a middle region. (Ans. 5.)
The Examiner also found that Pratt disclosed its staple having a plurality of
ribbed posts extending from the bottom surface. (Id.) Additionally, the
Examiner found that Pratt‟s staple had a plurality of spikes extending from
the body. (Id.) However, the Examiner found that Pratt did not disclose that
the posts were fully cannulated. (Id.)
The Examiner found that Oberlander disclosed cylindrical posts being
fully cannulated to aid in the insertion of the posts. (Id.) According to the
Examiner, it would have been obvious at the time of the invention to one of
ordinary skill in the art to modify the device of Pratt to have its posts being
fully cannulated to aid in the insertion of the posts, as taught by Oberlander.
(Id. at 6.)
Appellants contend that “Pratt does not disclose or suggest a
compression staple with „a plurality of posts‟ that are „cylindrical,‟ as claim
8 recites.” (App. Br. 6.) Appellants assert that Pratt‟s legs are triangular-
like in cross-section with the smooth surfaces forming the base of the
triangle, and not posts that are “cylindrical” in shape. (Id.) Appellants also
assert that Pratt‟s posts are not “fully cannulated.” (Id.) Appellants also
assert that Oberlander fails to address the deficiencies of Pratt because
“Oberlander teaches two suture anchors connected by a suture strand, and
not posts or cannulated posts….” (Id. at 7.)
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Additionally, Appellants assert that a skilled artisan would not have
been motivated to combine Oberlander with Pratt to arrive at the claimed
invention because (a) Oberlander does not relate to staples or to surgical
steel devices for bone fixation, (b) cannulation of the posts does not aid in
the insertion of the posts, but rather confers the ability of the legs or posts to
be used as drill guides, (c) Pratt‟s device already has legs configured to be
easily driven through soft tissue and bone, such that there would be no
motivation to modify the legs, (d) Oberlander‟s anchors are connected by
suture which would not be suitable for bone fixation, and (e) Oberlander
teaches away from Pratt by discussing “all the limitations of „non-suture
anchor systems‟ and of „staple-like devices.‟” (Id. at 7-8.)
Appellants also assert that “the Examiner relies upon the teachings of
the instant application to provide motivation to modify… the cited prior art
reference to arrive at the claimed invention. (Id. at 8-9.)
Analysis
After considering all of the evidence and arguments, we conclude that
the record supports a conclusion of prima facie obviousness. We are not
persuaded of nonobviousness by Appellants‟ assertions that Pratt did not
disclose a plurality of posts that are cylindrical or fully cannulated, as the
Examiner combination relied on Oberlander‟s teachings for this
modification. Nor are we persuaded by Appellants‟ assertion that
Oberlander‟s anchors are “not posts or cannulated posts….” (App. Br. 7)
Appellants have not provided any explanation or persuasive evidence to
support this argument. To the contrary, Oberlander expressly disclosed that
its anchors may be cannulated. (Oberlander, col. 2, ll. 55-58; Ans. 5.)
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We remain unpersuaded by Appellants‟ arguments that a skilled
artisan would not have been motivated to combine Pratt and Oberlander to
yield the claimed invention. Appellants assert that Oberlander does not
relate to staples or to surgical steel devices for bone fixation. (App. Br. 8.)
However, Oberlander does disclose a device having anchors (i.e., posts) that
are inserted into a patient‟s bone to facilitate reattachment of soft tissue to
the bone. We find that Oberlander‟s device is in the same field of endeavor
as that of Pratt, even though Pratt is directed to bone fixation and Oberlander
relates to attachment of soft tissue to bone. In re Clay, 966 F.2d 656, 658-
659 (Fed. Cir. 1992) (stating that prior art is analogous if the art is from the
same field of endeavor, regardless of the problem addressed). Appellants
also assert that the cannulation of the posts does not aid in the insertion of
the posts; however, Oberlander expressly stated, “For ease of positioning
and inserting the anchors in the bone, cannulated anchors are preferred.”
(Oberlander col. 4, ll. 48-49.) Appellants assert that Pratt‟s device already
has legs configured to be easily driven through soft tissue and bone;
however, the Examiner‟s modification amounts to a simple substitution of
one known element for another, i.e., a different means of ensuring easy
positioning and inserting of posts into bone. KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 416-17 (2007). Appellants also assert that Oberlander‟s
suture would not be suitable for bone fixation; however, as the Examiner
explained, it is only the posts of Pratt that are being modified, not the body
of the staple. (Ans. 10.)
