Ex Parte Cournoyer

Patent Trial and Appeal BoardAug 31, 2017

13242404 (P.T.A.B. Aug. 31, 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. 13/242,404 09/23/2011 John Cournoyer MIT5162USNP 5086 27777 7590 09/05/2017 JOSEPH F. SHIRTZ JOHNSON & JOHNSON ONE JOHNSON & JOHNSON PLAZA NEW BRUNSWICK, NJ 08933-7003 EXAMINER WEISS, JESSICA ART UNIT PAPER NUMBER 3776 NOTIFICATION DATE DELIVERY MODE 09/05/2017 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): j nju spatent @ coru s .j nj. com lhowd@its.jnj.com pair_jnj @ firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN COURNOYER1 Appeal 2016-005263 Application 13/242,404 Technology Center 3700 Before FRANCISCO C. PRATS, TAWEN CHANG, and JOHN E. SCHNEIDER, Administrative Patent Judges. SCHNEIDER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to method for placing an anchor in a glenoid rim which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Certain surgical procedures involving the glenoid cavity involve placing an anchor into the rim of the bone that defines the cavity. Spec. 12. Owing to the narrow shape of the rim proper placement of an anchor can be 1 Appellant identifies the Real Party in Interest as Depuy Mitek, LLC. Br. 2. Appeal 2016-005263 Application 13/242,404 difficult. Id. The Specification describes an instrument guide and method for using the guide which facilitates the placement of an anchor in the rim of the glenoid cavity. Spec. 3—9. Claims 8—13 are on appeal. Claim 8 is the sole independent claim and reads as follows: 8. A method of placing an anchor into a glenoid rim comprising the steps of: placing an elongated guide tube having an axial lumen and a distal opening into proximity of the glenoid rim; engaging a rim engaging member which is pivotably connected to a distal end of the guide tube over the glenoid rim; pivoting the guide tube to align the lumen with the glenoid rim; and passing an instrument down through the lumen to create a bone tunnel and implanting the anchor into the bone tunnel. The claims stand rejected as follows: Claims 8, 9, and 11—13 have been rejected under 35 U.S.C. § 103(a) as unpatentable over Lafosse2 in view of Choukroun.3 Claim 10 has been rejected under 35 U.S.C. § 103(a) as unpatentable over Lafosse in view of Choukroun and in further view of Alain.4 2 Lafosse et al., US 2008/0275453 Al, published Nov. 6, 2008 (“Lafosse”). 3 Choukroun, EP 0428452 Al, published May 22, 1991, (“Choukroun”). 4 Alain et al., FR 2901465, published Nov. 30, 2007 (“Alain”). 2 Appeal 2016-005263 Application 13/242,404 DISCUSSION CLAIMS 8, 9, AND 11-13 Issue The issue is whether a preponderance of evidence supports the Examiner’s conclusion that claims 8, 9, and 11—13 would have been obvious over Lafosse combined with Choukroun. The Examiner finds that Lafosse discloses a method of placing an anchor in the rim of the glenoid cavity comprising the steps of placing an elongated tube with an axial lumen and distal opening near the rim of the glenoid cavity; engaging the rim with a rim engaging member located at the distal end of the tube; passing a drill through the lumen to create a bone tunnel in the rim and implanting an anchor into the rim. Final Act. 2. The Examiner finds that Lafosse does not teach a rim engaging member that is pivotably connected to the guide tube nor does Lafosse teach aligning a mark in the guide tube with a mark on the rim engaging member. Final Act. 2-3. The Examiner finds that Choukroun teaches a drill guide apparatus for arthroscopic repair surgery comprising an elongated tube having an axial lumen and a distal opening and a rims engaging member pivotably connected to the distal end of the guide tube. The Examiner concludes that It would have been obvious to one having ordinary skill in the art at the time the invention was made to replace the device used in the method of Lafosse et al. with a pivotable drill guide device as taught by Choukroun in order to provide the method with an easily adjustable drill guide which would allow the surgeon to drill multiple holes more efficiently during a surgical procedure. 