Ex Parte Contiliano et al

Patent Trial and Appeal Board

May 23, 2017

13494395 (P.T.A.B. May. 23, 2017)

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.
13/494,395 06/12/2012 Joseph H. Contiliano 400055-20013 7118
25570 7590 05/25/2017
Roberts Mlotkowski Safran Cole & Calderon, P.C.
7918 Jones Branch Drive
Suite 500
McLean, VA 22102
EXAMINER
OU, JING RUI
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
05/25/2017 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):
lgallaugher@rmsc2.com
docketing@rmsc2.com
dbeltran @ rmsc2. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH H. CONTILIANO, YUFU LI,
ZHIGANG LI, and NATHAN CAULDWELL1
Appeal 2016-002167
Application 13/494,395
Technology Center 3700
Before JOHN G. NEW, TAWEN CHANG, and JOHN E. SCHNEIDER,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
appellants state the real party-in-interest is DEPUY MITEK, INC. App.
Br. 1.
Appeal 2016-002167
Application 13/494,395
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1, 3—5, and 8—12 as unpatentable under
35 U.S.C. § 103(a) as being obvious over the combination of Boock et al.
(US 2004/0254580 Al, December 16, 2004) (“Boock”) and Harari et al. (US
6,387,041 Bl, May 14, 2002) (“Harari”).2
We have jurisdiction under 35 U.S.C. § 6(b)
We AFFIRM.
NATURE OF THE CFAIMED INVENTION
Appellants’ invention is directed to a suture anchor. Abstract.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A suture anchor installation kit, comprising:
at least one suture anchor having an elongate shank
comprising a proximal end and a distal end and defining a
longitudinal axis and comprising at least one engaging member
formed thereon; and a drive head comprising a proximal end, a
distal end mated to said elongate shank, an oval radial cross-
sectional geometry, at least one suture attachment element
formed in a portion of said drive head, and a single anti-rotational
member protruding from and integral therewith; and
2 The Examiner also rejected claims 1, 3—5, and 8—12 as unpatentable under
35 U.S.C. § 103(a) as being obvious over the combination of Boock and
Goss et al. (US 6,158,310, December 12, 2000) and under 35 U.S.C.
§ 103(a) as being obvious over the combination of Boock, Goss, and Nazre
et al. (US 5,573,548, November 12, 1996). Final Act. 3, 10. The Examiner
has withdrawn these rejections. Ans. 2.
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Application 13/494,395
a cylindrical driver tool having a distal end comprising a
socket formed therein having a shape adapted to receive and
engage said drive head of said suture anchor.
App. Br. 19.
ISSUES AND ANALYSIS
Except otherwise noted herein, we agree with, and adopt, the
Examiner’s findings and conclusion that the appealed claims are obvious
over the cited prior art references. We address the arguments raised by
Appellants on appeal below.
Issue
Appellants argue the Examiner erred by combining the references
because a person or ordinary skill in the art would have had no reason to
modify the suture anchors taught by Boock to have the arms taught by
Harari. App. Br. 15.
Analysis
The Examiner finds Boock teaches all of the limitations of claim 1,
except the limitations requiring: (1) an anti-rotational member protruding
from, and integral with, the drive head; and (2) that the driver tool comprises
at least one slotted key way in an outer diameter of the socket to mate with
the anti-rotational member in a key-in-keyway configuration.3 Final Act. 8.
3 We note that (2) is not necessarily an accurate characterization of the
relevant limitation of claim 1, which recites “socket formed therein having a
shape adapted to receive and engage said drive head of said suture anchor,”
the latter having a “a single anti-rotational member protruding from and
integral therewith.” However, this does not alter our analysis herein.
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Application 13/494,395
The Examiner finds Harari teaches an anchor comprising a drive head.
Final Act. 8 (citing Harari Fig. 12C; col. 3,11. 55—57). The Examiner finds
Harari’s teaching of a proximal/head portion of the anchor to which an arm
(172 of Fig. 12C) is attached in a manner similar to that shown in Fig. 9D,
can be considered as the drive head of the device. Id. The Examiner further
finds that arm 172 can be considered an anti-rotational member because it is
structurally and functionally equivalent to the anti-rotational member
disclosed in Appellants’ Specification, protruding from, and integral with,
the drive head. Id. The Examiner also finds the anti-rotational member has
a longitudinal cross-sectional geometry. Id. (citing Harari Fig. 12C).
The Examiner also finds Harari teaches a driver tool (e.g., tacker 120,
of Fig. 10), with a distal end comprising a socket (122 of Fig. 10) having a
shape adapted to receive and engage the drive head of the anchor and at least
one slotted key way in an outer diameter of the socket to mate with the anti-
rotational member in a key-in-key way configuration. Final Act. 8—9 (citing
Harari Fig. 10).
