Ex Parte DiMatteo et al

Patent Trial and Appeal BoardApr 19, 2016

13241781 (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/241,781 09/23/2011 27777 7590 04/21/2016 JOSEPH F SHIRTZ JOHNSON & JOHNSON ONE JOHNSON & JOHNSON PLAZA NEW BRUNSWICK, NJ 08933-7003 FIRST NAMED INVENTOR Kristian DiMatteo 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. MIT5136USNP 2598 EXAMINER DAVID, SHAUN L ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 04/21/2016 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): jnjuspatent@corus.jnj.com lhowd@its.jnj.com pairjnj@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KRISTIAN DIMATTEO, GREGORY R. WHITTAKER, and NATHAN CAULDWELL Appeal2014-004589 Application 13/241,781 1 Technology Center 3700 Before STEFAN STAICOVICI, LEE L. STEPINA, and AMANDA F. WIEKER, Administrative Patent Judges. ST AI CO VICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Kristian DiMatteo et al. (Appellants) appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1-9.2 We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b). According to Appellants, the real party in interest is DePuy Mitek, LLC. Appeal Br. 2 (filed Nov. 15, 2013). 2 Claim 10 is withdrawn from consideration and claims 11 and 12 are cancelled. See id. Appeal2014-004589 Application 13/241,781 We REVERSE. SUMMARY OF DECISION INVENTION Appellants' invention relates to "suture anchors for attaching suture to bone." Spec. 1 i-f 2. Claim 1, the sole independent claim, is representative of the claimed invention and reads as follows: 1. A suture anchor comprising: an anchor body comprising a longitudinal axis and bone engaging external threads oriented for rotation about the longitudinal axis; and a suture attachment on the anchor body rotational with respect to the body about the longitudinal axis whereby to help reduce twisting of one or more sutures which may be attached to the suture attachment as the anchor body is threaded into a bone. REJECTIONS The following rejections are before us for review: I. The Examiner rejected claims 1-9 under 35 U.S.C. Â§ 112, second paragraph, as being indefinite. II. The Examiner rejected claims 1, 3, 4, and 6-9 under 35 U.S.C. Â§ 102(b) as anticipated by Morgan (US 2005/0267479 Al, pub. Dec. 1, 2005). III. The Examiner rejected claim 2 under 35 U.S.C. Â§ 103(a) as unpatentable over Morgan and Justin (US 2002/0173822 Al, pub. Nov. 21, 2002). 2 Appeal2014-004589 Application 13/241,781 IV. The Examiner rejected claim 5 under 35 U.S.C. Â§ 103(a) as unpatentable over Morgan and Martinek et al. (US 2010/0179592 Al, pub. July 15, 2010). ANALYSIS Rejection I The Examiner finds that the use of the term "whereby" in independent claim 1 renders the claim indefinite because it "is unclear what 'helps reduce twisting of one or more sutures.'" Final Act. 3 (transmitted Apr. 11, 2013). According to the Examiner, Appellants' use of the term "whereby" is grammatically improper and thus, it is not clear whether the condition of a "suture attachment on the anchor body rotational with respect to the body about the longitudinal axis," or some other condition, will generate the outcome "to help reduce twisting of one or more sutures which may be attached to the suture attachment as the anchor body is threaded into a bone." See Ans. 3-7 (transmitted Dec. 24, 2013). Appellants argue that the "word 'whereby' is also used in accordance with its dictionary definition of linking two concepts," namely, "[t]hat the rotational relationship between the attachment and the body is the means by which the twisting of the sutures is reduced as the body is rotated." Appeal. Br. 3--4. Although we appreciate the Examiner's position that Appellants' use of the term "whereby" is not ideal, and employing other terms would have been clearer (see Ans. 7), nonetheless, the test for definiteness under 3 5 U.S.C. Â§ 112, second paragraph, is whether those skilled in the art would understand what is claimed when the claim is read in light of the 3 Appeal2014-004589 Application 13/241,781 specification. Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F .2d 1565, 1576 (Fed. Cir. 1986). In this case, the Specification describes suture receiver 3 8 (suture attachment of claim 1) as "free to rotate within the axial bore 30 thus reducing twisting of the suture loops." Spec. 5 i-f 8. As there is no evidence of any other condition that would result in an outcome to help reduce twisting, we agree with Appellants that the "linking in claim 1 between the rotational suture attachment and the reduction in twisting would not leave one of ordinary skill confused." Reply Br. 2 (filed Feb. 24, 2014). Accordingly, for the foregoing reasons, we do not sustain the rejection of claims 1-9 under 35 U.S.C. Â§ 112, second paragraph, as being indefinite. Rejection II The Examiner finds that Morgan discloses a suture anchor (suture anchor 130)3 including an anchor body (body 12) having a longitudinal axis and bone engaging external threads oriented for rotation about the longitudinal axis; and a suture attachment (retainer 40) "on the anchor body rotational with respect to the body about the longitudinal axis whereby to help reduce twisting of one or more sutures which may be attached to the suture attachment as the anchor body is threaded into a bone." Final Act. 3- 5 (citing Morgan i-f 39, Figs. 12-14). Appellants argue that Morgan fails to teach a suture attachment rotational with respect to the suture anchor body, as called for by claim 1, but rather discloses a retainer that "is meant to be fixed within the body and not rotate." Appeal Br. 4. 3 Parentheticals refer to nomenclature in Morgan. 4 Appeal2014-004589 Application 13/241,781 In response, the Examiner finds that: Ans. 9-10. "[W]edging" a circular disc-shaped element (Morgan's retainer 40) in a circular orifice (inner wall of Morgan's bore 24) allows for the possibility that the disc-shaped element is capable of rotation within the circular orifice. This doesn't require that the retainer actually rotate, nor did the Examiner ever claim that Morgan discloses that the retainer rotates. But the retainer is clearly rotational with respect to the bore because the retainer is capable of rotating. We do not agree with the Examiner that Morgan's retainer 40 "is capable of rotating" because Morgan teaches that, "retainer 40 is wedged[4J within an inner wall of the bore 24," and that "retainer 40 contacts ... shoulder 52 to prevent further movement of the retainer." Morgan i-f 39. Morgan additionally discloses that the retainer can be "secured to the body ... in a suitable manner, such as by bonding." Id. ~,.1oreover, \'l.;e note that Morgan clearly indicates in other embodiments when portions of the device are moveable5 or rotatably6 mounted. See Morgan i-fi-136-38, Figs. 5A-5C, 9-11. Hence, there is no indication in Morgan that retainer 40 is capable of rotation, as the Examiner opines. "[A] prior art reference is relevant for all that it teaches to those of ordinary skill in the art." In re Fritch, 972 F .2d 4 An ordinary and customary meaning of the term "wedged" is "to fasten or tighten by driving in a wedge." Merriam Webster's Collegiate Dictionary (10th ed. 1997). 5 "[T]he loop 30 is movable between the retainer 40 and an inner surface of the bore 24." Morgan i-f 36, Figs. 5A-5C. 6 "[P]ulley 50 is rotatably mounted on the retainer 40." Id. i-f 38, Figs. 9-11. 5 Appeal2014-004589 Application 13/241,781 1260, 1264 (Fed. Cir. 1992). The Examiner provides no other evidence or reasoning that might be construed as support for the finding that Morgan's retainer 40 "is capable of rotating." We thus agree with Appellants that Morgan's suture attachment, i.e., retainer 40, "is meant to be fixed within the body and not rotate." Appeal Br. 4. Accordingly, Morgan fails to teach a suture attachment that is rotational with respect to the suture anchor body, as called for by claim 1. Therefore, for the foregoing reasons, we do not sustain the rejection of independent claim 1, and claims 3, 4, and 6-9 depending therefrom, under 35 U.S.C. Â§ 102(b) as anticipated by Morgan. Rejection III and IV The Examiner's use of the disclosures of Justin and Martinek does not remedy the deficiencies of Morgan as described supra. See Final Act. 5-7. Accordingly, for the same reasons as discussed above, we also do not sustain the rejections under 35 U.S.C. Â§ 103(a) of claim 2 as unpatentable over Morgan and Justin and of claim 5 as unpatentable over Morgan and Martinek. SUMMARY We REVERSE the Examiner's decision to reject claims 1-9. REVERSED 6