3 Appeal 2016-005263 Application 13/242,404 Final Act. 4. Appellant contends that there is no suggestion to combine the references and that the combination of the references would not lead to the claimed invention. Br. 3. Appellant also contends that Choukroun is not analogous art as it is not in the same field of endeavor as the claimed invention. Id. Appellant argues that the Examiner has not stated how or why one skilled in the art would combine the references. Br. 4. Appellant contends that the Examiner has engaged in impermissible hindsight in combining the references. Id. Principles of Law “In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie case of obviousness. Only if that burden is met, does the burden of coming forward with evidence or argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993). “[Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). When a prima facie case of obviousness has not been established, the rejection must be reversed. In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988). 4 Appeal 2016-005263 Application 13/242,404 Analysis We agree with Appellant that the Examiner has failed to establish a prima facie case of obviousness. We do not agree with the Examiner’s factual findings with respect to the teachings of Choukroun and find that the Examiner has not offered a sufficient explanation as to how and why one skilled in the art would combine the teachings of the references. The Examiner points to item 1” of Figure 3 of Choukroun (reproduced below) as showing a rim engaging member. Final Act. 3. Figure 3 of Choukroun shows an exploded view of one embodiment of the invention. We find nothing in Figure 3 which would lead one skilled in the art to construe item 1” as being a rim engaging member.5 We note that the specification of Choukroun refers to item 1” as “la tige rigide courbe” which 5 We note that the prosecution history does not contain an English translation of Choukroun or Alain references. The Examiner appears to rely on inferences taken from the drawings without referring to the accompanying text. 5 Appeal 2016-005263 Application 13/242,404 translates as “the curved rigid rod.”6 Choukroun col. 5,11. 27—28. Again this would not lead one skilled in the art to construe item 1” to be a rim engaging member. Similarly, the Examiner points to item 9 in Figure 1 of Choukroun (reproduced below) as teaching a hinge which connects the rim engaging member to the distal end of the guide tube. Ans. 3. Figure 1 of Choukroun shows an embodiment of the device described in Choukroun. Item 9 in Figure 1 above does not connect the guide tube, 5b, with the rim engaging member, which is not shown in Figure 1 of Choukroun. Rather, the hinge, 9, connects to support arms, one of which is connected to the guide tube. 6 Translation performed using Google Translate. 6 Appeal 2016-005263 Application 13/242,404 Moreover, the Examiner has not stated how or why one skilled in the art would use the hinge that connects two support arms to reconfigure the device in Lafosse to create a hinged rim engaging member. We agree with Appellant that the Examiner appears to have located a device with rotation and simply added the rotation element to Lafosse without “providing a logical trail of how one of skill in the art would do that.” Br. 4. The Examiner contends that “the teaching for the combination of Lafosse et al. and Choukroun is found in the knowledge generally available to one of ordinary skill in the art and in the references since both disclose devices and methods for tissue repair in a joint of the human body.” Ans. 5. This statement fails to provide a rational underpinning for the combination of the references especially in light of the factual inaccuracies noted above. Conclusion of Law We conclude that a preponderance of the evidence does not support the Examiner’s conclusion that claims 8, 9, and 11—13 would have been obvious over Lafosse combined with Choukroun. CLAIM 10 The rejection of claim 10 is based on the combination of Lafosse with Choukroun and Alain. The Examiner’s logic for combining Lafosse and Choukroun is the same as stated above, final Act. 4. Alain is cited only for the teaching of the use of an awl. Id. Lor the reasons stated above, we find that a preponderance of the evidence does not support the Examiner’s conclusion that claim 10 would have been obvious over Lafosse combined with Choukroun and Alain. 7 Appeal 2016-005263 Application 13/242,404 SUMMARY We reverse the rejections for claims 8—13 under 35 U.S.C. § 103(a) REVERSED 8