Ex Parte Gellman et al

Patent Trial and Appeal Board

Dec 11, 2012

10325125 (P.T.A.B. Dec. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte BARRY N. GELLMAN, ARMOND A. MORIN,
and JOZEF SLANDA
__________

Appeal 2011-002026
Application 10/325,125
Technology Center 3700
__________

Before TONI R. SCHEINER, FRANCISCO C. PRATS, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1-4, 13, and 15-20, directed to a medical device comprising a surgical sling
and soft tissue anchor. The claims have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
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Application 10/325,125

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STATEMENT OF THE CASE
The present invention relates to devices that anchor
implants to soft tissue for use in surgical procedures, for
example, pelvic floor reconstruction procedures. . . . The
structural tear resistance of the abdominal muscle is used to
provide a stable and durable anchoring point . . . [which] results
in a simpler and faster procedure than other therapies that
involve . . . drilling into the pubic bone to place anchors. . . . In
general, a soft tissue anchor according to the invention has one
position that allows passage through the soft tissue of a patient
and another position that inhibits passage of the anchor through
the penetrated soft tissue when a pull-back force is applied to
the anchor by an implant, such as a urethral sling, that is
coupled to the anchor.
(Spec. 2.)
Claims 1-4, 13, and 15-20 are pending and on appeal. Claims 5-7 and
14 are also pending, but have been withdrawn from consideration; claims 8-
12 have been canceled (App. Br. 3).
Claim 1, the only independent claim, is representative of the subject
matter on appeal:
1. A sling assembly, comprising:
a sling, and
a soft tissue anchor comprising a central body element having a
proximal sling engaging portion for receiving the sling and at least one
radially extending arm disposed about the central body element, the at least
one arm having first and second ends, a compliant middle portion, a first
rigid portion between the first end and the compliant middle portion, and a
second rigid portion between the compliant middle portion and the second
end, the first end being pivotable about the distal end of the central body
element and the second end unattached to the central body element and
proximal of the first end.
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Claims 1-4, 13, 15, and 18-20 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Tornier.
1
In addition, claims 16 and 17 stand rejected
under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35
U.S.C. § 103(a) as unpatentable over Tornier.
FINDINGS OF FACT
1. Figure 1 of the present Specification, reproduced below, depicts
a soft tissue anchor that meets the limitations of claim 1:

Figure 1 of the Specification depicts soft tissue anchor 1, which “includes a
central body element 2 from which a plurality of support members 4 project.
The central body element 2 includes a distal portion 6 and a proximal
portion 8 . . . to which an implant 10, such as a surgical mesh or sling, may
be coupled” (Spec. 8).
2. The Specification explains that “[e]ach of the support members
[4] can move between a first position, which permits passage of the anchor
though soft tissue,” as shown in Figure 1, and “a second position, which
inhibits passage of the soft tissue anchor back through the soft tissue when a
pull-back force is applied to the anchor by the implant” (Spec. 2), as shown
in Figure 3, reproduced below:

1
US 6,328,758 B1, issued December 11, 2011 to Tornier et al.
Appeal 2011-002026
Application 10/325,125

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Figure 3 of the Specification depicts soft tissue anchor 1, with the support
members 4 in the second position, “articulated laterally away from the
central body element 2” (Spec. 8).
3. Tornier discloses a device for attaching soft tissues to a bone
(Tornier, col. 1, ll. 6-7). Tornier‟s device is depicted in Figure 1, reproduced
below:

Figure 1 depicts Tornier‟s “monobloc suture anchor 1,” which
comprises “an elongated, hollow cylindrical body 2 susceptible to be
plastically deformed” (id. at col. 4, ll. 21-23). As Tornier explains:
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The body 2 is provided at one of its extremities with a
head 3 which, in turn, is provided with means of fixation 4 for
the soft tissues 16 to the bone 17 of a patient by means of one
or several suture threads 5 fastened on the head.
The head 3 is constituted by means of fixation 4 that are
provided between a cylindrical support surface 21 and a
cylindrical section 22.
The cylindrical section 22 of head 3 extends on the
opposite side of the means of fixation 4 by means of at least
two fixation prongs 6, 7 that, prior to deformation, run parallel
to the longitudinal axis XX' of the body 2.
The other extremity of the body 2, opposite to that of
head 3, is constituted in the extension of the prongs 6 and 7 by a
conically shaped point 8 that facilitates the setting in place of
the suture anchor in the bone 17.
. . .
The prongs 6 and 7 are connected to the head 3 and to the
point 8 [of body 2] by means of bending fasteners 11 oriented
towards the center of the body 2 allowing the deformation of
the mentioned prongs under the effect of a tractive force.
(Id. at col. 4, ll. 26-55.)
4. In addition, Tornier defines “monobloc” as “consist[ing] of
only one piece” (id. at col. 2, ll. 31-32).
ISSUE
The Examiner finds that Tornier discloses a device that meets all the
limitations of independent claim 1, including “the limitation of „second end
[of the arm] unattached to the central body‟” (Ans. 8). Specifically, the
Examiner finds that Tornier discloses:
[An] expandable suture anchor system (1) including a hollow
cylindrical body section (22) or central body element,
expandable prongs (6, 7) or arms that are connecting conical
point (8) to cylindrical body section (22). The prongs (6, 7) or
arms include a first end attached to the body section (22) or
central body element . . . and a second end attached to the
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conical point (8) . . . . [B]ecause the second end of the prong is
attached to the conical point (8) . . . it is not capable to be
attached to the hollow cylindrical body section (22).
(Id.).
Appellants contend that Tornier does not disclose a device in which
the second end of the radially extending arm is unattached to the central
body, as required by all the claims on appeal (App. Br. 9).
Thus, the issue raised by both of the rejections on appeal is whether
the evidence of record supports the Examiner‟s finding that the second end
of the arm (or prong) in Tornier‟s device is unattached to the central body
element (or elongated, hollow body) of the device.
ANALYSIS
Tornier plainly states that the prongs 6, 7 of its “monobloc,” i.e., one-
piece device, “are connected to the head 3 and to the point 8” (Tornier, col.
4, ll. 52-53), which form the extremities of the same “hollow cylindrical
body 2” (id. at col. 4, ll. 21-27, 37-39) (FFs 3, 4). To the extent there is
correspondence between Tornier‟s device and the claimed device, the
hollow cylindrical body 22 most closely corresponds to the “central body
element” required by the claims on appeal. On the other hand, element 22,
which the Examiner equates to a “central body element,” is merely a
“cylindrical section” of the larger hollow cylindrical body 2.
Therefore, we agree with Appellants that Tornier does not disclose a
device in which the second end of the radially-extending arm is unattached
to the central body element of the device, as required by all the claims on
appeal.

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CONCLUSION
The evidence of record does not support the Examiner‟s finding that
the second end of the arm (or prong 6, 7) in Tornier‟s monobloc device is
unattached to the central body element (or elongated, hollow body 2) of the
device. As both of the rejections on appeal rely on this finding, we will
reverse both rejections.
SUMMARY
The rejection of claims 1-4, 13, 15, and 18-20 as anticipated by
Tornier is reversed.
The rejection of claims 16 and 17 as anticipated by or, in the
alternative, as unpatentable over Tornier is reversed.

REVERSED

cdc