Oberlander teaches that cannulated posts are used to make insertion
into the bone easier. (Ans. 10)(citing col 2, ll. 63-65). Appellants assert that
Oberlander taught away from a relevant combination by discussing
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limitations of non-suture anchor systems and staple-like devices. However,
Pratt, the primary reference, taught the usefulness of its medical staple, and
the Examiner‟s combination modifies Pratt only with the posts of
Oberlander, i.e., posts that neither reference criticizes. See In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004) (finding that prior art did not teach that
relevant features were undesirable and, therefore, did not teach away).
We remain unpersuaded of nonobviousness by Appellants‟ assertion
that the Examiner improperly relied on hindsight. As discussed, the cited
combination of references disclosed all of the limitations of the claimed
invention and it would have been obvious to one of ordinary skill in the art
to have combined the references to make the claimed invention. See In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Accordingly, we affirm the obviousness rejection of independent
claim 8 over Pratt and Oberlander. Appellants have not separately argued
the rejected dependent claims, therefore, these claims fall with independent
claim 8. 37 C.F.R. § 41.37(c)(1)(vii).

II. The Rejection over Groiso and Oberlander
The Examiner found that Groiso disclosed a compression staple
having a body made out of titanium or stainless steel, a bottom surface, a
side surface forming an angle of about ninety degrees with at least one of the
top surface and the bottom surface, a middle region, and a plurality of posts
extending from the bottom surface. (Ans. 6.) The Examiner also found that
Groiso disclosed applying a force across the staple body twisting it. (Id.)
However, the Examiner found that Groiso did not disclose a method of
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providing posts that are fully cannulated and inserting guide pins into the
bone to drive the compression staple into the bone over two guide pins. (Id.)
The Examiner found that Oberlander disclosed a method of providing
a device having fully cannulated posts and inserting guide pins into the bone
to drive the device into the bone over the two guide pins. (Id. at 7.)
According to the Examiner, it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to have modified
Groiso‟s method by employing fully cannulated posts and inserting guide
pins into the bone to drive the compression staple into the bone over the two
guide pins, as disclosed by Oberlander, to allow for ease and precision in the
insertion process. (Id.)
Appellants contend that “Groiso is silent about a „compression staple,‟
much less about a „compression staple‟ with a „body being formed of a
material having a low enough yield point so that the staple may permanently
compress and undergo plastic deformation‟ or with a „plurality of cylindrical
fully cannulated posts….‟” (App. Br. 9-10.) Appellants assert that Groiso
instead teaches an elastic clip formed of two similar clip pieces placed face
to face, each having a substantially inverted U-shape with vertical legs that
are an integral, extension of the clip‟s elastic bridge. (Id. at 10.) Appellants
additionally assert that “Oberlander fails to address the deficiencies of
Groiso” because “Oberlander teaches two anchors connected by a suture,
and not the structural limitations of the claimed invention.” (Id. at 11.)
Appellants also assert that Groiso and Oberlander are silent about the
specific steps of attaching tissue to tissue, recited in claim 18. (Id.)
Analysis
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Appellants assert that Groiso is silent about a “compression staple”
that may undergo plastic deformation; however, Groiso disclosed that its
elastic clip functions to connect at least two bone parts together and
comprises “two staple-shaped members” having two leg portions and an
elastic bridge which is deformable by pressure. (Groiso Abstract and col. 6,
ll. 4-8.) Appellants have not referenced any definition of a compression
staple or other persuasive evidence that would distinguish Groiso‟s elastic
clip from such a compression staple. As for the clip comprising fully
cannulated posts, the Examiner properly relied on Oberlander for the
suggestion to modify Groiso‟s legs with this feature.
Appellants also assert that the cited prior art did not teach or suggest
the specific steps recited in claim 18. In the Reply Brief, Appellants clarify
this argument by stating that “[t]he issue is whether Oberlander teaches the
specific method steps of … driving a first guide pin in the tissue, inserting
one of the two posts over the first guide pin, aligning the other of the two
posts into a desired position, placing a second guide pin through the other
post, and then impacting the staple into tissue….” (Reply Br. 4.)
