Ex Parte Chudik

Patent Trial and Appeal Board

Apr 7, 2016

11529185 (P.T.A.B. Apr. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111529, 185 0912912006
7590 04/07/2016
Gregory B. Beggs
Law Offices of Gregory B. Beggs
928 Warren A venue
Downers Grove, IL 60515
FIRST NAMED INVENTOR
Steven C. Chudik
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5181-lOOOGP(XV) 7948
EXAMINER
PELLEGRINO, BRIAN E
ART UNIT PAPER NUMBER
3738
MAILDATE DELIVERY MODE
04/07/2016 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 STEVEN C. CHUDIK
Appeal2014-001519
Application 11/529,185
Technology Center 3700
Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant (Steven C. Chudik) appeals under 35 U.S.C. § 134
from the Examiner's rejections of claims 1-3 and 7-10. 1 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 "Claims 4---6 are withdrawn from consideration." (Appeal Br. 1.)
Appeal2014-001519
Application 11/529,185
STATEMENT OF THE CASE
The Appellant's invention "relates to methods, instrumentation, and
implants for orthopaedic surgery and, more specifically, to rotator cuff
sparing procedures and associated devices for shoulder replacement
surgery." (Spec. i12.)
Illustrative Claim2
1. A suture pin assembly comprising a suture portion and a tip
portion wherein
said tip portion includes a shaft, a trailing end, a sharp
leading end and a diameter adjacent the leading end that is larger
than said pin shaft and said suture portion,
said tip portion being configured to be disposed in a first
surface of a shoulder, a proximal humerus and rotator cuff and a
second surface of the shoulder, and
said suture portion being joined to the trailing end of the
shaft opposite the sharp leading end.
Anspach
Hayhurst
May
Chu
References
us 5,102,421
us 5,417,691
US 6,884,249 B2
US 7,364,541 B2
Rejections
Apr. 7, 1992
May 23, 1995
Apr. 26, 2005
Apr. 29, 2008
I. The Examiner rejects claims 1-3 and 10 under 35 U.S.C.
§ 102(b) as anticipated by Anspach. (Non-Final Action 5.)
II. The Examiner rejects claim 7 under 35 U.S.C. § 102(e) as
anticipated by May. (Id. at 6.)
2 This illustrative claim is quoted from the Claims Appendix ("Claims
App.") set forth on pages 29-30 of the Appeal Brief.
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Application 11/529,185
Ill. The Examiner rejects claims 7-9 under 35 U.S.C. § 102(b) as
anticipated by Hayhurst. (Id.)
IV. The Examiner rejects claims 8 and 9 under 35 U.S.C. § 103(a)
as unpatentable over May in view of Chu. (Id. at 7.)
ANALYSIS
Rejection I
Independent claim 1 is directed to "[a] suture pin assembly"
comprising a "tip portion" that is "configured to be disposed in a first
surface of a shoulder, a proximal humerus and rotator cuff and a second
surface of the shoulder." (Claims App.) The Examiner finds that Anspach
discloses a suture pin assembly comprising a tip portion (rivet 2) that is
configured in this manner. (See Non-Final Action 5-6.)
The Appellant advances arguments premised upon Anspach's rivet 2
being "intended and constructed to be buried and fastened in a bone, and
never through a bone and extending out of a second shoulder surface."
(Appeal Br. 17.) To support these arguments, the Appellant directs our
attention to statements in Anspach discussing how rivet 2 is called a suture
"anchor," how rivet 2 is driven into a bone to prevent it from being
withdrawn, and how rivet 2 is buried so that only the suture protrudes. (Id.)
The Appellant asserts that Anspach's rivet 2 "could not anchor a suture in
the bone if it were pushed out of the bone" and "[t]here isn't the slightest
suggestion in Anspach that his anchor should go beyond this point." (Id.)
We are not persuaded by these arguments because independent
claim 1 is directed to an apparatus and a claim directed to an apparatus must
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Application 11/529,185
be distinguished from the prior art in terms of structure. 3 We agree, at least
arguendo, with the Appellant's position that Anspach does not show or
suggest using its rivet in the non-anchoring manner recited in independent
claim 1. However, the problem with the Appellant's position is that the lack
of such disclosure or suggestion in Anspach is not dispositive as to whether
Anspach's rivet 2 is configured in the claimed manner. 4
The Appellant contends that a "configured for" limitation "describes a
structural element having a particular shape" of a "structural element."