The Examiner concludes that it would have been obvious to one of
ordinary skill to modify the drive head of the anchor taught by Boock to
include a single anti-rotational member protruding from and integral with
the drive head and to modify the driver tool to include at least one slotted
keyway in an outer diameter of said socket to mate with said anti-rotational
member in a key-in-keyway configuration, as taught by Harari, to provide a
drive system which, when engaged with a socket, provides for a greater
engagement between the socket and the anchor. Final Act. 9 (citing Harari
col. 4,11. 29-32).
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Application 13/494,395
Appellants argue that the Examiner improperly combined the
references because whereas Boock is directed to a suture anchor, Harari is
directed to a surgical tack, which provides a sutureless method of attaching
tissue to bone. App. Br. 12—13. Appellants contend that a person of
ordinary skill in the art would not have looked to Harari for a reason or way
to modify the suture anchor of Boock. Id.
Appellants argue further that a person of ordinary skill in the art
would have recognized that the surgical tack taught by Harari is not intended
to be screwed (i.e., rotated via spiral threading) into a bone, but is instead
stapled or forced linearly into a bone. App. Br. 13 (citing Harari col. 10,11.
16-49). Appellants point to Figure 6, and the accompanying text of Harari,
in which, Appellants argue, the arm(s) 57 of the tack are held within slots 71
while the tacker 70 is pulled against the bone. Id. (citing Fig. 5). Appellants
therefore assert that the tacks of Harari are not subjected to rotation to
accomplish insertion into a bone and, as such, the arm 172 of Fig. 12C
cannot be considered an “anti-rotation member,” as required by claim 1. Id.
at 13-14.
Appellants dispute the Examiner’s finding that the arm 172 (Fig. 12C)
of Harari “is structurally and functionally equivalent to the anti-rotational
member as disclosed in the pending application.” Rather, Appellants
contend, Harari teaches that the arms of the tacks are intended to be quite
flexible and so, even if attached to the Boock anchor, could not act as anti­
rotation members. App. Br. 15 (citing Harari col. 9,11. 1—9). Therefore,
assert Appellants, they are neither structurally nor functionally equivalent to
the ARM recited in claim 1. Id.
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The Examiner responds that the “tack” taught by Hariri is an anchor,
as is the device taught by Boock. Ans. 2. The Examiner finds the teachings
of Harari are not limited to the tacks depicted in the drawings; rather, Harari
also teaches that: “[alternatively, other construction for bone piercing (sic)
and grasping tips (of the tack), as known in the art, may be used, for
example[,] screw-tipped inserts.” Id. at 2—3 (quoting Harari col. 8,11. 53—
55). The Examiner therefore finds the “tack” of Harari can also be a screw
anchor when its bone piercing tip is a screw-tipped insert. Id. at. 3.
The Examiner further finds that Harari teaches preferred embodiments
are sutureless tacks; however, the Examiner finds Hariri does not limit all
the embodiments to be sutureless or without a suture attached to it. Ans. 3.
Rather, the Examiner finds, Harari teaches that its device can have a suture
attached to it in a preferred embodiment of the invention. Id. (citing Harari
col. 11,11.33-35).
The Examiner next finds that a person of ordinary skill would realize
that the devices of Hariri with a screw-tipped insert can, or would, be
intended to be subjected to rotation to accomplished insertion into a bone,
and that therefore the arm 172 of Figure 12 can be considered as an “anti­
rotation member” as claimed. Ans. 3. The Examiner finds that Harari
teaches that the arms of the devices are not limited to being elastic or “super
elastic” (i.e., “quite flexible”); rather, the Examiner finds, Hariri teaches that
the arms can be plastic (inelastic). Id. (citing Harari col. 9,11. 1—9).
The Examiner points to paragraph [0025] of Appellants’ Specification
which discloses that the anti-rotation member is to provide for improved
transfer of the torsion to the shank. Ans. 3^4. The Examiner finds the arms
of Hariri’s devices are also integrally formed on the head of a tack/anchor
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Application 13/494,395
and are intended to be inserted into a slot in the drive shaft of a drive system
or tacker. Id. at 4 (citing Harari Figs. 6, 7). Therefore, the Examiner finds,
Hariri teaches that the arms of its devices (e.g., 172 of Fig. 12C) are fully
capable to provide for improved transfer of the torsion to the shaft of the
tack/anchor. Id. Therefore, the Examiner finds, the arms of Hariri’s devices
are capable of acting as anti-rotation members. Id.