We disagree with Appellants. The issue is whether a person of
ordinary skill in the art at the time the invention was made would have found
these steps obvious over the combined prior art and in view of the ordinary
skill in the art. See In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). As
Appellants acknowledge (Reply Br. 4) the Examiner found that Oberlander
disclosed positioning the staple (suture) in the desired position and inserting
a guide pin (or K-wire) through the staple and driving the staple (suture),
and that Groiso taught the specific bone fracture steps of placing the first
post in the first bone and a second post in the second bone and deforming the
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body to cause compression (Ans. 10-11). The Examiner reasoned that in
view of these combined teachings, a skilled artisan would have found the
positioning and insertion steps recited in claim 18 obvious. We find this
reasoning to be sound and supported by the evidence and Appellants have
not established otherwise with persuasive evidence.
In the Reply Brief, Appellants assert that “there would be no
motivation for one skilled in the art to combine Groiso with Oberlander to
arrive at the method steps of claim 18” because Oberlander teaches away
from Groiso by discussing the limitations of non-suture anchor systems and
staple-like devices. (Reply Br. 5.) We are not persuaded by this argument
for the same reasons discussed regarding the rejection over Pratt and
Oberlander, i.e., the primary reference in the combination provides a
teaching of the usefulness of the non-suture anchor system/staple-like device
and the Examiner‟s combination modifies the primary reference with the
fully cannulated posts of Oberlander, which feature or modification neither
reference criticizes.
Accordingly, we affirm the rejection of independent claims 8 and 18
over Groiso and Oberlander. Appellants have not separately argued the
rejected dependent claims, therefore, these claims fall with their respective
independent claim. 37 C.F.R. § 41.37(c)(1)(vii).

III. The Rejection over Groiso, Oberlander, and Mohr
The Examiner‟s position is that the combination of Groiso and
Oberlander disclosed the claimed invention, except for teaching or
suggesting the body of the compression staple having an S-shaped
configuration, as recited by dependent claim 21. (Ans. 8.) However, the
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Examiner found that Mohr disclosed an S-shaped configuration “to allow for
twisting to place the device under pressure creating a compressive force.”
(Id.) According to the Examiner, it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to have
substituted the widening sections of Groiso in view of Oberlander with the
S-shaped configuration of Mohr because the two are mere functional
equivalents and such substitution would have achieved the same predicable
result of creating a compression force. (Id.)
Appellants contend that Groiso and Oberlander do not disclose all
structural limitation of independent claim 8. (App. Br. 12.) Appellants
assert that Mohr does not cure this deficiency of Groiso and Oberlander and
does not teach a compression staple having an S-shaped configuration. (Id.)
According to Appellants, Mohr taught a clasp formed of spring material that
is “Z-shaped in top plan.” (Id.)
Additionally, Appellants assert that a skilled artisan would not have
been motivated to combine Oberlander with Mohr or Groiso because (a)
Oberlander does not relate to staples, (b) Oberlander teaches away from
Mohr and Groiso by discussing the limitations of non-suture systems and
staple-like devices, (c) the Examiner relied on the teachings of the instant
application to provide motivation to modify the teaches of the cited prior art,
and (d) Oberlander‟s suture would not be suitable for internal osseous
fixation or for bone consolidation. (Id. at 13-14.)
Analysis
We remain unpersuaded by Appellants‟ assertion that Groiso and
Oberlander did not render the invention of claim 8 obvious for the reasons
previously set forth in relation to the rejection over Groiso and Oberlander.
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Further, we remain unpersuaded by Appellants‟ assertions that a skilled
artisan would not have been motivated to combine Oberlander with Groiso
(or Mohr) for the reasons previously discussed.
Regarding the shape of Mohr‟s clasp, we agree with Appellants that
the reference refers to the shape as a “Z-shape” rather than an “S-shape.”
However, when considering the entire disclosure of the prior art, including
the figure relied upon by the Examiner, as compared to depiction of an “S-
shape” in the instant Specification, we find that a skilled artisan would have
considered the shape of Mohr‟s clasp to resemble, if not render obvious, the
“S-shape” of the claimed invention. Figure 1 of Mohr and Figure 1 of the
instant Specification are reproduced below:

Mohr Figure 1 is a top plan view of a clasp in accordance with the present
invention shown in unstressed condition. (Mohr col. 1, ll. 42-43.)
Specification Figure 1 illustrates a compression staple comprising a central
portion having an S-shaped profile. (Spec. [00020].)
Accordingly, we affirm the rejection of claim 21 over Groiso,
Oberlander and Mohr.

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SUMMARY
We reverse the anticipation rejection and affirm each of the
obviousness rejections.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED
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