Ex Parte Dreyfuss et al

Patent Trial and Appeal BoardApr 4, 2013

11097180 (P.T.A.B. Apr. 4, 2013)

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. 11/097,180 04/04/2005 Peter J. Dreyfuss A8130.0130/P130 6041 24998 7590 04/05/2013 DICKSTEIN SHAPIRO LLP 1825 EYE STREET NW Washington, DC 20006-5403 EXAMINER DORNBUSCH, DIANNE ART UNIT PAPER NUMBER 3773 MAIL DATE DELIVERY MODE 04/05/2013 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 PETER J. DREYFUSS and WILLIAM C. BENAVITZ __________ Appeal 2011-001959 Application 11/097,180 Technology Center 3700 __________ Before ERIC GRIMES, MELANIE L. McCOLLUM, and ERICA A. FRANKLIN, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a suture anchor. The Examiner has rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE The Specification discloses “a suture anchor which securely affixes sutures to the anchor without subjecting the sutures to abrasion” (Spec. 3, ¶ 0011). The suture anchor can include four apertures at the distal end, Appeal 2011-001959 Application 11/097,180 2 “provided as two pairs with a corresponding groove formed between the apertures of each pair” (id. at 3, ¶ 0012). When suture strands are inserted through each pair of apertures, “the portion of the sutures seated in the grooves are thereby protected from abrasion during installation of the suture anchor” (id. at 3-4, ¶ 0013). Claims 1-3, 8-11, 14, and 17 are on appeal. Claim 1 is representative: 1. A suture anchor comprising: a threaded anchor body having a proximal end and a blunt distal end; a central bore extending from an opening at the proximal end of the anchor body through a portion of the length thereof; four apertures located at a most distal surface of the blunt distal end of the anchor body and in communication with the central bore, wherein the four apertures are arranged in two pairs, each pair of apertures defining the ends of a respective groove extending between the pair of apertures at the distal end of the anchor body, the grooves being parallel and recessed from the most distal surface of the distal end, the grooves defining a ridge extending completely therebetween; a first suture passing through a first pair of the four apertures, and through a first one of the grooves; and a second suture passing through a second pair of the four apertures, and through a second one of the grooves; wherein the first and second suture are separated at the distal end of the anchor body by the ridge. The Examiner has rejected all of the claims on appeal under 35 U.S.C. § 103(a) as obvious in view of Martins,1 Dreyfuss,2 and Niederer.3 The Examiner finds that Martins and Dreyfuss would have made obvious a suture anchor meeting all of the limitations of claim 1 except for paired 1 Martins et al., US 5,306,290, Apr. 26, 1994. 2 Dreyfuss, US 2003/0065361 A1, Apr. 3, 2003. 3 Niederer, US 1,610,309, Dec. 14, 1926. Appeal 2011-001959 Application 11/097,180 3 apertures defining the ends of a groove between them, the grooves being separated by a ridge (Answer 3-4). The Examiner finds that Niederer discloses an anchor body having “four apertures (8) … arranged in two pairs,” where the apertures of each pair define the ends of a groove and the two grooves define a ridge between them (id. at 5). The Examiner concludes that it would have been obvious to provide the suture anchor suggested by Martins and Dreyfuss “with the grooves and a ridge in view of the teachings of Niederer, in order to prevent the suture from protruding from the anchor body which would avoid any tissue damage when placing the anchor” (id.). Appellants argue that combining Martins and Niederer as proposed by the Examiner “would necessitate a substantial reconstruction and redesign of the elements shown in Martins (i.e., elimination of the recessed area of Martins, to allow the ridges defined by grooves which extend between pair of apertures at a distal end of an anchor body)” (Appeal Br. 11). We agree with Appellants that the Examiner has not provided a persuasive reason for including the grooves and ridge required by claim 1 in Martins’ device (as modified by Dreyfuss). Martins discloses a “suture retaining device which is in the form of a conical washer or button element” (Martins, col. 2, ll. 59-61). Figures 2 and 3 of Martins are shown below: Appeal 2011-001959 Application 11/097,180 4 Figures 2 and 3 show a cross-sectional view and a top view, respectively, of Martins’ button device (id. at col. 3, ll. 12-16). Martins discloses that button 5 has “an internal chamber 25 which extends downward from top planar surface 15” (id. at col. 3, ll. 61-63). “Internal chamber 25 terminates in a floor 30. Chamber 25 is sized so that it can accommodate one or more suture knots” (id. at col. 3, ll. 63-66). A “pair of bottom holes 35 and 40 … extend from bottom surface 30 of chamber 25 through planar bottom surface 10” (id. at col. 4, ll. 1-7). Martins discloses that additional sutures may be accommodated by “providing the additional holes 45 and 50 (see FIG. 3)” (id. at col. 4, ll. 7-10). Figure 1 of Martins is shown below: Figure 1 shows “a cross-sectional view illustrating the attachment of one bone to another bone using the suture retaining device” (id. at col. 3, ll. 9-11). Specifically, Figure 1 shows button 5 resting in a counterbored hole 117 in bone 110; suture 147 extends through a smaller hole in bone 110 and connects button 5 with suture anchor 135 in bone 115 (id. at col. 4, Appeal 2011-001959 Application 11/097,180 5 ll. 36-68). Martins discloses that the free ends of “suture 147 are … threaded through the button’s bottom holes 35 and 40, respectively” (id. at col. 5, ll. 1-4). “[T]he free ends 140 and 145 of suture 147 are … tied off into a knot 155, with the knot 155 resting against the button’s floor 30 and being accommodated completely within the button’s internal chamber 25” (id. at col. 5, ll. 17-21). Thus, Martins discloses that use of its suture retaining device entails inserting the device into a hole in a first bone and threading sutures that extend from a second bone through apertures 35 and 40 to hold the two bones together. Specifically, the sutures are inserted through the apertures from bottom surface 10 into internal chamber 25 and then tied off so that the knot resides within internal chamber 25. Claim 1, however, requires grooves “recessed from the most distal surface of the distal end” of the claimed suture anchor. Claim 1 therefore requires the grooves to be in the bottom surface 10 of Martins’ device. Since Martins describes its device as being used with sutures that extend through the apertures from bottom surface 10 and are tied off inside the device, there would be no apparent reason to provide grooves and a ridge at bottom surface 10 “in order to prevent the suture from protruding from the anchor body,” as reasoned by the Examiner (Answer 5). The Examiner cites Dreyfuss only for its disclosure of a threaded suture anchor body (Answer 4), not for any teaching that would provide a reason to combine the relevant teachings of Martins and Niederer. Thus, the Examiner has not shown that the cited references would have made obvious the suture anchor of claim 1. Appeal 2011-001959 Application 11/097,180 6 We reverse the rejection of claim 1, and dependent claims 2, 3, 8 and 9, as being obvious in view of Martins, Dreyfuss and Niederer. Claim 10, the only other independent claim, also requires grooves recessed from the most distal surface of the distal end of the suture anchor. Therefore, for the reasons discussed above, we also reverse the rejection of claim 10 and dependent claims 11, 14, and 17. SUMMARY We reverse the rejection of claims 1-3, 8-11, 14, and 17 under 35 U.S.C. § 103(a). REVERSED lp