(Reply Br. 5.) However, the Appellant does not adequately explain why
Anspach's rivet 2 does not possess this "particular shape." For example, the
Appellant does not point with particularity to flaws in the Examiner's
finding that Anspach's rivet 2 is configured in the claimed manner by virtue
of it having "a tip portion including a shaft, a trailing end, a sharp leading
end and a diameter adjacent the leading end that is larger than the pin shaft
and the suture portion." (Answer 2.)
3 See Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468
(Fed. Cir. 1990) ("Claim 1 of [the challenged patent] is an apparatus claim,
and apparatus claims cover what a device is, not what a device does").
4 See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In Schreiber,
the Appellant argued that its claim called for a dispensing top that could
dispense popcorn from an open-ended popcorn container, and the prior art
reference did not disclose that its dispensing top could do so. Id. at 14 77.
The Federal Circuit held that "[a]lthough Schreiber is correct that [the prior
art reference did] not address the use of the disclosed structure to dispense
popcorn," the absence of such disclosure "does not defeat" a finding of
anticipation. Id. See also Superior Industries v. Masaba, 553 Fed. Appx.
986, 991 (Fed. Cir. 2014) (Rader, J., concurring) ("[I]t is usually improper to
construe non-functional claim terms in a system claims in a way that makes
infringement or validity tum on their function"). This case involved claims
reciting "configured to" limitations.
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Accordingly, the Appellant does not establish the Examiner errs in
determining that Anspach anticipates the suture pin assembly recited in
independent claim 1. Claims 2 and 3, which depend from independent
claim 1 (see Claims App.), are not argued separately (see Appeal Br. 19);
and independent claim 10 is argued together with independent claim 1 (see
id. at 18). Thus, we sustain the Examiner's rejection of claims 1-3 and 10
under 35 U.S.C. § 102(b) as anticipated by Anspach.
Rejection II
Independent claim 7 is directed to "[a] guide for inserting and
advancing a pin and a suture attached to the pin" wherein "a tip portion"
contains "a cannular passageway" having "a diameter slightly larger than
that of the pin and attached suture." (Claims App.) The Examiner finds that
May discloses a guide comprising such a tip portion (needle 122). (See
Non-Final Action 6.)
The Appellant argues that iviay' s guide "does not meet the structural
diameter limitation of the tool" in independent claim 7. (Appeal Br. 21.) To
support this argument, the Appellant directs us to a drawing (i.e., Figure 7)
showing that May's suture 110 is connected to May's pin 90 through a
slot 126 in needle 122. (Id. at 22.) According to the Appellant, May's
suture 110 "has nothing to do with the diameter of the passageway" and
"suture 110 doesn't engage or extend through it anywhere." (Id.) The
Appellant contends that "[f]or the Examiner to suggest that [May's suture
110] is disposed in a cannular passageway in a manner which would affect
the passageway's dimensions is, in the [A]ppellant's view, an erroneous
inference." (Reply Br. 7.)
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Application 11/529,185
We are not persuaded by these arguments because they are not
commensurate with the scope of independent claim 7. Independent claim 7
does not require a suture to engage, extend through, be disposed in, or
otherwise have anything to do with the cannular passageway of the tip
portion. (See Claims App.) Independent claim 7 recites that "a suture [is]
attached to [a] pin" and that the diameter of the tip portion's passageway is
"slightly larger" than that of the pin and the attached suture. (Id.) May
discloses a suture 110 that is attached to a pin 90 (see May col. 4, 11. 16-1 7);
and May shows that the diameter of the passageway of needle 122 is larger
than that of pin 90 and the attached suture 110 (see id. Fig. 7). And, as
acknowledged by the Appellant (see Reply Br. 7), May's anchor 90 is
ejected from needle 122 (see May col. 4, lines 45--46), which implicates that
the diameter of its passageway is larger than that of anchor 90 (see
Answer 4). 5
Independent claim 7 also requires a leading edge to be "configured for
penetrating engagement into the greater tuberosity of the proximal
humerus." (Claims App.) The Appellant argues that May's insert tool 120
"is illustrated as repairing the soft-tissue of the meniscus" and this reference
"has nothing to do with repairing a joint with a tool that penetrates a bone."
