Ex Parte Rousseau

Patent Trial and Appeal BoardJun 23, 2017

13314704 (P.T.A.B. Jun. 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. 13/314,704 12/08/2011 Robert A. Rousseau ETH5647USNP 1086 27777 7590 06/27/2017 JOSEPH F. SHIRTZ JOHNSON & JOHNSON ONE JOHNSON & JOHNSON PLAZA NEW BRUNSWICK, NJ 08933-7003 EXAMINER OBU, KENDRA NNEAMAKA ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 06/27/2017 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 ROBERT A. ROUSSEAU Appeal 2015-003568 Application 13/314,7041 Technology Center 3700 Before LINDA E. HORNER, JASON W. MELVIN, and BRENT M. DOUGAL, Administrative Patent Judges. MELVIN, Administrative Patent Judge. DECISION ON APPEAL This appeal arises under 35 U.S.C. § 134(a), from the Examiner’s Final Rejection of claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellant identifies Ethicon, Inc., as the real party in interest. Appeal Br. 3. Appeal 2015-003568 Application 13/314,704 BACKGROUND The claims are directed to modified tissue securement fibers. Claim 1, reproduced below, is illustrative: 1. A monolithic tissue securement fiber comprising: at least two sections having a first cross sectional area; at least one section having a second cross sectional area; and transition sections between the at least two sections having a first cross sectional area and the at least one section having a second cross sectional area, wherein the second cross sectional area is less than the first cross sectional area and the at least one section having the second cross sectional area is intermediate to the at least two sections having the first cross sectional area and wherein the transition sections from the at least two sections having a first cross sectional area to the at least one section having a second cross sectional area is a transition of continuous reduction in cross sectional area with the reduced cross sectional area having a continuous perimeter. REJECTIONS Appellant seeks review of the following rejections: 1. Claims 1-3 stand rejected under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Tschopp (U.S. Pat. Pub. No. 2010/0163056 Al, pub. July 1, 2010). 2. Claims 4-6 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Tschopp. 3. Claims 7-12 and 15 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Tschopp in view of Lindh et al. (U.S. Pat. Pub. No. 2007/0257395 Al, pub. Nov. 8, 2007). 2 Appeal 2015-003568 Application 13/314,704 4. Claims 13-14 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Tschopp in view of Abuzaina et al. (EP 2145587 A2, pub. Jan. 20, 2010). DISCUSSION The Examiner finds that Tchopp teaches the fiber of claim 1, pointing to Figure 6b. Final Act. 2-3. Tchopp’s Figure 6b is reproduced below: C 2 / 11 \\ X \ \ 123 \ 4 1 Fig* 6b Figure 6b depicts implant 1 with constriction 10 in the middle portion 4. Tschopp, ^ 83. Appellant argues that Tschopp’s implant “clearly is not a fiber as required by the appealed claims.” Appeal Br. 5. The Examiner responds that a “fiber” is “a long thin piece of a natural or artificial substance, similar to a thread or hair in shape.” Ans. 3 (citing MacMillan Dictionary, http ://www.macmillandictionary. com/dictionary/american/fiber#fiber_7). 3 Appeal 2015-003568 Application 13/314,704 Thus, according to the Examiner, the claim language reads on Tschopp’s implant because Tschopp teaches “a long, thin piece of material” (Ans. 4 (citing Tschopp 27-31)) which in the Examiner’s eyes is “similar to a thread shape” because of its cylindrical shape and rounded ends (Ans. 4 (citing Tschopp ^ 81, which the Examiner notes “states proximal and distal ends are rounded”; Figs. 6a-b, which the Examiner notes depict “a cylindrical shape”)). We do not agree with the Examiner. First, we do not agree that Tschopp teaches a sufficiently slender structure. While the dictionary definition the Examiner cites states that a fiber is long and thin, other definitions emphasize this quality to a greater degree. For example, the Merriam-Webster dictionary defines fiber, in one regard, as “a slender and greatly elongated natural or synthetic filament.” Fiber, Merriam-Webster.com, https://www.merriam- webster.com/dictionary/fiber. Tschopp teaches a range of dimensions, which the Examiner cites to support the rejection. Tschopp 27-31; Ans. 4. That range includes a total length up to 55 mm (Tschopp 27-28) and a width as narrow as 1 mm (id. at 30),2 resulting in an aspect ratio of 55:1. The Specification discloses that an exemplary fiber may be “approximately 30 to 40 cm” in length (Spec., 19:5-7) and separately discloses an exemplary fiber of 0.037 in. diameter (0.94 mm) (id. at 14:31). While we are cognizant that those length and diameter dimensions come from two separate examples in the Specification, using those dimensions results in a structure with an aspect ratio greater than 300:1. While we do 2 In our view, the width (rather than the thickness) controls the nature of Tschopp’s structure, because it is the larger of the two orthogonal cross- sectional dimensions. 4 Appeal 2015-003568 Application 13/314,704 not construe “fiber” as requiring a particular aspect ratio, we conclude that the term does not include Tschopp’s less-elongated implant. The claimed “fiber” does not read on Tschopp’s implant also because the Specification describes the need for devices with “a high degree of flexibility” (Spec. 4:26-29) while Tschopp, in contrast, teaches a device “for stiffening the soft palate” (Tschopp ^ 9). We interpret the claimed “fiber” to require a high degree of flexibility. For the above reasons, we do not sustain the Examiner’s rejection of independent claim 1. Because the Examiner relies on the same findings in support of the rejections of dependent claims 2-15 (see Final Act. 4-6), we likewise do not sustain those rejections. DECISION For the above reasons, the Examiner’s rejection of claims 1-15 is reversed. REVERSED 5