Ex Parte Bouduban et al

Patent Trials and Appeals Board

Mar 14, 2019

14328362 - (D) (P.T.A.B. Mar. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/328,362 07/10/2014 Nicolas Bouduban
30623 7590 03/18/2019
Mintz Levin/Boston Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
www .uspto.gov
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03/18/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICOLAS BOUDUBAN, PA TRICK BURKI,
PHILIPPE GEDET, and BEAT LECHMANN
Appeal2018-002237
Application 14/328,362 1
Technology Center 3700
Before DANIEL S. SONG, STEFAN STAICOVICI, and
BRETT C. MARTIN, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision in the Final Office Action ( dated Aug. 25, 2016, hereinafter "Final
Act.") rejecting claims 1-12 and 21-25. 2 We have jurisdiction over this
appeal under 35 U.S.C. § 6(b ).
1 Medos International Sarl is identified as the real party in interest in
Appellants' Appeal Brief (filed Jan. 25, 2017, hereinafter "Appeal Br.").
Appeal Br. 1.
2 Claims 13-20 and 26 are canceled. See Appeal Br. B, C (Appendix A)
Appeal2018-002237
Application 14/328,362
We REVERSE.
SUMMARY OF DECISION
INVENTION
Appellants' invention relates to "devices for positioning and securing
ligament grafts." Spec. para. 2.
Claims 1 and 7 are independent. Claim 1 is illustrative of the claimed
invention and reads as follows:
1. An implant for securing a ligament graft, comprising:
a body having a conical outer profile extending along a
longitudinal axis thereof between a proximal end of the body
and a tapered distal end of the body, wherein the body includes:
a first set of opposed slots formed in an outer
surface thereof that extend along the longitudinal axis
and a transverse slot formed in the proximal end that
extends between the first set of opposed slots;
a bore formed through the body that is transverse
to the longitudinal axis and angularly offset from the first
set of opposed slots; and
a second set of opposed slots formed in the outer
surface thereof that extend proximally from the bore and
terminate at the proximal end of the body.
REJECTIONS
I. The Examiner rejects claims 1--4, 6-11, and 21-25 3 under 35 U.S.C.
§ 103(a) as being unpatentable over Semple et al. (GB 1 465 744, pub.
3 As claim 26 has been canceled, we view the Examiner's inclusion of claim
26 in this rejection as a typographical error. See Appeal Br. C (Appendix
A).
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Application 14/328,362
Mar. 2, 1977, hereinafter "Semple") and Caborn et al. (US
2006/0095130 Al, pub. May 4, 2006, hereinafter "Caborn").
II. The Examiner rejects claim 5 under 35 U.S.C. § I03(a) as being
unpatentable over Semple, Caborn, and Helevirta et al. (US
2010/0217266 Al, pub. Aug. 26, 2010, hereinafter "Helevirta").
III. The Examiner rejects claim 12 under 35 U.S.C. § I03(a) as being
unpatentable over Semple, Caborn, and Deruntz et al. (US
2010/0114323 Al, pub. May 6, 2010, hereinafter "Deruntz").
ANALYSIS
Rejection I
The Examiner finds that Semple discloses a ligament graft securing
implant including, inter alia, a conical outer profile 3, but fails to disclose "a
first set of opposed slots," "a transverse slot," "a bore," and "a second set of
opposed slots," as called for by independent claim 1. Final Act. 3--4 ( citing
Semple Figs. 1, 2). However, the Examiner finds that Caborn discloses a
ligament graft securing implant having a first set of opposed slots 4, a
transverse slot formed between slots 4, a transverse bore 6, and a second set
of opposed slots 8. Id. at 4--5 (citing Caborn, Fig. 2, paras. 15, 17, 19).
Thus, the Examiner concludes that:
It would be obvious to one of ordinary skill in the art, prior to
the time of the invention, to modify Semple to incorporate the
teachings of Caborn by substituting elements 8 and 6 with a set
of opposed slots formed in an outer surface thereof that extend
along the longitudinal axis and a transverse slot formed in the
proximal end that extends between the first set of opposed
slots to allow the ligament to be directly attached to the anchor
instead of a smaller diameter cord attached to the ligament as
taught by Caborn.
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Application 14/328,362
Id. at 4. The Examiner further determines that:
It would be obvious to one of ordinary skill in the art, prior to
the time of the invention, to [further] modify Semple as
modified to incorporate the teachings of Caborn by adding a
bore formed through the body that is transverse to the
longitudinal axis and angularly offset from the first set of
opposed and a second set of opposed slots formed in the outer
surface thereof that extend from first and second bore holes in
the outer surface to the proximal end of the body for attachment
of a suture that will allow a user to manipulate a position of the
device.
Id. at 5.
Appellants argue that the Examiner's modification of Semple' s
conical plug 3, according to Caborn, "is a complete re-design of Semple' s
invention" as it "require[ s] removing material from multiple locations on the
plug's exterior, thereby rendering the plug 3 unsuitable as an implant."
Appeal Br. 5. Specifically, Appellants assert that in the Examiner's
modification of Semple's plug 3, according to Caborn requires
( 1) removing material from the exterior of the plug 3 to
replace Semple's axial bore 6 and locking pin 8 with Caborn's
radial groove 4, (2) removing additional material from the
plug's exterior so the plug 3 has Caborn's through hole 6
therein, and (3) removing even more material from the plug's
exterior so the plug 3 has Caborn's longitudinal slots 8 formed