(Appeal Br. 24.) As discussed above in our analysis of independent claim 1,
the illustrated and described use of a prior art tool is not dispositive as to
5 The Examiner interprets independent claim 7 as being "only directed to the
guide," because the pin and attached suture are "just intended use
limitations." (Answer 5.) As the Appellant's arguments about the prior art
suture are unpersuasive, we need not, and do not, decide whether the
Examiner correctly characterizes the claim language in this regard.
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whether it is configured in the claimed manner. Here, the leading edge of
May's illustrated cannulated needle 122 has a structure similar to the leading
edge 150 of the Appellant's illustrated tip portion 148. (Compare May
Fig. 7 and Spec. Fig. 28a.) The Appellant does not specifically explain what
structural features are lacking in the leading edge of May's cannulated
needle 122 that would preclude it from being configured as required by
independent claim 1. 6
Accordingly, the Appellant does not establish the Examiner errs in
determining that May anticipates the guide recited in independent claim 7.
Thus, we sustain the Examiner's rejection of claim 7 under 35 U.S.C.
§ 102( e) as anticipated by May.
Rejection III
As indicated above, independent claim 7 requires a leading edge to be
"configured for penetrating engagement into the greater tuberosity of the
proximal humerus." (Claims App.) The Examiner finds that Hayhurst
discloses a guide wherein the leading edge of its tip portion (needle 14) is
configured in this manner. (See Non-Final Action 7.)
The Appellant argues that Hayhurst "does not contain any disclosure"
of its tool "beginning to enter a bone" and "[t]here is no suggestion in the
patent that it should, or might." (Appeal Br. 26-27.) However, as discussed
6 The Examiner maintains that this "configured for" limitation can be
interpreted as requiring either the leading edge of the guide' s tip portion or
the leading edge of the pin to be configured for penetrating engagement with
the greater tuberosity of the proximal humerus. (See Answer 6.) As the
Appellant's arguments regarding the configuration of the leading edges of
the prior art tip portions are unpersuasive, we need not, and do not, address
whether this limitation can also and instead pertain to the pin's leading edge.
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above, this lack of disclosure and/or suggestion is not dispositive as to
whether the leading edge of Hayhurst's tip portion is configured in the
claimed manner.
The Appellant also argues that "[t]here is no configuration of any
form of the Hayhurst tool for penetrating a bone whatsoever." (Appeal Br.
26.) However, as implicated by the Examiner (see Answer 7) and
acknowledged by the Appellant (see Appeal Br. 27), Hayhurst does show
that its needle 14 is configured to pierce cartilage (see Hayhurst Fig. 3). The
Appellant does not identify what structural features are lacking in a
cartilage-piercing leading edge that would prevent it from penetratingly
engaging a bone. Specifically, for example, we see no structure in
Hayhurst's Figure 3 that would prevent the leading edge 26 of tip portion 26
from penetrating engagement with the underlying bone upon application of a
downward force.
Accordingly, the Appellant does not establish the Examiner errs in
determining that Hayhurst anticipates the guide recited in independent
claim 7. Claims 8 and 9, which depend from independent claim 7 (see
Claims App.), are not argued separately (see Appeal Br. 25-26). Thus, we
sustain the Examiner's rejection of claims 7-9 under 35 U.S.C. § 102(b) as
anticipated by Hayhurst.
Rejection IV
Claims 8 and 9 depend from independent claim 7 and the Examiner
combines the teachings of May and Chu in this rejection. (See Non-Final
Action 7-8.) The Appellant argues only that Chu's disclosure does not have
"any bearing" on May's "basic deficiencies." (Appeal Br. 28.) However, as
discussed above, the Appellant does not establish that May is deficient in the
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anticipation of independent claim 7. Thus, we sustain the Examiner's
rejection of claims 8 and 9 under 35 U.S.C. § 103(a) as unpatentable over
May in view of Chu.
DECISION
We AFFIRM the Examiner's rejections of claims 1-3 and 7-10.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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