In their Reply Brief, Appellants contend the Examiner erred in
equating the teachings of Boock and Harari, because the former teaches a
suture anchor whereas the latter teaches a sutureless method of attaching
tissue to bone. Reply Br. 3 (citing Harari col. 2,11. 20-36). Appellants
maintain the actual purpose of Harari is to avoid the necessity of suturing
and not to enhance it. Id. Appellants dispute the Examiner’s interpretation
of the teachings of Harari in pointing to Harari’s disclosure that: “In a
preferred embodiment of the invention, such slings are provided pre-sutured.
In a preferred embodiment of the invention, the sutures are in the form of a
loop (through which shaft 106 is preferably passed).” Id. at 4 (quoting
Harari col. 11,11. 32—38). Appellants argue that the suture anchor specified
in claim 1, in contrast, requires “at least one suture attachment element
formed in a portion of said drive head.” Id. Appellants assert that no such
element is disclosed in the devices taught by Harari. Id.
Appellants also assert that Harari, in its teaching of screw-tipped
devices, is silent regarding any device which might be suitable for screwing
such a tack into bone. Reply Br. 5.
We are not persuaded by Appellants’ arguments. As an initial matter,
Appellants argue the Examiner improperly combined the references because
Boock teaches a suture anchor and Harari teaches a “surgical tack.”
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Application 13/494,395
Appellants are apparently arguing that the Examiner improperly combined
the references because they are non-analogous art. We disagree.
Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). We find that both Boock
and Harari are in the same field of endeavor, viz., surgical devices designed
to provide an anchor in bone tissue. See, e.g., Boock 12; Harari col. 2,11.
22—27. Furthermore, we find that, for the same reason, the inventions of
Boock and Harari are pertinent to that same problem. We consequently find
that the Examiner did not err in combining the references.
We agree with the Examiner that both Boock and Harari teach
elements of their respective inventions can be screwed into bone.
Appellants argue that Harari is silent with respect to how screw-tipped
devices may be screwed into bone; however, Appellants may not attack
references individually when the Examiner relies upon a combination of
references in concluding that an invention is prima facie obvious. In re
Keller, 642 F.2d 413, 426 (C.C.P.A. 1981). Boock is explicitly directed to
bone anchors that can be screwed into bone. See, e.g., Boock Fig. 1, || 22—
23.
Appellants further argue that the “elastic” arms of the head of Harari’s
device are unsuitable to function as anti-rotation devices. However, Harari
does not require that the arms be elastic, it merely cites that as being a
particular preferred embodiment. Moreover, Harari explicitly depicts the
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arm fitting into a slot in the driver tool in a manner that we find a person of
ordinary skill would understand could serve, even if deformable (i.e.,
plastic), to act as an anti-rotational member. See Harari, Figure 6 (parts 57
and 71); see also col. 10,11. 48-49 (“A slot 71 is preferably formed in head
76, to hold arms 57 for the tack configuration shown”). We agree with the
Examiner that Figure 6 of Harari, and its accompanying text, would lead a
person of ordinary skill to understand implicitly that the arm-and-slot fit of
parts 57 and 71 would enable the arm 57 to act as an anti-rotational member.
Nor are we persuaded by Appellants’ argument that Harari teaches
only a sutureless tack and is therefore not combinable with the teachings of
Boock. See Reply Br. 3^4. As an initial matter: “[combining the teachings
of references does not involve an ability to combine their specific
structures.” In re Nievelt, 482 F.2d 965, 968 (C.C.P.A. 1973). Boock
expressly teaches: “The drive head [of the suture anchor] has a substantially
oval shape and includes at least one suture attachment member formed in a
portion of the drive head.” Boock Abstr. Harari is not relied upon by the
Examiner as teaching this limitation of the claim. Nevertheless, Harari also
expressly teaches: “Optionally, instead of sling 40 being transfixed by shaft
104, sling 40 may be threaded through apertures 105 and/or sutured thereto.
Preferably, any knot in the suture is placed between head 106 and the bone.”
Harari col. 11,11. 28—31. We consequently agree with the Examiner that
Harari teaches a suture attachment to the apertures 105 in the anchor head.
Finally, Appellants argue that Harari is silent with respect to any
device which might be suitable for screwing such a tack into bone. See
Reply Br. 5. However, Boock expressly teaches such a driver for screwing a
threaded anchor into bone:
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Application 13/494,395
The cylindrical driver tool has a distal end with a socket formed
therein having an oval shape adapted to receive and engage the
drive head of the suture anchor. In an exemplary embodiment,
the driver tool has an outer diameter that is equal to or less than
an outer-most diameter of the suture anchor.
Boock 19; see also Figs. 2A, 2B.
We consequently adopt the Examiner’s findings and conclusions and
we affirm the Examiner’s rejection of claims 1, 3—5 and 8—12.
DECISION
The Examiner’s rejection of claims 1, 3—5 and 8—12 as unpatentable
under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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