in its outer surface.
Id. at 6 (emphasis omitted). As such, Appellants assert that in the
Examiner's modification Semple' s plug 3 "would result in a plug with less
surface area available for bone contact." Id. According to Appellants, as
Semple' s plug 3 is required to provide intimate contact between plug and
bone, a skilled artisan "would not have removed all this material from the
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Application 14/328,362
plug 3 and simply hope that enough material remains for the intimate contact
with bone." Id. at 7. Appellants explain that "[t]he plug's ability to promote
the ingrowth of calcified bone and to be firmly held in bone as provided by
Semple would also be degraded since so much material must be removed
from the plug's outer surface under the Examiner's proposed modifications."
Id.
In response, the Examiner takes the position that "Semple fails to
discuss any criticality related to a completely uniform exterior surface."
Examiner Answer 6 (dated Nov. 27, 2017, hereinafter "Ans."). According
to the Examiner, Semple discloses that "intimate contact is created through
tension placed on the plug by the connected artificial fibrous connective
tissue" that "causes a 'wedge' effect ... between the plug's exterior surface
and surrounding bone." Id (citing Semple, p. 1, 11. 53-55).
It is well settled that if the proposed modification would render the
prior art invention being modified unsatisfactory for its intended purpose,
then there is no suggestion or motivation to make the proposed modification.
In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). Here, Semple discloses
that "[t]he reason for tapering the plug [3] is to provide intimate contact of
plug and bone" that "will promote the ingrowth of calcified bone rather than
soft tissue by restricting or stopping movement of the plug relative to the
surrounding bone." Semple, p. 1, 11. 53---60. Semple further discloses that
because plug 3 is porous, "in time, bone tissue grows into and through the
voids in the plug and this provides a very secure attachment for the tendon
prosthesis to the bone." Id., p. 1, 11. 66-70 (emphasis added).
We appreciate that Semple's plug 3, as modified according to Caborn,
will have a conical outer profile to cause a "wedge" effect, as noted supra.
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However, the resulting strength of the securement (attachment) is also
determined by the amount of material on the conical outer surface of plug 3
that contacts bone. More specifically, the resulting strength is the result of
the bone tissue growing into and through the voids of plug 3, which Semple
discloses to be 50% of the plug's apparent volume. See Semple, p. 2, 11. 71-
74. Hence, we agree with Appellants that modifying Semple's plug 3,
according to Caborn, would result in "less material [ and less voids on the
conical outer surface] that could contact bone," and, thus, "[t]he plug's
ability to promote the ingrowth of calcified bone and to be firmly held in
bone ... would also be degraded." Appeal Br. 7.
In other words, Appellants are correct that removal of material from
Semple's plug 3, according to Caborn, "would incontrovertibly reduce the
plug's intimate contact with bone and effect a change contrary to Semple' s
teachings" of "providing a sufficiently strong securing means between the
fibrous connective tissue and the bone." Reply Brief 3 (filed Dec. 26, 2017,
hereinafter "Reply Br."); Semple, p. 1, 11. 27-29, 68---69 ("provides a very
secure attachment for the tendon prosthesis to the bone").
Furthermore, we do not agree with the Examiner's position that a
skilled artisan would readily "understand that the surrounding bone would
grow into a graft seated in the plugs['] groove" because such a position
requires speculation on the Examiner's part. Ans. 6. Just because bone
tissue grows into and through the voids of plug 3, this does not mean that
bone tissue will also grow into and through a ligament graft, as the Examiner
asserts, and to the extent of forming a strong, secure connection. Moreover,
we agree with Appellants that Semple explicitly "contrasts ingrowth into
bone 'rather than soft tissue'[, such as a ligament graft,] as allowing the plug
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Application 14/328,362
[3] to be secured to the bone" by a strong, secure connection (attachment).
Reply Br. 4 (citing Semple, p. 1, 11. 23-29, 45-75).
In conclusion, the Examiner's modification of Semple' s plug 3,
according to Caborn, would render plug 3 unsatisfactory for its intended
purpose because it would reduce "intimate contact" with the bone and, thus,
affects the strength between connective tissue and bone, and, moreover,
because Semple specifically "promote[ s] the ingrowth of calcified bone
rather than soft tissue." See Semple, p. 1, 11. 56-58.
Accordingly, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 103(a) of claims 1--4, 6-11, and 21-25 as unpatentable
over Semple and Caborn.
Rejections II and III
The Examiner's use of the Helevirta and Deruntz disclosures does not
remedy the deficiency of the Semple and Caborn combination discussed
supra. See Final Act. 8.
Hence, for the foregoing reasons, we also do not sustain the rejections
under 35 U.S.C. § 103(a) of claim 5 as unpatentable over Semple, Caborn,
and Helevirta and of claim 12 as unpatentable over Semple, Caborn, and
Deruntz.
SUMMARY
The Examiner's decision to reject claims 1-12 and 21-25 under
35 U.S.C. § 103(a) is reversed.
REVERSED
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